- Tiktok Inc. v. Cellspinsoft, Inc.InstitutedPTAB · Sep 30, 2024 · IPR2024-00770 · APJ Michael A Valek · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–7, and 9–18 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has 8 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) (“Fintiv”). 9 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, 18–19 (Dec. 1, 2020) (“Sotera”). issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. Ex. 1034, 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The analyze this issue under the following two-part framework set forth in Advanced Bionics: (1) 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; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, IPR2019-01469, Paper 6, 8.” slip op. at 10
- Other 314aDenied
“Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition, notwithstanding its merits, based on the policy considerations and concerns alleged by Patent Owner.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“iii. Conclusion – Grounds 1A–B After considering the arguments and cited evidence of record, we determine that for purposes of institution, Petitioner sufficiently shows that both the combination of Hiroishi, Takahashi and Bluetooth in Ground 1A and the combination of Hiroishi, Kahn, and Bluetooth in Ground 1B teach or suggest each limitation of claims 1, 2, 4–7 and 9–18,20 and that a person of ordinary skill in the art would have had a reason to combine the teachings of these references with a reasonable expectation of success. See, e.g., Pet. 11– 68. Accordingly, on this record, Petitioner shows a reasonable likelihood of prevailing on Grounds 1A–B, and on this basis, we institute an inter partes review of all challenged claims. See 37 C.F.R. § 42.208(a). 19 While the term “WMTP” appears in these figures, it does not seem to be defined or discussed elsewhere in Kahn. 20 At this stage, Patent Owner does not make any additional arguments against Petitioner’s showing for the dependent claims.” slip op. at 42
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,904,030 - PTAB · Sep 30, 2024 · IPR2024-00769 · APJ Gregg I Anderson · IPR · Institution
The Board instituted inter partes review of claims 1–15 on all asserted grounds, finding a reasonable likelihood that the claims are unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. Ex. 1034,8 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Section 325(d) provides discretion to “reject the petition” if “the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The analyze this issue under the following two-part framework set forth in Advanced Bionics: (1) 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; and (2) if either condition of [the] first part of the framework is 9 Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, IPR2019-01469, Paper 6, 8.” slip op. at 12
- Other 314aDecided for petitioner
“Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition, notwithstanding its merits, based on the policy considerations and concerns Patent Owner alleges.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art Petitioner alleges a person of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering, computer engineering, or computer science, and two years of experience in the field of consumer electronics, with exposure to digital camera technology and wireless communications. . . . Superior education could compensate for a deficiency in work experience, and vice-versa. Pet. 6 (citing Ex. 1030 ¶¶ 94–95). Patent Owner does not propose a level of ordinary skill. See Prelim. Resp. Petitioner’s proposal is supported by the Lett Declaration and is consistent with the ’766 patent. Accordingly, we apply Petitioner’s articulation.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,900,766 - Tesla, Inc. v. Iqar Inc.InstitutedPTAB · Sep 26, 2024 · IPR2024-00630 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR on claims 1–16 under all asserted grounds, finding a reasonable likelihood that Koebler anticipates claims 1, 15, and 16 and that the asserted obviousness grounds succeed for at least some claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute only 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). A decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018). If the Board institutes a trial, the Board will institute on all challenges raised in the petition. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). For the reasons set forth below, upon considering the parties’ briefs and evidence of record, we conclude 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. Thus, we institute inter partes review of all challenged claims based on all asserted grounds.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“require the Enumerated Current Conditions to be determined by analyzing data from the Enumerated Sensors, and it is this claimed invention for which the specification must provide written description support. 35 U.S.C. §§ 112(a), 120. Although, as discussed above, the claim requires only one Enumerated Sensor and one Enumerated Current Condition, it additionally requires that data from the sensor be analyzed to determine the current condition. Thus, to support the full scope of the claims, Koebler must disclose that each of the Enumerated Current Conditions is determined by analyzing data from one of the Enumerated Sensors. Although Petitioner asserts that Koebler does not provide written description support for ten of the Enumerated Sensors (see Pet. 10–11), Petitioner focuses its arguments on three of the current conditions (moisture, an amount of vibration, and traction) (see id. at 15–20), and we likewise focus our analysis on these three current conditions. Petitioner’s arguments for these three current conditions are substantially identical, including that Koebler does not teach or suggest using data from an Enumerated Sensor to determine each of the three current conditions. See id. at 15–19.” slip op. at 16
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artOther
“Thus, at this preliminary stage of the proceeding and based on the present record, we determine that Petitioner has established a reasonable likelihood that Koebler does not provide written description support for the claims of the ’616 patent. For completeness, we note that we find Petitioner’s arguments that Koebler does not provide verbatim or synonymous disclosure of the words “moisture,” “vibration,” or “traction” (see, e.g., Pet. 15–16) unavailing, as there is no requirement for verbatim or synonymous disclosure in the prior application. PowerOasis, 522 F.3d at 1306; Purdue Pharma, 230 F.3d at 1323. Similarly, there is no requirement for “inherent disclosure” of the recited current conditions. See, e.g., Pet. 16–17. Rather, as explained above, the relevant inquiry is whether the application relied upon (here, Koebler) reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharm., 598 F.3d at 1351.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Thus, under § 325(d), the Board uses the following two-part framework: (1) 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; and (2) if either condition of [the] first part of the framework is satisfied, 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 20
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 10,850,616 - Cimbria Srl v. 3u Vision SrlInstitutedPTAB · Sep 20, 2024 · PGR2024-00018 · APJ Kevin W Cherry · PGR · Institution
The Board instituted PGR on claims 1–15 and all petitioned grounds, finding a reasonable likelihood that claims 1–3, 6, and 10 are obvious over ElMasry.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 324(a), a post-grant review may be instituted only 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 ’947 patent is eligible for post-grant review, and has shown it is more likely than not that at least one challenged claim of the ’947 patent is unpatentable under § 324(a). Accordingly, we institute a post-grant review of the challenged claims of the ’947 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have a B.S. degree in Electrical Engineering, Physics, Chemistry, or an equivalent field, and at least 2-3 years of academic or industry experience in engineering related to optical sorting systems.” Pet. 17 (citing Ex. 1009 ¶ 21). Patent Owner did not file a Preliminary Response to the Petition and, therefore, at this point, does not contest Petitioner’s definition for one of ordinary skill in the art. Petitioner’s proposed definition appears to be consistent with the disclosure of the ’947 patent, and we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself may “reflect[] an appropriate level” of ordinary skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Having considered the record, we determine that no express claim construction is necessary for any claim terms for the purposes of rendering a decision to institute trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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))). At this stage, we find it unnecessary to resolve whether “electronic control unit” and “processing module” should be construed as mean plus function limitations under § 112(f), because it is possible to address the obviousness grounds presented whether or not these limitations are so construed, and even if the claims were indefinite in the manner Petitioner contends. See Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 813 (Fed. Cir. 2021) (noting indefiniteness of a means-plus-function limitation does not always render it impossible to adjudicate a prior-art challenge). We direct the parties to address the construction of these claim terms and Petitioner’s interpretation during trial.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“We have reviewed Petitioner evidence and citations and, on the current record, we find that Petitioner has shown that it is more likely than not that ElMasry teaches all the limitations of claim 1, without need for any modification. Thus, we find that Petitioner has shown that it is more likely than not that claim 1 would have been unpatentable as obvious over ElMasry.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosurePatents in suitUS 11,666,947 - Fluidmaster, Inc. v. Danco, Inc.InstitutedPTAB · Sep 9, 2024 · IPR2024-00633 · APJ Meredith C Petravick · IPR · Institution
Instituted IPR of claims 1–20 on all asserted grounds; the Board found a reasonable likelihood that claim 1 is unpatentable over Brown and Ho.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, the Reply, the Sur-reply, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’993 patent. Accordingly, we institute an inter partes review of claims 1–20 of the ’993 patent on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“presented to the Office.” Prelim. Resp. 31– 36. In determining whether to deny institution under § 325(d) we use a two-part framework, as follows: (1) 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; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). The Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d). Id. at 9 (referencing Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph)).” slip op. at 8
- BurdenDecided for petitioner
“At this stage of the proceeding, Patent Owner provides no sufficient evidence to rebut Dr. Cameron’s testimony as to what a POSITA would have known from Guoxin and Ho’s drawings and as to the alleged motivations to combine Guoxin and Ho. Based on Petitioner’s evidence and analysis, and taking into account the Preliminary Response, at this stage of the proceeding, we determine that the information in the Petition shows a reasonable likelihood that claim 1 is unpatentable over Guoxin and Ho.” slip op. at 24
- Skill levelSkill level patent owner adoptedDecided for patent owner
“A [person of ordinary skill in the art (“POSITA”)] in the field to which the ’993 Patent is directed would have had at least a Bachelor of Science degree in mechanical engineering or a related field or, as a substitute, at least two years of work or research experience in the design or development of toilet products, parts, and accessories. Prelim. Resp. 16. Petitioner’s declarant Dr. Cameron asserts that: A [POSITA] with respect to the subject matter of the ’993 patent at the time of the priority date, January 27, 2014, would have had an undergraduate degree in mechanical engineering, or other technical training in product design or equivalent work experience. This person would also possess at least one year of experience in developing and/or evaluating mechanical aspects of fluid systems. Ex. 1004 ¶ 29. For purposes of this Decision, we adopt Patent Owner’s proposed definition of a POSITA, as it is consistent with the ’993 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, we see no material difference between the level of skill proposed by Patent Owner and that proposed by Dr. Cameron.” slip op. at 12
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,139,993 - Fluidmaster, Inc. v. Danco, Inc.InstitutedPTAB · Sep 9, 2024 · IPR2024-00634 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR of claims 1–24 on all asserted grounds, finding a reasonable likelihood that claim 1 is unpatentable over Brown and Ho.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, the Reply, the Sur-reply, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’105 patent. Accordingly, we institute an inter partes review of claims 1–24 of the ’105 patent on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Previously presented art includes art made of record by the Examiner, and art provided to the Office by an applicant, such as on an Information Disclosure Statement (“IDS”), in the prosecution history of the challenged patent. Id. at 7–8. Here, it is not disputed that Brown and Bjerke were listed on an IDS and, thus, were previously presented to the Office. Pet. 12, n.4; Prelim. Resp. 33. It is also not disputed that Guoxin, Ho, Calmettes, Hall, Kimber, and Schuster were not previously presented to the Office. See Prelim. Resp. 33. Patent Owner argues that Guoxin, Brown, and Ho are cumulative of a reference, DeMarco9, that was previously presented to the Office and relied upon to reject the claims. Prelim. Resp. 33 Patent Owner argues that Guoxin, Brown, and Ho are cumulative to DeMarco because all of the “references are completely silent as to whether the purported ‘extended portion’ is integrally molded with the purported body of the toiled fill valve.” Id. at 33–36. Patent Owner’s arguments are unpersuasive. As can be seen from our discussion of Ho in our analysis below, on this record, we are persuaded that Petitioner has sufficiently shown for purposes of institution how Ho allegedly teaches the claimed integrally molded extended portion. We, thus, are not persuaded that at least Ho is cumulative of DeMarco. Grounds 1–4 rely upon combinations of prior art that include Ho. Ground 5 is based upon Schuster, which was not previously presented to the 9 U.S. Patent No. 5,708,991 (Ex. 1024). Office. Accordingly, we determine that discretionary denial is not warranted. Because we determine that part one of the framework is not satisfied, we need not turn to part two to determine whether Petitioner demonstrates that the Office erred in a manner material to the patentability of the challenged claims. For the reasons discussed above, we decline to exercise our discretion under § 325(d) to deny the Petition.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“On this record, we are persuaded by Patent Owner that the claim phrase “integrally molded with” should be construed to mean “molded together as a single structure” and to exclude items created as separate pieces and attached together later. Patent Owner’s construction is consistent with the plain language of the claims, which requires the extended portion be “integrally molded with” the body and not just the extended portion be integral with the body. Further, we determine that Patent Owner’s construction is consistent with the ’105 patent, which discloses that “the bowl fill valve 109 may be molded as a portion of the toilet fill valve 100 or it may be snapped or clamped into place, or it may be attached to the toilet fill valve 100 in some other manner, etc.” Id. at 2:23–26 (emphasis added). At this stage of the proceeding, we construe “integrally molded with” to mean molded together as a single structure.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Patent Owner next disputes that a POSITA would have combined Guoxin and Ho and argues that Petitioner’s alleged rationale to combine Guoxin and Ho as conclusory and lacks sufficient support. Prelim. Resp. 40–42. We determine that Petitioner has sufficiently articulated a motivation to combine Guoxin and Ho to support institution. Petitioner asserted motivation to combine — improved strength and integrity of connection — is supported by the testimony of Dr. Cameron. Dr. Cameron testifies: “Integrally molding the extended portion of Guoxin with the inlet device as taught by Ho would be advantageous in improving the strength and integrity of the connection, and to make it easier to manufacture and assemble.” Ex. 1004 ¶ 125. Based on the record at this stage of the proceeding, we determine that Petitioner has sufficiently shown that the combination of Guoxin and Ho teaches element 1B.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,103,105 - PTAB · Jul 23, 2024 · IPR2024-00669 · APJ Timothy G Majors · IPR · Institution
The Board instituted IPR on claims 1–8 and 11, finding a reasonable likelihood of success on at least one claim under the Saadat grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner will prevail with respect to at least one of the claims challenged in the petition. For reasons explained below, we conclude that Petitioner shows a reasonable likelihood that it will prevail with respect to at least one of the ’077 patent’s challenged claims. Also, we decline to deny the Petition on a discretionary basis. Therefore, we institute an inter partes review on all challenged claims. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“As discussed below (Section IV.D), we determine at this stage that Saadat is prior art. There is no argument from Patent Owner that Saadat was presented previously to the Office. Pet. 96 (Petitioner’s unrebutted argument that Saadat was not previously considered by the Examiner). And, beyond the unsuccessful attempt to antedate and, thus, disqualify Saadat as prior art, at this stage of the proceeding Patent Owner offers no argument or evidence to rebut Petitioner’s contention that Saadat anticipates and renders obvious the ’077 patent’s claims under Grounds 1–3. See generally Prelim. Resp. 8–26 (Patent Owner’s priority date arguments). For the above reasons, we find that Patent Owner has not shown that substantially the same prior art or arguments (i.e., Saadat and arguments based thereon) were previously presented to the Office and, thus, Patent Owner has not satisfied step one of Advanced Bionics’ two-step framework. Advanced Bionics, Paper 6 at 8. On this record, even if we accept Patent Owner’s contentions about the Office’s prior consideration of Makower or Fang (art asserted under Grounds 5 and 6), we do not find that § 325(d) is sufficiently implicated based on our determination on the priority issue and Petitioner’s otherwise uncontested argument that the challenged claims are unpatentable over Saadat—issues we discuss in more detail below.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not propose an alternate definition of the POSA’s qualifications or contest Petitioner’s definition. See generally Prelim. Resp. We apply Petitioner’s proposed POSA level, which appears to be consistent with the level of skill shown in the prior art of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that, “[f]or purposes of this IPR, the Board need not construe any terms.” Pet. 18. Patent Owner similarly does not propose any express claim construction for any of the challenged claims at this time. See generally Prelim. Resp. and based on our review of the record, we determine that no express construction of any claim term is necessary to determine whether to institute inter partes review. Realtime Data, 912 F.3d at 1375.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,679,077 - PTAB · Jul 23, 2024 · IPR2024-00279 · APJ Sheridan K Snedden · IPR · Institution
The Board instituted review of claims 1–3, 7, 9, 10, and 17–25 on all petitioned grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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 Supreme Court has held that a decision to institute under 35 U.S.C. § 314 may not institute on less than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). After considering the information presented by the parties, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one of claims 1–3, 7, 9, 10, and 17–25 of the ’675 patent are unpatentable.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Specification of the ’675 patent provides written description support for the challenged claims. The challenged claims are purportedly directed to treating a nasal condition comprising “delivering energy to the target tissue” to reduce mucus secretion or congestion. Ex. 1001, claims 1 and 17. As noted by Petitioner, the ’675 patent Specification does not describe the use to energy to treat a nasal condition in the manner recited in the claims. Pet. 24–25. Rather, the ’675 patent Specification discloses the use of neurotoxins to treat nasal conditions, and, more specifically, that neurotoxins are used to disrupt neural signals in the targeted tissue and, therein, disable mucus secretion by such tissues. Ex. 1001, 3:25–34, 8:18–21, 8:38–60, achieve cell membrane permeabilization or poration and effectuate the delivery of neurotoxin into to target cells. See, e.g., id. at 4:49–51, 8:4–21. Here, we note that the challenged claims do not recite administering neurotoxins, but instead only require the delivery of energy to the target tissue to administer therapy.” slip op. at 16
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Reference is prior artInstituted
“probe in a nasopharyngeal passage of a patient for the ablation of a posterior nasal nerve. Id. at 30 (citing Ex. 1002 ¶¶ 85–99). Petitioner also contends that “Saadat explains that RF ablation disrupts neural activity to reduce or eliminate rhinitis symptoms, including mucus secretion and congestion.” Id. at 36 (citing Ex. 1003, 3:6–14 (“Ablating [posterior nasal] nerves leads to a decrease in or interruption of parasympathetic nerve signals that contribute to congestion and rhinorrhea in patients with chronic rhinitis (allergic or vasomotor).”), 16:44–51; Ex. 1002 ¶ 103). Patent Owner at this stage does not offer any arguments addressing Petitioner’s substantive showing, which we find sufficient for institution purposes. See generally Prelim. Resp. Rather, Patent Owner contends Saadat is not prior art because the ’675 patent is entitled to rely upon the July 21, 2006, filing date of the ’090 application. Id. at 24. For the reasons discussed above, we determine that the Specification of the ’675 patent fails to provide adequate written description support for the challenged claims, and thus, the challenged claims are entitled to an effective filing date no earlier than October 22, 2019. Saadat is a U.S. patent that issued June 4,” slip op. at 33
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,610,675 - PTAB · Jul 15, 2024 · IPR2024-00537 · APJ John F Horvath · IPR · Institution
The Board instituted IPR on all challenged claims and all grounds, finding a reasonable likelihood that at least one claim is unpatentable over Forutanpour.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“deny institution. Fintiv seeks to “minimize potential conflict between the Patent Trial and Appeal Board (PTAB) and district court proceedings.” Fintiv Memo, 1; see also Fintiv, Paper 11 at 5 (introducing factors to weigh “[w]hen the patent owner raises an argument for discretionary denial . . . due to an earlier trial date”) (emphasis added). Because the district court has not set a trial date, and the trial court statistics indicate any trial is likely to occur months after a Final Written Decision in this proceeding, we see little potential for conflicting Board and district court decisions.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). At this stage of the proceeding, we find Petitioner’s assessment of the level of skill in the art to be reasonable and commensurate with the problems and solutions disclosed in the prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Accordingly, for purposes of this Decision, we adopt Petitioner’s description as our own. slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). Under this standard, a claim is construed “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Only claim terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner construes the claims to have their “plain and ordinary meaning” and contends “that no terms invoke means-plus-function analysis.” Pet. 17–18. Patent Owner does not contend that any terms require construction. Prelim. Resp. 7. At this stage of the proceeding, because the parties do not dispute the meaning of any claim terms and none appear to require construction, we offer no express constructions for any claim terms. See Nidec Motor, 868 F.3d at 1017.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“of the grandparent application is that they disclose a WTRU having a communication peripheral that can (a) operate in Bluetooth or WiFi mode, (b) use Bluetooth to discover nearby devices and services, (c) transfer data to nearby devices, and (d) use discovered environmental information to determine which components are needed to effect data transfer. But they do not expressly disclose using Bluetooth to discover a nearby WTRU and WiFi to transfer data to that WTRU.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 8,737,933 - PTAB · Jul 15, 2024 · IPR2024-00538 · APJ Lisa A Murray · IPR · Institution
Instituted inter partes review of all challenged claims on all asserted grounds because Microsoft showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDecided for petitioner
“We have considered the circumstances and facts before us in view of Fintiv factors 1–6. As discussed above, factor 1 is neutral and factors 2–4 and 6 weigh against discretionary denial, while factor 5 weighs marginally in favor of discretionary denial. Because our analysis is fact-driven, no single factor determines whether we exercise our discretion to deny institution under 35 U.S.C. § 314(a). In the circumstances of this case, considering each Fintiv factor as part of a holistic analysis, we are persuaded that the efficiency and integrity of the system would be best served by granting the Petition to institute an inter partes review. Accordingly, we decline to exercise discretion to deny institution under § 314(a).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Thus, on this record, we find that Petitioner is reasonably likely to establish that claim 1 is unpatentable in light of Forutanpour. While this alone is sufficient for institution purposes, we also find that Petitioner is reasonably likely to show that Forutanpour anticipates independent claim 23, which is commensurate in scope with claim 1.” slip op. at 24
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“actually or inherently disclose the claim element.” PowerOasis, Inc. v. T- Mobile USA, Inc., 522 F.3d 1299, 1306–07 (Fed. Cir. 2008). The passages that Patent Owner cites from the great-grandparent application describe a WTRU that may be capable of both Bluetooth and Wi-Fi communications. Ex. 1282 ¶ 24 (’948 application). They describe detecting another WTRU using Bluetooth. Id. ¶ 34. They also describe transferring data to that target WTRU. Id. ¶¶ 32, 39, 42. None of the passages cited, however, describe using Bluetooth for detection and then switching to Wi-Fi for data transfer within the same transaction. This element of claim 1 is neither expressly nor inherently disclosed in the great-grandparent application.9 It therefore does not have written description support in the ancestor application and cannot benefit from its effective filing date.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableInstituted
“Finally, claim 1 requires the WTRU to transfer, using a Wi-Fi communication, the selected media. Ex. 1201, 10:64–65. Forutanpour discloses that the user’s device may transfer the selected file to the intended recipient “using a wireless technology different from the wireless technology used to establish the wireless link.” Ex. 1204 ¶¶ 4–5. That wireless technology may be WiFi. Id. ¶¶ 81–84 (“messages may similarly be transmitted via another type of wireless communication network, such as a WiFi . . . network”); see also id. at claim 2 (“establishing the wireless link is accomplished using a wireless technology selected from Bluetooth®, ZigBee®, Near Field Communication (NFC), wide-area-wireless IEEE 802.11 (WiFi), infrared (IrDA), and ultrasound”), claim 3 (“The method of claim 2, wherein: . . . transmitting the file sharing message to the targeted computing device is accomplished using a wireless technology different from the wireless technology used to establish the wireless link.”). Thus, on this record, we find that Petitioner is reasonably likely to establish that claim 1 is unpatentable in light of Forutanpour. While this alone is sufficient for institution purposes, we also find that Petitioner is reasonably likely to show that Forutanpour anticipates independent claim 23, which is commensurate in scope with claim 1.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,173,054
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.