- Shenzhen Xinzexing E-Commerce Co., Ltd. v. Shenzhen Carku Technology Co., Ltd.All claims unpatentablePTAB · Jul 24, 2025 · IPR2024-00222 · APJ Garth D Baer · IPR · Final written decision
Claims 1–3, 6–23, and 25–33 are unpatentable, including as anticipated by Chen and as obvious over the Chen and Inskeep combinations.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“have at least a Bachelor’s Degree in Electrical Engineering and at least two years of experience in the field of electrical engineering and specifically power supply management such as battery charging system design.” PO Resp. 31. Petitioner presents a similar formulation. Pet. 10. Although we do not discern any meaningful distinction between the parties’ formulations, we adopt Patent Owner’s description of a person of ordinary skill as it is consistent with the prior art and challenged patent’s specification. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“a first current through one or more output ports of the at least one output port in a first operating mode,” and “is configured to output a second current capable of starting a vehicle engine through the pair of output terminals in a second operating mode.” Ex. 1001, 8:25–34. Claim 21 has similar first and second operating-mode limitations. Id. at 9:40–46. Patent Owner proposes that “[t]he proper construction for ‘first operating mode’ is ‘an operating mode of the portable backup charger wherein the battery pack is configured to output a first current through one or more output ports of the at least one output port, and outputting a second current capable of starting a vehicle engine through the pair of output terminals is inhibited.’” PO Resp. 25. Similarly, Patent Owner argues “[t]he proper construction for ‘second operating mode’ is ‘an operating mode of the portable backup charger wherein the battery pack is configured to output a second current capable of starting a vehicle engine through the pair of output terminals, and outputting a first current through one or more output ports of the at least one output port is inhibited.’” Id. at 27. Patent Owner asserts that claim differentiation supports its construction because dependent claim 3 recites “a third operating mode for outputting the first current and the second current simultaneously,” and “if the battery pack could output the first current and the second current simultaneously in the first operating mode, then there would be no difference between the claimed first operating mode and the claimed third operating mode.” Id. at 26. We disagree with Patent Owner’s constructions because, as Petitioner explains, they wrongly import current-inhibiting limitations beyond the plain language in the claim. Pet. Reply 1. Nothing in the at-issue language addresses inhibiting current. In addition, the claimed first and third operating modes are still distinct without importing additional limitations because outputting just the first current is sufficient for the first operating mode, but not for the third. In other words, whereas the third operating mode requires simultaneity, the first and second merely permit it. Thus, claim differentiation does not support Patent Owner’s construction. Last, although Patent Owner asserts that its construction “is consistent with the specification,” nothing in the cited passages describes inhibiting current. Prelim. Resp. 26 (citing Ex. 1001, 4:30–33, 5:30–33, 5:58–62). Instead, the specification characterizes the modes solely by what the portable charger “can output,” not what is inhibited. Ex. 1001, 4:30–33, 5:30–33, 5:58–62. Thus, we decline to read the first and second operating modes to require the current-inhibiting features that Patent Owner asserts.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Patent Owner argues the two current paths are not different because Chen’s Figure 1 shows they overlap between the lithium battery and the output control circuit and “only diverge when making the connection to the output control circuit.” PO Resp. 32. We disagree. First, Patent Owner’s argument is based on a claim construction for “different” current paths that we do not adopt for the reasons above. In addition, we agree with Petitioner that Chen shows the claimed different current paths even under Patent Owner’s construction. Pet. Reply 8–12. Specifically, as Petitioner explains, a skilled artisan would recognize that Chen’s physical circuits are depicted in Figures 4–7, rather than in Chen’s Figure 1, which is merely a “block diagram of the principle of present invention.” Id. at 9; Ex. 1006 ¶ 15. Unlike Figure 1, Chen’s Figures 5, 6, and 7 show current paths between the battery and USB outputs, and between the battery and DC multi-gear output, that do not overlap with the high current path shown in Chen’s Figure 4. Pet. 9–12. Based on Petitioner’s analysis and for the reasons above, we agree with Petitioner that Chen teaches the claimed “pair of output terminals coupled to the battery pack and having a current path to the battery pack different from that of the at least one output port to the battery pack.”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Patent Owner asserts one skilled in the art would not have added White’s fuse to Chen because doing so was “unnecessary” given Chen’s built-in relay K1 that already provides protection. PO Resp. 42–43. We disagree because, as Petitioner notes, “the Petition cited ample evidence that both layers of over current prevention provide improved safety and protection to the battery.” Pet. Reply 17 (citing Pet. 31–33); see also, e.g., Pet. 31 (describing “advantageously reduc[ing] the likelihood of damage”), id. at 32 (describing “the additional benefit of a safety fuse along a jumper cable to promptly cut off current in the event of a short circuit” and “more simplified maintenance and repair”). Given Petitioner’s unrebutted rationale, Petitioner has articulated sufficient reasoning with rational underpinning to support the legal conclusion that adding White’s fuse and polarity-protection connector to Chen’s power-supply system would have been obvious to one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Other than the arguments addressed above, Patent Owner does not additionally challenge Petitioner’s obviousness showing based on Chen and White. We have reviewed Petitioner’s arguments and evidence and, based on that analysis, we find Petitioner has shown by a preponderance of the evidence that claims 1, 2, 6–9, 11–14, 16–22, 25–28, and 30–33 would have been obvious over Chen and White.” slip op. at 15
Patent outcomesUS 9,643,506 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,643,506 - Uatp IP LLC v. Slick Slide LLCInstitutedPTAB · Apr 8, 2025 · PGR2024-00054 · APJ Julia Heaney · PGR · Institution
The Board instituted PGR on claims 1–17 and 22–28 and all asserted grounds, finding a sufficient likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of a post-grant review is authorized by statute when “the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). Upon consideration of the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated that it is more likely than not that at least one claim challenged in the Petition is unpatentable. Further, Patent Owner has not persuaded us that it is appropriate to exercise our discretion not to institute review. Accordingly, we institute a post-grant review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Skill levelSkill level patent owner adoptedOther
“On this record, we do not find Patent Owner’s proposed experience level of at least five years in measurement and analysis of coefficient of friction to be supported. As to the necessity of experience in textile engineering and fiber science, Patent Owner’s position, although not supported by declarant analysis of the factors listed above, is consistent with the disclosure of the ’854 patent, which describes features of a mesh layer in textile and fiber terms. See e.g., Ex. 1001, 10:17–11:14, 12:65–13:8, 14:20–24. On the whole, however, we do not discern on this record how specific experience in textile engineering and fiber science of a person of ordinary skill would materially alter the outcome at this stage of the proceeding. For purposes of this decision only, we apply Patent Owner’s proposed definition of a person of ordinary skill in the art, except for the requirement of five years of experience in measurement and analysis of coefficient of friction. The level of skill in the art remains an open issue in this proceeding. Further submissions by the parties may include argument and evidence that would assist in the resolution of this issue at the close of trial.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends “no formal claim construction is necessary in this proceeding.” Pet. 10; Reply 1, 4. Patent Owner contends the terms “mesh layer” and “coefficient of friction” require construction. Prelim. Resp. 14–16; Sur-reply 2–5. We have considered the parties’ arguments and discuss them below with regard to each of the terms Patent Owner contends should be construed. Because our determination that Petitioner demonstrates at least one challenged claim meets the threshold for institution (see SAS Inst., 138 S. Ct. at 1359–60) is not based on construing the term “mesh layer” or “coefficient of friction,” we determine we need not construe either claim term at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). As further discussed below, we invite the parties to address claim construction at trial.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“We agree with Petitioner that the ’854 patent specification does not include clear and explicit lexicography or a disclaimer that would support requiring “coefficient of friction” to be determined by a specific ASTM test method. The portion of the specification Patent Owner asserts as a definition of “coefficient of friction” (see Ex. 1001, 11:31–42) is a description of an embodiment; we find it does not express patentee intent to redefine the term. Further, the statement that “the coefficient of friction … may be determined using the … ASTM D1894 standard test method” (id. at 11:32–35) indicates that use of that specific test method is optional. Accordingly, in the absence of patentee lexicography or disavowal, we do not limit the scope of the term “coefficient of friction” to require that it be measured by a specific ASTM standard. Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (“Absent lexicography or disavowal, we do not depart from the plain meaning of the claims.”); In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). We note that the ’854 patent specification sets forth a definition for the coefficient of friction between the surfaces of the mesh material and the slide surface. Ex. 1001, 4:38–46. As stated above, however, we do not expressly construe any claim term at this stage of the proceeding. Should the parties address the construction of “coefficient of friction” at trial, we will make a determination after the close of evidence and any hearing.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,998,854 - Posco Co., Ltd. v. ArcelormittalInstitutedPTAB · Mar 18, 2025 · IPR2024-01377 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–25 on all petitioned grounds, finding a reasonable likelihood of success, including that GMW14400 likely qualifies as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review pursuant to 35 U.S.C. § 6(b). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted 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 Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). 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 1–25 of the ’227 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“efficiency and integrity of the system are best served by denying or instituting review.” Fintiv at 6. Here, Fintiv factors one and five are neutral, factors two and three favor discretionary denial, factor four strongly weighs against discretionary denial, and favor six weighs against discretionary denial. The integrity of the system will benefit from institution because of the strong merits the Petition presents (factor six), and the ITC Investigation will not resolve these merits (factor four). This outweighs any potential inefficiency as indicated by factors two and three. We further note that any inefficiency in resolving the grounds the Petition presents is mitigated by the stay of the district court action (factor one). We, thus, decline to exercise discretionary denial under 35 U.S.C. § 314(a).” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“After considering the record as a whole, we determine that Petitioner has adequately demonstrated that the Office erred in a manner material to the patentability of challenged claims. As we explain in Section III(G), infra, Petitioner’s challenges to the ’227 patent appear strong based on the current record, and Patent Owner’s present arguments to the contrary are weak. Given the strength of Petitioner’s challenges on the present record, this is not a situation where we would say that “reasonable minds can disagree regarding the purported treatment of the art,” and we therefore determine that the Examiner erred by not considering the art in substantially the combination Petitioner proposes. Where Patent Owner states that “evidence that the Examiner did not consider these references in combination” is lacking (PO Sur-Reply 5), we disagree. If the Examiner considered these references in combination, the Examiner would have, given the apparent strength of Petitioner’s position on the merits on this record, issued a rejection. The lack of a rejection based on the combination proposed in the Petition provides some evidence that the Examiner did not consider these references in combination (because the lack of such a rejection raises the likelihood that the Examiner did not make such a consideration). 3. Conclusion Because Petitioner adequately made a showing of material error, we decline to exercise discretion not to institute inter partes review under 35 U.S.C. § 325(d). See Advanced Bionics, LLC, IPR2019-01469, Paper 6 at 8–9.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,326,227 - Posco Co., Ltd. v. ArcelormittalInstitutedPTAB · Mar 18, 2025 · IPR2024-01376 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 1–30 on all petitioned grounds, finding a reasonable likelihood of success, including that GMW14400 likely qualifies as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the reasons above, we determine that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail with respect to challenged claims 1–30 of the ’602 patent. At this juncture in the proceeding, we have not made a final determination with respect to the patentability of the challenged claims, or with respect to claim construction. V. ORDER For the foregoing reasons, it is ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–30 of the ’602 patent is hereby instituted with respect to all grounds of unpatentability set forth in the Petition; and” slip op. at 36
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“efficiency and integrity of the system are best served by denying or instituting review.” Fintiv at 6. Here, Fintiv factors one and five are neutral, factors two and three favor discretionary denial, factor four strongly weighs against discretionary denial, and favor six weighs against discretionary denial. The integrity of the system will benefit from institution because of the strong merits the Petition presents (factor six), and the ITC Investigation will not resolve these merits (factor four). This outweighs any potential inefficiency as indicated by factors two and three. We further note that any inefficiency in resolving the grounds the Petition presents is mitigated by the stay of the district court action (factor one). We, thus, decline to exercise discretionary denial under 35 U.S.C. § 314(a).” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“After considering the record as a whole, we determine that Petitioner has adequately demonstrated that the Office erred in a manner material to the patentability of challenged claims. As we explain in Section III(G), infra, Petitioner’s challenges to the ’602 patent appear strong based on the current record, and Patent Owner’s present arguments to the contrary are weak. Given the strength of Petitioner’s challenges on the present record, this is not a situation where we would say that “reasonable minds can disagree regarding the purported treatment of the art,” and we therefore determine that the Examiner erred by not considering the art in substantially the combination Petitioner proposes. Where Patent Owner states that “evidence that the Examiner did not consider these references in combination” is lacking (PO Sur-Reply 5), we disagree. If the Examiner considered these references in combination, the Examiner would have, given the apparent strength of Petitioner’s position on the merits on this record, issued a rejection. The lack of a rejection based on the combination proposed in the Petition provides some evidence that the Examiner did not consider these references in combination (because the lack of such a rejection raises the likelihood that the Examiner did not make such a consideration). 3. Conclusion Because Petitioner adequately made a showing of material error, we decline to exercise discretion not to institute inter partes review under 35 U.S.C. § 325(d). See Advanced Bionics, LLC, IPR2019-01469, Paper 6 at 8–9.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,961,602 - Posco Future M Co., Ltd. v. Camx Power LLCInstitution deniedPTAB · Feb 5, 2025 · IPR2024-01229 · APJ Jane E Inglese · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was anticipated or obvious over the asserted references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “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.” 35 U.S.C. § 314(a).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“First, we look to the words of the claims themselves . . . to define the scope of the patented invention.”). Claim 1 recites a particle that comprises (1) a plurality of crystallites comprising (a) a first composition (i) having a layered α- NaFeO2-type structure and (ii) comprising lithium, nickel, and oxygen; and (2) a grain boundary between adjacent crystallites of the plurality of crystallites and comprising (a) a second composition (i) having the layered α-NaFeO2-type structure, a cubic structure, or a combination thereof, and (ii) a concentration of cobalt in the grain boundary greater than a concentration of cobalt in the crystallites. The plain language of claim 1 thus indicates that the grain boundary has a composition (i.e., a “second composition”) distinct from that of the adjacent crystallites (i.e., a “first composition”), and that the grain boundary may have the same structure (i.e., a layered α-NaFeO2-type structure) or a different structure (i.e., a cubic structure, or a combination of a cubic structure and a layered α-NaFeO2-type structure) than the adjacent crystallites. The plain language of claim 1 thus structurally distinguishes the grain boundary from the adjacent crystallites by specifying that the grain boundary has a concentration of cobalt greater than that of the concentration of cobalt in the crystallites.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableNot shown unpatentable
“Petitioner, however, does not provide any evidence to establish that any such identity of empirical formulas means that Lampe-Onnerud’s cathode material necessarily has the same microstructure as the particle of claim 1. In particular, even if the empirical formula of Lampe-Onnerud’s core material is the same as that of the ’317 patent’s first composition, Petitioner does not provide evidence establishing that it necessarily follows that Lampe-Onnerud’s core is a polycrystalline material having a plurality of crystallites separated by grain boundaries between adjacent crystallites. Nor does Petitioner provide evidence establishing that it necessarily follows from any identity between the empirical formula of Lampe-Onnerud’s coating material and the ’317 patent’s second composition that Lampe-Onnerud’s coating material necessarily is present in grain boundaries at a higher concentration than in crystallites, assuming that Lampe-Onnerud’s material is comprised of a plurality of crystallites having grain boundaries between adjacent crystallites. Furthermore, although Petitioner’s declarant, Dr. Aurbach, indicates that Lampe-Onnerud’s process “begins with a conventional lithium nickel oxide-base material . . . known to be comprised of secondary articles having agglomerated primary particles and grain boundaries,” Dr. Aurbach does not provide any objective evidence to substantiate this asserted knowledge in the art. Ex. 1002 ¶ 110. We, therefore, accord little weight to Dr. Aurbach’s opinion on this issue. 37 C.F.R. § 42.65(a) (opinion testimony that does not disclose underlying facts or data “is entitled to little or no weight”); Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“[W]hat the Board consistently did was accord little weight to broad conclusory statements that it determined were unsupported by corroborating references. It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”).” slip op. at 18
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Furthermore, although Petitioner’s declarant, Dr. Aurbach, indicates that Lampe-Onnerud’s process “begins with a conventional lithium nickel oxide-base material . . . known to be comprised of secondary articles having agglomerated primary particles and grain boundaries,” Dr. Aurbach does not provide any objective evidence to substantiate this asserted knowledge in the art. Ex. 1002 ¶ 110. We, therefore, accord little weight to Dr. Aurbach’s opinion on this issue. 37 C.F.R. § 42.65(a) (opinion testimony that does not disclose underlying facts or data “is entitled to little or no weight”); Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“[W]hat the Board consistently did was accord little weight to broad conclusory statements that it determined were unsupported by corroborating references. It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”).” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,391,317 - Formfactor, Inc. v. Technoprobe S.P.A.InstitutedPTAB · Jan 24, 2025 · IPR2024-00933 · APJ Andrew L Nalven · IPR · Institution
Instituted IPR on all challenged claims, 1–23, and all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and associated evidence, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing in demonstrating the unpatentability of claims 1–23 of the ’885 patent. Accordingly, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“engineering, and materials engineering or another field applicable to wafer probing technology with three to five years of professional experience in designing and/or using probe technologies, or an equivalent level of skill, knowledge, and experience.” Pet. 22 (citing Ex. 1003 ¶¶ 50–53). Patent Owner does not offer a position as to the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of a POSITA, which is consistent with the level of skill reflected in the Specification and asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). After reviewing the record, at this stage, we determine that only claim 14 requires express construction for purposes of this Decision.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Further, we interpret claim 14, for purposes of this Decision, as contemplated by Petitioner such that the first and second types of signals may be the same type of signal. Pet. 26. In other words, the first and second type of signal may both be ground or power. This construction appears to have support within the ’885 patent. For example, the ’885 patent describes an embodiment where “at least two conductive portions . . . of the guide 40 are electrically connected to each other by means of a conductive track 39 in the guide, so as to be able to electrically connect to each other groups of contact elements apt to carry a same type of signal.” Ex. 1001, 16:49–59. This construction also appears consistent with parent claim 1, which recites “the first and second types of signals chosen between ground signals and power signals.” The parties are invited to address any claim construction issues during the course of trial.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,035,885 - Sma Solar Technology America, LLC v. Tigo Energy, Inc.No claims unpatentablePTAB · Oct 28, 2024 · IPR2023-00879 · APJ Elizabeth M Roesel · IPR · Final written decision
Claims 1–20 were not shown unpatentable because Mieth does not disclose the claimed micro-controller, and the Petition did not present the reply’s new obviousness theory.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) “would have had a bachelor’s degree in electrical engineering, or a similar discipline and at least two years of design experience with circuit design.” Pet. 22. Patent Owner does not dispute Petitioner’s contention, except to add that “a person may qualify as a POSITA with more education and less experience or vice versa.” PO Resp. 5. We apply Petitioner’s articulation of the level of ordinary skill in the art, as modified by Patent Owner, and further modified to omit “at least,” which expands the range of experience with no upper bound, thus encompassing a person of extraordinary skill in the art. We determine that the foregoing is consistent with the level of skill in the art at the time of the” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In an inter partes review, we apply the same claim construction standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We determine that no claim terms require express construction for purposes of resolving the controversy.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“The “at once envisage” standard does not permit us to fill in a missing claim limitation for purposes of anticipation. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 851 F.3d 1270, 1274 (Fed. Cir. 2017). Petitioner invites the same error the Federal Circuit identified in Nidec, where the Board erred by holding that “anticipation can be found even when a prior art reference fails to disclose a claim element so long as a skilled artisan reading the reference would ‘at once envisage’ the claimed arrangement.” Id. (citing Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015)). As our reviewing court explained, “Kennametal does not stand for the proposition that a reference missing a limitation can anticipate a claim if a skilled artisan viewing the reference would ‘at once envisage’ the missing limitation.” Id.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Petitioner’s obviousness challenge relies on the same argument and evidence that it presents for anticipation of claim 1. Pet. 26 (section VII.A.1.iv addressing anticipation and the micro-controller limitation of claim 1); Pet. 50, 60, 71 (cross-referencing section VII.A.1.iv for obviousness challenge to independent claims 1, 10, and 18). The Petition presents reasons to combine Mieth and Balogh. Pet. 51–55. But Petitioner’s obviousness rationale does not modify Mieth’s load 20, which remains Pet. 52 (relying on “load 20 of Mieth” as part of the combination with Balogh). The Petition presents no rationale for modifying or replacing Mieth’s load 20 and presents no argument or evidence that it would have been obvious to modify Mieth’s circuit by adding or substituting a micro-controller. In short, the Petition and Holberg Declaration assert that the micro- controller limitation is expressly disclosed in Mieth and do not present or support any obviousness rationale for that limitation. Pet. 26, 50–55; Ex. 1007 ¶ 105. Petitioner presents a new theory of unpatentability in the Reply, arguing that “the differences between Mieth’s ‘load 20’ and the claimed micro-controller are such that the subject matter as a whole would have been obvious to a [POSITA].” Pet. Reply 11–19 (reformatted). More particularly, Petitioner argues that “a [POSITA] understands that a micro-controller is a typical type of load that could be substituted into and replace whatever type of load is being employed by Mieth.” Id. at 17 (citing Exs. 1012, 1014, 1022). The Petition does not present that argument.” slip op. at 23
Patent outcomesUS 9,584,021 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,584,021 - PTAB · Jul 31, 2024 · IPR2024-00222 · APJ Garth D Baer · IPR · Institution
The Board instituted inter partes review of claims 1–3, 6–23, and 25–33 on all petition grounds because Chen showed a reasonable likelihood of anticipating claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“21 (quoting Ex. 1006 ¶ 26)). We have reviewed Petitioner’s arguments and the underlying evidence cited in support and are persuaded that, at this stage, Petitioner sufficiently demonstrates a reasonable likelihood of succeeding in its anticipation challenge to claim 1 based on Chen.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Specifically, Petitioner asserts Chen’s lithium battery teaches the claimed battery pack, Chen’s USB outputs 8, 9, and 10 teach claim 1’s first-current output port, and Chen’s high-current, car-battery output unit 11 teaches claim 1’s pair of output terminals capable of starting a vehicle. Id. at 13–20. Further, Petitioner corresponds Chen’s “electronics of ‘U3B and D12’” that “form ‘an output power limit control’” to the claimed first protection circuit (Id. at 20 (quoting Ex. 1006 ¶ 26)) and Chen’s relay K1 that “is automatically turned off to prevent long-term high-current output” to the claimed second protection circuit configured to prevent overcurrent (Id. at 21 (quoting Ex. 1006 ¶ 26)). We have reviewed Petitioner’s arguments and the underlying evidence cited in support and are persuaded that, at this stage, Petitioner sufficiently demonstrates a reasonable likelihood of succeeding in its anticipation challenge to claim 1 based on Chen.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“B. CLAIM CONSTRUCTION Petitioner asserts “that no claim elements need a formal construction.” Pet. 10. We agree that we need not construe any claim limitations to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. LEVEL OF SKILL IN THE ART Petitioner contends a person of ordinary skill in the art “would have had at least a Bachelor’s of Science in electrical engineering or physics and at least two years of experience in circuit design for portable electronics.” Pet. 10 (citing Ex. 1003 ¶ 17). For the purpose of our decision, we adopt Petitioner’s description.” slip op. at 5
Claim construction§ 102 anticipationPatents in suitUS 9,643,506 - PTAB · May 9, 2024 · IPR2024-00084 · APJ Donna M Praiss · IPR · Institution
The Board instituted IPR on claims 1–3 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been shown obvious.
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 ’484 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 › Fintiv (parallel litigation)Denied
“Sotera Wireless, Inc., 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 same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Guidance Memo explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB. . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. Here, in an email to Patent Owner, Petitioner “stipulates that if the PTAB institutes IPR, Structural Wrap will not pursue in [the Florida Litigation] the same grounds asserted in the petition, or any grounds that could have reasonably been raised in the petition.” Ex. 1022, 1.” slip op. at 12
- Adverse judgmentDecided for petitioner
“Patent Owner’s argument is not persuasive because the cited discussion in the prosecution history does not relate to the challenged claims in this proceeding. Pages 25–26 of Exhibit 2008 correspond to the Declaration of Christopher Mouriz (“Mouriz Declaration”). The Mouriz Declaration relates to claim language that “recites attaching the construction material to a specific component of a roof, namely, the vertical, outward facing [fascias] of the eaves of the roof.” Ex. 2008, 25 ¶ 7. The Mouriz Declaration explains that “the roof component to which a waterproofing membrane is attached is not recognized as a particular parameter that can be experimented with, in order to increase or optimize the waterproofing process in a structural waterproofing system.” Id. at 26 ¶ 8. Thus, the claim language discussed in the Mouriz Declaration relates to attaching construction material specifically to “vertical, outward facing facias of the eaves of the roof.” Id. at 25 ¶ 7. There is no discussion of wrapping battens. Pages 40–41 of Exhibit 2008 correspond to a Response to Office Action wherein the applicant distinguishes the ’554 application claims over prior art references cited by the Examiner, namely, Lennox and Wiki. Ex. 2008, 40–41. The applicant argues that “neither Lennox nor Wiki discloses attaching the construction material that was rolled in the end of the strip to the vertical, outward-facing fascia of the eaves of the roof, as claimed by Applicant.” Ex. 2008, 41 (emphasis original). Again, the claim limitation at issue, which Patent Owner directs us to, relates to the location for attaching construction material, namely, vertical outward-facing fascia. We see no similar limitation in the challenged claims. We also note that Petitioner does not rely on Lennox and Wiki in this proceeding. Accordingly, we are not persuaded that Petitioner should be estopped from arguing that the challenged claims of the ’484 patent are obvious based on arguments presented to the Office concerning claims and references that are not involved in this proceeding.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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 encourage the parties to further discuss an express construction for “sheet” during trial if they choose.” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,168,484 - Sma Solar Technology America, LLC v. Tigo Energy, Inc.Rehearing deniedPTAB · Apr 2, 2024 · IPR2023-01175 · APJ Kristina M Kalan · IPR · Rehearing
The Board denied SMA’s rehearing request, leaving institution denied for claims 1–20 because the request showed no overlooked matter, misapplication of law, or abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Rule 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, a reply, or a sur-reply. 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence. Moreover, “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference.”). Our Institution Decision analyzed Petitioner’s arguments and evidence, and determined that Petitioner provided no persuasive argument that a person of ordinary skill in the art would have understood that Mieth’s load 20 is a micro-controller—i.e., that the claimed micro-controller reads onto Mieth’s load 20. Inst. Dec. 11–12 (citing Ex. 1014, 1180, Fig. 5; Ex. 1007 ¶¶ 102–103). The Request, as did the Petition, misapplies the anticipation analysis by arguing that a micro-controller is a load, rather than persuasively arguing that Mieth’s load is the claimed micro-controller. Id. at 10–12; Req. 8. None of Petitioner’s evidence or arguments explain why a person of ordinary skill in the art would have understood that load 20 disclosed in Mieth is a micro-controller. As such, Petitioner has not shown any material error in our decision that Petitioner did not demonstrate a reasonable likelihood of anticipation by Mieth.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“reads on the micro-controller recited in the claims of the ’848 patent” (Req. 6), the test for anticipation is not whether the prior art reads on the claims, but rather whether the claims read on the prior art. See Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999) (“Anticipation of a patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference.”). Our Institution Decision analyzed Petitioner’s arguments and evidence, and determined that Petitioner provided no persuasive argument that a person of ordinary skill in the art would have understood that Mieth’s load 20 is a micro-controller—i.e., that the claimed micro-controller reads onto Mieth’s load 20. Inst. Dec. 11–12 (citing Ex. 1014, 1180, Fig. 5; Ex. 1007 ¶¶ 102–103). The Request, as did the Petition, misapplies the anticipation analysis by arguing that a micro-controller is a load, rather than persuasively arguing that Mieth’s load is the claimed micro-controller. Id. at 10–12; Req. 8. None of Petitioner’s evidence or arguments explain why a person of ordinary skill in the art would have understood that load 20 disclosed in Mieth is a micro-controller. As such, Petitioner has not shown any material error in our decision that Petitioner did not demonstrate a reasonable likelihood of anticipation by Mieth. slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“D. Petitioner’s Section 103 Argument Petitioner argues throughout the Request that Mieth also discloses the “micro-controller” limitation under 35 U.SC. § 103. See Req. 7, 9–11, 13– 15. As explained above, however, the Request does not identify any matters that the Board misapprehended or overlooked. We addressed Petitioner’s obviousness arguments in our Institution Decision, and determined that those arguments failed to demonstrate a reasonable likelihood that Petitioner would prevail on its arguments that Mieth and Balogh, or Mieth, Balogh, and Liu, teach or suggest the claimed “micro-controller” limitation. Inst. Dec. 13–15.” slip op. at 8
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,966,848
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.