• Multi-Color Corporation v. Brook & Whittle LtdInstituted
  PTAB · Sep 19, 2025 · PGR2025-00025 · APJ Kimberly Mcgraw · PGR · Institution

  The Board instituted PGR on claims 1–19 and all asserted grounds, finding it more likely than not that claim 1 is anticipated by the Gatorade Label.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Post-grant review is available for patents that issue from applications that at one point contained at least one claim with an effective filing date on or after March 16, 2013. See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), §§ 3(n)(1), 6(f)(2)(A). After considering the briefing and the evidence of record, for the reasons set forth below, we determine that Petitioner has shown that the ’422 Patent is eligible for post-grant review and has shown it is more likely than not that at least one challenged claim of the ’422 Patent is unpatentable under § 324(a). Accordingly, we institute a post-grant review of the challenged claims of the ’422 Patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would possess at least (1) a Bachelor’s degree in chemistry or a related field, with (2) five years of experience in material identification and characterization using multiple analytical methods and field sampling, or equivalent research or professional experience.” Pet. 12 (citing Ex. 1014 ¶ 24). Patent Owner does not dispute Petitioner’s definition for one of ordinary skill in the art nor provide a proposed definition of its own. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s undisputed proposal regarding the level of one of ordinary skill in the art.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “336. The applicant explained that not all combinations of shrink films and light blocking materials are recyclable. Id. at 335. The applicant explained that films can be compatible with PET recycling in two ways, (1) the film can float in water and be separated from PET that sinks in water or (2) the PET films crystallize and “can be recovered with the PET stream.” Id. at 336 (citing “A Resource Document by the Association of Plastic Recyclers (APR)”) (found at Ex. 1002, 323–332) (emphasis omitted). The applicant explained that “removing the label before or during the recycling process is not evidence of the recyclability of the label” and that “[r]emoving the label during the recycling process is not equivalent to actually recycling the label.” Id. at 335. As such, a POSITA reading the prosecution history would understand that a label is not recyclable with a PET container, as recited by the independent claims, by removing the label from the PET recycle stream before or during the recycling process.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “To determine how a person skill in the art would determine if a shrink label is “recyclable” as recited in the independent claims, we look to how the Specification of the ’422 Patent describes or defines recyclable shrink labels. For example, the ’422 Patent states that PET shrink films are generally considered recyclable if no inks are retained on the film after a caustic wash cycle typically used in PET reclaiming processes. Ex. 1001, 6:61–65. The ’422 Patent further states that labels are fully recyclable if the polymers used are clear, preferably clear PET, and the labels include inks that can be washed off in a “typical PET recycling wash (caustic wash).” Id. at 11:44– 49; see also id. at 11:49–54 (describing embodiments in which the labels are free or substantially free of inks that cannot be washed off in a caustic wash or where the labels are free or substantially free of color plastics that cannot be recycled). The ’422 Patent further discusses “industry standards” for determining whether various embodiments of shrink labels are recyclable. See, e.g., id. at 11:29–53. For example, the Specification states that the “Association for Plastic Recyclers (APR) Critical Guidance Protocol for Clear PET Articles with Labels and Closures (PET-CG-02)” (Ex. 1005) can certify that a film is fully recyclable with a container or bottle. Id. at 11:34– 38. Additionally, the Specification states that labels “are recyclable according to the Evaluation of the Near Infrared (NIR) Sorting Potential of a Whole Plastic Article (SORT-B-01)” (Ex. 1010) and/or the “Evaluation of Sorting Potential for Plastic Articles Utilizing Metal, Metalized, or Metallic Printed Components (SORT-B-03)” (Ex. 1011). Ex. 1001, 11:39–44. The ’422 Patent further states that embodiments of the labels “are fully recyclable. For example, the labels may include inks that can be washed off in a typical PET recycling wash (caustic wash) and the polymers” are preferably clear PET. Id. at 11:44–48. The ’422 Patent thus provides various descriptions or standards to determine the recyclability of shrink labels. For the purposes of addressing the anticipation and obviousness grounds, we determine that any of these standards can be used to determine if a shrink label is “recyclable.” We note that our construction is preliminary and is based on the present record. We invite the parties to further the address the construction of “wherein the recyclable shrink label is recyclable with a PET container” during trial.” slip op. at 12

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Nautilus
  Patents in suitUS 11,961,422
• Tennant Company v. Oxygenator Water Technologies, Inc.No claims unpatentable
  PTAB · Feb 28, 2025 · IPR2021-00625 · APJ Kristina M Kalan · IPR · Remand

  Claims 13, 14, and 17–27 were not shown unpatentable because Tennant did not establish that Wikey or Davies inherently disclosed the claimed microbubbles and nanobubbles.

  RulingsRemand decision

  • RemandOther

    “The Federal Circuit vacated and remanded our anticipation determinations as to claims 13, 14, and 17–27. Tennant, 11.1 The Federal Circuit further stated: “Because we vacate and remand to the Board to consider Tennant’s anticipation argument, we do not reach Tennant’s obviousness arguments (which depends on its contention that either Wikey or Davies produce nanobubbles).” Id. at 11. On September 19, 2024, we authorized the parties to file supplemental briefing, stating also that the “parties are not authorized to present new factual assertions, provide additional exhibits, or raise new arguments beyond those directed to the issues raised in the remand.” Ex. 3001. Pursuant to this authorization, Petitioner filed an Opening Brief on Remand (Paper 61; “Pet. Br. Rem.”) in support of its contentions. Patent Owner filed a Lead Brief on Remand (Paper 62; “PO Br. Rem.”) in support of its contentions. Petitioner filed a Reply Brief on Remand (Paper 66; “Pet. Reply Br. Rem.”). Patent Owner filed a Responsive Brief on Remand (Paper 65; “PO Resp. Br. Rem.”).” slip op. at 3

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

    “Accordingly, and in line with our previous determination that “Wikey appears to disclose each limitation of claim 13 except ‘microbubbles and nanobubbles having a bubble diameter of less than 50 microns’” (Final Dec. 20), we determine that Petitioner has not demonstrated that Wikey inherently discloses microbubbles or nanobubbles. Accordingly, Petitioner has not demonstrated that Wikey discloses every limitation of claim 13.” slip op. at 56

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “The Federal Circuit vacated and remanded our anticipation determinations as to claims 13, 14, and 17–27. Tennant, 11.1 The Federal Circuit further stated: “Because we vacate and remand to the Board to consider Tennant’s anticipation argument, we do not reach Tennant’s obviousness arguments (which depends on its contention that either Wikey or Davies produce nanobubbles).” Id. at 11.” slip op. at 3

  Patent outcomesUS RE45,415 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
• Microsoft Corporation v. Daedalus Blue, LLCAll claims unpatentable
  PTAB · Oct 21, 2022 · IPR2021-00831 · APJ Sally C Medley · IPR · Final written decision

  Claims 15–25 were shown unpatentable: claims 15–21 and 23–25 as obvious over Gelb and Tivoli, and claim 22 as obvious over Gelb, Tivoli, and Callaghan.

  RulingsFinal written decision

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

    “We begin with the language of the independent challenged claims. Claim 15 recites “[a] method for handling files within a policy-based data management system, the method comprising.” Ex. 1001, 16:21–22. Claim 23 recites “[a] storage device storing computer code executable by a processor to carry out a method comprising.” Id. at 16:61–62. The remaining limitations of the independent claims are the same and directed to (1) providing a policy set with at least one service class rule; (2) receiving one or more attributes of a file from one of a plurality of clients, the clients comprising at least two different computing platforms; (3) applying the service class rule to the file to assign a service class to the file; and (4) conducting operations on the file in a manner according to the service class. Id. at 16:23–31, 16:63–17:4. The involved claims do not recite a “distributed storage system,” a “storage area network system,” or a “networked, distributed system [environment].” Thus, even if Patent Owner were correct that an invention that involves a networked, distributed system environment dictates that the plurality of clients also be in the networked environment, the claims themselves don’t require a networked, distributed system environment. Indeed, the preamble of claim 23 recites “a storage device,” and the preamble of claim 15 recites a “data management system,” terms that are much broader than those the Patent Owner uses to describe “the invention.” PO Resp. 8–10. Although Patent Owner never explains what “clients in a networked environment” means, Dr. White testifies that “a person of ordinary skill in the art would have understood the ‘plurality of clients’ to refer to clients in a networked distributed systems environment, such that each challenged claim requires a networked environment where clients communicate through a network.” Ex. 2024 ¶ 50. But, again, there is nothing in the claims that recites a “networked distributed systems environment,” a “networked environment,” or “clients communicating through a network.” The method claims are directed to performing certain steps to a file from one of a plurality of clients. No networking or clients communicating through a network is claimed or even shown to be relevant to what is claimed. Indeed, in urging us to narrowly construe the term “plurality of clients,” Patent Owner does not discuss the claim language at all. PO Resp. 8–10. But, the name of the game is the claim. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). Here, Patent Owner fails to direct us to anything in the claim language itself that would support Patent Owner’s construction of “plurality of clients,” and we find nothing that supports the argument.” slip op. at 11

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

    “two different computing platforms.” Patent Owner contends that the limitation “computing platforms” should be construed to mean “operating systems.” PO Resp. 10–12. Petitioner disagrees and argues that “computing platforms” should be construed to mean “the combination of computer hardware and an operating system.” Pet. Reply 4–6. We understand that resolution of this issue is relevant only to Petitioner’s challenge based on Devarakonda. PO Resp. 2–3, 38–39 (arguing that Gelb alone fails to teach a plurality of clients but not addressing Gelb in combination with Tivoli), 55– 59 (arguing that Devarakonda fails to disclose clients that comprise at least two different operating systems); Pet. Reply 15–16; Tr. 5:16–22, 7:24–8:3, 25:22–26:23. For reasons explained below, we need not decide Petitioner’s challenge based on Devarakonda. Accordingly, for purposes of our Decision, we need not construe “computing platforms.” Other Terms We need not otherwise construe any other terms in the claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). D. Asserted Obviousness of Claims 15–21 and 23–25 over Gelb and Tivoli” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner, relying on the declaration testimony of Dr. Christopher Jules White, argues that a POSITA would have had “at least a bachelor’s degree in computer science, electrical engineering, computer engineering, or a similar discipline, along with two years of experience in the design, operation, or control of networked data management systems, and/or distributed systems.” PO Resp. 6 (citing Ex. 2024 ¶ 47). Patent Owner further argues that “Dr. White’s opinions and the arguments in this paper apply under either proposed level of ordinary skill in the art.” Id. at 7 (citing Ex. 2024 ¶ 49). We adopt Petitioner’s definition of the level of skill except that we delete the phrase “at least” to avoid ambiguity in the definition of the level of skill. Patent Owner’s proposed level overlaps substantially with Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed level of qualifications, the outcome would remain the same.” slip op. at 9

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “construction for “plurality of clients” to mean “clients in a networked environment.” Thus, we disagree with Patent Owner that the claims reflect that the ’132 patent’s field of endeavor is distributed storage systems. During oral argument, Patent Owner represented that its “analogous art argument depends on the construction of clients in a networked environment . . . for the first prong.” Tr. 39:20–40:11; see also Sur-Reply 7–8 (“[t]he lack of clients in a networked environment takes Gelb’s single-machine mainframe out of the ’132 Patent’s field of endeavor of distributed storage systems, which involves networked computers”). Accordingly, we determine that Patent Owner has failed to show that Gelb is not relevant to the obviousness analysis and agree with Petitioner that “Gelb’s teachings align closely to the subject matter of the ’132 Patent and therefore are analogous.” Pet. Reply 6.9” slip op. at 20

  Patent outcomesUS 8,671,132 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,671,132
• Momentum Dynamics Corporation v. Witricity CorporationAll claims unpatentable
  PTAB · Oct 12, 2022 · IPR2021-01127 · APJ Scott Raevsky · IPR · Final written decision

  Claims 1–8 are unpatentable because Kanno anticipates them and renders them obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not address the level of skill in the art. We are persuaded that Petitioner’s proposal is consistent with the problems and solutions in the ’635 patent and prior art of record. We adopt Petitioner’s definition of the level of skill, except that we delete the phrase “at least” to avoid including an expert in the definition of the level of skill.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDisclaimer not foundDecided for petitioner

    “We agree with Petitioner. The plain language of claim 1 is expansive, requiring only that the partially cancelled first magnetic field is “outside a spatial region through which power is transferred from the first source magnetic resonator to the device magnetic resonator.” The claim does not refer to a specific type of radiation, let alone far field radiation. The claim drafter deliberately chose the broader term “first magnetic field” rather than specifying “far field radiation.” We find nothing in the claim that points to a more restrictive interpretation of “first magnetic field.” The specification does not limit the partially canceled first magnetic field to far field radiation either, as it expressly contemplates that “the fields that need to be minimized or reduced can be either the far-field, or the near field (if the wavelength is much larger than the distance between the wireless power transfer system to the point of interest).” Ex. 1001, 51:33–37 (emphasis added). The specification could not be any plainer than this— referring explicitly to reducing the far field “or the near field.” Id.5” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We agree with Petitioner. Patent Owner’s arguments rely on a claim construction that we have not adopted. And Kanno discloses at least near-field cancellation by disclosing, for example, that angles “within the range of 90 to 180 degrees . . . minimized leakage of electromagnetic waves into the surrounding space effectively.” Ex. 1005, 28:36–41; Ex. 1003 ¶¶ 56 (citing, e.g., Ex. 1005, 28:18–42), 107 (similar), 111 (similar). Patent Owner does not dispute that Kanno teaches near-field cancellation. See, e.g., PO Resp. 9 (“reducing ‘near field strength’ as described in Kanno”). Thus, under the correct construction of this limitation as encompassing near-field radiation, far-field radiation, or both, we agree that Kanno teaches it. Not only that, but Patent Owner does not dispute Petitioner’s Reply argument that Kanno also discloses the same far-field cancellation as the ’635 patent, as Patent Owner neither filed a sur-reply nor addressed Petitioner’s Reply argument at the oral hearing. See Tr. 14:20–21 (resting on the briefs). And we agree with Petitioner’s argument, as supported by the unrebutted testimony of Dr. Arnold, that even under Patent Owner’s incorrect construction, Kanno teaches this limitation. Reply 6–7 (citing, e.g., Ex. 1003 ¶¶ 114–15). Dr. Arnold asserts that “[a] reduction in the strength of the electromagnetic near field generally corresponds with a reduction in the strength of the electromagnetic far field.” See Ex. 1003 ¶ 114. Dr. Arnold explains in detail how these near and far fields relate to one another as follows: The term “near field” is a technical term that refers to the electromagnetic near field of an antenna, as opposed to the radiative “far field”. The near field for an electromagnetically short antenna is defined as a region within one electromagnetic wavelength of the antenna. The electrical frequency used in the real-world implementation of the power generator is 3 MHz. Id. 27:44-48. A frequency of 3 MHz corresponds to an electromagnetic wavelength of 100 meters. Here, the measurement distance of 5 meters is well within the near field range of 100 meters, and constitutes a near field measurement. A reduction in the strength of the electromagnetic near field generally corresponds with a reduction in the strength of the electromagnetic far field Id. ¶ 114. In other words, if a field closer to an antenna is reduced, then the field farther from the antenna will be reduced too. This fact is unremarkable, as Dr. Arnold explains, “[t]he principles behind magnetic resonators to wirelessly transfer power have been known for over a century.” Id. ¶ 24.” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Even in light of Patent Owner’s arguments, which we address below, we agree with Petitioner. We find that one of ordinary skill in the art would have combined Kanno’s Example 1 with its fundamental arrangement because the specific details in Example 1 and test data would have indicated to the skilled artisan the desirability of combining these portions of Kanno. As Dr. Arnold persuasively testifies, “a POSA would have been motivated to look to Example 1 because it provides those specific implementation details for circuit component types and values, as well as test data showing that the power generator achieves high power transfer efficiency while minimizing electromagnetic field leakage.” Ex. 1003 ¶ 150. He further testifies, “given that Kanno describes ‘Example 1’ as a real-world implementation, a POSA would have had a reasonable expectation of success that the power generator using those implementation details would work.” Id. We agree and credit this unrebutted testimony in support of Petitioner’s motivation to combine separate portions of Kanno.” slip op. at 31

  Patent outcomesUS 9,306,635 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,306,635
• Apple Inc. v. Telefonaktiebolaget LM EricssonInstitution denied
  PTAB · Sep 21, 2022 · IPR2022-00348 · APJ Nathan A Engels · IPR · Institution

  The Board denied institution because Petitioner did not show Agiwal and Abedini were entitled to their provisional priority dates, leaving no reasonable likelihood of prevailing on claims 1–15.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “An inter partes review may not be instituted unless it is determined that “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 (2018). For the reasons set forth below, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any of the challenged claims, and we do not institute inter partes review.” slip op. at 2

  • BurdenDenied

    “Fatal to the Petition, though, Petitioner did not establish that the subject matter relied upon for prior art was effectively filed in the provisional applications. 35 U.S.C. §§ 102(a)(2), 102(d). Under the AIA, a provisional application must “describe[] the subject matter” relied upon as prior art in the reference patent. 35 U.S.C. §102(d); see also MPEP § 2154.01(b). Petitioner does not assert, much less show, that the provisional applications satisfy the subject-matter requirement. Accordingly, Petitioner has not shown that Agiwal and Abedini are entitled to the priority dates of their provisional applications, and Petitioner has not shown a likelihood that it would prevail in its challenges to any claims of the ’915 patent.” slip op. at 6

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedNot shown unpatentable

    “Fatal to the Petition, though, Petitioner did not establish that the subject matter relied upon for prior art was effectively filed in the provisional applications. 35 U.S.C. §§ 102(a)(2), 102(d). Under the AIA, a provisional application must “describe[] the subject matter” relied upon as prior art in the reference patent. 35 U.S.C. §102(d); see also MPEP § 2154.01(b). Petitioner does not assert, much less show, that the provisional applications satisfy the subject-matter requirement. Accordingly, Petitioner has not shown that Agiwal and Abedini are entitled to the priority dates of their provisional applications, and Petitioner has not shown a likelihood that it would prevail in its challenges to any claims of the ’915 patent.” slip op. at 6

  § 102 anticipation
  Patents in suitUS 10,484,915
• Arkema Inc. / Arkema France v. Honeywell International Inc.All claims unpatentable
  PTAB · Aug 25, 2022 · PGR2016-00012 · APJ Sheldon M Mcgee · PGR · Remand

  Claims 1–20 are unpatentable under § 102(a) for prior public use; the Board did not reach the remaining anticipation, obviousness, and enablement grounds.

  RulingsRemand decision

  • RemandOther

    “On October 1, 2019, the Federal Circuit held that we “abused [our] discretion by assuming the authority that 35 U.S.C. § 255 expressly delegates to the Director: to determine when a Certificate of Correction is appropriate,” and vacated our Final Written Decision. Honeywell Int’l Inc. v. Arkema Inc., 939 F.3d 1345 (Fed. Cir. 2019). The Federal Circuit instructed us to “authorize Honeywell to file a motion seeking leave to petition the Director for a Certificate of Correction.” Id. at 1351. Pursuant to the Federal Circuit’s mandate, we gave our authorization, and Patent Owner filed its Motion for Leave to Request a Certificate of Correction. PGR11 Paper 61; PGR12 Paper 41. After additional briefing from the parties was complete, we granted Patent Owner’s Motion. PGR11 Paper 77; PGR12 Paper 57. Patent Owner filed its Request for a Certificate of Correction, as well as a Petition to Accept [Unintentionally] Delayed Claim to Priority under 35 U.S.C. § 120 and 37 C.F.R. § 1.78. PGR11 Ex. 2174; PGR12 Ex. 2172.” slip op. at 3

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “Synthes USA, LLC v. Spinal Kinetics, Inc., 734 F.3d 1332, 1344 (Fed. Cir. 2013). And, although there are no bright-line rules for the amount of disclosure needed in an unpredictable art, that amount “necessarily changes with each invention” and “changes with progress in the field.” Ariad, 598 F.3d at 1351. Here, we find that the art of AAC was unpredictable and that a heat-transfer composition for AAC required specific technical features that were unpredictable and unexpected. Thus, we conclude that the ’525 application requires a more-detailed disclosure than would be required in a predictable field to adequately demonstrate possession of a heat-transfer composition consisting essentially of HFO-1234yf and PAG for use in AAC. (iii) Disclosure in the ’525 Application With these background findings in mind, we now turn to the four corners of the ’525 application—and we find that the ’525 application does not contain the detailed disclosure needed in this case to reasonably convey possession of a heat-transfer composition consisting essentially of HFO- 1234yf and PAG for use in AAC.” slip op. at 37

  • Skill levelSkill level board ownDecided for patent owner

    “develops new refrigerants for use as heat transfer fluids. Ex. 1002 ¶ 149. Such a person would have had a Ph.D. in Chemistry, Chemical Engineering, Mechanical Engineering, Material Science, or a related field or discipline and at least 3 to 5 years of experience, or alternatively an M.S. degree and 5 to 10 years of experience. Id. Patent Owner’s Declarant, Dr. Bivens, provides a similar description of the person of ordinary skill in the art, stating that such a person would have a B.S. degree in Chemical Engineering or Chemistry, and five years of work experience, or a Ph.D. or M.S. degree and 2–3 years of experience. Ex. 2001 ¶ 23. Based on these descriptions, we find that the parties’ definitions of ordinary skill in the art are substantially the same, and agree with the parties that an ordinarily skilled artisan would be educated in the Chemical and Chemical Engineering arts or related disciplines. We also agree with the parties that a person having less formal education, such as a B.S. or M.S. degree, would require more years of experience than a person with more formal education, such as a Ph.D., to qualify as an ordinarily skilled artisan. We also find that neither party states how any difference in the parties’ articulated levels of skill impacts this proceeding. Thus, our analysis would be the same regardless of any minor differences between the parties’ respective articulations. Finally, we note that the level of ordinary skill in the art is reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 20

  • Novelty / Anticipation (§102) › Prior-art status of a reference › On-sale bar (Pfaff, Helsinn)UnpatentableUnpatentable

    “Tr. 114:15–115:18 (emphases added). Thus, we find that Patent Owner does not contest that a heat-transfer composition consisting essentially of HFO- 1234yf and PAG for AAC was in public commercial use before the March 26, 2014, filing date of the ’017 patent. Accordingly, we find that Petitioner’s evidence, together with Patent Owner’s concessions, demonstrates by a preponderance of evidence that the claimed subject matter of the ’017 patent was in commercial use before its March 26, 2014, effective filing date. See Ex. 1002 ¶¶ 399–409. In particular, as to claims 1, 3–10, 12, 13, and 15–20, we credit Dr. Brown’s uncontested testimony that the refrigerant-lubricant AAC composition of the Ford Transit Custom Bus, the Mazda CX 5 (2.0i and 2.2D), and the Opel Mocca used HFO-1234yf and a PAG lubricant as early as 2012. Ex. 1002 ¶ 399 (citing Ex. 101324, 2, 38, 55, 70). We also credit Dr. Brown’s 24 Behr Hella Services, Refrigerant and Oil Filling Quantities Passenger Cars & Commercial Vehicles 2014–15. PGR12 Ex. 1013. (“Service Guide”). PGR12 Ex. 1013. The Service Guide provides tables setting forth specifications for refrigerant type, refrigerant quantity, vehicle manufacturers’ original equipment compressor oil type, and oil filling quantity for the air-conditioning system of each vehicle listed in the tables. Id. at 2–3. Petitioner and Dr. Brown direct us to the Sevice Guide’s entries calculations, which show that the Ford Transit Custom Bus had an AAC refrigerant-lubricant composition of 26.7% of PAG lubricant and 73.3% of HFO-1234yf (Ex. 1002 ¶ 401 (citing Ex. 1013, 38)); the Mazda CX 5 2.0i had 16.7% PAG lubricant and 83.3% HFO-1234yf (Ex. 1002 ¶ 402 (citing Ex. 1013, 55)); the Mazda CX 5 2.2D had a 17.5% PAG lubricant and 82.5% HFO-1234yf (id.); and the Opal Mocca had 11.6% PAG lubricant and 88.4% HFO-1234yf (Ex. 1002 ¶ 402 (citing Ex. 1013, 70)). As to dependent claims 2, 11, and 14, which all require that the lubricant is present “in an amount from about 30% to about 50% weight,” we credit Dr. Brown’s uncontested testimony that the refrigerant-lubricant composition of the Ford Transit Custom Bus recited lubricant amount. Ex. 1002 ¶ 403. In particular, we agree with Dr. Brown that, because the lubricant accounts for 26.7% of the AAC refrigerant-lubricant composition in the Ford Transit Custom Bus, the lubricant makes up “about 30%” of the refrigerant-lubricant composition as claimed. Id. For these reasons, we find that Petitioner has met its burden to show that claims 1–20 are unpatentable for anticipation under § 102(a)(1).” slip op. at 55

  Patent outcomesUS 9,157,017 unpatentable
  § 102 anticipation§ 112 disclosure
  Patents in suitUS 9,157,017
• Arkema Inc. / Arkema France v. Honeywell International Inc.All claims unpatentable
  PTAB · Aug 25, 2022 · PGR2016-00011 · APJ Grace Karaffa Obermann · PGR · Remand

  Claims 1–20 are unpatentable under § 102(a) for prior public use; the Board did not reach the other anticipation, obviousness, and enablement grounds.

  RulingsRemand decision

  • RemandOther

    “On October 1, 2019, the Federal Circuit held that we “abused [our] discretion by assuming the authority that 35 U.S.C. § 255 expressly delegates to the Director: to determine when a Certificate of Correction is appropriate,” and vacated our Final Written Decision. Honeywell Int’l Inc. v. Arkema Inc., 939 F.3d 1345 (Fed. Cir. 2019). The Federal Circuit instructed us to “authorize Honeywell to file a motion seeking leave to petition the Director for a Certificate of Correction.” Id. at 1351. Pursuant to the Federal Circuit’s mandate, we gave our authorization, and Patent Owner filed its Motion for Leave to Request a Certificate of Correction. PGR11 Paper 61; PGR12 Paper 41. After additional briefing from the parties was complete, we granted Patent Owner’s Motion. PGR11 Paper 77; PGR12 Paper 57. Patent Owner filed its Request for a Certificate of Correction, as well as a Petition to Accept [Unintentionally] Delayed Claim to Priority under 35 U.S.C. § 120 and 37 C.F.R. § 1.78. PGR11 Ex. 2174; PGR12 Ex. 2172.” slip op. at 3

  • Skill levelSkill level board ownDecided for petitioner

    “develops new refrigerants for use as heat transfer fluids. Ex. 1002 ¶ 149. Such a person would have had a Ph.D. in Chemistry, Chemical Engineering, Mechanical Engineering, Material Science, or a related field or discipline and at least 3 to 5 years of experience, or alternatively an M.S. degree and 5 to 10 years of experience. Id. Patent Owner’s Declarant, Dr. Bivens, provides a similar description of the person of ordinary skill in the art, stating that such a person would have a B.S. degree in Chemical Engineering or Chemistry, and five years of work experience, or a Ph.D. or M.S. degree and 2–3 years of experience. Ex. 2001 ¶ 23. Based on these descriptions, we find that the parties’ definitions of ordinary skill in the art are substantially the same, and agree with the parties that an ordinarily skilled artisan would be educated in the Chemical and Chemical Engineering arts or related disciplines. We also agree with the parties that a person having less formal education, such as a B.S. or M.S. degree, would require more years of experience than a person with more formal education, such as a Ph.D., to qualify as an ordinarily skilled artisan. We also find that neither party states how any difference in the parties’ articulated levels of skill impacts this proceeding. Thus, our analysis would be the same regardless of any minor differences between the parties’ respective articulations. Finally, we note that the level of ordinary skill in the art is reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 20

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable

    “We agree with Petitioner that the ’525 application’s statement that the compounds are “adaptable for use” weighs against a finding of adequate written description. First, “adaptable for use” is vague, as Dr. Bivens acknowledges. See Ex. 1177, 151:15 (testifying that “adaptable for use can have a wide range of meaning”). Second, the ’525 application gives no direction on how a skilled artisan would need to adapt any particular composition for use in AAC, or even if any “adaptation” was necessary. We find that such a teaching is important in this case to show that the inventors had possession of the claimed invention, given our findings above that the art of AAC was unpredictable and that a heat-transfer composition for AAC required specific technical features that were unpredictable and unexpected. For completeness, we again reject Patent Owner’s argument that “[t]o show the inventors possessed claim 1 requires no more” than the statement in the written description that “‘the compositions of the present invention are believed to be adaptable . . . with or without system modification.’” PGR12 Resp. 27–28 (quoting Ex. 1001, 7:4–8). Regardless of the exact wording of claim 1, the inventors “still [had to have] describe[d] some way of performing the claimed methods.” Ariad, 598 F.3d at 1355. And here, with merely a passing reference to AAC, the ’525 application fails to provide any credible “technologic knowledge” to demonstrate to an ordinarily skilled artisan that Patent Owner “was in possession of the invention that is claimed.” Id.” slip op. at 43

  • Novelty / Anticipation (§102) › Prior-art status of a reference › On-sale bar (Pfaff, Helsinn)UnpatentableUnpatentable

    “unless . . . the claimed invention was . . . in public use . . . before the effective filing date of the claimed invention.” 35 U.S.C. § 102(a)(1). “The proper test for the public use prong . . . is whether the purported use was accessible to the public or was commercially exploited.” Delano Farms Co. v. Cal. Table Grape Comm’n, 778 F.3d 1243, 1247 (Fed. Cir. 2015) (quotation omitted). “Commercial exploitation is a clear indication of public use . . . .” Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1380 (Fed. Cir. 2005).” slip op. at 53

  Patent outcomesUS 9,157,017 unpatentable
  § 102 anticipation§ 112 disclosure
  Patents in suitUS 9,157,017
• Triller, Inc. v. Tiktok Pte. Ltd.Institution denied
  PTAB · May 16, 2022 · IPR2022-00181 · APJ Juliet Mitchell Dirba · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 19, 23, 24, or 28 unpatentable on any asserted ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . 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). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “Petitioner contends that the PCT application does not include “anything that could reasonably be characterized” as disclosing the metadata limitation. Pet. 12–13 (citing Ex. 1025 ¶ 81). Petitioner, however, does not elaborate or address any aspect of the PCT application’s disclosure. See id. Patent Owner argues that the PCT application discloses the metadata limitation. Prelim. Resp. 6–12. According to Patent Owner, the PCT application describes a mobile device receiving and displaying “descriptive information” about a track (such as the song title, artist, and duration) without downloading the track itself, and this “descriptive information” discloses the “track meta-data” recited in the claim. Id. at 8–11 (citing Ex. 1008, 4:27–5:9, 11:6–16, 13:14–21, 51:7–13, 91:7–10, 105:16–18, 116:1–10, 133:2–3, 134:10–15, 149:21–23, 149:25–150:3, 150:12–26, 152:1–9, 153, 156). In support, Patent Owner notes that the PCT application describes “[m]etadata” as “[i]ndividual items of data or collections of data, of,” among other things, mobile content such as “full music downloads.” Id. at 7 (citing Ex. 1008, 13:14–21) (emphasis omitted). Patent Owner further explains by asserting that “[t]he fact that the track metadata is provided as a search result, but not the music file itself, demonstrates” disclosure of the metadata limitation. Id. at 9. In addition, Patent Owner submits that the PCT application discloses “sharing” track information because users can send their playlists and recommendations to other users. Id. at 11–12 (citing Ex. 1008, 5:21–22, 7:2–4, 59:10–14, 61:15–28, 65:1–17, 66:18–9, 67:7–9, 101:17–102:13, 130:8–17, Figs. 84, 97, 106). On this record, we are persuaded that the PCT application discloses the metadata limitation, which (for purposes of this Decision) requires a software application that uses “track meta-data” that (1) exists separately from the music track, (2) exists separately in any way from other forms of metadata, and/or (3) is stored in a separate database. See supra § II.B (claim construction). In particular, Patent Owner persuasively shows that the PCT application discloses a mobile device application that uses “track meta-data” (e.g., attributes of music tracks, such as the song’s title, artist, and duration) stored on the mobile device while the corresponding track and its metadata remain separately stored on a remote server.” slip op. at 13

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “2. Law on Written Description Support “It is elementary patent law that a patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (quoting In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995)). “To satisfy the written description requirement [in § 112,] the disclosure of the prior application must ‘convey with reasonable clarity to those skilled in the art that, as of the filing date sought, [the inventor] was in possession of the invention.’” Id. (second alteration in original) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991)). “[T]he hallmark of written description is disclosure.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The sufficiency of written description support is based on “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. “Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. “The level of detail required to satisfy the written description requirement” necessarily “varies predictability of the relevant technology.” Id. The invention need not be described in haec verba, but a disclosure that merely renders obvious the claims does not provide adequate written description support. Id. at 1352.” slip op. at 12

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

    “connect these dots. For example, it is unclear whether Petitioner proposes a combination of Abrams’s web browser and Khedouri’s music application, or whether it instead proposes that one be replaced with the other. See id. at 53–54. Petitioner also does not address whether a person of ordinary skill in the art would have had a reasonable expectation of success in combining a web browser and a music application. See id. Rather, Petitioner simply refers to combining “Khedouri’s music sharing functions” with “Abrams’ social networking functions” (id. at 54), which does not address the requirement that “a software application” meet these limitations. Moreover, Petitioner does not sufficiently explain why a person of ordinary skill in the art would have combined the functionality of Abrams and Khedouri. See KSR, 550 U.S. at 418 (obviousness requires analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue”); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). Liberally interpreting the relevant portion of the Petition, Petitioner contends that a motivation to combine is established because: (1) the references themselves provide the motivation to combine, (2) the proposed combination was desirable and predictable, (3) an ordinary artisan would have been motivated to add music to Abrams, and/or (4) an ordinary artisan would have been motivated to add Abrams’s social networking functions to Khedouri. See Pet. 53–54; see also supra § II.E.1 (reproducing relevant portion of Petition with corresponding reference numbers). We are not persuaded. themselves provide the requisite motivation. See Pet. 53. Abrams is directed to “connecting users in an online computer system based on their relationships within social networks.” Ex. 1009 ¶ 1; see also id. ¶ 36 (“What is needed is a system that allows individuals to replicate the process of developing personal relationships through social networks, using a computer system and database.”). Khedouri, on the other hand, is directed to “selecting, requesting, downloading, and playing audio” files on a user’s portable audio player device from a content delivery service. Ex. 1011, Abst., ¶ 3. Petitioner identifies (and we perceive) no disclosure in either reference that suggests their combination. See Pet. 53–54. Petitioner incorrectly implies that Khedouri “expands on [Abrams’s] ‘music theme.’” Id. at 53. Abrams states that a user can identify the user’s interests as well as favorite music, books, tv, and movies (Ex. 1009 ¶ 91, Fig. 2), and each of these are stored as a text field in Abrams’s database (id. ¶¶ 89, 91, Fig. 2). This is a passing reference to music, not a music theme. Petitioner also contends that both Abrams and Khedouri teach most limitations of the claim (Pet. 53 (citing Ex. 1025, 120–123)), but even if that were true, it does not explain why a person of ordinary skill in the art would have combined them. Second, Petitioner’s assertions that the proposed combination would have been “desirable” and “predictable” are conclusory and entitled to little weight. See Pet. 54. Petitioner relies on Dr. Shamos’s testimony in support, but it similarly fails to provide analysis or evidence to support his conclusions. See Ex. 1025 ¶ 170. Accordingly, we assign little weight to that testimony. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also TQ Delta, 942 F.3d at 1358. a desirable feature” and the combination would provide users “the ability to not only identify and publicize information about their favorite music on their profiles (and learn about others’ favorite music from others’ profiles) but to actually search for that music and be able to listen to it.” Pet. 54 (citing Ex. 1025 ¶ 170). Although this identifies vague benefits of a combination (i.e., sharing information and facilitating access to music), it fails to explain why an ordinary artisan would have been motivated to incorporate these benefits in Abrams’s social network. Petitioner also provides no evidence that an ordinary artisan would have had reasonable expectation of success in making this proposed combination. See id. at 53– 54. Given the specific facts and circumstances of this case, we are concerned that this rationale suffers from improper hindsight bias. See KSR, 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1068 (Fed. Cir. 2018) (“We have observed that the prejudice of hindsight bias often overlooks that the genius of invention is often a combination of known elements which in hindsight seems preordained.” (internal quotation marks omitted)).” slip op. at 24

  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 9,294,430
• Triller, Inc. v. Tiktok Pte. Ltd.Instituted
  PTAB · May 16, 2022 · IPR2022-00180 · APJ John D Hamann · IPR · Institution

  The Board instituted IPR on all challenged claims and all asserted grounds after finding a reasonable likelihood of prevailing on at least one claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “framework, with the first part being whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (addressing in a two part framework the factors presented in Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III(C)(5), first paragraph)). As we discuss below, we are not persuaded that the first part of the framework is met. Patent Owner does not argue that Abrams previously was presented to the Office. See Prelim. Resp. 7 n.3, 25 n.7. And we are not persuaded that Abrams is substantially the same art as Sittig or Reddick simply because Abrams may have one claimed feature in common with Sittig (i.e., “a generic browser”) and a different claimed feature in common with Reddick (i.e., allowing a user to edit, but not create, profiles). Id. Petitioner is relying on Abrams to teach multiple claimed features, and Patent Owner’s § 325(d) arguments address only a subset of those features. Id.” slip op. at 6

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “information presented in the petition . . . and any response . . . 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); see 37 C.F.R. § 42.108 (2021). Upon consideration of the papers, we determine that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’322 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a bachelor’s degree in computer science, electrical engineering, or an equivalent discipline, or equivalent experience, including familiarity with multitasking and multithreading, wireless communications and client/server computing, and, in addition, familiarity with digital music distribution and DRM.” Ex. 1025 ¶ 62; Pet. 35. Patent Owner submits that one of ordinary skill in the art would have had “a Bachelor’s degree in Computer Science, Computer Engineering, Human Factors, or an equivalent degree and at least two years of experience working in the fields of user interfaces, communications applications, networking applications, or media applications, or a person with equivalent education, work, or experience in such fields.” Prelim. Resp. 2. The parties’ dispute regarding the level of ordinary skill in the art does not substantively impact our analysis for purposes of institution. Rather, we find in applying either parties’ definition for what comprises the level of ordinary skill in the art that Petitioner shows that there is a reasonable likelihood that it would prevail in proving the unpatentability of the challenged claims. At this stage of the proceeding, however, we adopt Petitioner’s proposed definition as it is supported by expert testimony, and Patent Owner’s is not. slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownOther

    “Petitioner does not identify any specific claim term for construction. Pet. 5. Patent Owner submits that the claim term “software application” is defined in the Specification of the ’322 patent. Prelim. Resp. 3. More specifically, Patent Owner submits that the “Definitions” section of the Specification provides the following: “Software Application: The Client software application which is to be delivered over-the-air to, or pre-installed on, the Wireless Computing Device.” See id. (quoting Ex. 1002, 8:63–65). We note that the definition for software application incorporates, based on the capitalization of defined words, the following additional definitions10 from the “Definitions” section of the Specification:” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · Graham
  Patents in suitUS 9,992,322
• Triller, Inc. v. Tiktok Pte. Ltd.Instituted
  PTAB · May 16, 2022 · IPR2022-00179 · APJ John D Hamann · IPR · Institution

  The Board instituted inter partes review of claims 1–3, 6, 22, 26, 27, and 31 on all asserted grounds, finding a reasonable likelihood of unpatentability based on the petition.

  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 . . . and any response . . . 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); see 37 C.F.R. § 42.108 (2021). Upon consideration of the papers, we determine that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’132 patent.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “In evaluating arguments under § 325(d), we use a two-part framework, with the first part being whether the same or substantially the 4 US 2006/0008256 A1, published Jan. 12, 2006 (Ex. 1011, “Khedouri”). 5 US 8,572,169 B2, issued Oct. 29, 2013 (Ex. 1010, “Partovi”). 6 US 2010/0031366 A1, published Feb. 4, 2010 (Ex. 1012, “Knight”). substantially the same arguments previously were presented to the Office. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (addressing in a two part framework the factors presented in Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III(C)(5), first paragraph)). As we discuss below, we are not persuaded that the first part of the framework is met. Patent Owner does not argue that Abrams previously was presented to the Office. See Prelim. Resp. 7 n.3, 26 n.7. And we are not persuaded that Abrams is substantially the same art as Sittig or Reddick simply because Abrams may have one claimed feature in common with Sittig (i.e., “a generic browser”) and a different claimed feature in common with Reddick (i.e., allowing a user to edit, but not create, profiles). Id. Petitioner is relying on Abrams to teach multiple claimed features, and Patent Owner’s § 325(d) arguments address only a subset of those features. Id. Moreover, as we discuss below, we disagree with Patent Owner that Sittig employing a browser was a reason that particular rejection was overcome. See infra Section IV (addressing Applicant’s remarks to a rejection). Rather, the rejection was overcome for failing to teach a limitation (i.e., that a software application allowed a user, over a wireless connection, to create a user account) that Abrams teaches. See id.; infra Section VI(B)(3) (applying Abrams). Nor do we agree with Patent Owner that Abrams (unlike Reddick) fails to teach allowing a user to create an account. See infra Section VI(B)(3) (applying Abrams). substantially the same arguments previously were presented to the Office. See Prelim. Resp. 7 n.3, 26 n.7. In light of the above, we find that the first part of the Advanced Bionics framework is not met, and thus, we do not proceed to the second part. See Advanced Bionics, Paper 6 at 10. Accordingly, we decline to exercise discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ dispute regarding the level of ordinary skill in the art does not substantively impact our analysis for purposes of institution. Rather, we find in applying either parties’ definition for what comprises the level of ordinary skill in the art that Petitioner shows that there is a reasonable likelihood that it would prevail in proving the unpatentability of the challenged claims. At this stage of the proceeding, however, we adopt Petitioner’s proposed definition as it is supported by expert testimony, and Patent Owner’s is not. During trial, and in accordance with our Rules, the parties should address what substantive effect, if any, different proposed definitions for the level of ordinary skill in the art have on analyzing what the prior art teaches or in otherwise evaluating unpatentability of the challenged claims.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “Pet. 4. Patent Owner submits that the claim term “software application” is defined in the Specification of the ’132 patent. Prelim. Resp. 3. More specifically, Patent Owner submits that the “Definitions” section of the Specification provides the following: “Software Application: The Client software application which is to be delivered over-the-air to, or pre-installed on, the Wireless Computing Device.” See id. (quoting Ex. 1001, 8:61–63). We note that the definition for software application incorporates, based on the capitalization of defined words, the following additional definitions7 from the “Definitions” section of the Specification: (i) “Client: A computing device connected to a network delivering the features and functions of a network-centric application to the user or consumer of the application”; (ii) “Wireless Computing Device: A type of Client which connects to the network via a Wireless Network”; and (iii) “Wireless Network: A network which provides wireless” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · Graham
  Patents in suitUS 9,648,132

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.