- Fluidmaster, Inc. v. Danco, Inc.Some claims unpatentablePTAB · Mar 5, 2026 · IPR2024-00634 · APJ Meredith C Petravick · IPR · Final written decision
Claims 1, 3, 8–13, 15, 16, and 19–24 are unpatentable over Brown and Ho, with claims 16 and 19 also relying on the Quick Connection Art; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner proposes that: A [person of ordinary skill in the art (“POSITA”)] in the field to which the ’105 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” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“of “integrally molded with” as “molded together as a single structure.” Paper 21, 15.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Patent Owner responds that: a POSITA would not have been motivated to make the proposed modification, nor does the Petition include any analysis regarding why a POSITA would be motivated to move from a vertical extended portion to a radial extended portion. Indeed, a radial extended portion is directly counter to the stated goals of Brown (e.g., reducing noise caused by turbulence), at least insofar as it introduces another sudden directional change into the fluid flow system. PO Resp. 58–59 (citing Ex. 2013 ¶ 242).” slip op. at 32
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“Patent Owner argues that the ’105 patent claims were “fully supported as of the filing date of at least the ’606 Application . . . March 11, 2004” because the ’606 Application discloses regulating water flow and a POSITA would know that appropriate devices for regulating water flow includes nonadjustable waterflow restrictors. PO Resp. 63–65; PO Sur-reply 26–29. Patent Owner’s argument is persuasive. The ’606 Application discloses: [W]hen the toilet fill valve 100 is open and water flows from the water inlet 103 to the water outlets 106 and into a toilet tank, an amount of water is also supplied to the bowl fill valve inlet 113 that flows through the bowl fill valve 109 and out the bowl fill valve outlet 116. By virtue of the manual setting of handle 119 of the bowl fill valve 109, the flow of water through the bowl fill valve 109 is regulated. In this manner, the flow of water is regulated so that enough water flows out of the bowl fill valve 109 to fill a toilet bowl without wasting any water down a drain. seen from the passage above, the ’606 Application discloses regulating an amount of water supplied to a toilet bowl using a valve (i.e., a water flow regulator). Ex. 2013 ¶ 288. Further, the ’606 Application states: The bowl fill valve 109 may be, for example, a ball valve, a gate valve, a globe valve, a plug valve, a diaphragm valve, a butterfly valve, a needle valve, a sliding gate, a quick turn valve, a knife valve or any other appropriate type of valve as can be appreciated by those with ordinary skill in the art.” slip op. at 42
Patent outcomesUS 9,103,105 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,103,105 - Fluidmaster, Inc. v. Danco, Inc.Some claims unpatentablePTAB · Dec 15, 2025 · IPR2024-00633 · APJ Meredith C Petravick · IPR · Final written decision
Claims 1, 7–15, 19, and 20 are unpatentable over Brown and Ho; claims 2–6 and 16–18 were not shown unpatentable on the asserted grounds.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Brown’s adapter tube 23 (i.e., the extended portion) does not extend radially from a longitudinal axis of valve assembly 13 (i.e., the toilet fill valve). Ex. 1021, Fig. 1. Mr. Jobin testifies that a POSITA would not be motivated to move adapter tube 23 from a vertical position to a radial position because “a radial extended portion is directly counter to the stated goals of Brown (e.g., reducing noise caused by turbulence), at least insofar system.” Ex. 2013 ¶ 251; see Ex. 1021, 1:9–62. Patent Owner’s argument is persuasive. Petitioner’s analysis and Dr. Cameron’s testimony is conclusory and does not sufficiently explain why a POSITA would be motivated to make the proposed modification to Brown. For example, Petitioner does not sufficiently explain how such a modification would result in a more compact toilet fill valve system that could be adapted to fit in more toilet tank designs. Further, neither Petitioner nor Dr. Cameron sufficiently address Mr. Jobin’s testimony regarding Brown’s desire for a quieter toilet. See Pet. Reply 23; Ex. 1036 ¶ 84. Petitioner fails to meet its burden to show by a preponderance of the evidence that claim 2 is unpatentable over Brown and Ho.” slip op. at 35
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“description is an objective inquiry into the four corners of the specification from the perspective of a POSA. Using this test, the invention must be described in a manner sufficient to demonstrate that the inventor actually invented the claimed invention. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “One shows that one is ‘in possession’ of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Written description is a question of fact judged as of the relevant filing date. Falko–Gunter Falkner v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir. 2006). An ipsis verbis disclosure, however, is not necessary to satisfy the written description requirement. Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). The disclosure need only reasonably convey to a POSA that the inventor had possession of the subject matter in question, even if every nuance of the claims is not explicitly described in the specification. Id.; see Ariad, 598 F.3d at 1351. Patent Owner argues that the ’993 patent claims were “fully supported as of the filing date of at least the ’606 Application . . . March 11, 2004” because the ’606 Application discloses regulating water flow and a POSITA would know that appropriate devices for regulating water flow includes nonadjustable waterflow restrictors. PO Resp. 68; PO Sur-reply 28–30. Patent Owner’s argument is persuasive. The ’606 Application discloses: [W]hen the toilet fill valve 100 is open and water flows from the water inlet 103 to the water outlets 106 and into a toilet tank, an amount of water is also supplied to the bowl fill valve inlet 113 that flows through the bowl fill valve 109 and out the bowl fill valve outlet 116. By virtue of the manual setting of handle 119 valve 109 is regulated. In this manner, the flow of water is regulated so that enough water flows out of the bowl fill valve 109 to fill a toilet bowl without wasting any water down a drain. Ex. 1012, 47, ¶ 8 (emphasis added); see also Ex. 1001, 2:28–39. As can be seen from the passage above, the ’606 Application discloses regulating an amount of water supplied to a toilet bowl using a valve (i.e., a water flow regulator). Ex. 2013 ¶ 288.” slip op. at 48
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“1. Analysis of Claims 1–18 Schuster is available as prior art if the ’993 patent is only entitled to its January 27, 2014, filing date and not entitled to claim priority to earlier filing dates of the parent applications. On its face, the ’993 patent claims priority to a number of earlier parent applications, including Application No. 12/786,904 (the ’904 Application) filed May 25, 2010, and the Application code 63. Petitioner contends that the ’993 patent is not entitled to claim priority to the filing date of the earlier parent applications, and, thus, Schuster, a parent application of the ’993 patent, is available as prior art.15 Pet. 91–92. Petitioner alleges that the earlier parent applications, specifically Application No. 12/786,904 (the ’904 Application), do not provide written description support for the ’993 patent’s claim term “water flow regulator.” According to Petitioner, “water flow regulator” encompasses both adjustable devices for restricting the flow of water (i.e., valves) and fixed devices for restricting the flow of water (i.e., restrictors). Pet. 15. Petitioner contends that the ’904 Application does not provide support for water flow restrictors and, thus, does not provide support for the broader claim term water flow regulators. Id. at 14–15, 91–92. Petitioner argues that only adjustable water flow devices (i.e., valves) are supported by the ’904 Application. Id. Petitioner, thus, asserts that earliest effective filing date of the ’993 patent’s claims is the filing date of its application, January 27, 2014. Id. at 92. To be entitled to claim the benefit of an earlier filing date under 35 U.S.C. § 120 each application in the priority chain must comply with the written description requirement of 35 U.S.C. § 112(a). See Hollmer v. 14 The parties do not dispute that the ’993 patent and the earlier parent applications, including the ’904 Application and the ’606 Application, have the same pertinent portions of their specifications. See PO Resp. 71, n.16; Ex. 1004 ¶ 324. 15 Schuster issued on January 31, 2012, from Application No. 12/786,904, filed on May 25, 2010. Ex. 1029, code (21), (22), (45). Schuster, thus, issued more than one year prior to January 27, 2014.” slip op. at 46
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“2. Analysis of Claims 19 and 20 Claim 19 depends from claim 14 and additionally recites, “wherein the waterflow regulator comprises an adjustable water flow regulator that is configured to adjust the flow rate of the second portion of the water based at least in part on a setting of the adjustable water flow regulator.” Ex. 1001, 12:16–20. Claim 20 depends from claim 14 and recites the same additional limitation. Id. at 12:21–24. Claims 19 and 20, thus, require the water flow regulator to be an adjustable water flow regulator. Petitioner indicates that the earlier parent applications provide written description support for an adjustable water flow regulator. Pet. 91 (“[T]he ’904 application specification makes it clear that the adjustability of the bowl fill valve is a desirable and essential feature of the invention”); PO Surreply 28. Accordingly, Petitioner fails to meet its burden to show, by a preponderance of the evidence, that claims 19 and 20 are unpatentable over Schuster.” slip op. at 50
Patent outcomesUS 9,139,993 mixed§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,139,993 - PTAB · Nov 22, 2024 · PGR2024-00034 · APJ Patrick R Scanlon · PGR · Institution
Instituted PGR on claims 1–19 and all asserted grounds after finding at least one claim more likely than not unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute a post-grant review. See 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (2022). To institute a post-grant review, we must determine that “the information presented in the petition . . . would demonstrate 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). For the reasons set forth below, we determine that the information presented shows that it is more likely than not that Petitioner would prevail in establishing unpatentability of at least one challenged claim. Accordingly, we institute a post-grant review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We note that the identification of a Ph.D. as an example of “more formal education” creates a vast range of education relative to a bachelor’s degree. Thus, we treat the identification of a Ph.D. just as it is—an example—and not a requirement. In this case, “more formal education” can be satisfied by a level of education less than a Ph.D (but greater than a bachelor’s degree). Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, definition, limited as discussed above, for the purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“would have understood Unger’s disclosure to “suggest the use of a torsion spring to facilitate attachment and detachment, because torsion springs are designed to impart this functionality.” Id. (citing Ex. 1002 ¶ 118). Petitioner also asserts that one of ordinary skill in the art would have “understood that there were a limited number of ways to impart the referenced resilient or flexible ‘manipulation,’” and “would have been motivated to look to various known solutions to impart the suggested functionality, including the torsional spring mechanism of Smith that is used in a similar hearing protection device application for a similar purpose as Unger’s mounting arms (to apply a clamping force).” Id. at 32 (citing Ex. 1002 ¶¶ 120–121).” slip op. at 17
Claim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,736,855 - PTAB · Nov 14, 2024 · PGR2024-00026 · APJ Hyun J Jung · PGR · Institution
Instituted PGR on claims 1–7 and all grounds because Petitioner showed it was more likely than not that at least one challenged claim lacks written-description support.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage, Petitioner’s arguments, cited portions of the Specification, and supporting testimonial evidence demonstrate that it is more likely than not that claims 1–7 are unpatentable.” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDecided for petitioner
“patent describes that “angular position transducer 78 is placed on top of swing leg pivot shaft 24” and that “pivot shaft 24 is rotationally fixed to the connector plate and duplicates the angular movements of swing leg 20 about the pivot shaft.” Ex. 1001, 12:15–16, 12:20–22, Figs. 5, 7. The ’723 patent also describes that “[a]ngular position transducer 78 is mounted inside . . . protective can 90 . . . which is bolted to hinge bracket 28 via an upright holding arm 92” and that “trigger pin 94 projects upwardly from the top surface of pivot shaft 24 and cooperates with angular position transducer 78 to generate an angular position signal.” Id. at 12:28–33, Fig. 5. These descriptions expressly convey that angular position transducer 78 is on pivot shaft 24 and mounted inside protective can 90 that is bolted to hinge bracket 28. Id. at 12:15–16, 12:20–22, 12:28–30, Figs. 5, 7; see also Prelim. Resp. 17 (describing the same embodiment shown in Figs. 5 and 7). According to Petitioner, the ’723 patent describes the pivot shaft as part of the hinge bracket, not the modular frame or swing leg. Pet. 109–110 (citing Ex. 1001, 7:42–46, 12:17–22). On the preliminary record, we agree because the cited portions of the Specification describe that a “hinge bracket is interposed between each swing leg and an associated surface of the bolsters and includes a fixed, upright pivot shaft that pivotally engages the swing leg for pivotal movements” and “pivot shaft 24 is rotationally fixed to the connector plate.” Ex. 1001, 7:42–45, 12:20–21. We also agree that “even if one were to find that the hinge bracket is part of either the modular frame or swing leg (contrary to the claims and specification treating these all as separate components), the specification would only provide written description for one of the claimed alternatives.” Pet. 110 (citing Ex. 1002 ¶ 199).” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this preliminary stage, we determine that express claim interpretation is not necessary to determine whether it is more likely than not that at least one of the claims challenged in the petition is unpatentable. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We will also not use our discretion under § 325(d) to deny the Petition based on arguments previously presented in IPR2021-00135, because Petitioner relies on a Board determination regarding claim 8 from IPR2021- 00136, not arguments previously made for claim 1 in IPR2021-00135. Pet. 111–115, 119; Prelim. Resp. 8–9; Prelim. Sur-reply 5. Furthermore, we determined the effective filing date of claim 8 of the ’571 patent without deciding, that other challenged claims, such as claim 1, were entitled to their earliest possible effective filing date. See Godberson-Smith, Paper 61 at 11, 12.” slip op. at 12
Claim construction§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,772,723 - Nespresso USA, Inc. v. K-Fee System GmbHAll claims unpatentablePTAB · Sep 10, 2024 · IPR2023-00485 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–10 are unpatentable as obvious over the combined disclosures of Yoakim, Jarisch, Rossi, and Castellani.
RulingsFinal written decision- Skill levelSkill level board ownPetitioner expert creditedDecided for petitioner
“have a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products.” Pet. 31 (citing Ex. 1003 ¶ 40). In the Institution Decision, we preliminarily determined that a person of ordinary skill in the art “would have a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier.” Inst. Dec. 8 (emphasis added). Neither party disputes this conclusion. PO Resp. 9; see generally Pet. Reply. As such, we adopt our preliminary definition of the ordinarily skilled artisan for purposes of this Final Written Decision.” slip op. at 8
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“designing medical devices and components, and that those experiences represent work designing products similar to mechanical beverage systems, Patent Owner fails to direct the Board to evidence sufficient to establish that this experience, in the aggregate, amounts to at least “five years” or involved “experience with sensors for recognizing an identifier.” Inst. Dec. 8 (adopting Patent Owner’s own proposed definition of one of ordinary skill in the art); see Sur-reply 3–4 (citing Ex. 1066, 34:16–35:9; Ex. 1067, 101:3– 12, 102:20–104:9; Ex. 2017 ¶¶ 3–4, 8–10) (failing to establish adequately, if at all, how Dr. Howle’s qualifications include the requisite minimum five-year period of relevant design experience). Accordingly, we determine that Dr. Howle is not qualified to offer expert testimony from the perspective of a person having ordinary skill in the art in this proceeding.10 See Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022). The Federal Circuit has explained that “[t]o offer expert testimony from the perspective of a skilled artisan in a patent case,” including the issue of patent “validity,” the “witness must at least have ordinary skill in the art.” Id. (Board’s emphasis). “Without that skill, the witness’[s] opinions are neither relevant nor reliable.” Id. at 1377.” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Second, Patent Owner and Dr. Howell assert that a person of ordinary skill in the art “would have understood upon reading the second German application that the capsule features described would be intended to be combinable with each of the described embodiments.” PO Resp. 40; Ex. 2017 ¶ 61. But Patent Owner and Dr. Howell do not explain how a barcode could be used in the devices depicted in Figures 16–18, which place the detection means 2.4.2 on the outer circumference of the flange (not its underside) and rely on toothed-rings physically interacting with either the chamber, retaining arms, or a pinion. Ex. 1047, 12:22–31, 13:8–18. Indeed, the second German priority application explains that means 2.4.2 physically interacts with retaining arms 30 (embodiments of Figures 16 and 17) or a pinon (embodiment of Figure 18), and if means 2.4.2 were not present in these embodiments the capsule would either “drop through into a waste container” or could not be inserted through the insertion shaft. Id. at 12:22– 27, 13:9–12, 13:16–35 (noting that in the embodiment disclosed in Figure 18 a pinon interacts with means 2.4.2 and only when means 2.4.2 “is formed complementary to the teeth of the means” can the capsule be inserted). At no point does the second German application identify means 2.4.2 as a barcode or suggest a barcode could be used as the detection means. The second German application also states that A person skilled in the art is also aware that for example the insertion shaft may also contain a sensor, for example a camera, clear, however, that element 27 is part of the brewing chamber, and not the capsule. Ex. 1047, 12:27–31, 13:5–8, 13:21–26, 15:36. Thus, we are not persuaded that the toothed ring is in fact on the bottom side of the flange. which senses the shape of the means 2.4.2. For example, it would be possible, in the present case, for the shape of the teeth and/or the spacing between the same to be sensed. This signal, in turn, is passed to a control means, which frees, for example, the brewing chamber if the capsule is the correct one. Ex. 1047, 14:11–19. Again, despite using a camera to determine if a capsule is “the correct one,” the second German application does not suggest using a barcode in place of the toothed-ring structure, or suggest moving the location of the detection means 2.4.2 from the outer surface to the underside of the flange. This reinforces that the inventors did not contemplate using a barcode in the embodiments depicted in Figures 16–18.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“As asserted by Petitioner, Jarisch teaches how to move a code in a centrifugal brewing system to the bottom of the flange and how to configure a light-conductive material so that the detector’s light source will reach the bottom of the flange. Pet. 48–49; Pet. Reply 23–24 (Ex. 1003 ¶¶ 184–185; Ex. 1005 ¶¶ 82–84, Fig. 5). And, although Figure 61 of Yoakim discloses a flare in its brewing chamber, bodily incorporation is not required, and we are directed to no persuasive argument or evidence that Yoakim could not be configured with a straight chamber, as generally depicted in Figure 5 of Jarisch. Pet. Reply 24 (noting that Dr. Howle’s testimony on this subject is “conclusory” and depends on “bodily incorporation”). As such, we credit the testimony of Mr. Jobin that a person of ordinary skill in the art would have sought to place the code at the bottom of the flange and would have had a reasonable expectation of success in so doing.17 Ex. 1003 ¶ 184. Patent Owner further contends that Yoakim requires that the capsule holder be capable of receiving a set of multiple volume capsules and that 17 As discussed above, Mr. Jobin has extensive experience in the design of brewing devices. Conversely, Dr. Howle has limited experience in this field and is not one of ordinary skill in the art. Although Mr. Jobin’s testimony is more persuasive regardless of the discrepancy in experience between the two declarants, when this difference in design experience is considered, it only serves to increase the weight we give to Mr. Jobin’s testimony. there is a “snug fit” to avoid “unbalances.” PO Sur-reply 8 (citing Ex. 1004 ¶¶ 205, 479, 484, 507, 512). According to Patent Owner, Petitioner does not explain adequately how the use of Jarisch’s “straight chamber” with a capsule holder that does not engage with the side wall of the capsule would allow insertion of the multiple volume capsules or permit a “snug fit.” Id.; PO Resp. 28. Patent Owner’s assertion that Yoakim discloses the use of certain capsules that might not fit into a device with Jarisch’s non-flared structure is ineffective to undercut the sufficiency of Petitioner’s showing on this point. As noted by Patent Owner, Yoakim discloses the use of certain capsules which might not fit into a device with Jarisch’s non-flared structure. But Petitioner is not seeking a bodily incorporation of Yoakim and Jarisch, and other embodiments of Yoakim do not require the type of flared capsule identified by Patent Owner. Ex. 1004, Fig. 63. Moreover, we are directed to no persuasive evidence that Jarisch’s lack of contact between the capsule side wall and the holder would render the device inoperable or even less effective. Id. (citing Ex. 2019, 36:18–37:6; Ex. 1005 ¶ 23 (Jarisch explaining that its device includes a capsule holding means and that the capsule may be successfully driven in rotation). As such, we credit the testimony of Mr. Jobin that one of ordinary skill in the art would have understood how to design the chamber of Yoakim to allow reading of a barcode on the underside of the flange and that this design would allow for successfully receiving single-serve capsules and driving them in rotation. Ex. 1003 ¶¶ 182–184; Ex. 1005 ¶ 23.” slip op. at 39
Patent outcomesUS 11,230,430 unpatentable§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,230,430 - 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 · May 20, 2024 · IPR2024-00114 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–8 on all asserted grounds, finding a reasonable likelihood that at least one claim would have been obvious over DiPerna964 and Strack.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We determine below that Fintiv factors 1–5 do not favor discretionary denial. Thus, we do not reach the issue of whether the merits are compelling. CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022- 01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (precedential) (Board must first address Fintiv factors 1–5, and should engage the compelling merits question only if that analysis favors discretionary denial) (“CommScope”). 7. Balancing the Fintiv Factors Weighing against exercising our discretion to deny institution is factor 3 involving the parties’ limited investment and lack of substantive orders in the District Court litigation. Factor 4 concerning the limited overlap of the issues in the two cases also weighs against discretionary denial. Only factor 5, that Petitioner and the defendant in the District Court litigation are the same party, weighs in favor of discretionary denial. Factor 1 concerning the absence of a stay in the District Court litigation, and factor 2 concerning the close proximity between the start of trial in the District Court litigation and the estimated deadline for the final written decision, are neutral on the facts of this case. We therefore determine that the balance of factors 1–5 weighs against discretionary denial. Accordingly, we do not consider the issue of whether compelling merits have been shown under factor 6. See CommScope, Paper 23 at 4–5.2” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Pet. 9 (citing Ex. 1006, 23) (emphasis added). From this passage, we understand the “safety” switch to be “separate” from the panic button, not a part of it. This understanding is reinforced by claim 7 which depends from claim 1 and recites that the mobile device “further compris[es] a safety switch,” meaning it is a separate element from the panic button. Ex. 1001, 9:3–4. Thus, moving the safety switch into position readies the panic button, which is not the same as the panic button readying itself to perform functions in claims 1–8 of the ’404 patent. Patent Owner does not sufficiently address this issue in its assertions. See Prelim. Resp. 5–7. Patent Owner’s reliance on disclosures elsewhere in the ’404 patent is likewise not persuasive. Prelim. Resp. 5–6. For example, the ’353 application mentions “ready” in relation to using a self-defense mechanism such as pepper spray, which has not been shown to be related to the panic button. Ex. 1006, 5, 9–10. Although Patent Owner relies on the ’353 application’s description of voice activation using a codeword, voice activation does not ready the panic button for activation to perform functions, but actually activates the panic button to perform those functions. Prelim. Resp. 6 (citing Ex. 1006, 17). Petitioner thus met its burden here to demonstrate that claims 1–8 of the ’404 patent lack written description support for a panic button adapted to “ready itself” to perform the recited functions because the limitation is not present in the ’353 application to which the ’404 patent claims priority. Pet. 8–10. The burden of production thus shifted to Patent Owner to demonstrate that the ’353 application has written description support for this limitation, which it has not done on this record. Prelim. Resp. 5–7.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“of the proceeding, we are persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions that at least one of claims 1–8 of the ’404 patent would have been obvious under 35 U.S.C. § 103 based on the ground set forth in the Petition. Accordingly, we institute trial for all challenged claims on all grounds asserted by Petitioner. See SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). Our factual findings, conclusions of law, and determinations at this stage of the proceeding are preliminary, and based on the evidentiary record developed thus far. At this stage of the proceeding, we have not made a final determination with respect to the patentability of the challenged claims or to the construction of any claim term. V. ORDER For the foregoing reasons, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–8 of the ’404 patent is hereby instituted on all challenges to patentability set forth in the Petition; and” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner has shown sufficiently that a POSITA would have combined DiPerna964 and Strack with a reasonable expectation of success. Pet. 16–18. DiPerna964 and Strack are directed to similar mobile devices for use in security and emergency situations. Id. at 16–17. Petitioner demonstrates sufficiently that a POSITA would have regarded Strack’s arming and timer technique as an improvement that would have been useful with DiPerna964’s mobile device (at least in some circumstances) to provide the user with additional time to evaluate whether triggering the 911 call is warranted. Id. at 17–18. This amounts to the use of a known technique to improve similar devices in the same way, which is a recognized rationale for combining prior art references. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401, 417 (2007). Accordingly, on this record, Petitioner has presented a reasonable likelihood that a POSITA would have combined DiPerna964 and Strack with a reasonable expectation of success. Pet. 16–18.” slip op. at 22
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,265,404 - Bj’S Wholesale Club Holdings, Inc. v. Walmart Apollo, LLCAll claims unpatentablePTAB · Apr 10, 2024 · IPR2022-01564 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1–14 are unpatentable as anticipated by Keith; the Board did not reach the alternative obviousness ground over Hanson and Keith.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“claims of the later-filed application must be supported by the written description in the parent ‘in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.’” Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1335 (Fed. Cir. 2010) (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)). “[T]he hallmark of written description is disclosure,” and the test “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” of that application. Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991)). “[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. But, “[i]t is not sufficient for purposes of the written description requirement of [35 U.S.C.] § 112 that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose.” Lockwood, 107 F.3d at 1572.” slip op. at 33
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. Inc., v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Moreover, “[b]ecause the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Whether a reference anticipates is assessed from the perspective of an ordinarily skilled artisan. See Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“‘[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.”). slip op. at 13
- BurdenFwd all claims unpatentableDecided for petitioner
“preponderance of the evidence that the claims are unpatentable. 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2022). “In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).” slip op. at 12
Patent outcomesUS 10,803,435 unpatentable§ 102 anticipation§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,803,435 - Crusoe Energy Systems, LLC v. Upstream Data Inc.Institution deniedPTAB · Mar 29, 2024 · PGR2023-00052 · APJ Matthew S Meyers · PGR · Institution
Institution was denied because Petitioner did not show it was more likely than not that claims 1–41 were unpatentable under any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Section 324(a) provides that 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.” Upon considering the Petition, Preliminary Response, and the cited evidence, we conclude that Petitioner has not satisfied its burden under 35 U.S.C. § 324 to show that it is more likely than not that claim 1 is unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner disagrees with Petitioner’s articulation of the level of ordinary skill in the art, but does not offer a definition of its own. Prelim. Resp. 5. According to Patent Owner, “[t]his Petition and related declaration propose two alternative levels of ordinary skill in the art, where the second alternative does not require any formal education or any experience in the field of oil or gas production.” Id. While Patent Owner disagrees with Petitioner’s characterization of the level of ordinary skill in the art, Patent Owner does not explain how a different level of skill is likely to alter Petitioner’s analysis. Instead, Patent Owner contends that it “applied Petitioner’s articulation and confirmed the analysis detailed below would not change based on disagreements over the level of ordinary skill in the art.” Id. (citing Ex. 2101 ¶¶ 16–17). 8 To the extent necessary, and for purposes of this Decision, we accept Petitioner’s statement on the level of skill in the art. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (listing the type of problems encountered in the art, prior art solutions to those problems, and the sophistication of the technology as factors that may be considered in determining the level of ordinary skill in the art). The prior art itself may be sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima, 261 F.3d at 1355 (explaining that specific findings regarding 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)).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Because the meanings of the claim terms “blockchain mining devices,” “mining processor,” and “adapted to mine transactions” are inextricably linked with Petitioner’s indefiniteness grounds, we will address the meaning of those terms in the context of the parties’ arguments to the extent necessary to resolve the controversy as set forth below in Section III.C. Similarly, we will address the parties’ arguments regarding the disputed means-plus-function limitations in our discussion of 35 U.S.C. § 112(f) as set forth below in Section III.E. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Disclosure Requirements (§112) › Definiteness (Nautilus)Not shown unpatentable
“To satisfy the definiteness requirement of § 112(b), a patent’s claims must, when “viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, 572 U.S. at 910. We are not persuaded that the Petition shows that it is more likely than not that Petitioner would prevail in demonstrating that the term “blockchain mining devices,” as recited by independent claims 1 and 24, is indefinite. As an initial matter, we agree with Patent Owner that “Petitioner’s indefiniteness theory is flawed because its ‘alternative interpretations’ are of its incorrect claim construction rather than the claim language in view of the specification as required by Nautilus.” Prelim. Resp. 13. We find the Specification informs, with reasonable certainty, those skilled in the art about the meaning of the term “blockchain mining devices.” The 18 Specification informs us that “each blockchain mining device 12 may be composed of suitable components. The blockchain mining device 12 may have a network interface, such as network equipment 88, and one or a plurality of mining processors 92 (92A-92E for example).” Ex. 1001, 15:21–25. And, claim 1 recites that the “blockchain mining devices [are] connected to the generator” and “each have a mining processor and are connected to a network interface.” Id. at 19:59–62. Thus, reading the term “blockchain mining devices” in light of the language of the claim and the Specification, an ordinarily skilled artisan would have understood “blockchain mining devices” to mean a device composed of, for example, a network interface and one or more processors. Id. at 15:21–25, 19:59–62.” slip op. at 18
Claim construction§ 112 disclosureDiscretionary denialPatents in suitUS 11,574,372
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.