- PTAB · Feb 26, 2025 · IPR2024-01199 · APJ Avelyn M Ross · IPR · Institution
The Board instituted IPR of claims 1–20 on all petitioned grounds, finding a reasonable likelihood of success on at least one claim based on the preliminary record.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2012); 37 C.F.R. § 42.4(a). 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 [one] of the claims challenged in the petition.” For the reasons set forth below, upon considering the Petition, Preliminary Response, Reply, Sur-reply, and evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to at least one challenged claim. Accordingly, we grant the Petition and institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Director review) (precedential). Here, we determine that Fintiv factor 1 is neutral, factors 2 through 4 all weigh against exercising our discretion to deny institution, and factor 5 weighs in favor of discretionary denial. Accordingly, when considered in combination, Fintiv factors 1–5 do not favor discretionary denial, and we do not consider the question of compelling merits. 7. summary We consider the above factors and take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6; Guidance Memorandum. On this record, after weighing all of the factors and taking a holistic view, we determine that the facts presented weigh against exercising our discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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 ’053 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 the ’053 patent and the prior art. We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,878,053 - PTAB · Feb 26, 2025 · IPR2024-01203 · APJ Avelyn M Ross · IPR · Institution
The Board instituted inter partes review of claims 1–12 on all petitioned grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2012); 37 C.F.R. § 42.4(a). 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 [one] of the claims challenged in the petition.” For the reasons set forth below, upon considering the Petition, Preliminary Response, Reply, Sur-reply, and evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to at least one challenged claim. Accordingly, we grant the Petition and institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“compelling merits if they first determined that Fintiv factors 1–5 favored a discretionary denial.” CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential). Here, we determine that Fintiv factor 1 is neutral, factors 2 through 4 all weigh against exercising our discretion to deny institution, and factor 5 weighs in favor of discretionary denial. Accordingly, when considered in combination, Fintiv factors 1–5 do not favor discretionary denial, and we do not consider the question of compelling merits. 7. summary We consider the above factors and take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6; Guidance Memorandum. On this record, after weighing all of the factors and taking a holistic view, we determine that the facts presented weigh against exercising our discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“On this record, we disagree and determine that Petitioner has established a reasonable likelihood that the skilled artisan would have modified Froitzheim in view of Gan’s teachings. Petitioner may rely on Gan 14 Jon-Yiew Gan, Polysilicon Emitters for Silicon Concentrator Solar Cells (July, 1990) (Ph.D. dissertation, Stanford University) (Ex. 2003, “the Gan Thesis”). for all that it teaches to show obviousness, which is “consistent with the longstanding principle that the prior art must be considered for all its teachings, not selectively.” Henny Penny Corp. v. Frymaster LLC, 938 F.3d. 1324, 1332 (Fed. Cir. 2019). Here, Gan appears to broadly suggest that replacing a diffused-emitter with a polysilicon emitter improves solar cell performance. For example, Gan states that “[t]he cell performance can be improved if the diffused-emitter is replaced with the polysilicon emitter, of which the Jo is less than 4.5 x 10-13 A/cm2 and the pc is low enough.” Ex. 1005, 1. Patent Owner does not direct us to anything in Gan that suggests its teachings are inapplicable to conventional solar cells. See generally Prelim. Resp. In contrast, Gan’s introduction states that “[p]olysilicon emitters, because of their important applications in high speed bipolar transistors, have been widely studied,” which indicates broad applicability. Ex. 1005, 245. Further, Dr. Holman testifies that “although Gan references a concentrator solar cell—a category of solar cells that uses lenses, mirrors, and other components to focus (i.e., concentrate) sunlight on a cell (Ex.1016-Komp, 56–58)—a person of ordinary skill in the art would have understood that Gan’s teachings are equally applicable to non-concentrator solar cells.” Ex. 1003 ¶ 131. Dr. Holman declares that Gan’s “polysilicon emitter and oxide layer structure is ‘useful for silicon solar cells’” and “[p]ersons of ordinary skill in the art frequently looked at various solar cell designs and related technologies when evaluating how to improve a solar cell’s efficiency, which is exactly what Gan did when evaluating how to improve a cell’s design.” Id.” slip op. at 28
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner also states that “[f]or purposes of this Preliminary Response, [Patent Owner] applies [Petitioner’s] level of ordinary skill.” Prelim. Resp. 6. 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 ’516 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 the ’516 patent and the prior art. We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,222,516 - PTAB · Oct 16, 2024 · IPR2023-01218 · APJ Avelyn M Ross · IPR · Director review
The Board instituted IPR of claims 1–19 on all asserted grounds, finding a reasonable likelihood that Astera and Edwards anticipate or render the claims obvious.
RulingsDirector review decision- Director reviewOther
“under 35 U.S.C. § 314(a), to deny the Petition because it challenges a patent that was previously challenged before the Board. Paper 9; see generally IPR2022-00099 (challenging the ’944 patent). On April 19, 2024, the Director of the United States Patent and Trademark Office granted Director Review, vacated our prior decision, and remanded the case for further proceedings. Paper 12. We have authority to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). For the reasons set forth below, we institute an inter partes review of the challenged claims.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner proposes any claim terms for construction.5 See Pet. 10; Prelim. Resp. 3–4. For purposes of this Decision, we need not expressly construe any claim terms at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had at least a Bachelor of Science degree in electrical engineering, or a closely related field, along with at least two years of experience in the design of entertaining lighting systems, and the design and use of LED lights.” Pet. 10. Patent Owner does not, at this time, dispute Petitioner’s proposed definition. See generally Prelim. Resp. On this record, Petitioner’s proposed definition appears consistent with the prior art of record and we apply it for purposes of this Decision.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims is anticipated by or would have been obvious over the asserted prior art.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,845,044 - NXP USA, Inc. v. Bell Semiconductor, LLCInstitutedPTAB · May 8, 2024 · IPR2024-00168 · APJ Brian D Range · IPR · Institution
Instituted inter partes review of claims 1–6 and 8 on all petition grounds addressing those claims, based on a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–6 and 8 of the ’245 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in a field relating to the semiconductor manufacturing process, such as materials science, physics, electrical engineering, and/or other related subjects, and at least two to three years of experience with fabrication of integrated circuits.” Pet. 4 (citing Ex. 1002 ¶ 20). Petitioner also contends “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 4–5. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’245 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Claim 1 affirmatively recites, for example, “a plurality of layers under the top layer.” Ex. 1001, 4:13. Claim 1 also affirmatively recites that the “plurality of layers compris[es] a bottom routing layer having signal traces thereon.” Id. at 4:14–15. So, claim 1 requires a bottom routing layer having signal traces. Claim 1 then recites “where[] none of the signal traces of the bottom routing layer are located over ball pads of the ball pad layer which are disposed in an area within two ball pad pitches of the corner of the die.” Id. at 4:17–20. This recitation serves to describe the “signal traces of the bottom routing layer.” The recitation does not affirmatively recite a required location of any ball pads. Likewise, the claim as a whole also does not state that the ball pad layer comprises ball pads disposed within two ball pad pitches of the corner of the die. Rather, the claim recites “said ball pad layer having a plurality of ball pads” without affirmatively indicating where those ball pads must be located within the ball pad layer. Thus, on the present record, we interpret claim 1’s recitation of “none of the signal traces . . . within two ball pad pitches of the corner of the die” as requiring that no signal traces of the bottom routing layer be located over ball pads of the ball pad layer disposed within two ball pad pitches of the corner of the die if any such ball pads exist in this location. We do not interpret claim 1 as affirmatively requiring ball pads disposed within two ball pad pitches of the corner of the die. To the extent Patent Owner maintains arguments regarding this recitation in a Patent Owner Response, we invite the parties to further address this claim construction issue at trial to the extent permitted by our rules.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We have reviewed Petitioner’s contentions for all of the elements of independent claim 1, as well as the supporting evidence. Pet. 45–55. Based on the record before us, we are persuaded that Petitioner’s discussion of the particular structures and methods in Chung and Celeron establishes a reasonable likelihood of prevailing at trial on the issue of whether the combined teachings of Chung and Celeron teach or suggest all of the limitations of independent claim 1. Id. Also, based on the present record, we are persuaded that Petitioner adequately establishes that a person having ordinary skill in the art would have had reason to combine the teachings of Chung and Celeron.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,345,245 - 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 - 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 - The Noco Company, Inc. v. Pilot, Inc.InstitutedPTAB · Feb 14, 2023 · IPR2022-01417 · APJ Jeffrey W Abraham · IPR · Institution
The Board instituted inter partes review of claims 1–27 on all asserted grounds, finding a reasonable likelihood that Nook-015 anticipates claims 1, 2, and 5–12.
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
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“proceeding, we agree with Petitioner that the ’236 patent is not entitled to the 2014 priority date of the original application. Whether the Specification complies with the written description requirement calls for a comparison of the scope of the claim with the scope of the description to determine whether the inventor has demonstrated possession of the claimed invention. See Ariad, 598 F.3d 1336 at 1353; Power Oasis, 522 F.3d 1299, 1306. The independent claims of the ’236 patent each require (1) a load detection sensor “configured to detect presence of a vehicle battery” and (2) a reverse polarity sensor “configured to detect polarity of a vehicle battery.” Ex. 1001, 5:16–27 (claim 1), 6:7–22 (claim 13), 6:65–7:13 (claim 18), 8:1– 15 (claim 23). The Specification of the ’236 patent does not expressly disclose both a load detection sensor and reverse polarity sensor configured to perform the recited functions. Instead, the Specification identifies a single circuit, the “automatic detection module,” that “can automatically detect[] whether the load is detected” and “whether the electrode is connected with the automobile storage battery reversely.” Ex. 1001, 2:51–54. We are persuaded by Petitioner’s arguments that the disclosure of a single circuit capable of performing two functions does not demonstrate the inventors had possession of an invention that requires two separate sensors configured to perform separate functions as recited in the claims. See Ariad, 598 F.3d 1336 at 1352 (“[A] description that merely renders the invention obvious does not satisfy the [written description] requirement.”); Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (holding that “the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue,” but that “one skilled in the art, reading the original disclosure, must immediately discern the limitation at issue in the claims”); cf. PIN/NIP, Inc. v. Platte Chem. Co., 304 F.3d 1235, 1248 (Fed. Cir. 2002) (finding a claim for a method involving sequential application of two chemicals was invalid for lack of adequate written description where the specification indicated that the invention was a method of applying a “composition” containing the two chemicals). For all of the foregoing reasons, based on the present record, we agree with Petitioner that the Specification of the ’236 patent does not provide adequate written description support for distinct “load detection” and “reverse polarity” sensors, and, therefore, the challenged claims are not entitled to a priority date earlier than April 21, 2021, the filing date of the ʼ236 patent.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. Inc., v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987); see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1 US 9,007,015 B1, issued Apr. 14, 2015 (Ex. 1004). 2 US 9,245,888 B2, issued Jan. 26, 2016 (Ex. 1010). 3 US 10,60,024 B2, issued Mar. 31, 2020 (Ex. 1005). 1323, 1334 (Fed. Cir. 2008) (to anticipate a patent claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation”). Moreover, “[b]ecause the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Whether a reference anticipates is assessed from the perspective of one of ordinary skill in the art. See Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“‘[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” (alterations in original) (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991))). Additionally, “[u]nder the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (citation omitted); In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349–50 (Fed. Cir. 2002). slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In an inter partes review, we construe claim terms according to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id.” slip op. at 10
Claim construction§ 102 anticipation§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,104,236 - PTAB · Aug 15, 2022 · IPR2022-00381 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on claims 1–10 and 12–18 on all asserted grounds, finding a reasonable likelihood that the claims are unpatentable as obvious.
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 . . . 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) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“Having reviewed the disclosures of the ’626 provisional application relied upon by Patent Owner, we do not agree that they would convey to a person of ordinary skill in the art that Mr. Niester had possession of using 222 or 282 nm wavelengths to disinfect human or animal skin. While they refer to human activity such as travel, surgery, and food preparation, the disclosures do not refer to disinfecting skin. Rather, they refer to sterilizing things in the presence of humans, such as surfaces and air, but not human or animal skin itself. Therefore, we determine that Petitioner has satisfied its initial burden of production on the effective-filing-date issue by identifying the absence of specific supporting disclosure for claim 1 from the ’626 provisional application. See Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1379–1380 (Fed. Cir. 2015) (discussing burden framework in inter partes review). Based on this record, we find that Petitioner has demonstrated a reasonable likelihood that it will prevail in establishing that challenged claims 1–10 are not entitled to an effective filing date earlier than the filing date of the PCT application. The parties will have an opportunity to develop their positions on the issue of the effective filing date of claims 1–10 during trial.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Having considered the evidence and arguments presented by both parties on the present record, we are persuaded Petitioner sufficiently shows that Eckhardt and Sosnin teach or suggest all of the limitations in claim 1, and sufficiently explains how a person of ordinary skill in the art would have used Eckhardt’s teaching of narrow spectrum light in the range of 220 to 310 nm to disinfect skin, with Sosnin’s implementation of excimer lasers including 222 and 282 nm to kill bacteria, to arrive at the method of claim 1 with a reasonable expectation of success. We disagree with Patent Owner’s argument that Eckhardt teaches away from the use of UV light on skin because it is based on a mischaracterization of Eckhardt, which does not teach bandages as a way to provide cover from direct UV light, but rather, compensates for application of UV light through a bandage by controlling the UV light intensity. Indeed, Eckhardt’s embodiment that Petitioner relies upon is titled “UV- Transmissive Bandage” and explains how to choose bandage materials that transmit UV-C light. See Ex. 1004 ¶¶ 69–72. We also disagree, on this record, with Patent Owner’s argument that Sosnin would dissuade a person of ordinary skill from using 222 or 282 nm wavelengths to disinfect skin . Although Patent Owner is correct that Sosnin refers to the need for additional testing before using its technology outside of a laboratory (Prelim. Resp. 31), Mr. Lawal directs us to evidence supporting his testimony that it was general knowledge in the art at the time of the invention that even though UV light poses safety risks to human skin, UV-C light of 222 nm on bare skin for disinfection was relatively safe. Ex. 1003 ¶¶ 88–91 (citing Exs. 1013, 1015, 1016, 1017). Patent Owner presents only attorney argument in response to Mr. Lawal’s testimony and supporting evidence. We invite the parties to continue to develop this issue during trial.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We disagree with Patent Owner’s argument that Eckhardt teaches away from the use of UV light on skin because it is based on a mischaracterization of Eckhardt, which does not teach bandages as a way to provide cover from direct UV light, but rather, compensates for application of UV light through a bandage by controlling the UV light intensity. Indeed, Eckhardt’s embodiment that Petitioner relies upon is titled “UV- Transmissive Bandage” and explains how to choose bandage materials that transmit UV-C light. See Ex. 1004 ¶¶ 69–72. We also disagree, on this record, with Patent Owner’s argument that Sosnin would dissuade a person of ordinary skill from using 222 or 282 nm wavelengths to disinfect skin . Although Patent Owner is correct that Sosnin refers to the need for additional testing before using its technology outside of a laboratory (Prelim. Resp. 31), Mr. Lawal directs us to evidence supporting his testimony that it was general knowledge in the art at the time of the invention that even though UV light poses safety risks to human skin, UV-C light of 222 nm on bare skin for disinfection was relatively safe. Ex. 1003 ¶¶ 88–91 (citing Exs. 1013, 1015, 1016, 1017). Patent Owner presents only attorney argument in response to Mr. Lawal’s testimony and supporting evidence. We invite the parties to continue to develop this issue during trial.” slip op. at 17
§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 9,700,642 - Sony Corporation v. Fujifilm CorporationRehearing grantedPTAB · Dec 18, 2017 · IPR2017-00618 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board granted rehearing and instituted review of claims 1–3 on anticipation by Hennecken and obviousness over Hennecken with Albrecht II, with or without Dugas, under Basis 1.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. 37 C.F.R. § 42.71(d). Additionally, Petitioner, as the party challenging the Decision, has the burden of showing the Decision should be modified. Id. When rehearing a decision on a petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2002) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)).” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Albrecht Declaration that a POSA would have understood Hennecken to be disclosing “a plurality of servo bands on each of which is written a different servo signal for tracking control of the magnetic head” as required by independent claim 1, and Patent Owner provides evidence in the Messner Declaration that a POSA would have understood that Hennecken does not teach that a different servo signal is written on each servo band for tracking control. See, e.g., Pet. 22–25; Ex. 1016 ¶¶ 105–113, 174–177; Prelim. Resp. 29–33; Ex. 2003 ¶¶ 88–98. This conflicting expert testimony creates a genuine issue of material fact regarding how a POSA would have understood Hennecken. For purposes of deciding whether to institute an inter partes review, we must view any issues of material fact created by testimonial evidence in the light most favorable to Petitioner. See 37 C.F.R. § 42.108(c). Thus, for purposes of this Decision, we must resolve the dispute between Dr. Albrecht and Dr. Messner regarding how a POSA would have understood Hennecken in Petitioner’s favor.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“reasons as to why a POSA would have been motivated to combine the teachings of Hennecken and Albrecht II. Pet. 39–41; Ex. 1016 ¶¶ 231–237. In the Preliminary Response, Patent Owner argues that “a POSA would not have been motivated to use the techniques of embedding information in the low frequency transitions, as disclosed in Albrecht II, in order to embed a servo stripe number, as disclosed in Hennecken for the simple reason that Hennecken plainly teaches away from such a combination.” Prelim. Resp. 38. Patent Owner relies on Dr. Messner’s testimony to support its contentions. Id. at 38–41; Ex. 2003 ¶¶ 109–116. The conflicting expert testimony creates a genuine issue of material fact regarding whether a POSA would have been motivated to combine the teachings of Hennecken and Albrecht II as Petitioner proposes. For purposes of this Decision, we must resolve this dispute between Dr. Albrecht and Dr. Messner in Petitioner’s favor. See 37 C.F.R. § 42.108(c). The parties will have the opportunity to further develop these facts and” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayInstituted
“reasons as to why a POSA would have been motivated to combine the teachings of Hennecken and Albrecht II. Pet. 39–41; Ex. 1016 ¶¶ 231–237. In the Preliminary Response, Patent Owner argues that “a POSA would not have been motivated to use the techniques of embedding information in the low frequency transitions, as disclosed in Albrecht II, in order to embed a servo stripe number, as disclosed in Hennecken for the simple reason that Hennecken plainly teaches away from such a combination.” Prelim. Resp. 38. Patent Owner relies on Dr. Messner’s testimony to support its contentions. Id. at 38–41; Ex. 2003 ¶¶ 109–116. The conflicting expert testimony creates a genuine issue of material fact regarding whether a POSA would have been motivated to combine the teachings of Hennecken and Albrecht II as Petitioner proposes. For purposes of this Decision, we must resolve this dispute between Dr. Albrecht and Dr. Messner in Petitioner’s favor. See 37 C.F.R. § 42.108(c). The parties will have the opportunity to further develop these facts and” slip op. at 9
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,355,805
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.