- MPL Brands NV, Inc. v. Buzzballz, LLCInstitutedPTAB · Jan 27, 2025 · IPR2024-01098 · APJ Cynthia M Hardman · IPR · Institution
The Board instituted IPR on all challenged claims 1–6 based on all asserted grounds, finding a reasonable likelihood that Kick anticipates or renders them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the briefing and cited evidence of record in view of this standard, we institute an inter partes review. The following preliminary findings of fact and conclusions of law are made solely to determine whether to institute review. Any final decision will be based on the full trial record.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“challenged claims 1, 2, and 6 lack adequate written description support in the ’934 application as filed. See Pet. 10–11. The specification, figures, and claims as originally filed do not disclose any volume limitations. See Ex. 1004 (’934 prosecution history), 1–17. Instead, the volume limitations recited in the challenged claims find their first support in Figure 7, which was filed over one month after the ’934 application was originally filed. Compare id. at 1–17, with id. at 34–56. The addition of new matter during prosecution of a patent application is prohibited. See 35 U.S.C. § 132(a) (“No amendment shall introduce new matter into the disclosure of the invention.”); see also 37 C.F.R. § 1.121(f); Manual of Patent Examining Procedure (“MPEP”) § 608.04. Therefore, we agree with Petitioner that “the new matter improperly added during the prosecution of the ’934 application cannot be considered part of the disclosure of the original, April 19, 2010 application and/or relied upon for claiming priority in subsequent applications.” Pet. 9.” slip op. at 21
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner
“prosecution history), 34. We agree with Petitioner that “any claims in the subsequent applications that recite the new matter [are] entitled to, at the earliest, a priority date of February 25, 2020—the filing date of the ’195 application.” Pet. 10. As discussed above, challenged claims 1, 2, and 6 recite volume limitations that first find adequate support in Figure 7 of the ’195 application. Accordingly, on this record (and after consideration of Patent Owner’s arguments, discussed below), we determine that the priority date of the challenged claims is no earlier than the February 25, 2020, filing date of the ’195 application. Id. at 10–11. We agree with Petitioner that “Kick is prior art under 35 U.S.C. § 102(a)(1) with respect to the claims of the ’904 patent because it was published more than one year before the February 25, 2020, priority date of the challenged claims.” Pet. 16.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“On this record, we find that the issues the parties raise regarding limitation [1z] are highly fact-intensive and implicate genuine issues of material fact that are more appropriately resolved on a fully-developed record. Accordingly, on this record we reserve judgment on these arguments, to allow the record to develop during trial.” slip op. at 30
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,738,904 - MPL Brands NV, Inc. v. Buzzballz, LLCInstitutedPTAB · Dec 18, 2024 · PGR2024-00035 · APJ Cynthia M Hardman · PGR · Institution
The Board instituted PGR on all asserted grounds after finding the patent eligible for PGR and each challenged claim more likely than not unpatentable under at least one obviousness ground.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level). However, we find some ambiguity in the last sentence of Petitioner’s proposal (“A POSITA could substitute additional education for industry experience and vice versa.”) because the reference to “additional education” is not tethered to relevant education. Accordingly, we modify the last sentence of Petitioner’s proposal to clarify that the additional education must be relevant. Thus, we restate that for purposes of this Decision, a person of ordinary skill in the art of the ’441 patent would have had: (i) an associate’s or bachelor’s degree in mechanical, industrial or manufacturing engineering and (ii) at least two to three years of practical experience with designing or manufacturing mechanical products such as food or beverage packaging. A POSITA could substitute additional relevant education for practical experience and vice versa. B. Post-Grant Review Eligibility As a threshold matter, we must determine whether Petitioner has” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“In view of the evidence discussed above, we agree with Patent Owner that there is adequate written description support for a transparent container body such that a depression in the container base is “visible through at least a portion of the container body,” as recited in claims 9, 10, 15, and 16. Prelim. Resp. 9. Regarding Petitioner’s assertion that the ’441 patent does not disclose “a transparent/translucent liquid” (Pet. 7), we again disagree. As Patent Owner points out, “the ’441 Patent mentions beverages, such as ‘beer and soda,’ as liquids for which the claimed container would be suitable.” Prelim. Resp. 10 (quoting Ex. 1001, 1:25–27). Patent Owner demonstrates that a person of ordinary skill in the art “would have recognized that beer is typically see-through, or translucent.” Id. (citing Ex. 2012 (Till) ¶ 24 (discussing an inspection apparatus for bottles that “are filled with a transparent liquid (e.g. beer, table water, mineral water, wine etc.)”); Ex. 2013 (Schnuckle) ¶ 8 (noting “translucent to transparent liquids such as water, soda, juice, or the like”)). We agree with Patent Owner that the ’441 patent’s identification of “beer and soda as beverages the described and claimed container was intended to hold” provides adequate written description support “for having transparent or translucent liquids within the container.”12 Prelim. Resp. 10. For the reasons discussed above, on this record Petitioner has not demonstrated that claims 9, 10, 15, and 16 include subject matter having a November 10, 2023, priority date. Thus, Petitioner has not demonstrated that the ’441 patent is eligible for post-grant review under AIA § 3(n)(1)(A).” slip op. at 15
- Expert testimonyPatent owner expert discountedDecided for petitioner
“Patent Owner’s arguments are unavailing. As an initial matter, Mr. Kirkpatrick is opining about a design patent application, and Patent Owner has not established that Mr. Kirkpatrick possesses the education and experience of a designer of ordinary skill in the art of ornamental aspects of containers for storing liquids or solids. See Ex. 2001 ¶ 5 (implying that Mr. Kirkpatrick is a generalist whose experience with design patents is in preparing formal drawings of designs invented by others).17 For this reason alone, on this record we accord Mr. Kirkpatrick’s declaration little weight on the question of whether the ’195 parent application provides adequate written description support for originally-filed Figure 2 of the ’813 design application. See, e.g., Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022) (“To offer expert testimony from the perspective of a skilled artisan in a patent case . . . a witness must at least have ordinary skill in the art. Without that skill, the witness’ opinions are neither relevant nor reliable.”). Even if Mr. Kirkpatrick’s opinions were relevant, they would not change our conclusion regarding lack of adequate written description. Mr. Kirkpatrick attributes the differences between the drawings to “choices in drafting strategy of the respective illustrators,” such as how to use “contour lines to illustrate sloped surfaces” and how much detail to include for well-known features like pop-tops. See Ex. 2001 (Kirkpatrick Decl.) ¶¶ 19, 23–24, 28–32.18 These arguments are unavailing. First, there is no evidence of record indicating that the figures in the ’195 parent application and ’813 design application were created by different illustrators. Second, 17 Patent Owner also has not established that Mr. Kirkpatrick possesses the education and experience of a person of ordinary skill in the art of the ’441 patent, as we have defined it here. Supra Section II.A. 18 Mr. Kirkpatrick’s analysis of a photograph of a can submitted by the applicant during prosecution (see Ex. 2001 (Kirkpatrick Decl.) ¶¶ 25–32) is additionally unavailing because there is no evidence of record indicating that the patent illustrator(s) used this particular photograph or the depicted can to create the patent illustrations. we agree with Petitioner that even if different illustrators employ different drafting strategies, this “does not absolve Patent Owner’s responsibility not to add new matter.” Prelim. Reply 6.” slip op. at 28
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because the ’441 patent is eligible for post-grant review, we turn to an analysis of whether the Petition demonstrates “that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). C. Petitioner’s Grounds of Alleged Unpatentability As noted above in Section I.E, Petitioner asserts four different obviousness grounds. At this stage of the proceeding, Patent Owner does not address the merits of Petitioner’s obviousness grounds. See generally Prelim. Resp. For the reasons discussed below, we determine that Petitioner has demonstrated that it is more likely than not that the challenged claims are unpatentable based on the asserted grounds.” slip op. at 34
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,932,441 - PTAB · Feb 8, 2022 · PGR2021-00103 · APJ Patrick R Scanlon · PGR · Institution
The Board instituted PGR on claims 1–28 and all petition grounds, finding the Luharuka, API 674, and Karassik challenge more likely than not to prevail on claim 1.
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 not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” After considering the Petition and Patent Owner’s Preliminary Response, as well as all supporting evidence, we determine that Petitioner has satisfied the burden under 35 U.S.C. § 324(a) to show that it is more likely than not that at least one of the challenged claims is unpatentable.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“These arguments are not persuasive, however, because Patent Owner does not explain adequately how the disclosures of Oehring and Shampine are cumulative of the disclosure of Mu. In this case, the mere fact that 8 We note that Exhibit 2007 does not have ¶ 95 cited by Patent Owner. not mean necessarily that the references are cumulative of Mu. For instance, Petitioner relies on Mu for allegedly disclosing several claim limitations including “receiving a demand hydraulic horse power (HHP) signal,” “the first output power being in the range of approximately 70% to 100% of a maximum continuous power (MCP) level,” and “the second output power . . . being in the range of approximately 70% of the MCP level to approximately a maximum intermittent power (MIP) level.” Pet. 19–41. Patent Owner does not direct us to any disclosure in Oehring or Shampine that are cumulative of these alleged teachings in Mu. Accordingly, we do not agree with Patent Owner that either of Oehring or Shampine is cumulative of Mu. As such, we determine that Petitioner’s reliance on Mu does not involve the same or substantially the same art or arguments previously presented to the Office, and the first part of the Advanced Bionics framework is not satisfied with respect to Mu. And although Crowe is cited in the ’764 patent (see Ex. 1001, code (56)), Petitioner’s reliance on Crowe is minimal. The ground based on Mu and Crowe, thus, does not implicate § 325(d).” slip op. at 8
- Skill levelOther
“This dispute presents a factual issue best decided on a complete record. Accordingly, for purposes of the Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Lastly, on the current record, we disagree with Patent Owner’s argument that Mr. Marscher is not qualified to serve as an expert in this proceeding. See Prelim. Resp. 8. Mr. Marscher’s declaration and curriculum vitae show that he has extensive education and experience in relevant fields. Ex. 1003 ¶¶ 8–17; Ex. 1004.” slip op. at 11
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,815,764 - PTAB · Feb 8, 2022 · PGR2021-00102 · APJ Patrick R Scanlon · PGR · Institution
The Board instituted PGR on claims 1–28 on all asserted grounds, finding a sufficient likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 324(a), a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” After considering the Petition and Patent Owner’s Preliminary Response, as well as all supporting evidence, we determine that Petitioner has satisfied the burden under 35 U.S.C. § 324(a) to show that it is more likely than not that at least one of the challenged claims is unpatentable.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“These arguments are not persuasive, however, because Patent Owner does not explain adequately how the disclosures of Oehring and Shampine are cumulative of the disclosure of Mu. In this case, the mere fact that 8 We note that Exhibit 2007 does not have ¶ 95 cited by Patent Owner. not mean necessarily that the references are cumulative of Mu. For instance, Petitioner relies on Mu for allegedly disclosing several claim limitations including “receiving a demand hydraulic horse power (HHP) signal,” “the first output power being in a selected range of a maximum continuous power (MCP) level,” and “the second output power . . . being in a selected range of the MCP level to a maximum intermittent power (MIP) level.” Pet. 19–41. Patent Owner does not direct us to any disclosure in Oehring or Shampine that are cumulative of these alleged teachings in Mu. Accordingly, we do not agree with Patent Owner that either of Oehring or Shampine is cumulative of Mu. As such, we determine that Petitioner’s reliance on Mu does not involve the same or substantially the same art or arguments previously presented to the Office, and the first part of the Advanced Bionics framework is not satisfied with respect to Mu. And although Crowe is cited in the ’459 patent (see Ex. 1001, code (56)), Petitioner’s reliance on Crowe is minimal. The ground based on Mu and Crowe, thus, does not implicate § 325(d).” slip op. at 8
- Skill levelOther
“This dispute presents a factual issue best decided on a complete record. Accordingly, for purposes of the Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionTerm construed board ownOther
“We agree with Patent Owner that Petitioner has not explained sufficiently what a “maximum power output value” means in the context of the ’459 patent. Nor has Petitioner explained sufficiently why “maximum intermittent power” should be tied to the “maximum power output value.” In contrast, Patent Owner’s proposed construction is supported by the Specification, although we do not agree with the last clause of the construction because the references to “typical” values do not assist in understanding the claim language. Accordingly, for purposes of this Decision, we preliminarily construe “maximum intermittent power” to mean “an elevated operating output level that the pump unit may operate intermittently throughout its operating life without excessive damage to the pump unit.”” slip op. at 14
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · Graham · NautilusPatents in suitUS 10,907,459
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.