- 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 - 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 - 3M Company v. Bay Materials, LLCAll claims unpatentablePTAB · Jan 16, 2024 · IPR2022-01215 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1–4, 7, 11–14, 16, 18, and 31 are unpatentable as anticipated by Yu; claims 1–4, 7, and 31 are also anticipated by Stewart.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties disagree about the appropriate definition of the ordinarily skilled artisan and, in particular, whether that artisan would have had experience or familiarity with the “processing of thermoformable polymer sheets” to form “orthodontic and dental appliances.” Resp. 16 (citing Ex. 2008 ¶ 14); see Pet. 14–15 n.1 (disagreeing with that proposition). Patent Owner’s definition is supported by the plain wording of challenged claim 18, which recites a dental appliance. Resp. 16 (citing Pet. 14 n.1); Ex. 1001, 26:50–52. The ’263 patent, moreover, includes an “extensive discussion of dental appliances and the unexpectedly good properties of dental aligners” thermoformed from polymeric sheets. Resp. 16; Ex. 1001, 1:20–47, 4:57–5:10, 5:26–6:6, 6:39–43, 10:25–51, 11:30–48, 12:22–24, 13:25–29, 21:1–6, 24:2–3, 24:30–57; see id. at 15:23– 38 (describing the thermoforming process for making dental appliances).” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“about 60A to about 85D” when employed as the two soft outer layers in an unclaimed and disfavored soft-hard-soft layer composition (id. ¶ 109) does not convey, with reasonable clarity, that the inventors had possession of the inventive hard-soft-hard layer composition in which the single soft, inner layer also is within that same hardness range (id. ¶ 110). Critically, when discussing the soft, inner layer of the inventive hard-soft-hard layer composition, the ’176 application nowhere indicates that the soft inner layer must have “a hardness of from about 60A to about 85D.” Id. ¶ 109 (discussing a prior art embodiment); see id. ¶¶ 7, 33–35, 109–110. Even if the hardness limitation of the challenged claims would have been obvious from the relied-upon disclosure in the ’176 application (id. ¶ 109), as a matter of law, that circumstance is insufficient to establish a filing date through that application. “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (quotations omitted); see Pet. 21 (quoting that controlling precedent). Each of Patent Owner’s countervailing arguments is unpersuasive because, at best, Patent Owner attempts to show that it would have been obvious to import––from the description of the soft outer layers in an unclaimed and disfavored soft-hard-soft embodiment––a limitation not expressly imposed on the soft inner layer in the inventive hard-soft-hard embodiment. Ex. 2001 ¶ 109; Resp. 35–42. A showing of obviousness is not enough under the controlling precedent cited by Petitioner. PowerOasis, 522 F.3d at 1306.” slip op. at 9
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner
“about 60A to about 85D” when employed as the two soft outer layers in an unclaimed and disfavored soft-hard-soft layer composition (id. ¶ 109) does not convey, with reasonable clarity, that the inventors had possession of the inventive hard-soft-hard layer composition in which the single soft, inner layer also is within that same hardness range (id. ¶ 110). Critically, when discussing the soft, inner layer of the inventive hard-soft-hard layer composition, the ’176 application nowhere indicates that the soft inner layer must have “a hardness of from about 60A to about 85D.” Id. ¶ 109 (discussing a prior art embodiment); see id. ¶¶ 7, 33–35, 109–110. Even if the hardness limitation of the challenged claims would have been obvious from the relied-upon disclosure in the ’176 application (id. ¶ 109), as a matter of law, that circumstance is insufficient to establish a filing date through that application. “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (quotations omitted); see Pet. 21 (quoting that controlling precedent). Each of Patent Owner’s countervailing arguments is unpersuasive because, at best, Patent Owner attempts to show that it would have been obvious to import––from the description of the soft outer layers in an unclaimed and disfavored soft-hard-soft embodiment––a limitation not expressly imposed on the soft inner layer in the inventive hard-soft-hard embodiment. Ex. 2001 ¶ 109; Resp. 35–42. A showing of obviousness is not enough under the controlling precedent cited by Petitioner. PowerOasis, 522 F.3d at 1306.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“For the above reasons, we determine that the challenged claims are not entitled to the benefit of the filing date of the ’176 application because the application does not indicate that the inventors had possession of the hardness limitation of the claimed invention. See Reply 7–13 (Petitioner’s arguments on this issue). On the full trial record, we find that the earliest effective filing date to which the challenged claims are entitled is December 18, 2019, the filing date of the ’256 application from which the ’263 patent issued. Ex. 1001, codes (21), (22). Every challenged claim recites, or inherits via dependence, the hardness limitation “of from about 60A to about 85D” for the inner elastomeric layers of the inventive hard-soft-hard multilayer composition. Ex. 1001, 25:2–9 (independent claim 1), 26:1–8 (independent claim 11), 27:49–51 (independent claim 31). In view of our determination that the earliest effective filing date to which the challenged claims are entitled is December 18, 2019, we agree with Petitioner that Yu (Example 1) and Stewart (Example 2) qualify as prior art against the challenged claims. Pet. 43–49 (Petitioner’s persuasive arguments and evidence on point).” slip op. at 13
Patent outcomesUS 10,870,263 unpatentableClaim construction§ 102 anticipation§ 112 disclosurecites GrahamPatents in suitUS 10,870,263 - The Noco Company, Inc. v. Pilot, Inc.All claims unpatentablePTAB · Jan 9, 2023 · IPR2021-01235 · APJ Julia Heaney · IPR · Final written decision
Claims 1–19 are unpatentable: claims 1–7, 9–15, and 17–19 as obvious over Richardson and Krieger; claim 8 as obvious over Richardson, Krieger, and George; claim 16 anticipated by Richardson.
RulingsFinal written decision- Adverse judgmentAdverse judgmentDecided for patent owner
“Having considered the parties’ arguments as to whether adverse judgment should be entered against Patent Owner, we determine not to enter adverse judgment based on an abandonment of the contest by Patent Owner under 37 C.F.R. § 42.73(b)(4). In light of Patent Owner’s statement regarding the merits of the Petition and its unequivocal statement that it is not seeking adverse judgment (see Response 3), we do not construe Patent Owner’s actions as an abandonment of the contest. See Apple Inc. v. Zipit Wireless, Inc., IPR2021-01124, Paper 14 (Dec. 21, 2022) (vacating entry of adverse judgment upon determination it was not sufficiently clear that Patent Owner intended to abandon the contest) (precedential). Although we have considered Patent Owner’s Response to the Order to Show Cause for the purpose of our determination whether to enter adverse judgment, Patent Owner’s statement in the Response regarding the merits of the Petition is conclusory and untimely with regard to our evaluation of the merits of the Petition. See Paper 7 (Scheduling Order) 8, 11 (setting April 8, 2022 as the deadline for Patent Owner’s response to the Petition). Accordingly, for the purpose of evaluating the merits of Petitioner’s challenges in the Petition, we decline to consider Patent Owner’s statement.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had an undergraduate degree in electrical engineering (or equivalent subject) together with two or three years of experience in automotive electrical systems industry.” Pet. 12 (citing Ex. 1008 ¶ 13). In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’806 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’806 patent and the prior art.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Having considered Petitioner’s undisputed argument, we note that claims 7 and 8 recite a “recharging voltage level” rather than a “recharging level,” as Petitioner argues. Ex. 1001, 5:53, 58. We determine that Petitioner’s omission of “voltage” is immaterial, and further that Petitioner’s construction is consistent with the plain language of the claim and supported by the Specification. Ex. 1001, 4:43–50. In view of this, we construe the term “recharging level” to mean “the level of the first battery after it is connected to the load.” We determine that we do not need to expressly construe any other terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Having reviewed Petitioner’s undisputed evidence and argument regarding claim 1, we find that Petitioner has demonstrated that Richardson and Krieger teach or suggest all of the limitations of claim 1, and that a person of ordinary skill in the art would have had reason to combine the teachings in the way Petitioner proposes and would have had a reasonable expectation of success in doing so. Accordingly, Petitioner has established by a preponderance of the evidence that claim 1 is obvious over the combination of Richardson and Krieger.” slip op. at 22
Patent outcomesUS 10,328,806 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,328,806 - Philip Morris Products S.A. v. Healthier Choices Management Corp.All claims unpatentablePTAB · Dec 15, 2022 · IPR2022-00454 · APJ Julia Heaney · IPR · Final written decision
Claims 1–8 are unpatentable as anticipated by Hammel; the revised contingent motion to amend with substitute claims 9–16 is denied for lack of written-description support.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had a Bachelor’s degree in mechanical engineering, electrical engineering, or a related field and two to three years of industry experience, or a Master’s degree in mechanical engineering, electrical engineering, or a related field, and one to two years of industry experience” and “would have been familiar with electrically powered smoking devices and the components and underlying technology used therein.” Pet. 6–7 (citing Ex. 1003 ¶¶ 24–26). Patent Owner argues that a person of ordinary skill in the art at the time of the invention “would have had a Bachelor’s degree in mechanical engineering, electrical engineering, or a related field, an understanding of combustion reactions in electric smoking articles, and one to three years of practical experience” and would have been “familiar with electrical smoking devices and the components and design considerations thereof.” PO Resp. 8 (citing Ex. 2001 ¶¶ 28–31). Neither party has responded to the other’s position as to the level of ordinary skill, or identified any material difference between their proposals. Having considered the parties’ arguments and evidence, we adopt the level of ordinary skill in the art proposed by Patent Owner, because it is consistent with the disclosures of the ’170 patent and the prior art of record. We note, however, that neither party contends that any issue in this case turns on the differences between the parties’ definitions of one of ordinary skill in the art.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We decline to adopt Patent Owner’s construction because it improperly reads extraneous limitations into the claim from the specification, “wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” E.I. du Pont de Nemours v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). The ’170 patent discloses multiple embodiments of a combustible material reservoir; Patent Owner does not dispute this. See PO Sur-reply 7–8. Further, Patent Owner does not present a sufficient underlying factual basis to support Dr. Garris’s testimony that a person of ordinary skill in the art would understand “combustible material reservoir” as Patent Owner proposes. See Ex. 2001 ¶¶ 63–64. Therefore, we are not persuaded that the airflow limitations that Patent Owner reads into “combustible material reservoir” are necessary. In view of the foregoing, we construe the term “combustible material reservoir” to have its ordinary meaning, i.e., a reservoir for combustible material.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“insufficient because its text descriptions do not state that the heating element protrudes from the top of the case body, or that the porcelain tube has holes in it, do not adequately credit the ability of a person of ordinary skill in the art to interpret Hammel’s figures as a whole. The dispositive question regarding anticipation is whether a person of ordinary skill in the art would reasonably understand or infer from the reference that every claim element is disclosed in that single reference. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017). As Petitioner asserts, and Dr. Deevi credibly testifies, a person of ordinary skill would have inferred the shape and location of the heating element in Figure 2 based on the labeled heating element in the exploded view of Figure 3. See Ex. 1007 ¶ 10. We find this assertion to be reasonable. In view of the level of ordinary skill and relative structural simplicity of the claimed subject matter, we also find that a person of ordinary skill would have reasonably understood from Hammel’s figures that its heating element has legs that fix it in place in holes within the porcelain tube. Dr. Deevi’s testimony supports these findings, because he explains that a person of ordinary skill would infer that the heating element within the porcelain tube would not be connected to the battery without holes in the porcelain tube. Ex. 1003 ¶ 244; Ex. 2003, 192–196. We find no contradiction in Dr. Deevi’s testimony, as Patent Owner asserts. Although Patent Owner asserts “Dr. Deevi conceded that Hammel does not describe any holes in the bottom half of the porcelain tube” (PO Resp. 60 (citing Ex. 2003, 193:7–11)), Dr. Deevi explained in his subsequent response that his opinion is based on the inference a person of ordinary skill would draw from Hammel’s disclosure. Ex. 2003, 193:13–16. We disagree with Patent Owner that Hammel’s disclosure provides insufficient evidence to support Dr. Deevi’s opinion, and we find Dr, Deevi’s explanation of Hammel supports a reasonable inference that it discloses a heating element fixed in the combustible material reservoir.” slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“insufficient because its text descriptions do not state that the heating element protrudes from the top of the case body, or that the porcelain tube has holes in it, do not adequately credit the ability of a person of ordinary skill in the art to interpret Hammel’s figures as a whole. The dispositive question regarding anticipation is whether a person of ordinary skill in the art would reasonably understand or infer from the reference that every claim element is disclosed in that single reference. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017). As Petitioner asserts, and Dr. Deevi credibly testifies, a person of ordinary skill would have inferred the shape and location of the heating element in Figure 2 based on the labeled heating element in the exploded view of Figure 3. See Ex. 1007 ¶ 10. We find this assertion to be reasonable. In view of the level of ordinary skill and relative structural simplicity of the claimed subject matter, we also find that a person of ordinary skill would have reasonably understood from Hammel’s figures that its heating element has legs that fix it in place in holes within the porcelain tube. Dr. Deevi’s testimony supports these findings, because he explains that a person of ordinary skill would infer that the heating element within the porcelain tube would not be connected to the battery without holes in the porcelain tube. Ex. 1003 ¶ 244; Ex. 2003, 192–196. We find no contradiction in Dr. Deevi’s testimony, as Patent Owner asserts. Although Patent Owner asserts “Dr. Deevi conceded that Hammel does not describe any holes in the bottom half of the porcelain tube” (PO Resp. 60 (citing Ex. 2003, 193:7–11)), Dr. Deevi explained in his subsequent response that his opinion is based on the inference a person of ordinary skill would draw from Hammel’s disclosure. Ex. 2003, 193:13–16. We disagree with Patent Owner that Hammel’s disclosure provides insufficient evidence to support Dr. Deevi’s opinion, and we find Dr, Deevi’s explanation of Hammel supports a reasonable inference that it discloses a heating element fixed in the combustible material reservoir. For the foregoing reasons, we are persuaded that a preponderance of the evidence shows that Hammel discloses each of the limitations of claims 1 and 5.” slip op. at 24
Patent outcomesUS 10,561,170 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,561,170 - Philip Morris Products S.A. v. Healthier Choices Management Corp.All claims unpatentablePTAB · Dec 15, 2022 · IPR2021-01079 · APJ Julia Heaney · IPR · Final written decision
Claims 1–8 are unpatentable as anticipated by Hammel; the revised contingent motion to amend is denied for lack of written-description support for substitute claims 9–16.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“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.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Petitioner argues that Patent Owner’s proposed construction imports limitations from a single embodiment of the specification into the claims. Pet. Reply 5–6. Petitioner further argues that the ’170 patent expressly describes reservoirs with attributes different than the embodiment relied on by Patent Owner, such as “the combustible material reservoir 165 may be located on the surface of and extends into the second pipe section 140.” Id. (quoting Ex. 1001, 4:57–63; also citing Ex. 1001, Fig. 3, 6:23–45, 9:15–35; Ex. 1028 ¶¶ 48–52). We decline to adopt Patent Owner’s construction because it improperly reads extraneous limitations into the claim from the specification, “wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” E.I. du Pont de Nemours v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). The ’170 patent discloses multiple embodiments of a combustible material reservoir; Patent Owner does not dispute this. See PO Sur-reply 7–8. Further, Patent Owner does not present a sufficient underlying factual basis to support Dr. Garris’s testimony that a person of ordinary skill in the art would understand “combustible material reservoir” as Patent Owner proposes. See Ex. 2001 ¶¶ 63–64. Therefore, we are not persuaded that the airflow limitations that Patent Owner reads into “combustible material reservoir” are necessary. In view of the foregoing, we construe the term “combustible material reservoir” to have its ordinary meaning, i.e., a reservoir for combustible material.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“insufficient because its text descriptions do not state that the heating element protrudes from the top of the case body, or that the porcelain tube has holes in it, do not adequately credit the ability of a person of ordinary skill in the art to interpret Hammel’s figures as a whole. The dispositive question regarding anticipation is whether a person of ordinary skill in the art would reasonably understand or infer from the reference that every claim element is disclosed in that single reference. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017). As Petitioner asserts, and Dr. Deevi credibly testifies, a person of ordinary skill would have inferred the shape and location of the heating element in Figure 2 based on the labeled heating element in the exploded view of Figure 3. See Ex. 1007 ¶ 10. We find this assertion to be reasonable. In view of the level of ordinary skill and relative structural simplicity of the claimed subject matter, we also find that a person of ordinary skill would have reasonably understood from Hammel’s figures that its heating element has legs that fix it in place in holes within the porcelain tube. Dr. Deevi’s testimony supports these findings, because he explains that a person of ordinary skill would infer that the heating element within the porcelain tube would not be connected to the battery without holes in the porcelain tube. Ex. 1003 ¶ 244; Ex. 2003, 192–196. We find no contradiction in Dr. Deevi’s testimony, as Patent Owner asserts. Although Patent Owner asserts “Dr. Deevi conceded that Hammel does not describe any holes in the bottom half of the porcelain tube” (PO Resp. 60 (citing Ex. 2003, 193:7–11)), Dr. Deevi explained in his subsequent response that his opinion is based on the inference a person of ordinary skill would draw from Hammel’s disclosure. Ex. 2003, 193:13–16. We disagree with Patent Owner that Hammel’s disclosure provides insufficient evidence to support Dr. Deevi’s opinion, and we find Dr, Deevi’s explanation of Hammel supports a reasonable inference that it discloses a heating element fixed in the combustible material reservoir.” slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“insufficient because its text descriptions do not state that the heating element protrudes from the top of the case body, or that the porcelain tube has holes in it, do not adequately credit the ability of a person of ordinary skill in the art to interpret Hammel’s figures as a whole. The dispositive question regarding anticipation is whether a person of ordinary skill in the art would reasonably understand or infer from the reference that every claim element is disclosed in that single reference. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017). As Petitioner asserts, and Dr. Deevi credibly testifies, a person of ordinary skill would have inferred the shape and location of the heating element in Figure 2 based on the labeled heating element in the exploded view of Figure 3. See Ex. 1007 ¶ 10. We find this assertion to be reasonable. In view of the level of ordinary skill and relative structural simplicity of the claimed subject matter, we also find that a person of ordinary skill would have reasonably understood from Hammel’s figures that its heating element has legs that fix it in place in holes within the porcelain tube. Dr. Deevi’s testimony supports these findings, because he explains that a person of ordinary skill would infer that the heating element within the porcelain tube would not be connected to the battery without holes in the porcelain tube. Ex. 1003 ¶ 244; Ex. 2003, 192–196. We find no contradiction in Dr. Deevi’s testimony, as Patent Owner asserts. Although Patent Owner asserts “Dr. Deevi conceded that Hammel does not describe any holes in the bottom half of the porcelain tube” (PO Resp. 60 (citing Ex. 2003, 193:7–11)), Dr. Deevi explained in his subsequent response that his opinion is based on the inference a person of ordinary skill would draw from Hammel’s disclosure. Ex. 2003, 193:13–16. We disagree with Patent Owner that Hammel’s disclosure provides insufficient evidence to support Dr. Deevi’s opinion, and we find Dr, Deevi’s explanation of Hammel supports a reasonable inference that it discloses a heating element fixed in the combustible material reservoir. For the foregoing reasons, we are persuaded that a preponderance of the evidence shows that Hammel discloses each of the limitations of claims 1 and 5.” slip op. at 24
Patent outcomesUS 10,561,170 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,561,170 - Pfizer, Inc. v. Uniqure Biopharma B.V.All claims unpatentablePTAB · Nov 15, 2022 · IPR2021-00925 · APJ Julia Heaney · IPR · Final written decision
Claims 1, 3, 7–10, 14–16, 19, and 20 are unpatentable as obvious over Stafford and Manno, and Stafford, Manno, and Schuettrumpf.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Decision on Institution, although we agreed with Patent Owner that the ordinarily skilled artisan would have experience in the treatment of coagulopathy, we applied a broader definition of a person of ordinary skill in the art, as articulated by Drs. Wang and Pedersen. Dec. Inst. 22; see Ex. 1003 ¶ 48; Ex. 1094 ¶ 19. We determined a person of ordinary skill in the art would have the skill of a research team working to develop factor IX variants and gene therapies, where that team would include (1) one or more researchers with experience in the fields of molecular biology and virology and the use of gene therapy for treatment of coagulopathies, working together with (2) one or more individuals with experience in protein structure or engineering; and where the individuals working on the team have an advanced degree and several years of experience in a relevant discipline. See id. Patent Owner states its positions on patentability of the challenged claims “would not change under that construction or Petitioner’s proposed definition ....” PO Resp. 13. Accordingly, we apply the definition of a person of ordinary skill in the art set forth supra and in our Decision on Institution.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“We agree with Petitioner that the ’248 patent provides an express definition of “treat” and “treatment.” The Specification states, “[i]n the present text the term ‘treat’ or ‘treatment’ of a pathology means the prophylaxis and/or therapy and/or cure of this pathology.” Ex. 1001, 5:19– 21. This definition includes “cure” as a separate concept from therapy, and further provides that therapy includes “partial or total” alleviation of symptoms. Id. at 5:21–24. The ’248 patent does not define or otherwise describe “treating a coagulopathy” as requiring any specific duration of therapeutic efficacy; therefore, a person of ordinary skill in the art would understand that partial alleviation of symptoms and a shorter duration of therapeutic efficacy is encompassed in “treating a coagulopathy” as recited in claim 1. Claim 16, which depends from claim 1, supports a construction of “treating a coagulopathy” that does not require complete alleviation of symptoms or permanent therapeutic efficacy. Claim 16 recites the “modified FIX polypeptide is expressed at a level that reduces and/or prevents hemorrhages.” Ex. 1001, 46:34–36. Because claim 16 depends from claim 1, this means that “treating a coagulopathy” as recited in claim 1 encompasses merely reducing hemorrhages, i.e., partial alleviation of symptoms. Accordingly, based on the intrinsic evidence, including the express definition of the terms “treat” and “treatment,” we construe “treating a coagulopathy” as prophylaxis and/or therapy and/or cure of this coagulopathy which includes partial alleviation of symptoms, for any duration of therapeutic efficacy. We determine that we need not explicitly construe any other claim terms.” slip op. at 10
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Accordingly, Patent Owner has failed to show that it is entitled to a presumption of a nexus between the objective evidence and the claimed invention. Patent Owner argues that it “need not rely on such presumption [of nexus]” under the Polaris and Fox Factory analysis. PO Resp. 67. Although Patent Owner does not fully explain its position, we note that Fox Factory provides, “[a] finding that a presumption of nexus is inappropriate does not end the inquiry into secondary considerations”; rather, “the patent owner is still afforded an opportunity to prove nexus by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Fox Factory, 994 F.3d at 1374 (quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)). Here, we find that Patent Owner presents insufficient evidence to establish a nexus by this alternative route. Patent Owner does not present argument as to the “unique characteristics” of the claimed invention, or provide evidence to support such an analysis. See PO Resp. 66–67; PO Sur-reply 26–28. In addition, as discussed above, Patent Owner’s evidence is broadly directed to FIX- R338L, which was in the prior art and does not suggest non-obviousness of the claimed invention as a whole. In summary, Patent Owner does not meet its burden to show a presumption of nexus or show a nexus to the alleged long-felt need for an effective gene therapy for hemophilia B, industry praise, and unexpectedly superior efficacy of AAV-FIX-R338L. Weighing the evidence and arguments presented, we determine that even if there is some nexus, it is weak. See Merck & Cie, 808 F.3d at 837 (Where objective indicia “result[ ] from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention.”). The failure to show a nexus is fatal to Patent Owner’s contentions regarding objective indicia.” slip op. at 26
- Expert testimonyPatent owner expert discountedDecided for petitioner
“We also find Dr. Pedersen’s opinion with regard to a leucine substitution in FIX-R338 more credible than Dr. Spiegel’s, who states “there is no such thing as ‘conservative amino acid substitutions’ in the sense Dr. Pedersen asserts.” Ex. 2101 ¶ 72. The ’248 patent itself refers to “conservative amino acid substitutions” and states “[i]t is expected that substitutions between these homologous amino acids [including alanine and leucine] would not change the phenotype of the proteins.” Ex. 1001, 4:48– 61. Although Dr. Spiegel notes that substitution is context dependent and “the specification recognizes ... various properties of each unique amino acid all contribute to the amino acid’s interactions” (Ex. 2101 ¶ 75, citing Ex. 1001, 4:48–61; Ex. 1002, 4:45–58; Ex. 1039, 51), his opinions do not account for the knowledge of a person of ordinary skill in the art as to the properties of alanine and leucine and the structure of FIX. See Ex. 1101 ¶¶ 36–39. Further, Dr. Spiegel’s surface-exposure opinion (see, e.g., Ex. 2101 ¶ 99) is undercut by Stafford’s teaching that the 330–338 region of wild-type FIX contains two solvent-exposed leucines. Ex. 1101 ¶ 41 (citing Ex. 1004, 34). Dr. Spiegel’s opinion that a leucine substitution would reduce solubility or increase susceptibility to aggregation also lacks credibility because it is based on the protein hemoglobin S, and not on a modification to FIX positions 330–338. Ex. 2101 ¶ 62; Ex. 1103, 78:15–18; see Ex. 1101 ¶ 60. We also do not find persuasive Patent Owner’s argument that a person of ordinary skill in the art would have had serious concerns whether R338L would be expressed, based on Stafford. As discussed above, Stafford discloses successful expression of R338A in vitro, and as Dr. Wang explains, the understanding of a person of ordinary skill of similarities between R338A and R338L would have supported the understanding that R338L would express at a similar level to R338A, given Stafford’s disclosure that only R338P showed reduced expression, and unlike leucine, “proline is a known ‘helix breaker.’” Ex. 1004, 14–15; Ex. 1100 ¶¶ 113– 116. Stafford’s disclosure that mutations at 330–337 cause severe hemophilia due to loss of FIX activity (Ex. 1004, 19:16–20) does not support Patent Owner’s argument, because Patent Owner’s experts do not persuasively explain why the risk of severe hemophilia from single amino acid substitutions at positions 330–337 would be predictive of a similar risk at position 338. See Ex. 1100 ¶¶ 115–119; Ex. 1101 ¶¶ 48–51. As such, we agree with Dr. Wang that a person of ordinary skill in the art would not have expected difficulties in expression of R338L.” slip op. at 38
Patent outcomesUS 9,982,248 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,982,248 - Allstate Insurance Company v. Atos, LLCInstitutedPTAB · Mar 8, 2022 · IPR2021-01449 · APJ Julia Heaney · IPR · Institution
The Board instituted review of claims 1–5 on all asserted grounds, finding a reasonable likelihood that claims 1, 2, and 5 are unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“invention “would have been someone with a bachelor’s or master’s degree in the field of mechanical engineering, electrical engineering, or physics or with a bachelor’s or master’s degree in a related field and at least three years of experience in designing or developing portable device systems.” Pet. 4 (citing Ex. 1003 ¶ 52). Petitioner further argues the “Skilled Artisan would have been aware of the types of portable devices discussed below and would have known how to utilize the portable devices and their accelerometers to detect motion while inside a vehicle,” and “would have known how to model the forces on moving objects in line with Newtonian Mechanics.” Id. Patent Owner does not dispute the level of ordinary skill in the art. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’174 patent and the asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“appear only in claim 5. Claim 5 is at issue in Grounds 4 and 5, but no issue in Ground 4 turns on construction of either claim term. As to Ground 5, for the reasons discussed below, we need not decide at this stage of the proceeding whether Kim discloses an “operation indicator” under either party’s proposed construction, because we determine that Petitioner has met the threshold for institution based on other claims and grounds asserted in the Petition. See SAS Guidance. Therefore, at this stage of the proceeding, no issue turns on our construction of “operation indicator” or “on-board component,” and we determine we need not construe either term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we 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))). This does not constitute a determination regarding the persuasiveness of either party’s arguments; we leave claim construction as an open question for the parties to address during trial. In that regard, we remind Patent Owner that any argument not raised in its Patent Owner response pursuant to 37 C.F.R. § 42.120 may be deemed waived.” slip op. at 9
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“analogous art. Under In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004), we determine analogous art based on (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. According to Patent Owner, the ’174 patent is directed to using the sensors of a portable device to accurately determine changes in operational state of a vehicle, such as vehicle cornering, using the relationship between vectors derived from the sensors’ output. Prelim. Resp. 3. On this preliminary record, Johnson describes monitoring driver behavior using sensors on a mobile phone (Ex. 1010, 1609), and Kleppner describes inter alia using vector operations to determine the direction of rotation of a moving object. See supra II.D.1. Thus, both references appear reasonably pertinent to the problem with which the inventors of the ’174 patent were involved.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,846,174 - Samsung Display Co., Ltd. v. Solas Oled Ltd.All claims unpatentablePTAB · Mar 31, 2021 · IPR2020-00140 · APJ Julia Heaney · IPR · Final written decision
Claims 1–9, 11–13, and 15–18 are unpatentable under § 103 over Utsugi alone, Utsugi and Manabe, or Utsugi and Eida.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“No. 6,072,450 (Ex. 1001, “the ’450 patent”). Paper 1 (“Petition” or “Pet.”). Solas OLED Ltd. (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Taking into account the arguments presented in Patent Owner’s Preliminary Response, we determined the information presented in the Petition established that there was a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–9, 11–13, and 15–18 of the ’450 patent, and we instituted this inter partes review as to all challenged claims. Paper 9 (“Dec. on Inst.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Institution Decision, we adopted Petitioner’s formulation of the level of ordinary skill in the art and determined that a person of ordinary skill in the art at the time of the invention “would have had a relevant technical degree in Electrical Engineering, Computer Engineering, Materials Science, Physics, or the like, and experience in active matrix display design and electroluminescence.” Dec. on Inst. 9 (quoting Pet. 13) (adopting Petitioner’s formulation, which is supported by Dr. Fontecchio’s testimony, because it is consistent with the ’450 patent and the asserted prior art). In its Patent Owner Response, Patent Owner argues that a person of ordinary skill would need approximately two years of experience working in design and development related to active matrix organic light emitting diodes (“OLED”) displays, in addition to a Bachelor’s degree in Electrical Engineering, Physics, and/or Materials Science and Engineering or equivalent training. PO Resp. 7–8 (citing Ex. 2001 ¶¶ 30–31). Patent Owner also states, however, that its arguments in opposition to the Petition apply under Petitioner’s definition of the level of ordinary skill as well. Id. at 8. Accordingly, having considered the parties’ arguments and evidence, we maintain our determination from the Institution Decision adopting Petitioner’s proposed level of ordinary skill in the art, as it is consistent with the problems and solutions in the ’450 patent and prior art of record. We also determine our decision would be the same under either side’s formulation of the level of ordinary skill.” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“transistors QS and QI, and satisfies this limitation. We find persuasive Petitioner’s rationale that a person of ordinary skill would have understood that insulation above transistor QS would have been necessary to prevent a short circuit across QS; indeed, both parties’ experts agree on this point. See Ex. 1007 ¶ 168; Ex. 1017, 155:8–16. We also find it persuasive, as Petitioner argues, that using the SiO2 layer to provide insulation above transistor QS would have been straightforward and efficient, because it would have avoided additional patterning and the SiO2 layer was already used to provide insulation above other structures. See Ex. 1007 ¶ 169. Patent Owner’s argument that a different insulating material could be deposited does not undermine Petitioner’s showing because Mr. Flasck did not articulate any reason why a person of ordinary skill would undertake such an additional step. See Ex. 1017, 156:6–21. And Patent Owner fails to adequately explain how Petitioner’s proposed modification does not avoid the asserted additional patterning steps; Mr. Flasck’s testimony does not specifically address this. See Ex. 2001 ¶ 54; see generally Ex. 1017. We have also considered Patent Owner’s argument that modifying Utsugi by oxidizing transistor QS’s electrode in order to insulate it would have been an alternative modification that would not involve additional patterning steps. See Tr. 48 (quoting Ex. 2005, 98:25–99:20). Although Dr. Fontecchio’s testimony concerning oxidation of an aluminum surface during vacuum chamber deposition supports Patent Owner’s argument that there would have been alternative techniques to leaving the SiO2 layer in place in order to insulate the electrodes of QS, it neither persuades us that a person of ordinary skill would not have been motivated to use the already-present SiO2 layer to insulate QS, nor outweighs Petitioner’s evidence on that issue. In other words, one obvious modification to a reference does not exclude the possibility of other obvious modifications.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“transistors QS and QI, and satisfies this limitation. We find persuasive Petitioner’s rationale that a person of ordinary skill would have understood that insulation above transistor QS would have been necessary to prevent a short circuit across QS; indeed, both parties’ experts agree on this point. See Ex. 1007 ¶ 168; Ex. 1017, 155:8–16. We also find it persuasive, as Petitioner argues, that using the SiO2 layer to provide insulation above transistor QS would have been straightforward and efficient, because it would have avoided additional patterning and the SiO2 layer was already used to provide insulation above other structures. See Ex. 1007 ¶ 169. Patent Owner’s argument that a different insulating material could be deposited does not undermine Petitioner’s showing because Mr. Flasck did not articulate any reason why a person of ordinary skill would undertake such an additional step. See Ex. 1017, 156:6–21. And Patent Owner fails to adequately explain how Petitioner’s proposed modification does not avoid the asserted additional patterning steps; Mr. Flasck’s testimony does not specifically address this. See Ex. 2001 ¶ 54; see generally Ex. 1017. We have also considered Patent Owner’s argument that modifying Utsugi by oxidizing transistor QS’s electrode in order to insulate it would have been an alternative modification that would not involve additional patterning steps. See Tr. 48 (quoting Ex. 2005, 98:25–99:20). Although Dr. Fontecchio’s testimony concerning oxidation of an aluminum surface during vacuum chamber deposition supports Patent Owner’s argument that there would have been alternative techniques to leaving the SiO2 layer in place in order to insulate the electrodes of QS, it neither persuades us that a person of ordinary skill would not have been motivated to use the already-present SiO2 layer to insulate QS, nor outweighs Petitioner’s evidence on that issue. In other words, one obvious modification to a reference does not exclude the possibility of other obvious modifications.” slip op. at 22
Patent outcomesUS 6,072,450 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,072,450
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.