- PTAB · Aug 11, 2023 · IPR2023-00538 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1–10, 13–18, and 20–32 on all asserted grounds, finding a reasonable likelihood of unpatentability and declining § 325(d) denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), 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.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes 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.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on this record, it appears that the main distinction between Petitioner’s ordinary skilled artisan and Patent Owner’s is that Patent Owner further requires familiarity with wireless networks. We note, however, that the monitoring systems of the asserted prior art include wireless networks. In view of this, because Petitioner’s requirement of experience designing railcar, train, vehicle, or any other similar monitoring systems includes some familiarity with wireless networks, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’223 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). We note that our decision would be the same applying either party’s definition of a person of ordinary skill in the art.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“this proceeding. Pet. 15. Patent Owner asserts that the term “housing” means “an enclosure.” Prelim. Resp. 29. Having considered the record, we determine that no express claim construction is necessary for any claim terms. 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))).” slip op. at 16
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“30 of the ’223 patent are entitled to claim priority back to the ’713 application. The test for sufficiency of written description “is whether the disclosure of the application relied upon 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., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). In particular, we do not agree with Patent Owner that it can simply pluck the temperature sensor from LeFebvre and insert it into the sensor device disclosed in the ’713 application. Novozymes A/S v. DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1349 (Fed. Cir. 2013) (“Working backward from a knowledge of [the claims], that is by hindsight,” [patentee] seeks to derive written description support from an amalgam of disclosures plucked selectively from the [prior] application.”) (first alternation in original).” slip op. at 17
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,365,223
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.