• Jiangsu Favored Nanotechnology Co., Ltd. v. P2i Ltd.All claims unpatentable
  PTAB · Apr 11, 2025 · IPR2024-00380 · APJ Sheldon M Mcgee · IPR · Final written decision

  Claims 1–5, 7, and 9–14 are unpatentable as obvious over Cohen and Legein or Francesch and Legein; Petitioner’s motion to strike is denied as moot.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “The parties agree that a person of ordinary skill in the art in the field of the ’087 patent in June 20154 “would have had at least a bachelor’s degree in a field such as chemistry, physics, or chemical engineering, as well as at least two years of experience with plasma-polymerization techniques.” Pet. 20 (citing Ex. 1002 ¶¶ 22–29); PO Resp. 13 (Patent Owner stating that it “does not dispute this characterization of the level of ordinary skill in the art.”); see also PO Sur-reply 1–2 (noting both parties’ agreement on the education and experience level of the ordinarily skilled artisan).” slip op. at 7

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

    “On the fully developed trial record, we determine that no claims need an express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Because of Patent Owner’s shifting definitions of the education and experience level of the ordinarily skilled artisan, it is unclear on the complete record what precise definition Patent Owner and Dr. Senkevitch are applying when arguing the skilled artisan’s capabilities. PO Resp. 13, 22–27, 31–32, 34–40; PO Sur-reply 1–6, 11–13; Ex. 2007 ¶¶ 30, 31, 33, 34, 37, 40, 52–55, 60, 68, 74, 76, 77, 80–86, 89, 91, 94, 95, 100, 102–105, 108, 110, 111, 113–116, 118–120, 122, 124, 127–134. We, therefore, give Dr. Senkevitch’s testimony regarding the capabilities of a person of ordinary skill in the art minimal weight, which leaves us with Patent Owner’s insufficiently supported arguments regarding the skilled artisan’s capabilities. PO Resp. 13, 22–27, 31–32, 34–40; PO Sur-reply 1–6, 11–13. Moreover, as Petitioner correctly points out, the ʼ087 patent expressly teaches that the precise conditions for forming a protective polymeric coating “will vary depending upon factors such as, without limitation, the nature of the monomer compound, the crosslinking agent, the substrate, as well as the desired properties of the coating” and that such “conditions can be determined using routine methods.” Ex. 1001 15:1–15:5 (emphasis added); Pet. Reply 17. Where the patent itself leaves to the judgment of an ordinarily skilled artisan the assessment of these factors to ascertain suitable conditions for forming the protective coating, we find persuasive Petitioner’s view that it would have been well within the level of ordinary skill to ascertain such suitable conditions.” slip op. at 20

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

    “We disagree with Patent Owner. Although the claims of the ʼ087 patent recite obtaining the protective cross-linked polymeric coating “by exposing the device or component to a plasma,” the field of endeavor analysis in an analogous art inquiry does not exclusively turn on the claims at issue, but rather takes account of the entirety of a patent’s disclosure. See In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004) (explaining that “the PTO must show adequate support for its findings on the scope of the field of endeavor in the application’s written description and claims” (emphasis added)); In re Mettke, 570 F.3d 1356, 1359 (Fed. Cir. 2009) (rejecting an argument that the field of endeavor was limited to a claimed “Internet terminal” when “the specification describes various communication media, including facsimile machines and email, as related to the invention.”). This is significant here because the ʼ087 patent discloses that “[t]he … invention relates to protective coatings” and specifically “relates to protective coatings for electronic or electrical devices and components thereof, and methods of forming such coatings.” Ex. 1001, 1:14–17. Based on this disclosure, we find that the ʼ087 patent’s field of endeavor relates to “protective coatings for electronic or electrical devices and components thereof” broadly, not just those formed on such devices or components via a plasma polymerization process as asserted by Patent Owner. Id. Although Cohen does not explicitly disclose that its crosslinked polymers constitute a “protective coating,” Cohen does disclose that its “copolymerizable mixture can be cast into films” (Ex. 1004, 2:61–62), that the polymerization can “effected in situ,” and that the polymers may be used in “numerous” electrical applications (id. at 5:17–25). Tr. 8:9–10:2, 27:2– 21; see Pet. Reply 5 (explaining how “Cohen described insulating polymers that could be applied as films and be used to protect substrates including cables and electrical coils.” (citing Ex. 1004, 2:60–63, 5:13–25)). These disclosures suggest strongly that Cohen’s crosslinked polymers––if cast into a film or formed in situ on an electrical device or component––would serve as a protective coating on that electrical device or component, even though Cohen does not expressly refer to its crosslinked polymers ipsis verbis as a “protective coating.” Thus, we find that Cohen is within the field of endeavor of the ʼ087 patent.” slip op. at 15

  Patent outcomesUS 11,041,087 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,041,087
• Markforged Inc. v. Continuous Composites, Inc.Institution denied
  PTAB · Jan 11, 2023 · IPR2022-01220 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 13, 14, and 17–20 unpatentable on the asserted obviousness grounds.

  RulingsInstitution decision

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

    “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 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level board ownOther

    “On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). A more specific definition is not necessary for purposes of deciding whether to institute review.” slip op. at 7

  • Expert testimonyPetitioner expert discountedOther

    “means of the precuring device 15, causing the surface to dry and stick.”). In light of these disclosures in Wohrl, Petitioner does not adequately explain why a POSITA would have understood that using a nip roller to press the path onto the core, then precuring the path as it is laid, creates an anchor as the ’798 patent teaches. Nor does Petitioner sufficiently address why a POSITA would have understood Wohrl to be teaching the use of an anchor when Wohrl uses a core to support the formation of the part. Moreover, Dr. Rosen’s declaration testimony on this point is entitled to little to no weight as it merely parrots the Petition. Compare Pet. 101–102, with Ex. 1002 ¶¶ 414–416; see 37 C.F.R. § 42.65(a).” slip op. at 34

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

    “teachings of multiple references, an articulated reason with some rational underpinning to combine the known elements in the fashion claimed must be provided. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); see also In re Magnum Oil Tools, Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (It is the petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention[s], and that the skilled artisan would have had a reasonable expectation of success in doing so.” (citation and internal quotation marks omitted)). Having reviewed the parties’ arguments and evidence of record, we are not persuaded that Petitioner provides sufficient articulated reasoning with a rational underpinning as to why one of ordinary skill in the art would have combined the teachings of Ma and Lipsker in the manner recited in the challenged claims.” slip op. at 14

  § 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,987,798
• Google LLC v. Valtrus Innovations LimitedInstitution denied
  PTAB · Jan 3, 2023 · IPR2022-01197 · APJ Sheldon M Mcgee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on the Ogawa grounds and § 325(d) barred the Vea grounds.

  RulingsInstitution decision

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

    “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). The findings and conclusions set forth in this Decision are provided for the exclusive purpose of explaining our determination that Petitioner has not met that standard on this record. slip op. at 7

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “framework set forth under Advanced Bionics, LLC v. Med-El Electromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 7 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). Under that framework, we must first determine whether the same or substantially the same art or arguments previously were presented to the Office. If so, we must then determine whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Id. at 8.” slip op. at 21

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985))). A more specific definition is not necessary for purposes of deciding whether to institute review. To the extent a more specific definition is required, however, we adopt Petitioner’s proposed definition because, on this record, it is consistent with the disclosures of the asserted prior art references.” slip op. at 10

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “12 Dr. Madisetti’s testimony here is entitled to little to no weight as it merely parrots the Petition. 37 C.F.R. § 42.65(a).” slip op. at 19

  § 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 6,816,809
• 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
• Apple Inc. v. Parus Holdings, Inc.No claims unpatentable
  PTAB · Sep 9, 2021 · IPR2020-00687 · APJ Sheldon M Mcgee · IPR · Final written decision

  Claims 1–7, 10, and 14 were not shown unpatentable because Petitioner did not establish that Ladd’s speech-recognition device recognizes speech without predefined voice patterns.

  RulingsFinal written decision

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

    “The parties agree that this term at least requires a “speech recognition device that recognizes spoken words without . . . using predefined voice patterns,” but disagree as to whether it should require a device that recognizes spoken words “without adapting to individual speakers.” PO Resp. 21 (“The proper construction of ‘speaker-independent speech recognition device’ is consistent with the construction issued by the Western District of Texas, though it does not include all of that court’s construction, and requires at least ‘speech recognition device that recognizes spoken words without using predefined voice patterns.’”); Reply 2 (“For purposes of this IPR, Apple submits the Court’s construction should be applied.”). The dispute regarding whether the term should preclude adapting to individual speakers does not impact any issue in this proceeding, and Petitioner has agreed to Patent Owner’s construction in this proceeding, so long as we do not resolve the dispute over adapting to individual speakers. Tr. 12:24–13:4 (“JUDGE McKONE: So you’d be happy if we essentially adopted Parus’s construction with a footnote or some kind of note that we’re not resolving the issue of adapting to individual speakers? MS. BAILEY: That would be fine for purposes of this IPR, Your Honor.”). We adopt the parties’ agreed approach. For purposes of this proceeding, “speaker-independent speech recognition device” means “speech recognition device that recognizes spoken words without using predefined voice patterns.” This is consistent with the ’084 patent’s statement (relied on by both parties) that “[t]he voice browsing system recognizes naturally spoken voice commands and is speaker-independent; it does not have to be trained to recognize the” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “least a Bachelor’s degree in Electrical Engineering, Computer Engineering, Computer Science, or an equivalent degree, with at least two years of experience in interactive voice response systems, automated information retrieval systems, or related technologies. Pet. 7 (citing Ex. 1003 ¶ 28). On the complete record, we adopt Petitioner’s definition of one of ordinary skill in the art for essentially three reasons. First, Patent Owner does not contest Petitioner’s assertion. See generally PO Resp. Also, neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Moreover, the level of ordinary skill in the art is also reflected by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). C. Asserted Obviousness of Claims 1–7, 10, and 14 (Grounds 1–3)” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “speech-recognition device” discussed supra, this limitation requires a “speech recognition device that recognizes spoken words without using predefined voice patterns.” A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Obviousness is resolved based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Petitioner bears the burden of proving unpatentability of the challenged claims, and the burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Petitioner must demonstrate obviousness by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d); see also Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to” slip op. at 25

  • ExcludeMotion to exclude, deniedDenied

    “A motion to exclude should be directed to the admissibility of evidence. See 37 C.F.R. § 42.64; Patent Trial and Appeal Board Consolidated Trial Practice Guide 79 (November 2019) (“TPG”) (“A motion to exclude must explain why the evidence is not admissible (e.g., relevance or hearsay) but may not be used to challenge the sufficiency of the evidence to prove a particular fact.”). According to the Trial Practice Guide, a motion to exclude is not a vehicle to “address arguments or evidence that a party believes exceeds the proper scope of reply or sur-reply.” TPG 79. Rather, “[i]f a party believes that a brief filed by the opposing party raises new issues, is accompanied by belatedly presented evidence, or otherwise exceeds the proper scope of reply or sur-reply, it may request authorization to file a motion to strike.” Id. at 80. Patent Owner did not file a motion to strike. Patent Owner’s Motion to Exclude does not address the admissibility of Dr. Terveen’s testimony. Rather, it argues that the testimony exceeds the proper scope of reply evidence, either because it does not respond to the Patent Owner Response or because Petitioner did not follow our rules in seeking to submit supplemental information. See generally Mot. Excl. Thus, we agree with Petitioner that Patent Owner’s Motion to Exclude does not state a proper basis for excluding evidence and, therefore, we deny the motion for that reason.” slip op. at 34

  Patent outcomesUS 9,451,084 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,451,084
• Apple Inc. v. Parus Holdings, Inc.No claims unpatentable
  PTAB · Sep 9, 2021 · IPR2020-00686 · APJ David C Mckone · IPR · Final written decision

  Claims 1–7, 9, 10, 13, 14, 18–21, and 25–30 were not shown unpatentable because the asserted combinations did not establish the claimed speaker-independent speech recognition device.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “predefined voice patterns,” but disagree as to whether it should require a device that recognizes spoken words “without adapting to individual speakers.” PO Resp. 21 (“The proper construction of ‘speaker-independent speech recognition device’ is consistent with the construction issued by the Western District of Texas, though it does not include all of that court’s construction, and requires at least ‘speech recognition device that recognizes spoken words without using predefined voice patterns.’”); Reply 2 (“For purposes of this IPR, Apple submits the Court’s construction should be applied.”). The dispute as to whether the term should preclude adapting to individual speakers does not impact any issue in this proceeding, and Petitioner has agreed to Patent Owner’s construction in this proceeding, so long as we do not resolve the dispute over adapting to individual speakers. Tr. 12:24–13:4 (“JUDGE McKONE: So you’d be happy if we essentially adopted Parus’s construction with a footnote or some kind of note that we’re not resolving the issue of adapting to individual speakers? MS. BAILEY: That would be fine for purposes of this IPR, Your Honor.”). We adopt the parties’ agreed approach. For purposes of this proceeding, “speaker-independent speech recognition device” means “speech recognition device that recognizes spoken words without using predefined voice patterns.” This is consistent with the ’431 patent’s statement (relied on by both parties) that “[t]he voice browsing system recognizes naturally spoken voice commands and is speaker-independent; it does not have to be trained to recognize the voice patterns of each individual user. Such speech recognition systems use phonemes to recognize spoken words and not predefined voice patterns.” Ex. 1001, 4:38–43; see also PO Resp. 21–22 (citing Ex. 1001, 4:34–43);” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Skill in the Art Petitioner, relying on the testimony of Dr. Terveen, contends that a person of ordinary skill in the art “would have had a Bachelor’s degree in Electrical Engineering, Computer Engineering, Computer Science, or equivalent degree, with at least two years of experience in interactive voice response systems, automated information retrieval systems, or related technologies, such as web-based information retrieval systems.” Pet. 6 (citing Ex. 1003 ¶ 28). Patent Owner does not contest Petitioner’s proposal or offer an alternative. Also, neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. On the complete record, we adopt Petitioner’s proposed level of skill.” slip op. at 12

  • ExcludeMotion to exclude, deniedDenied

    “A motion to exclude should be directed to the admissibility of evidence. See 37 C.F.R. § 42.64; TPG 79 (“A motion to exclude must explain why the evidence is not admissible (e.g., relevance or hearsay) but may not be used to challenge the sufficiency of the evidence to prove a particular fact.”). According to the Trial Practice Guide, a motion to exclude is not a vehicle to “address arguments or evidence that a party believes exceeds the proper scope of reply or sur-reply.” TPG 79. Rather, “[i]f a party believes that a brief filed by the opposing party raises new issues, is accompanied by belatedly presented evidence, or otherwise exceeds the” slip op. at 41

  • Strike new argumentNew argument disregardedDecided for patent owner

    “corresponding to an unclaimed second step not part of speech recognition would be an impermissible new argument presented for the first time in the Reply. As explained in the Board’s Trial Practice Guide, Petitioner’s change in direction exceeds the proper scope of a reply: Generally, a reply or sur-reply may only respond to arguments raised in the preceding brief. 37 C.F.R. § 42.23, except as noted above. “Respond,” in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing. While replies and sur-replies can help crystalize issues for decision, a reply or sur-reply that raises a new issue or belatedly presents evidence may not be considered. The Board is not required to attempt to sort proper from improper portions of the reply or sur-reply. Patent Trial and Appeal Board Consolidated Trial Practice Guide 74 (November 2019) (“TPG”).7 If Petitioner is arguing that Ladd’s description of voice patterns and speech patterns is not describing speaker-independent speech recognition, then Petitioner’s Reply does not simply respond to the Patent Owner Response or attempt to crystalize the issues in dispute. Rather, the Petition expressly relied on certain disclosure in Ladd to show the functionality claimed in limitation 1[c], while the Reply attempts to re-cast that same disclosure as describing functionality separate from that of limitation 1[c]. This would be a new theory.” slip op. at 29

  Patent outcomesUS 7,076,431 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,076,431
• Solvay USA Inc. v. Worldsource Enterprises, LLC, Eco Agro Resources LLC, And Eco World Group LLCRehearing denied
  PTAB · Mar 1, 2021 · IPR2020-00768 · APJ Jeffrey W Abraham · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving institution of IPR on claims 1–17 in place because it found no abuse of discretion under § 325(d).

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). When rehearing a 1 Patent Owner originally filed a Preliminary Response (Paper 7) that violated the word count limit in our rules. After conferring with Petitioner and the Board, Patent Owner filed a truncated version of Paper 7 that deletes the text that exceeded the word count limit at the end of the document to comply with 37 C.F.R. § 42.24(b)(1). Paper 9. For purposes of this Decision, any references or citations to the Preliminary Response refer to the truncated document filed as Paper 9. decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

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

    “Owner does not clearly identify what matters we misapprehended or overlooked, and where those matters were previously addressed. Instead, it simply repeats arguments and information we have already considered and which we used to form the basis for our determination in the Institution Decision. To the extent Patent Owner believes we did not assign the appropriate weight to events that occurred during prosecution of the parent application of the ’231 patent, we note that Patent Owner’s own arguments derived from that information are based on speculation about what is a “more probable” explanation for the Examiner’s conduct. Rather than rely on speculation about the Examiner’s conduct during prosecution of the parent application, we based our determination on facts derived from the prosecution history of the ’231 patent itself. In that regard, we maintain that “[t]he record does not reflect any substantive consideration of CN400 during prosecution of the ’231 patent, including any consideration of CN400 in combination with Iannotta or Kolc, as presented in the Petition.” Dec. 9 (emphasis added). Nothing in Patent Owner’s recitation of undisputed facts persuasively contradicts this determination. Req. Reh’g 8.” slip op. at 6

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

    “Nevertheless, even if we were to give weight to Patent Owner’s argument that “it is more probable that the Examiner believed CN400 could not be properly combined” with Kolc and Iannotta, the outcome here would not change. As set forth in our Institution Decision, we disagree with Patent Owner’s assertions that CN400 is non-analogous art that would not be combinable with Kolc and Iannotta. Dec. 19, 24–25. Thus, to the extent Patent Owner contends the Examiner believed CN400 could not be combined with Kolc and Iannotta for the same reasons Patent Owner presented in its Preliminary Response, we would consider such hypothetical reasoning by the Examiner to involve a misapprehension of the specific teachings of the relevant prior art, which would constitute material error. See Advanced Bionics, 8.” slip op. at 7

  • Strike new argumentNew argument disregardedDecided for petitioner

    “Iannotta is prior art. Reh’g Req. 10. In presenting its arguments, however, Patent Owner acknowledges “[t]his issue was not argued in the Patent Owner’s Preliminary Response,” and is based on new information Patent Owner became aware of since the filing date of its Sur-reply. Req. Reh’g 9. A request for rehearing is not an opportunity to present new arguments or evidence. See 37 C.F.R. § 42.71(d). Moreover, Patent Owner has not directed us to any matters that we overlooked or misapprehended, and the place where those matters were previously addressed. 37 C.F.R. § 42.71(d).” slip op. at 8

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 10,301,231
• Smartmatic USA Corp. v. Election Systems & Software, LLCRehearing denied
  PTAB · Nov 30, 2020 · IPR2019-00531 · APJ Sheldon M Mcgee · IPR · Rehearing

  The Board denied Smartmatic’s rehearing request, leaving intact the determination that original claim 16 and substitute claims 21–29 were not shown unpatentable over Johnson and Cummings.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “ANALYSIS A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed. 37 C.F.R. § 42.71(d). Specifically, “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). Petitioner’s First Argument” slip op. at 2

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

    “As an initial matter, we disagree that we misapprehended Petitioner’s proffered basis for modifying the teachings of Johnson. Req. 1–2, 4–9. Our Decision makes clear that we understood the challenge as it was presented by Petitioner. For example, we expressly stated that “Petitioner asserts that a person of ordinary skill in the art would have been motivated to modify the teachings of Johnson with those of Cummings at the time of the invention to provide options for either depositing the paper ballot or returning it to the voter,” and quoted Petitioner’s proffered rationale for doing so––i.e., because “a voter may wish to receive his or her printed ballot if it were incorrectly marked in order to gain assurance that the ballot will not be mistakenly counted during a recount or audit of the paper ballots.” Dec. 18. We also characterized Petitioner’s obviousness challenge as being “over the combined teachings of Johnson and Cummings” and noted how the Petition “set[s] forth the [asserted] obviousness rationale and expectation of successfully modifying the teachings of Johnson with those of Cummings.” Id. at 14–15; see also id. at 17–18 (summarizing Cummings’ teachings); id. at 19–20 (identifying “Petitioner’s proffered modification” as “adding Cummings’ ‘ballot return’ feature to Johnson’s device”). Ultimately, we determined Petitioner failed to show that “the skilled artisan would have been motivated to make the proffered modification to the teachings of Johnson,” and “[i]n particular,” had not shown such artisan “would have modified Johnson to provide a voter with options for either depositing a physical ballot to a ballot box or returning the ballot to the voter.” Id. at 25. Notably, the language in our Decision (id.) tracks, almost verbatim, Petitioner’s proffered motivation for modifying Johnson’s teachings with those of Cummings to arrive at the subject matter of claim 16 (Pet. 57). Petitioner’s emphasis of our use of the phrase “considering Johnson’s teachings as a whole” (Req. 4) reflects a misunderstanding of the context in which this statement was used. Dec. 25. Specifically, this statement was part of an introductory paragraph summarizing the deficiencies in Petitioner’s case, and does not indicate that we focused solely on the teachings of Johnson in assessing the strength of Petitioner’s challenge. Indeed, as the Decision goes on to explain, a detailed analysis of Johnson’s teachings was necessary to determine how the skilled artisan would have viewed Johnson’s silence on the specifics of processing its segregated paper ballots “that have not been approved by the voter.” Ex. 1002, 6:56–60; see Dec. 26 (“According to Petitioner, ‘Johnson does not teach never providing the voter with a ballot.’ Reply 15. Petitioner thus appears to argue that Johnson’s lack of physical access to the printed ballot does not apply to every step in Johnson’s voting process.”). To discern how the skilled artisan would have viewed Johnson’s teachings, we stressed that we are required to consider Johnson’s teachings as a whole, which we did. Dec. 26 (noting that even though Johnson may be silent on specific teachings regarding how to handle disapproved paper ballots, that fact “does not negate our obligation to consider the teachings of the Johnson reference as a whole.” (citing In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991)); id. at 25–27 (finding “Johnson repeatedly stresses the voter’s inaccessibility to the physical ballot” and that Johnson “when considered as a whole––does not suggest that a voter should be given physical possession of the inaccurate or disapproved ballots after it is segregated”). Only after we undertook this factual inquiry into the full scope and content of Johnson’s teachings were we then able to conclude, as a matter of law, that the claims would not have been obvious over the combined disclosures of Johnson and Cummings. Dec. 34, 41–42; In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009 (“The teachings of a prior art reference are underlying factual questions in the obviousness inquiry.”).” slip op. at 3

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “(Ex. 1023) and US 2005/0035199 (Ex. 1038), which purportedly “corroborates Dr. Bederson’s testimony as to why a [skilled artisan] would have been motivated to make the proposed modification of Johnson,” we disagree. Req. 6–7. The Decision addresses Chung specifically (Dec. 27–28 (citing Ex. 1023)) and furthermore explains why we ascribed little weight to Dr. Bederson’s testimonial evidence regarding how election audits are carried out (id. at 32–33). Regarding Chung, in the Decision we noted a key difference in how ballots were handled in Chung’s voting system vis-à-vis Johnson’s system–– i.e., “where the paper ballot remains inaccessible to the voter [Johnson], and Chung’s system where the paper ballot is given to a voter in the first instance.” Id. at 27–28. This difference is not to be understated because Petitioner tried to establish similarities between Johnson and Chung to support its argument that Johnson’s disclosure is “consistent with other voting machines that, for some period of time prevent the voter from accessing the ballot, only to later return the ballot to the voter.” Reply 11. Our Decision reflects the reasons we rejected that argument after considering Johnson’s disclosure as a whole. See Dec. 25–31. Specifically, based on the differences between the Johnson and Chung systems, we found Petitioner’s reliance on Chung to lack sufficient probative value. Id. at 27– 28; Ex. 1023, Fig. 4, ¶¶ 86, 99. And while our Decision does not specifically mention US 2005/0035199 (Ex. 1038), we note that Petitioner cited this exhibit in support of Dr. Bederson’s testimonial evidence regarding how election audits are carried out. Reply 24; Ex. 1024 ¶ 47 (citing Ex. 1038 ¶ 35, and opining “there is no reason all of Johnson’s ballots must be collected to conduct an audit of an election.”). Our Decision makes clear, however, that we ascribed little weight to Dr. Bederson’s opinion on such matters and explained our rationale for doing so. Dec. 32–33 (citing Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003)); id. at 45 (according this disputed evidence “minimal weight”).” slip op. at 5

  § 103 obviousness
  Patents in suitUS 8,096,471
• Favored Tech Corporation v. P2i LtdRehearing denied
  PTAB · Oct 21, 2020 · IPR2020-00478 · APJ Jeffrey W Abraham · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving in place institution of review on claims 1–17 based on the Petition’s challenges.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). When rehearing a decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Petitioner also provides a reason why a person of ordinary skill in the art would have used [Baalmann’s] outer-wall configuration with a 1 m3 chamber such that the plasma zone covers the full chamber volume: “because doing so would have maximized the effective chamber capacity at any given chamber size by allowing the reactive plasma to reach all substrate surfaces, even for large substrates or large batches of smaller substrates extending near the outer limits of the chamber.” Pet. 35; Ex. 1002 ¶ 125. Dec. 20–21. Patent Owner does not address this portion of the Decision or our citation to page 35 of the Petition in the section of its Rehearing Request asserting we incorrectly found the Petition asserts a ground of obviousness based on Baalmann alone. Req. Reh’g 7–11.5 These portions of the record, which address Petitioner’s evidence demonstrating a person of ordinary skill in the art would have had reason to use a particular reactor configuration and plasma zone size, undermine Patent Owner’s assertion that “Petitioner’s obviousness theory fails to provide any reasoning why a POSA would combine Baalmann’s separate and distinct teachings to arrive at the claimed” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “teaching away argument in the Decision, we will do so here. With regard to Patent Owner’s contention that “Baalmann teaches away from the claimed method because . . . Baalmann discloses applying a power of 2kW in its only example using a reactor large enough to potentially satisfy claim 1’s plasma zone volume requirement, which would result in a plasma power density well outside the claimed range” (Req. Reh’g 14), we note that a reference teaches away from a claimed invention if it “criticize[s], discredit[s], or otherwise discourage[s]” modifying the reference to arrive at the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Patent Owner does not direct us to any such evidence in Baalmann, and we will not “read into a reference a teaching away . . . where no such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). Additionally, although the one example of a 1 m3 reactor in Baalmann involved using a power density that did not fall within the claimed range, for purposes of an obviousness analysis, we cannot ignore the broader disclosure of Baalmann regarding the use of power densities in the range of between 0.5 kW/m3 and 5kW/m3, which does overlap the claimed range. See In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) (“It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art.”).” slip op. at 10

  • Strike new argumentNew argument disregardedDecided for petitioner

    “Req. Reh’g 14. Patent Owner cites to pages 54–56 of the Preliminary Response as the source for this argument and evidence. Although these pages do provide a discussion of the use of certain power densities in prior art references, this portion of the Preliminary Response primarily addresses Patent Owner’s arguments regarding whether a person of ordinary skill in the art “would have had a reasonable expectation of success when combining the disparate process of Coulson and Baalmann,” not what a person of ordinary skill in the art would have been “motivated” to do. Prelim. Resp. 56; see Par Pharmaceutical v. Twi Pharmaceuticals, Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (noting the proper analysis under § 103 requires “consideration of two factors: (1) whether the prior art would have suggested to those of ordinary skill in the art that they should make the claimed composition or device, or carry out the claimed process; and (2) whether the prior art would also have revealed that in so making or carrying out, those of ordinary skill would have a reasonable expectation of success”) (quoting Medichem, S.A. v. Rolabo S.L., 437 F.3d 1157, 1164 (Fed. Cir. 2006). As such, Patent Owner appears to present a new argument for the first time in the Rehearing Request. Not only is such an argument improper (see 37 C.F.R. § 42.71(d)), but the fact that it was raised for the first time in the rehearing means it is not something we could have overlooked. Even if Patent Owner had presented this “motivation” argument in the Preliminary Response, we remain unpersuaded of any error in our Decision. Patent Owner fails to explain sufficiently why a person of ordinary skill in the art would look to other prior art references for guidance regarding the use of a particular power density in large scale reactors in view of our determination that Baalmann itself discloses the use of a power density in the claimed range in a large scale reactor.” slip op. at 11

  § 103 obviousness
  Patents in suitUS 8,389,070
• Solvay USA Inc. v. Worldsource Enterprises, LLC, Eco Agro Resources LLC, And Eco World Group LLCRehearing denied
  PTAB · Aug 10, 2020 · PGR2019-00046 · APJ Sheldon M Mcgee · PGR · Rehearing

  The Board held claims 1–20 unpatentable as obvious over the stated combinations and denied Patent Owner’s rehearing request.

  RulingsRehearing decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In light of the complete record now before us, we adopt Petitioner’s definition of one of ordinary skill in the art. In addition to the academic requirements associated with obtaining a bachelor’s degree in chemistry or chemical engineering, Petitioner’s definition includes at least two years of experience specific to chemical formulations used in the agricultural industry. Pet. 8. Patent Owner’s “definition” is generic to “formulation chemistry.” Sur-Reply 4. Patent Owner does not explain, nor do we discern, why the skilled artisan would not have had at least some work experience in developing chemical formulations in the relevant field, i.e., the agrochemical industry. Indeed, some of Patent Owner’s arguments are directed to solvent delivery systems used in the agricultural market. PO Resp. 57–78.” slip op. at 7

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

    “filing date, we apply the claim construction standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Id. at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Neither party offers a construction for any claim term. Pet. 11; see also PO Resp., generally. On the complete record, we determine that no claim limitations need an express construction to resolve the controversy.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “analogous art. PO Resp. 47; Sur-Reply 8, 15–16. Patent Owner incorrectly frames the analogous art inquiry by comparing whether the prior art references are analogous to each other. See PO Resp. 47 (“not all three references are in the same field of endeavor”); Sur-Reply 16 (asserting that CN400 “is not analogous art with Iannotta [] and/or Kolc” because CN400’s NBPT is purportedly “not dissolved in any solvent”). Our reviewing court has stated, however, that “[a] reference qualifies as prior art for a determination under § 103 when it is analogous to the claimed invention.” Innovention Toys, LLC v. MGA Entertainment, Inc., 637 F.3d 1314, 1322 (Fed. Cir. 2011) (citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004), the court stated Two separate tests define the scope of analogous art: (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. Innovention Toys, 637 F.3d at 1322. Regarding whether the CN400 patent is in the same field of endeavor as the ʼ108 patent, we must consider the scope of the ʼ108 patent as a whole and not just the claims. In re Mettke, 570 F.3d 1356 (Fed. Cir. 2009) (rejecting appellant’s attempt to rely on the claimed subject matter to define the relevant “field of endeavor” when the specification described a broader one). Significantly, the ʼ108 patent discloses both solutions and suspensions of NBPT. See Ex. 1001, 5:20–52, 6:5–12, 6:39–40 (disclosing various solutions of NBPT), and 13:24–36 (setting forth an embodiment that formed “a suspension of NBPT in the aqueous mixture” that may “be solved by agitation”). Therefore, regardless of whether CN400’s process set forth in its claim 1 results in a solution or suspension of NBPT, CN400 is from the same field of endeavor as defined by the ʼ108 patent itself––“solvent formulations for the urease inhibitor . . . NBPT.” Ex. 1001, 1:15–18. Even if CN400 was not in the same field of endeavor as the ʼ108 patent, we find it is reasonably pertinent to the particular problem with which the inventor was involved. The ʼ108 patent identifies NBPT formulation toxicity as problematic to the environment, animals, and possibly humans (id. at 2:60–62, 4:8–33), and expressly states “it is desirable to develop formulations/fertilizers that are less toxic to the environment and to animals and humans” (id. at 4:34–36). The skilled artisan would have been aware of this toxicity problem with NBPT-containing formulations (Ex. 1025, 1; Ex. 1007 ¶ 6), and CN400 was also concerned with this problem (Ex. 1006, 1 (Abstract), ¶¶ 2, 5; see also Ex. 2006, 461 (machine translation of CN400 abstract noting how use of its fertilizer formulation will not pollute the environment), 462 ¶ 2, 463 ¶ 5. Notably, Patent Owner does not address this second test in its briefing. Tr. 39:6–11 (Patent Owner’s counsel acknowledging “[w]e did not address the other prong in the briefing”). Thus, on several bases, we find CN400 is analogous art to the ʼ108 patent and may be properly relied on in our obviousness determination.” slip op. at 24

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,221,108

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.