• Applied Materials, Inc. / Intel Corporation et al. v. Demaray LLCNo claims unpatentable
  PTAB · Jun 29, 2022 · IPR2021-01031 · APJ Kimberly Mcgraw · IPR · Final written decision

  Claims 1–21 were not shown unpatentable because Petitioner did not establish that the prior art taught or suggested the claimed narrow band-rejection filter or a sufficient reason to add one.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “In our Decision on Institution, we adopted Petitioner’s proposal regarding the level of one of ordinary skill in the art, except that we deleted the qualifier “at least” to eliminate vagueness as to the appropriate amount of relevant experience. Inst. Dec. 10 (noting that the qualifier expands the range without an upper bound, i.e., encompassing an unlimited amount of years of experience, and thus, does not meaningfully indicate the level of ordinary skill in the art).” slip op. at 10

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

    “Neither Petitioner nor Patent Owner assert that construction of any claim term is required to resolve any issues in dispute. See Pet. 11 (citing Ex. 1002 ¶ 54); PO Resp. 10–11.” slip op. at 11

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached

    “patent. Petitioner, who bears the burden to show Hirose is prior art, asserts that Hirose qualifies as prior art under pre-AIA 35 U.S.C. § 102(e) because Hirose’s filing date of July 18, 2001 is before the March 16, 2002 effective filing date of the ’657 patent. See Pet. 5. Patent Owner responds that Hirose does not qualify as prior art to the ’657 patent because the inventors of the ’657 patent conceived and reduced to practice the ’657 invention on or before Hirose’s filing date of July 18, 2001, likely as early as June 13, 2001. PO Resp. 12. To support this position, Patent Owner provides argument and evidence relating to the conception of the subject matter recited in claims 1–8 and 10–21. Id. at 15– 39. An inventor may antedate a § 102(e) reference by showing that the invention was conceived before the effective date of the reference, followed by reasonably continuous diligence until the constructive reduction to practice. Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356, 1362 (Fed. Cir. 2001). Evidence of such conception and reduction to practice must be provided on a claim-by-claim basis.” slip op. at 18

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We agree with Dr. Glew’s testimony that Hong, like Barber, does not suggest that a filter is required to protect a DC power source applied to a target from an RF power source applied to substrate. Ex. 2009 ¶ 152. We further agree that, rather than supporting Petitioner’s position, Hong supports Patent Owner’s position that at the time of the invention, one of ordinary skill in the art would not have thought that RF coupling into a remote pulsed DC power source was a concern or that it would have been desirable to place a filter between the DC power source and the substrate. Id. ¶ 153.” slip op. at 39

  Patent outcomesUS 7,381,657 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,381,657
• Applied Materials, Inc. / Intel Corporation et al. v. Demaray LLCNo claims unpatentable
  PTAB · Jun 29, 2022 · IPR2021-01091 · APJ Kimberly Mcgraw · IPR · Final written decision

  Claims 1–21 were not shown unpatentable because the petitioner failed to establish the claimed narrow band-rejection filter or a sufficient reason to add one to Barber’s system.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Decision on Institution, we adopted Petitioner’s proposal regarding the level of one of ordinary skill in the art, except that we deleted the qualifier “at least” to eliminate vagueness as to the appropriate amount of relevant experience. Inst. Dec. 10 (noting that the qualifier expands the range without an upper bound, i.e., encompassing an unlimited amount of years of experience, and thus, does not meaningfully indicate the level of ordinary skill in the art).” slip op. at 10

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

    “Neither Petitioner nor Patent Owner assert that construction of any claim term is required to resolve any issues in dispute. See Pet. 11 (citing Ex. 1002 ¶ 54); PO Resp. 10–11. In our Decision on Institution we invited the parties to address whether the claim term “providing an RF bias that corresponds to the narrow band rejection filter to the substrate” requires that (1) the frequency of the RF bias be the same as the frequency at which the filter operates or whether (2) the frequency of the RF bias could be a shift from the frequency at which the filter operates. Inst. Dec. 37–38. Patent Owner states the term should be construed according to its plain and ordinary meaning, which the parties in the copending litigation allegedly agreed requires the claimed filter “to have a rejection band set at a frequency of the RF bias power supply.” PO Resp. 10 (citing Ex. 2021; Ex. 2022, 7–10). Petitioner “disputes PO’s suggestion of ‘agree[ment] (EX 2022, 10)” but argues that Patent Owner’s “positions are not dispositive because they do not distinguish the prior art.” Reply 1. On the full record now before us, we agree that express construction of this term is not necessary as resolution of the present dispute does not turn on whether the frequency of the RF bias is the same as, or a shift from, the frequency at which the filter operates. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “narrow band-rejection filter (aka notch filter).” Pet. 22–23. Petitioner’s expert, Dr. Subramanian, testified that the difference between a narrow band-rejection filter and a band-rejection filter depends on the relationship between the bandwidth and the center frequency. See, e.g., Ex. 2030, 95:15– 21 (explaining that the bandwidth is “much, much, much smaller than the center frequency”). There is inadequate evidence that the bandwidth of Hirose’s filter is sufficiently narrow to constitute a narrow band-rejection filter. Rather, the evidence of record shows that Hirose’s filter is a band-rejection filter, not a narrow band-rejection filter.” slip op. at 29

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Not reached

    “Petitioner met its burden of production to demonstrate that Hirose, which has a filing date prior to the filing date of the ’657 patent, was prior art by asserting Hirose was prior art under § 102(e). See Dynamic Drinkware, 800 F.3d at 1379. Hirose’s earlier filing date shifts the burden of production to Patent Owner to produce evidence supporting a date of invention before Hirose’s filing date. See id. With its Response, Patent Owner presents evidence it contends shows a date of conception of claims 1–8 and 10–21 prior to July 18, 2001, followed by reasonably continuous diligence. For the purposes of this decision, we need not determine whether Hirose qualifies as prior art, because, as explained below, even if Hirose qualifies as prior art, Petitioner has not sufficiently shown that all of the asserted claims would have been obvious over the grounds asserting Hirose.” slip op. at 18

  Patent outcomesUS 7,381,657 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,381,657
• Applied Materials, Inc. / Intel Corporation et al. v. Demaray LLCNo claims unpatentable
  PTAB · Jun 29, 2022 · IPR2021-00104 · APJ Kimberly Mcgraw · IPR · Final written decision

  Claims 1–21 were not shown unpatentable because Petitioner did not establish the asserted obviousness grounds, including the required narrow band-rejection filter and motivation to modify Barber.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “In our Decision on Institution, we adopted Petitioner’s proposal regarding the level of one of ordinary skill in the art, except that we deleted the qualifier “at least” to eliminate vagueness as to the appropriate amount of relevant experience. Inst. Dec. 10 (noting that the qualifier expands the range without an upper bound, i.e., encompassing an unlimited amount of years of experience, and thus, does not meaningfully indicate the level of ordinary skill in the art).” slip op. at 10

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

    “whether the claim term “providing an RF bias that corresponds to the narrow band rejection filter to the substrate” requires that (1) the frequency of the RF bias be the same as the frequency at which the filter operates or whether (2) the frequency of the RF bias could be a shift from the frequency at which the filter operates. Inst. Dec. 37–38. Patent Owner states the term should be construed according to its plain and ordinary meaning, which the parties in the copending litigation allegedly agreed requires the claimed filter “to have a rejection band set at a frequency of the RF bias power supply.” PO Resp. 10 (citing Ex. 2021; Ex. 2022, 7–10). Petitioner “disputes PO’s suggestion of ‘agree[ment] (EX 2022, 10)” but argues that Patent Owner’s “positions are not dispositive because they do not distinguish the prior art.” Reply 1. On the full record now before us, we agree that express construction of this term is not necessary as resolution of the present dispute does not turn on whether the frequency of the RF bias is the same as, or a shift from, the frequency at which the filter operates. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Not reached

    “patent. Petitioner, who bears the burden to show Hirose is prior art, asserts that Hirose qualifies as prior art under pre-AIA 35 U.S.C. § 102(e) because Hirose’s filing date of July 18, 2001 is before the March 16, 2002 effective filing date of the ’657 patent. See Pet. 5. Patent Owner responds that Hirose does not qualify as prior art to the ’657 patent because the inventors of the ’657 patent conceived and reduced to practice the ’657 invention on or before Hirose’s filing date of July 18, 2001, likely as early as June 13, 2001. PO Resp. 12. To support this position, Patent Owner provides argument and evidence relating to the conception of the subject matter recited in claims 1–8 and 10–21. Id. at 15– 39. An inventor may antedate a § 102(e) reference by showing that the invention was conceived before the effective date of the reference, followed by reasonably continuous diligence until the constructive reduction to practice. Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356, 1362 (Fed. Cir. 2001). Evidence of such conception and reduction to practice must be provided on a claim-by-claim basis.” slip op. at 18

  • BurdenFwd all claims patentableNot shown unpatentable

    “It is Petitioner’s burden to demonstrate that the cited art teaches each limitation of the challenged claims and to show by a preponderance of the evidence that the claims are unpatentable. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). This burden never shifts to Patent Owner. See Dynamic Drinkware, 800 F.3d 1378. Here, Petitioner does not sufficiently demonstrate that Hirose teaches or suggests a narrow band-rejection filter as recited in claim elements 2[c] and 2[d]. See Pet. 21–22.” slip op. at 33

  Patent outcomesUS 7,381,657 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,381,657
• Applied Materials, Inc. / Intel Corporation et al. v. Demaray LLCNo claims unpatentable
  PTAB · Jun 29, 2022 · IPR2021-01030 · APJ Kristina M Kalan · IPR · Final written decision

  Petitioner did not prove claims 1–13 unpatentable because the grounds failed to establish the claimed filter limitations or a reason to combine Barber and Hirose.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 9 (citing Ex. 1001, 1:10–14, 2:45–47; Ex. 1002 ¶¶ 18–19). In our Institution Decision, we adopted Petitioner’s proposal regarding the level of one of ordinary skill in the art, except that we deleted the qualifier “at least” to eliminate vagueness as to the appropriate amount of relevant experience. Inst. Dec. 10.” slip op. at 9

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

    “AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019). 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. Only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 10

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached

    “An inventor may antedate a § 102(e) reference by showing that the invention was conceived before the effective date of the reference, followed by reasonably continuous diligence until the constructive reduction to practice. Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356, 1362 (Fed. Cir. 2001).” slip op. at 17

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

    “Just the knowledge, however, that a filter can be used to protect or isolate one power supply from another in various types of plasma systems is not sufficient to show that one of ordinary skill in the art would have been motivated to use a filter in Barber’s system to protect Barber’s pulsed DC power source from its RF power supply. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”). In an inter partes review, “the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363. In support of its challenge, Petitioner and Petitioner’s expert may rely on general knowledge, supported by evidence, to argue that a challenged claim would be obvious in light of the general knowledge of a skilled artisan. Koninklijke Philips v. Google, 948 F.3d 1330, 1337 (Fed. Cir. 2020) (stating that although the prior art that can be considered in inter partes review is limited to patents and printed publications, “it does not follow that we ignore the skilled artisan’s knowledge when determining whether it would have been obvious to modify the prior art”). Although the Petition on its face relies on Barber and Hirose to meet the limitations of claim 1[f] (Pet. 24–36), Petitioner’s arguments rely not only on Barber and Hirose, but on numerous additional references, ostensibly to demonstrate the general knowledge of a skilled artisan. Id. For example, Petitioner cites to a number of references (i.e., Licata (Ex. 1010), Joo (Ex. 1014), Celestino (Ex. 1016), Quon (Ex. 1017), Johnson (Ex. 1018), Hong (Ex. 1019), Ohmi (Ex. 1020), and Keller (Ex. 1021)) that use different types of filters in various plasma systems for the “known use and benefits of filters in plasma systems for blocking interference/current of one power supply from another.” Pet. 32–33. Petitioner asserts that a POSITA would have understood that choosing to reject a narrow band of frequencies depending on the bandwidth of Barber’s RF supply, was a known way to achieve “the benefits” of Hirose. Id. at 31–32 (citing Ex. 1023 (Miller), 7:51–61; Ex. 1057 (Sill), 7:23–34; Ex. 1058 (Zennamo), 1:63–2:1). Petitioner also relies on a number of manuals (i.e. Exs. 1025, 1026, 1062, 1067, 1024, 1065, 1066) that illustrate “design concepts/guidance associated with use of such supplies in a plasma system with an RF power source.” Id. at 34–35. Even considering all the references in the Petition and the declaration, Petitioner does not adequately explain how the filters and principles in these relied-upon references and manuals would lead one of ordinary skill in the art to use a filter, let alone a narrow-band rejection filter, in Barber’s system.” slip op. at 36

  Patent outcomesUS 7,544,276 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,544,276
• Applied Materials, Inc. / Intel Corporation et al. v. Demaray LLCNo claims unpatentable
  PTAB · Jun 29, 2022 · IPR2021-01090 · APJ Kristina M Kalan · IPR · Final written decision

  The Board held claims 1–13 not unpatentable because Petitioner failed to show the asserted combinations disclosed or motivated use of the claimed narrow band-rejection filter.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 9 (citing Ex. 1001, 1:10–14, 2:45–47; Ex. 1002 ¶¶ 18–19). In our Institution Decision, we adopted Petitioner’s proposal regarding the level of one of ordinary skill in the art, except that we deleted the qualifier “at least” to eliminate vagueness as to the appropriate amount of relevant experience. Inst. Dec. 10. 14 Because we determine Petitioner has not sufficiently shown the challenged claims would have been obvious, we do not reach Patent Owner’s asserted objective evidence of non-obviousness. PO Resp. 70–72. Patent Owner does not appear to dispute this definition. See generally PO Resp. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Accordingly, we retain our modified adoption of Petitioner’s definition. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 9

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

    “On the full record now before us, we determine it is not necessary to construe any claim term expressly, because resolution of the present dispute does not turn on whether the frequency of the RF bias power supply is the same as, or offset from, the frequency at which the filter operates. Vivid Techs., 200 F.3d at 803; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in an inter partes review).” slip op. at 11

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artNot reached

    “Petitioner met its burden of production to demonstrate that Hirose, which has a filing date prior to the filing date of the ’276 patent, was prior art by asserting Hirose was prior art under § 102(e). See Dynamic Drinkware, 800 F.3d at 1379. Hirose’s earlier filing date shifts the burden of production to Patent Owner to produce evidence supporting a date of invention before Hirose’s filing date. See id. With its Response, Patent Owner presented evidence it contends shows a date of conception prior to July 18, 2001, followed by reasonably continuous diligence. PO Resp. 11– 41. For the purposes of this decision, we do not determine whether Hirose qualifies as prior art to claims 1–13, because, as explained below, even if Hirose qualifies as prior art, Petitioner has not sufficiently shown that any of the asserted claims would have been obvious over the grounds asserting Hirose.” slip op. at 17

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “frequency response and that a POSITA would have understood that Hirose’s filter is “tuned to reject a narrow band of frequency,” which operates “like a narrow band-rejection filter (aka notch filter).” Pet. 28–29. Petitioner’s argument that Hirose discloses or suggests a narrow band-rejection filter is contained in this short portion of the Petition and relies on an inference that a V-shaped curve necessarily signifies a narrow band-rejection filter. Any such inference that a V-shaped curve is sufficient to characterize a filter as a narrow band-rejection filter, however, is belied by Dr. Subramanian’s own testimony. Indeed, Dr. Subramanian explains that the shape of a curve alone, including the shape of the curves of Figures 2–9(G) and (H) of Gibilisco, is not sufficient on its own to determine whether a filter corresponding to that curve is a narrow band-rejection filter or a broad bandrejection filter. See, e.g., Ex. 2030, 69:13–18 (stating, just looking Figure 2– 9(H), he could not tell if the figure corresponds to a narrow band-rejection filter because “I don’t have enough information”). Dr. Subramanian further testified that additional information beyond the mere shape of the curve is required to determine if the curve represents a narrow band-rejection filter; for example, Dr. Subramanian states that it was Gibilisco’s characterization of Figure 2–9(G) as having a sharp band rejection response that led him to conclude it was a narrow band-rejection filter. See Ex. 2030, 68:20–69:4 (Dr. Subramanian testifying that he would not “characterize the figure depicted in G as a narrow band” based just on the figures, but “on all the information that’s given,” which includes “this reference specifically [stating] at G, ‘sharp band rejection response’”); see also id. at 60:24–61:23, 62:7–63:11. Significantly, Petitioner does not point to statements in Hirose itself” slip op. at 32

  Patent outcomesUS 7,544,276 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,544,276
• Bluecatbio Ma Inc. v. Yantai Ausbio Laboratories Co., Ltd.No claims unpatentable
  PTAB · Dec 9, 2021 · PGR2020-00051 · APJ Elizabeth M Roesel · PGR · Final written decision

  Petitioner failed to prove claims 1, 3–5, 7, 10–12, and 14–20 unpatentable because the Gyro Washer was not shown to drive all or nearly all expelled liquid to the drain.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We find that Patent Owner’s additions are supported by the ’063 Patent. Patent Owner directs us to portions of the Specification that discuss immunoassays, magnetic bead assays, and cellular assays, as well as the need to avoid cross-contamination for these types of reactions. PO Resp. 14; Ex. 1001, 1:24–28, 3:43–45; 3:63–66, 4:25–32, 13:25–50, 15:52– 16:2, 19:41–59. We find that these disclosures support Patent Owner’s contention that a POSA would have been aware of the operational requirements of reaction vessel unit washing devices, methods used to cross-contamination. For these reasons, we apply Petitioner’s definition of a POSA as modified by Patent Owner’s additions. Pet. 16; PO Resp. 15.4” slip op. at 11

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

    “We agree with Patent Owner that its proposed construction stays true to the claim language. PO Sur-reply 5. As just discussed, “the expelled liquid on the inner surface of the housing” refers back to an earlier part of the claim that recites that rotating the rotor (referred to in claim 12 as inner surface of the housing. Ex. 1001, 24:5–8, 25:5–7. Claims 1 and 12 recite “the expelled liquid” without any modifier, such as “at least some.” In our view, Patent Owner’s proposed construction is consistent with the claim language because the antecedent for “the expelled liquid” is the liquid that is expelled from the reaction vessel onto the inner surface of the housing, not merely some portion of that liquid. Nothing in the claim language suggests that “the expelled liquid on the inner surface of the housing” is divisible, with some of the liquid being driven by the wind to the drain and some of the liquid not being driven by the wind to the drain. For example, we see no support in the claim language for Petitioner’s argument that “the first expelled milliliter qualifies as ‘liquid . . . expelled,’ and the second milliliter also qualifies as ‘liquid . . . expelled,’ and so on.” Pet. 20 (citing Ex. 1006 ¶ 65). Although “all or nearly all” is not expressly recited in the claim, neither is “some.” As between these two constructions, “all or nearly all” more closely aligns with the language and structure of claims 1 and 12, including the antecedent for “the expelled liquid on the inner surface of the housing,” which in our view refers to the undivided whole of the liquid.6” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “5. Weighing the Evidence For all of the foregoing reasons, we determine that Petitioner has not shown persuasively that the Gyro Washer generates a wind that drives to the drain “all or nearly all of the liquid expelled from the reaction vessel onto the inner surface of the housing,” as required by our claim construction. More particularly, we find that the photos and observations of the Gyro Washer and microplates after completion of a wash cycle, as discussed in subsection 2 above, show that a substantial amount of the liquid expelled from a microplate onto the inner surface of the housing is not driven by the wind to the drain of the Gyro Washer. We find that this evidence outweighs the other evidence relied upon by Petitioner to show that the wind limitation is met, including the videos and observations of the Gyro Washer in operation, as discussed in subsection 1 above, Petitioner’s droplet experiments, as discussed in subsection 3 above, and Petitioner’s bucket experiments, as discussed in subsection 4 above.” slip op. at 48

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

    “dependent claim 10, Petitioner contends that it would have been obvious to use an aspiration pump with the Gyro Washer. Pet. 104–105 (relying on evidence that a Gyro Washer was sold with an aspiration pump). For dependent claims 7 and 17, Petitioner contends that it would have been obvious to modify the Gyro Washer so that the rotor is rotated in a second rotational direction. Pet. 105–108, 114. For method claims 12 and 14–17, Petitioner contends that, even in the absence of Mr. Yagi’s demonstrations of the Gyro Washer at the 2009 and 2010 trade shows, the method of using the Gyro Washer would have been obvious in view of the device itself and that the limitations claims 12 and 14–16 are satisfied by the natural, ordinary, and intended use of the Gyro Washer. Pet. 108–114. Petitioner’s contentions do not remedy the deficiencies in Petitioner’s arguments and evidence addressing the wind limitation, as discussed above. Accordingly, we determine that Petitioner has not met its burden to show that claims 7, 10, 12 and 14–17 would have been obvious in view of the Gyro Washer.” slip op. at 51

  Patent outcomesUS 10,338,063 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 10,338,063
• BASF Corporation v. Ingevity South Carolina, LLCNo claims unpatentable
  PTAB · Sep 9, 2021 · PGR2020-00037 · APJ Julia Heaney · PGR · Final written decision

  Claims 1–10, 14–28, 32–38, 51, 52, 55–57, 59, 64–72, and 76–82 were not shown unpatentable for indefiniteness or obviousness over Hiltzik, Clontz WIPO, and Clontz SAE.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “art include “(1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field.” Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id. Petitioner argues a person of ordinary skill in the art at the time of the invention “would possess at least a B.S. in chemistry or chemical or mechanical engineering and would have at least one year of experience working on control of automotive evaporative emissions,” and “would also understand the chemistry and physics associated with the phenomena of fuel vapor adsorption, desorption, and diffusion.” Pet. 28 (citing Ex. 1003 ¶ 17). Patent Owner does not dispute the level of ordinary skill in the art. We adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’553 patent and the asserted prior art.” slip op. at 11

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Patent Owner and Dr. Rockstraw present peer-reviewed scientific literature demonstrating that gravimetric and volumetric measurement techniques were known to measure equivalent adsorption capacities and were viewed as compatible with each other. See Ex. 2022 ¶¶ 95–107 (addressing Anson7 (Ex. 2007), Belmabkhout8 (Ex. 1021), Zielinski9 (Ex. 2069)). For example, Belmabkhout reported similar results between measurements by gravimetric and volumetric instruments, except at very high pressures. Ex. 1021, 856–57. Zielinski reported “excellent agreement” between volumetric and gravimetric adsorption capacity measurements (Ex. 2069, 5–6); Dr. Zielinski (who oversaw the testing reported by Intertek 7 Anson, A., et al., “Hydrogen adsorption on a single-walled carbon nanotube material: a comparative study of three different adsorption techniques,” Nanotechnology 15 (2004), 1503. 8 Belmabkhout, Y., et al., “High-pressure adsorption measurements. A comparative study of the volumetric and gravimetric methods,” Measurement Science and Technology 15 (2004) 848. 9 Zielinski, J. et al., “High pressure sorption isotherms via differential pressure measurements,” Adsorption 13 (2007), 1–7. in Ex. 1020) also testified that he would expect capacity measurements for either a gravimetric or volumetric technique to yield the same results, or be “superimposable” under ideal conditions, because they represent “the same experimental measured quantities.” Ex. 2026, 52:11–53:7, 54:13–22, 69:12– 70:3, 139:8–19. Petitioner’s argument that these papers are not relevant because they do not address measurements on the adsorption capacity of n-butane (see Pet. Reply 26) is not persuasive, because Petitioner does not direct us to sufficient evidence showing a reason why measurements of n-butane’s adsorption capacity would have been subject to different measurement inconsistencies. Further, Petitioner’s argument about a 3% deviation in results between the measurement techniques reported in Anson and Belmabkhout is not persuasive because the papers’ conclusions suggest a person of ordinary skill in the art would not have seen such a deviation as significant (e.g., Ex. 1021, 849: “we have not observed important discrepancies” between gravimetric and volumetric measurements). Dr. Rockstraw also testifies as to numerous additional texts and standards that confirm persons of ordinary skill in the art understood that gravimetric and volumetric measurement techniques would provide consistent results when proper experimental protocols are followed and the instruments’ accuracy and precision are taken into consideration. See Ex. 2022 ¶¶ 88–91, 119–127. This evidence is essentially unrebutted by Petitioner. We find that the evidence submitted by Patent Owner as to the gravimetric and volumetric measurement techniques demonstrates that they were well established in the art as comparable methods of measuring adsorption capacity, and accordingly, not a basis for determining claim” slip op. at 16

  • ExcludeMotion to exclude, grantedGranted in part

    “Exhibit 2027. Paper 57 (“Pet. Mot.”). We do not discuss or cite Exhibit 2080 or paragraph 39 of Exhibit 2027 in this Decision, and consideration of them played no part in our determinations set forth herein. Because their presence in the record would not affect our analysis in this Decision, we dismiss as moot Petitioner’s motion with respect to these exhibits. B. Patent Owner’s Motion to Exclude Patent Owner filed a motion to exclude Exhibits 1015–1016, 1023– 1025, 1032, 1038–1039, 1042 (certain paragraphs), 1044, 1046–1049, and 1052–1054. Paper 56 (“PO Mot.”). Patent Owner groups these exhibits into four categories, which we apply in discussing the motion below. 1. Patent Owner moves to exclude Exhibits 1015 and 1046 as “irrelevant determinations from other adjudicative bodies regarding different patents.” PO Mot. 1. We do not discuss or cite these exhibits in this Decision, and have not considered them in reaching our decision herein. Because the presence of these exhibits in the record would not affect our analysis in this Decision, we dismiss as moot Patent Owner’s motion with respect to these exhibits. 2. Patent Owner moves to exclude Exhibits 1023, 1024, 1025,” slip op. at 46

  • Disclosure Requirements (§112) › Definiteness (Nautilus)Written description adequateNot shown unpatentable

    “Petitioner has not shown by a preponderance of the evidence that the gravimetric and volumetric methods provide fundamentally different measurements of adsorption capacity. Patent Owner and Dr. Rockstraw present peer-reviewed scientific literature demonstrating that gravimetric and volumetric measurement techniques were known to measure equivalent adsorption capacities and were viewed as compatible with each other. See Ex. 2022 ¶¶ 95–107 (addressing Anson7 (Ex. 2007), Belmabkhout8 (Ex. 1021), Zielinski9 (Ex. 2069)). For example, Belmabkhout reported similar results between measurements by gravimetric and volumetric instruments, except at very high pressures. Ex. 1021, 856–57. Zielinski reported “excellent agreement” between volumetric and gravimetric adsorption capacity measurements (Ex. 2069, 5–6); Dr. Zielinski (who oversaw the testing reported by Intertek 7 Anson, A., et al., “Hydrogen adsorption on a single-walled carbon nanotube material: a comparative study of three different adsorption techniques,” Nanotechnology 15 (2004), 1503. 8 Belmabkhout, Y., et al., “High-pressure adsorption measurements. A comparative study of the volumetric and gravimetric methods,” Measurement Science and Technology 15 (2004) 848. 9 Zielinski, J. et al., “High pressure sorption isotherms via differential pressure measurements,” Adsorption 13 (2007), 1–7. in Ex. 1020) also testified that he would expect capacity measurements for either a gravimetric or volumetric technique to yield the same results, or be “superimposable” under ideal conditions, because they represent “the same experimental measured quantities.” Ex. 2026, 52:11–53:7, 54:13–22, 69:12– 70:3, 139:8–19. Petitioner’s argument that these papers are not relevant because they do not address measurements on the adsorption capacity of n-butane (see Pet. Reply 26) is not persuasive, because Petitioner does not direct us to sufficient evidence showing a reason why measurements of n-butane’s adsorption capacity would have been subject to different measurement inconsistencies. Further, Petitioner’s argument about a 3% deviation in results between the measurement techniques reported in Anson and Belmabkhout is not persuasive because the papers’ conclusions suggest a person of ordinary skill in the art would not have seen such a deviation as significant (e.g., Ex. 1021, 849: “we have not observed important discrepancies” between gravimetric and volumetric measurements). Dr. Rockstraw also testifies as to numerous additional texts and” slip op. at 16

  Patent outcomesUS 10,323,553 not shown unpatentable
  § 103 obviousness§ 112 disclosurecites KSR · Graham · Nautilus
  Patents in suitUS 10,323,553
• Samsung Electronics Co., Ltd. v. Infobridge Pte. Ltd.No claims unpatentable
  PTAB · Apr 23, 2018 · IPR2017-00100 · APJ John P Pinkerton · IPR · Final written decision

  Claims 8 and 9 were not proven unpatentable because Samsung did not establish that WD4 was a prior art printed publication.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986) (citations omitted). Whether a reference is publicly accessible is determined on a case-by-case basis based on the “facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004) (citations omitted). A reference will be considered publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (citations omitted) (GSM standard was “sufficiently accessible, at least to the public interested in the art” (citing In re Hall, 781 F. 2d at 899)). Just as indexing plays a significant role in evaluating whether a reference in a library is publicly accessible, “indexing, ‘[w]hether . . . through search engines or otherwise,’ [] is also an important question for determining if a reference stored on a given website in cyberspace is publicly accessible.” Blue Calypso LLC v. Groupon Inc., 815 F.3d 1331, 1349 (Fed. Cir. 2016) (citing Voter Verified, Inc. v. Premier Election Sols., Inc., 698 F.3d 1374, 1381 (Fed. Cir. 2012)). “[A] printed publication need not be easily searchable after publication if it was sufficiently disseminated at the time of its publication.” Suffolk Technologies, LLC v. AOL Inc., 752 F.3d 1358, 1365 (Fed. Cir. 2014). Whether a reference qualifies as a printed publication is a legal conclusion based on underlying factual determinations. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). slip op. at 13

  Patent outcomesUS 8,917,772 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 8,917,772
• Samsung Electronics Co., Ltd. v. Infobridge Pte. Ltd.No claims unpatentable
  PTAB · Apr 23, 2018 · IPR2017-00099 · APJ John P Pinkerton · IPR · Final written decision

  Claims 1–7 were not proven unpatentable because Samsung did not establish that WD4 was a prior art printed publication under § 102(b).

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “evidence does not establish WD4 was indexed in a manner that one ordinarily skilled in the art, exercising reasonable diligence, could locate it. See Response 45. There is no evidence that the JCT-VC site provided users sufficient guidance on finding documents of interest. Importantly, there is no evidence that one could search for or locate WD4 based on its subject matter. Although the Torino document register contains the number, title, and source (i.e, authors’ names) of each document, the subject of the document is not listed or identified. See In re Cronyn, 890 F.2d 1158, 1160– 61 (Fed. Cir. 1989) (finding references were not publicly accessible, despite the use of indexing, because the references were indexed only by title and author’s name, rather than by subject). Furthermore, identifying a meeting location was key to navigating the JCT-VC site; however, there is no evidence showing that persons of skill in the art outside of JCT-VC would have had any knowledge or familiarity with the cities in which the JCT-VC meetings were conducted or that the names of the cities were helpful in any respect in locating a document on the site. For these reasons, the evidence does not support the conclusion by a preponderance of the evidence that persons interested and ordinarily skilled in the art at the time of the invention would have been aware of the JCT-VC document repository site, or that, if they were aware of the site, would have been able to locate the WD4 document relied upon by Samsung.” slip op. at 19

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Mr. Bross’s testimony is conclusory and insufficiently factually supported. We understand Mr. Bross to be testifying in this regard as a fact witness pursuant to Federal Rule of Evidence 602, rather than as an expert witness pursuant to Federal Rule of Evidence 702. Under Rule 602, a fact witness may testify as to a matter only if “evidence is introduced sufficient to support a finding that the witness has personal knowledge of the matter.” Fed. R. Evid. 602. Here, Mr. Bross’s testimony is based on his “knowledge and recollection” and “the prominence of the JCT-VC” in the video coding industry. However, the particular factual knowledge on which the testimony is based is not described. Similarly, the “prominence” of the JCT-VC is nothing more than an unsupported assumption. We also find Mr. Bross has not been shown to have the requisite personal knowledge to testify about persons “who would regularly visit the JCT-VC site.” Even if we accepted Mr. Bross’s premise of the “prominence of the JCT-VC,” we would not find that to be a sufficient basis for Mr. Bross to reliably testify about persons “regularly visit[ing]” the JCT-VC site.” slip op. at 16

  Patent outcomesUS 8,917,772 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 8,917,772
• Daicel Corporation v. Celanese International CorporationNo claims unpatentable
  PTAB · Jun 23, 2016 · IPR2015-00171 · APJ Linda M Gaudette · IPR · Final written decision

  Claims 42–44, 47–51, 53, and 55–57 were not shown unpatentable: the ’095 patent did not establish the required amount of DME, and JP ’712 did not cure that deficiency.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “Based on our analysis of the intrinsic and extrinsic evidence, we agree with Patent Owner that a person of ordinary skill in the art would understand the ’507 patent to speak in terms of effects, not molecules. See PO Resp. 4– 5; Tr. 41:8–16. We, therefore, construe the recitation “distilling [a mixture comprising water, acetic acid, methyl iodide, methyl acetate, methanol, and at least one PRC] to separate the mixture into a plurality of streams, at least one of said streams being a PRC enriched overhead stream comprising dimethyl ether” in step (a) of claim 42 as requiring the presence of dimethyl ether in the PRC enriched overhead stream in an amount that one of ordinary skill in the art would recognize as being more than trace or insubstantial. Such amount would be, for example, more than the amount produced in a conventional, prior art, low water carbonylation process that used the same initial reactor contents and conditions, and the same processing equipment. We further interpret this language as requiring the presence of DME in the PRC enriched overhead stream in an amount sufficient to cause (1) a reduction in the solubility of methyl iodide in water during the extraction of the PRC enriched overhead stream (claim 42, step (b)) and (2) an increase in the amount of methyl iodide recoverable during a subsequent extraction of the raffinate stream, which increase in recoverable methyl iodide would be recognized as more than insubstantial by the ordinary artisan.” slip op. at 42

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Mr. Jones and Dr. Porcelli agree the description in the ’507 patent implies that the inventive process is a low water process. Ex. 1039 ¶ 52; Ex. 2029 ¶ 26. As discussed in Section VI. B., below, these experts further agree that there are differences in the reactants and reaction products produced in high and low water processes. We find both Mr. Jones and Dr. Porcelli are qualified to give an opinion as to the level of ordinary skill in the art. Accordingly, for purposes of this proceeding we adopt Mr. Jones’s definition of the level of ordinary skill in the art, and add that the ordinary artisan also would have had a specific understanding of the low water carbonylation process for production of acetic acid and its implementation on an industrial scale.” slip op. at 27

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “We are not persuaded that Mr. Jones’s calculations provide a reliable method of determining the amount of DME present in a methanol carbonylation process. Mr. Miura and Dr. Porcelli agreed that it is extremely difficult to anticipate the presence or amount of a component such as DME in a methanol carbonylation system such as the one described in the ’095 patent. See Ex. 1046, 281:14–22; Ex. 2029 ¶ 112. Dr. Porcelli testified that Mr. Jones’s estimates of DME content in the ’095 patent Example were based on numerous assumptions that rendered his estimations of reactor and distillation overhead DME concentrations meaningless. See Ex. 2029 ¶¶ 137, 140, 151. Dr. Porcelli testified, for example, that it was “improper and incorrect” for Mr. Jones “to fail to account for DME lost with the vent stream in the reactor, especially because of the high volatility of DME.” Id. ¶ 148. Mr. Miura’s measured amount of DME present in the first overhead in Experiment 1 was less than half the amount Mr. Jones calculated would be present, supporting Dr. Porcelli’s testimony that the loss of DME via the vents would have had a marked impact on the actual amount of DME sent to distillation column 40 (from which the second overhead stream is produced) in the ’095 patent Example. See Ex. 1060 ¶ 153 (“(103 ppm (calc.) vs. 48 ppm (actual)) is likely to due to loss of DME with the vent gas from the splitter condenser, due to the very low boiling point of DME”); see also Ex. 1039 ¶ 99; Ex. 1060 ¶ 121 (wherein Mr. Jones agreed that the loss of DME from the vent stream in the separator (or decanter) after splitter column 14 in the ’095 patent process would be substantial).” slip op. at 56

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

    “In sum, we determine Petitioner has failed to meet its burden to show, by a preponderance of the evidence, that the ’095 patent describes a process that inherently results in dimethyl ether in a PRC enriched overhead stream (produced by distilling a mixture comprising water, acetic acid, methyl iodide, methyl acetate, methanol, and at least one PRC) in an amount that is (1) more than trace or insubstantial, and (2) sufficient to cause (a) a reduction in the solubility of methyl iodide in water during extraction of the PRC enriched overhead stream and (b) an increase in the amount of methyl iodide recoverable during a subsequent extraction of the raffinate stream, as required by the broadest reasonable interpretation of claim 42. Absent from the record is any evidence that DME is present in the second overhead in the ’095 patent Example in the amount required by independent claim 42 and its dependent claims 43, 44, 47–51, 53, and 55–57. Petitioner’s challenge with respect to claim 57 is based on obviousness over the combination of the ’095 patent and JP ’712. Petitioner relies on JP ’712 for a teaching that “methyl iodide concentration can be controlled by extraction temperature, . . . and that the concentration[] recited in [claim 57 is] well known in the art.” Pet. 55. Petitioner has not explained how JP ’712 cures the deficiency in the ’095 patent’s failure to describe step (a) of claim 42. Accordingly, we likewise determine Petitioner has failed to meet its burden to show unpatentability of claim 57 by a preponderance of the evidence. We conclude Petitioner has failed to meet its burden to show unpatentability of claims 42–44, 47–51, 53, and 55–57 of the ’507 patent.” slip op. at 59

  Patent outcomesUS 8,076,507 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,076,507

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.