• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Maxell LtdNo claims unpatentable
  PTAB · Oct 31, 2025 · IPR2024-00777 · APJ Jameson Lee · IPR · Final written decision

  Claims 16–27 were not shown unpatentable because Petitioner failed to account for limitations 16[b] and 16[i] and their counterparts across the asserted obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner proposes that a person of ordinary skill in the art “would have a Bachelor of Science degree in Electrical Engineering, Computer Engineering, Computer Science, Human Computer Interaction, or a related technical field, with at least one year of experience working in the field of user interfaces and/or content management.” PO Resp. 11 (citing Ex. 2040 ¶ 53). The Decision on Institution adopted Petitioner’s proposed level of ordinary skill in the art. Inst. Dec. 10. We find Patent Owner’s stated level to be less precise than that proposed by Petitioner in that the modifier “at least” used by Patent owner imposes no upper bound on the amount of experience possessed by one of ordinary skill in the art. Also, Patent Owner states: “The difference between the Board’s definition and Patent Owner’s (EX2040. ¶53) does not change the arguments set forth herein.” PO Resp. 11. Thus, we continue to adopt Petitioner’s stated level of ordinary skill in the art.4 4 All of our findings and conclusions would still be the same, however, had we applied Patent Owner’s articulation of the level of ordinary skill in the art.” slip op. at 8

  • Prior constructionPrior construction adoptedDecided for patent owner

    “In its Reply, Petitioner does not assert that the district court’s construction is incorrect. We agree with Patent Owner that the district court’s construction is better than Petitioner’s proposed construction, because for reasons indicated by Patent Owner, which are not disputed by Petitioner, settings in the computer, e.g., dedicated folders for each user are the user profiles, rather than simply data alone of any kind. Further, when asked about the appropriateness of the district court’s construction, counsel for Petitioner expressed that Petitioner has no objection to the Board’s adopting the district court’s construction for “user profile”: JUDGE LEE: So, you’d be fine with just going with the District Court’s construction? MR. HEINTZ: Yes, Your Honor. Tr. 15:22–24. For the foregoing reasons, we adopt the district court’s construction for “user profile,” i.e., “a collection of settings and information associated with a user.”” slip op. at 13

  • BurdenNot shown unpatentable

    “PO Resp. 30–31 (Figure 26 omitted). In its Reply, Petitioner still does not provide an articulated reason for placing user profile selection buttons, labeled with user names, within Horn’s panes 2601 or 2602. Reply 12–14. Although Horn does describe personalized profile, Petitioner points to no disclosure of Horn as to how a user would have selected his or her own profile from among a plurality of user profiles. Petitioner presents no reason for placing these user profile selection buttons, labeled with user names, gleaned from or suggested by Baumgartner, within either pane 2601 or pane 2602 in Horn’s workspace view. Further, pane 2602 contains “a list of all collections defined by MFS and the user,” and pane 2601 lists the source examined by the user to create his or her collections. Ex. 1005, 19:41–46. That disclosure suggests the contents of panes 2601 and 2602 are tied to one particular user. No rational basis is articulated by Petitioner to place user profile selection buttons within these panes which appear to be in the profile space of one user. For the foregoing reasons, Petitioner has not adequately accounted for limitation 16[b].” slip op. at 22

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “The test for sufficiency of a written description under 35 U.S.C. § 112 is whether the earlier application’s disclosure “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The specification must “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Id. The Court of Appeals for the Federal Circuit has explained: 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. Id. (“[T]he applicant must also convey to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the ‘written description’ inquiry, whatever is now claimed.”) (emphasis in original). One does that by such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention. Although the exact terms need not be used in haec verba, see Eiselstein v. Frank, 52 F.3d 1035, 1038, 34 USPQ2d 1467, 1470 (Fed.Cir.1995) (“[T]he prior application need not describe the claimed subject matter in exactly the same terms as used in the claims. . . .”), the specification must contain an equivalent description of the claimed subject matter. A description which renders obvious the invention for which an earlier filing date is sought is not sufficient. Lockwood v. American Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997).” slip op. at 31

  Patent outcomesUS 11,017,815 not shown unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 11,017,815
• Microchip Technology Inc. v. Aptiv Technologies AGInstituted
  PTAB · Jul 15, 2024 · PGR2024-00011 · APJ Jean R Homere · PGR · Institution

  The Board instituted PGR on claims 1–15 and all asserted grounds, finding a reasonable likelihood that at least claim 1 is obvious over Chang, Chang II, and POSITA knowledge.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 324(a) (2018); 37 C.F.R. § 42.4(a) (2023) (“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 evidence and arguments in the Petition (including its supporting testimonial evidence) and the evidence and arguments in the Preliminary Response (including its supporting testimonial evidence), we determine that the information presented shows that it is more likely than not that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute post-grant review on all” slip op. at 2

  • Other 314aDenied

    “Petitioner hereby stipulates that, if the PTAB institutes this post-grant review, Petitioner will not pursue invalidity of the Challenged Claims in a parallel district court proceeding on the same grounds or any grounds that could have reasonably been raised before the PTAB in this Petition. Pet. 106. Petitioner cites the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”)3 in support of its contentions. Pet. 106.” slip op. at 11

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “§ 325(d), the Board uses the following two-part framework: (1) determining 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, determining 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). In applying the two-part framework, we consider several non-exclusive factors, including: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which petitioner relies on the prior art or patent owner distinguishes the prior art; (e) whether petitioner has pointed out sufficiently how the examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph) (“Becton, Dickinson”). Becton, Dickinson factors (a), (b), and (d) relate to whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, Paper 6 at 10. Factors (c), (e), and (f) “relate to whether the petitioner has demonstrated a material error by the Office” in its prior consideration of that art or arguments. Id. Only if the same or substantially the same art or arguments were previously presented to the Office do we consider whether the petitioner has demonstrated a material error by the Office. Id. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 14

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “At the time of the invention, a POSITA would have had a bachelor’s degree in computer science, electrical engineering, or an equivalent, and two years of professional experience working with computer network protocols such as USB. Lack of work experience can be remedied by additional education, and vice versa. Id. (citations omitted). At this stage, we find Patent Owner’s proposed level of a POSITA to be consistent with the problems and solutions disclosed in the ’643 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (approving the determination of the level of ordinary skill in the art by appeal to the references of record). We nonetheless invite the parties to further address this issue, if they deem it necessary and appropriate. The parties should also specifically explain how different definitions for one of ordinary skill in the art relate to specific arguments and issues of unpatentability or claim construction, to the extent that a dispute remains as to who constitutes a POSITA.” slip op. at 20

  Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · Graham · Nautilus
  Patents in suitUS 11,681,643
• Intel Corporation v. Ax Wireless, LLCInstitution denied
  PTAB · Mar 5, 2024 · IPR2023-01146 · APJ Michael T Cygan · IPR · Institution

  The Board denied institution on all grounds because Petitioner did not show Huang or Sun was prior art to claims 1–10, which it argued were obvious over those references.

  RulingsInstitution decision

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

    “II. ANALYSIS A. Legal Standards Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). For purposes of institution, Petition bears the burden to establish, by a reasonable likelihood that at least one of the challenged claims would have been obvious over the cited art. See 35 U.S.C. § 314(a). Where unpatentability rests on a document that is prior art to a challenged patent but for that patent’s priority claim to an earlier effective filing date, such a priority claim is not presumed valid. PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008) (noting that the USPTO does not routinely determine whether such priority claims meet the requirements of 35 U.S.C. § 120).” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art would have had at least a Master’s degree in electrical engineer-ing or a similar discipline, and/or at least two to three years of experience working or conducting research in wireless commu-nication protocols, or an equivalent combination of education and experience. Pet. 6 (citing Ex. 1003 ¶¶ 71, 72). Patent Owner does not contest Petitioner’s assertion as to the level of ordinary skill in the art. Prelim. Resp. 6. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’146 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached

    “action under 35 U.S.C. § 282(b), including construing the claim 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. 37 C.F.R. § 42.100(b) (2022). The Board is required to construe “only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner and Patent Owner, in extended briefing, contest the construction of the phrase “detecting, from the received wireless packet, the second header field which repeats the first header field,” as it appears in claim 1. Pet. 9; Prelim. Resp. 1; Pet. Reply 3; PO Sur-Reply 3. However, both parties appear to agree that the plain and ordinary meaning of the term should apply. See Pet. 6; Prelim. Resp. 15. Further, Petitioner has clarified that its statements as to the scope of the term are directed to its assertions that the ’146 patent lacks support for the claimed subject matter in its parent applications. Pet. Reply. 5–6. Consequently, we address claim construction arguments in their context of the parties’ priority contentions. See infra at II.D.1.” slip op. at 7

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “Patent Owner has shown sufficient written description support for the claims, including the disputed “detecting” limitation. The “decode-to-learn- ‘D’” description in the specification of the ’146 patent and in the provisional application to which the ’146 patent claims priority describe a specific procedure for the claimed “detecting, from the received wireless packet, the second header field which repeats the first header field.”3 See Ex. 1001, 2 Petitioner specifically asserts that Huang qualifies under 35 U.S.C. §102(b). Pet. 2, 19 (“by more than a year”). However, Huang’s patent issuance date of April 28, 2020 does not qualify under § 102(b) because it is less than one year before the December 29, 2020 filing date of the ’146 patent. Nevertheless, Petitioner has made an effective showing that Sun would qualify as prior art sufficient to shift the burden of production to Patent Owner. 3 Patent Owner does not explicitly show support for each of the applications in the priority chain. Patent Owner also cites to a Pre-Grant Publication rather than the underlying application despite the fact that such a Publication may include amendments to the originally filed application that would not evidence written description. See 37 C.F.R. § 1.215 (a); MANUAL OF PATENT EXAMINING PROCEDURE §1121; Ex. 2003, 7 (showing amendments 3:1–11; Ex. 2001 ¶ 35; Ex. 1008, 5–6; PO Sur-Reply 6. The “D” information is received in the wireless packet, and the receiver determines therefrom whether there is a second header field that repeats the first header field. See Ex. 1008, 5–6; PO Sur-Reply 6. The written description further includes descriptions of other embodiments for receiver detection with variable repetition, including detection “without knowing D a priori.” Ex. 1001, 2:18–3:59.” slip op. at 9

  Claim construction§ 112 disclosure
  Patents in suitUS 11,212,146
• Truist Bank v. United Services Automobile AssociationInstitution denied
  PTAB · May 16, 2023 · IPR2023-00144 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution on all challenged claims because Oakes supports the claimed mobile device, is not prior art, and the petition therefore did not meet the reasonable-likelihood threshold.

  RulingsInstitution decision

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

    “inter partes review may not be instituted unless the information presented in the Petition and the Preliminary 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) (2018); 37 C.F.R. § 42.4(a) (“The Board institutes trial on behalf of the Director”).” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “Prelim. Resp. 24–26. We determine that this argument and evidence is more persuasive and better supported than Petitioner’s contrary arguments and evidence. We determine that Patent Owner’s position that a skilled artisan in the relevant time frame would have found clear support for the full-scope of the invention claimed including a “mobile device” as recited and construed as a “handheld computing device” is well-supported. In contrast, Petitioner’s argument and evidence are based on an improper claim construction and lack substantial supporting evidence. For these reasons, we determine that Oakes does provide written description support for “mobile device” as recited in the challenged claims of the ’432 patent and the ’432 patent is entitled to claim priority to the filing date of the application that issued as Oakes. As a result, Oakes is not prior art to the ’432 patent and all the challenges in the Petition fail because they rely on Oakes as prior art.” slip op. at 28

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “On this record and for purposes of deciding whether to institute trial, we construe “mobile device” as “handheld computing device,” because both parties ask us to adopt the District Court’s claim construction. 8 We do not 8 Petitioner does not dispute that we should “adopt[ ] the claim constructions [Patent Owner] advanced and the Court adopted in [the PNC Litigation].” include the phrase “excluding laptops” as part of this construction as the arguments in support of this construction in the Petition are contradicted by the evidence and Petitioner has otherwise failed to support the inclusion of this phrase in the construction.” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s proposal is consistent with the technology described in the Specification of the ’432 patent and the cited prior art. For that reason, and in order to determine whether Petitioner has demonstrated a reasonable likelihood of showing the unpatentability of at least one of the challenged claims, we adopt Petitioner’s proposed level of skill in the art.” slip op. at 13

  Claim construction§ 112 disclosurecites Phillips
  Patents in suitUS 10,482,432
• Sharkninja Operating LLC / Sharkninja Management LLC et al. v. Irobot CorporationAll claims unpatentable
  PTAB · Nov 1, 2022 · PGR2021-00079 · APJ Jason W Melvin · PGR · Final written decision

  Claims 1–14 are unpatentable under § 112(a) because the specification does not describe a floor plan that distinguishes carpeted from noncarpeted areas.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill “would have at least a bachelor’s degree in mechanical engineering or electrical engineering or a closely related field and at least one year of experience in the design and implementation of robotics and embedded systems.” Pet. 11 (citing Ex. 1003 ¶ 18). Patent Owner does not dispute this definition. See generally PO Resp. We adopt Petitioner’s proposed level of ordinary skill as it appears to be consistent with the level of skill reflected by the specification.” slip op. at 6

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

    “The claim language establishes two distinct (and mutually exclusive) types of areas: “areas with carpeting” and “areas that do not have carpeting.” Ex. 1001, 19:17–:18, 20:12–:13. Those areas, as defined, provide the antecedent basis for the later claim language requiring the areas be “identifi[ed]” in the displayed floor plan (“an identification of the areas with carpeting and the areas that do not have carpeting”). We conclude that identifying—ascertaining the identity of—two distinct types of areas requires an indication to distinguish one type of area from the other. That conclusion flows from the claim language that establishes two types of areas and then refers back to those types when requiring a floor plan that includes identification of them. Indeed, the claim as a whole depends on a distinction between the two types of areas. After establishing that the map used for navigation indicates the two types of areas, the claim requires that the robot sense its location relative to the areas and adjust its cleaning behavior based on that location. Id. at 19:16–:25, 20:11–:19. Patent Owner’s proposed construction—that “identification of the areas with carpeting and the areas that do not have carpeting” does not require distinguishing between the two types of areas—would contravene the claim’s consistent approach to the areas.3” slip op. at 8

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable

    “Under the construction adopted above, we conclude the specification lacks written-description support for a “displayed floor plan comprising an identification of the areas with carpeting and the areas that do not have carpeting.” As discussed, our construction requires that the floor plan itself allow users to distinguish between areas with carpeting and areas that do not have carpeting. Neither Figure 22 nor any textual description supports that capability, and Patent Owner does not argue otherwise. See PO Resp. 18–23.” slip op. at 13

  Patent outcomesUS 10,990,110 unpatentable
  Claim construction§ 112 disclosurecites Phillips
  Patents in suitUS 10,990,110
• Arkema Inc. / Arkema France v. Honeywell International Inc.All claims unpatentable
  PTAB · Aug 25, 2022 · PGR2016-00012 · APJ Sheldon M Mcgee · PGR · Remand

  Claims 1–20 are unpatentable under § 102(a) for prior public use; the Board did not reach the remaining anticipation, obviousness, and enablement grounds.

  RulingsRemand decision

  • RemandOther

    “On October 1, 2019, the Federal Circuit held that we “abused [our] discretion by assuming the authority that 35 U.S.C. § 255 expressly delegates to the Director: to determine when a Certificate of Correction is appropriate,” and vacated our Final Written Decision. Honeywell Int’l Inc. v. Arkema Inc., 939 F.3d 1345 (Fed. Cir. 2019). The Federal Circuit instructed us to “authorize Honeywell to file a motion seeking leave to petition the Director for a Certificate of Correction.” Id. at 1351. Pursuant to the Federal Circuit’s mandate, we gave our authorization, and Patent Owner filed its Motion for Leave to Request a Certificate of Correction. PGR11 Paper 61; PGR12 Paper 41. After additional briefing from the parties was complete, we granted Patent Owner’s Motion. PGR11 Paper 77; PGR12 Paper 57. Patent Owner filed its Request for a Certificate of Correction, as well as a Petition to Accept [Unintentionally] Delayed Claim to Priority under 35 U.S.C. § 120 and 37 C.F.R. § 1.78. PGR11 Ex. 2174; PGR12 Ex. 2172.” slip op. at 3

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “Synthes USA, LLC v. Spinal Kinetics, Inc., 734 F.3d 1332, 1344 (Fed. Cir. 2013). And, although there are no bright-line rules for the amount of disclosure needed in an unpredictable art, that amount “necessarily changes with each invention” and “changes with progress in the field.” Ariad, 598 F.3d at 1351. Here, we find that the art of AAC was unpredictable and that a heat-transfer composition for AAC required specific technical features that were unpredictable and unexpected. Thus, we conclude that the ’525 application requires a more-detailed disclosure than would be required in a predictable field to adequately demonstrate possession of a heat-transfer composition consisting essentially of HFO-1234yf and PAG for use in AAC. (iii) Disclosure in the ’525 Application With these background findings in mind, we now turn to the four corners of the ’525 application—and we find that the ’525 application does not contain the detailed disclosure needed in this case to reasonably convey possession of a heat-transfer composition consisting essentially of HFO- 1234yf and PAG for use in AAC.” slip op. at 37

  • Skill levelSkill level board ownDecided for patent owner

    “develops new refrigerants for use as heat transfer fluids. Ex. 1002 ¶ 149. Such a person would have had a Ph.D. in Chemistry, Chemical Engineering, Mechanical Engineering, Material Science, or a related field or discipline and at least 3 to 5 years of experience, or alternatively an M.S. degree and 5 to 10 years of experience. Id. Patent Owner’s Declarant, Dr. Bivens, provides a similar description of the person of ordinary skill in the art, stating that such a person would have a B.S. degree in Chemical Engineering or Chemistry, and five years of work experience, or a Ph.D. or M.S. degree and 2–3 years of experience. Ex. 2001 ¶ 23. Based on these descriptions, we find that the parties’ definitions of ordinary skill in the art are substantially the same, and agree with the parties that an ordinarily skilled artisan would be educated in the Chemical and Chemical Engineering arts or related disciplines. We also agree with the parties that a person having less formal education, such as a B.S. or M.S. degree, would require more years of experience than a person with more formal education, such as a Ph.D., to qualify as an ordinarily skilled artisan. We also find that neither party states how any difference in the parties’ articulated levels of skill impacts this proceeding. Thus, our analysis would be the same regardless of any minor differences between the parties’ respective articulations. Finally, we note that the level of ordinary skill in the art is reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 20

  • Novelty / Anticipation (§102) › Prior-art status of a reference › On-sale bar (Pfaff, Helsinn)UnpatentableUnpatentable

    “Tr. 114:15–115:18 (emphases added). Thus, we find that Patent Owner does not contest that a heat-transfer composition consisting essentially of HFO- 1234yf and PAG for AAC was in public commercial use before the March 26, 2014, filing date of the ’017 patent. Accordingly, we find that Petitioner’s evidence, together with Patent Owner’s concessions, demonstrates by a preponderance of evidence that the claimed subject matter of the ’017 patent was in commercial use before its March 26, 2014, effective filing date. See Ex. 1002 ¶¶ 399–409. In particular, as to claims 1, 3–10, 12, 13, and 15–20, we credit Dr. Brown’s uncontested testimony that the refrigerant-lubricant AAC composition of the Ford Transit Custom Bus, the Mazda CX 5 (2.0i and 2.2D), and the Opel Mocca used HFO-1234yf and a PAG lubricant as early as 2012. Ex. 1002 ¶ 399 (citing Ex. 101324, 2, 38, 55, 70). We also credit Dr. Brown’s 24 Behr Hella Services, Refrigerant and Oil Filling Quantities Passenger Cars & Commercial Vehicles 2014–15. PGR12 Ex. 1013. (“Service Guide”). PGR12 Ex. 1013. The Service Guide provides tables setting forth specifications for refrigerant type, refrigerant quantity, vehicle manufacturers’ original equipment compressor oil type, and oil filling quantity for the air-conditioning system of each vehicle listed in the tables. Id. at 2–3. Petitioner and Dr. Brown direct us to the Sevice Guide’s entries calculations, which show that the Ford Transit Custom Bus had an AAC refrigerant-lubricant composition of 26.7% of PAG lubricant and 73.3% of HFO-1234yf (Ex. 1002 ¶ 401 (citing Ex. 1013, 38)); the Mazda CX 5 2.0i had 16.7% PAG lubricant and 83.3% HFO-1234yf (Ex. 1002 ¶ 402 (citing Ex. 1013, 55)); the Mazda CX 5 2.2D had a 17.5% PAG lubricant and 82.5% HFO-1234yf (id.); and the Opal Mocca had 11.6% PAG lubricant and 88.4% HFO-1234yf (Ex. 1002 ¶ 402 (citing Ex. 1013, 70)). As to dependent claims 2, 11, and 14, which all require that the lubricant is present “in an amount from about 30% to about 50% weight,” we credit Dr. Brown’s uncontested testimony that the refrigerant-lubricant composition of the Ford Transit Custom Bus recited lubricant amount. Ex. 1002 ¶ 403. In particular, we agree with Dr. Brown that, because the lubricant accounts for 26.7% of the AAC refrigerant-lubricant composition in the Ford Transit Custom Bus, the lubricant makes up “about 30%” of the refrigerant-lubricant composition as claimed. Id. For these reasons, we find that Petitioner has met its burden to show that claims 1–20 are unpatentable for anticipation under § 102(a)(1).” slip op. at 55

  Patent outcomesUS 9,157,017 unpatentable
  § 102 anticipation§ 112 disclosure
  Patents in suitUS 9,157,017
• Arkema Inc. / Arkema France v. Honeywell International Inc.All claims unpatentable
  PTAB · Aug 25, 2022 · PGR2016-00011 · APJ Grace Karaffa Obermann · PGR · Remand

  Claims 1–20 are unpatentable under § 102(a) for prior public use; the Board did not reach the other anticipation, obviousness, and enablement grounds.

  RulingsRemand decision

  • RemandOther

    “On October 1, 2019, the Federal Circuit held that we “abused [our] discretion by assuming the authority that 35 U.S.C. § 255 expressly delegates to the Director: to determine when a Certificate of Correction is appropriate,” and vacated our Final Written Decision. Honeywell Int’l Inc. v. Arkema Inc., 939 F.3d 1345 (Fed. Cir. 2019). The Federal Circuit instructed us to “authorize Honeywell to file a motion seeking leave to petition the Director for a Certificate of Correction.” Id. at 1351. Pursuant to the Federal Circuit’s mandate, we gave our authorization, and Patent Owner filed its Motion for Leave to Request a Certificate of Correction. PGR11 Paper 61; PGR12 Paper 41. After additional briefing from the parties was complete, we granted Patent Owner’s Motion. PGR11 Paper 77; PGR12 Paper 57. Patent Owner filed its Request for a Certificate of Correction, as well as a Petition to Accept [Unintentionally] Delayed Claim to Priority under 35 U.S.C. § 120 and 37 C.F.R. § 1.78. PGR11 Ex. 2174; PGR12 Ex. 2172.” slip op. at 3

  • Skill levelSkill level board ownDecided for petitioner

    “develops new refrigerants for use as heat transfer fluids. Ex. 1002 ¶ 149. Such a person would have had a Ph.D. in Chemistry, Chemical Engineering, Mechanical Engineering, Material Science, or a related field or discipline and at least 3 to 5 years of experience, or alternatively an M.S. degree and 5 to 10 years of experience. Id. Patent Owner’s Declarant, Dr. Bivens, provides a similar description of the person of ordinary skill in the art, stating that such a person would have a B.S. degree in Chemical Engineering or Chemistry, and five years of work experience, or a Ph.D. or M.S. degree and 2–3 years of experience. Ex. 2001 ¶ 23. Based on these descriptions, we find that the parties’ definitions of ordinary skill in the art are substantially the same, and agree with the parties that an ordinarily skilled artisan would be educated in the Chemical and Chemical Engineering arts or related disciplines. We also agree with the parties that a person having less formal education, such as a B.S. or M.S. degree, would require more years of experience than a person with more formal education, such as a Ph.D., to qualify as an ordinarily skilled artisan. We also find that neither party states how any difference in the parties’ articulated levels of skill impacts this proceeding. Thus, our analysis would be the same regardless of any minor differences between the parties’ respective articulations. Finally, we note that the level of ordinary skill in the art is reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 20

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable

    “We agree with Petitioner that the ’525 application’s statement that the compounds are “adaptable for use” weighs against a finding of adequate written description. First, “adaptable for use” is vague, as Dr. Bivens acknowledges. See Ex. 1177, 151:15 (testifying that “adaptable for use can have a wide range of meaning”). Second, the ’525 application gives no direction on how a skilled artisan would need to adapt any particular composition for use in AAC, or even if any “adaptation” was necessary. We find that such a teaching is important in this case to show that the inventors had possession of the claimed invention, given our findings above that the art of AAC was unpredictable and that a heat-transfer composition for AAC required specific technical features that were unpredictable and unexpected. For completeness, we again reject Patent Owner’s argument that “[t]o show the inventors possessed claim 1 requires no more” than the statement in the written description that “‘the compositions of the present invention are believed to be adaptable . . . with or without system modification.’” PGR12 Resp. 27–28 (quoting Ex. 1001, 7:4–8). Regardless of the exact wording of claim 1, the inventors “still [had to have] describe[d] some way of performing the claimed methods.” Ariad, 598 F.3d at 1355. And here, with merely a passing reference to AAC, the ’525 application fails to provide any credible “technologic knowledge” to demonstrate to an ordinarily skilled artisan that Patent Owner “was in possession of the invention that is claimed.” Id.” slip op. at 43

  • Novelty / Anticipation (§102) › Prior-art status of a reference › On-sale bar (Pfaff, Helsinn)UnpatentableUnpatentable

    “unless . . . the claimed invention was . . . in public use . . . before the effective filing date of the claimed invention.” 35 U.S.C. § 102(a)(1). “The proper test for the public use prong . . . is whether the purported use was accessible to the public or was commercially exploited.” Delano Farms Co. v. Cal. Table Grape Comm’n, 778 F.3d 1243, 1247 (Fed. Cir. 2015) (quotation omitted). “Commercial exploitation is a clear indication of public use . . . .” Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1380 (Fed. Cir. 2005).” slip op. at 53

  Patent outcomesUS 9,157,017 unpatentable
  § 102 anticipation§ 112 disclosure
  Patents in suitUS 9,157,017
• PNC Bank, N.A. v. United Services Automobile AssociationInstitution denied
  PTAB · May 11, 2022 · IPR2022-00050 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution on claims 1–30 because Petitioner did not show a reasonable likelihood that the asserted references qualified as prior art.

  RulingsInstitution decision

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

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Technology, Inc., 815 F.3d 1356,1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 15

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “But, even accepting these premises, we disagree with the conclusion Petitioner asks us to draw from them. In particular, Petitioner appears to contend that we should find that the ’974 application does not provide written description support for the claims of the ’638 patent merely because the scope of the claims includes a configuration that is not expressly described in that document. See Pet. 15–16, 22. But this reflects a misunderstanding of the law—a claim can be broader than the embodiments disclosed. See, e.g., Rexnord, 274 F.3d at 1344 (“An applicant is not required to describe in the specification every conceivable and possible future embodiment of his invention.”); see also Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1582 n.7 (Fed. Cir. 1996) (noting that a claim may be “literally infringed by undisclosed embodiments” and yet sufficiently supported); Application of Smythe, 480 F.2d 1376, 1384 (C.C.P.A. 1973) (“We cannot agree with the broad proposition . . . that in every case where the description of the invention in the specification is narrower than that in the claim there has been a failure to fulfill the description requirement in section 112.”).” slip op. at 22

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

    “D. Obviousness Grounds Petitioner contends that the subject matter of claims 1–30 of the ’638 patent would have been obvious over various combinations of Oakes-I, Oakes-II, Medina, and Roach (collectively, “the asserted references”). Pet. 5, 32–100. Petitioner argues that the asserted references are prior art because the claims of the ’638 patent are not entitled to a priority date earlier than July 28, 2017. Id. at 4–5, 11–29. Patent Owner contends that Petitioner fails to establish a reasonable likelihood of success because Petitioner fails to sufficiently show that the asserted references qualify as prior art. Prelim. Resp. 18–59. Having reviewed the parties’ arguments and evidence, we determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing that the asserted references are prior art,8 and as a result, Petitioner fails to sufficiently show that any claim would have been unpatentable based on the asserted references.” slip op. at 16

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “In the first Joint Motion to Seal, the parties request entry of a Protective Order that is substantially the same as the Board’s Default Protective Order (see Consolidated Trial Practice Guide16 at 107–122 (App. B, Protective Order Guidelines and Default Protective Order)). Paper 9, 2.17 The parties also request sealing of Exhibit 2006 and sealing of portions of the Preliminary Response relating to that exhibit. Id. at 2–3. The portions of the Preliminary Response (Paper 11) requested to be sealed can be identified from the redacted version of the Preliminary Response filed as Paper 12. Based on the representations in the Joint Motion to Seal (Paper 9), the parties have shown good cause for entering the Protective Order and for sealing Exhibit 2006 and the identified portions of the Preliminary Response.” slip op. at 37

  § 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,402,638
• PNC Bank N.A. v. United Services Automobile AssociationInstitution denied
  PTAB · Jan 24, 2022 · IPR2021-01076 · APJ Juliet Mitchell Dirba · IPR · Institution

  The Board denied institution because Petitioner did not show Oakes was prior art, so it failed to establish a reasonable likelihood that claims 1–18 were unpatentable over Oakes and Maloney.

  RulingsInstitution decision

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

    “An inter partes review may not be instituted unless “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). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “Petitioner asks us to draw from them. In particular, Petitioner appears to contend that we should find that the ’247 application does not provide written description support for the device limitation merely because the scope of the claim includes a configuration that is not expressly described in that document. See Pet. 17–18, 21. But this reflects a misunderstanding of the law—a claim can be broader than the embodiments disclosed. See, e.g., Rexnord, 274 F.3d at 1344 (“An applicant is not required to describe in the specification every conceivable and possible future embodiment of his invention.”); see also Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1582 n.7 (Fed. Cir. 1996) (noting that a claim may be “literally infringed by undisclosed embodiments” and yet sufficiently supported); Application of Smythe, 480 F.2d 1376, 1384 (C.C.P.A. 1973) (“We cannot agree with the broad proposition . . . that in every case where the description of the invention in the specification is narrower than that in the claim there has been a failure to fulfill the description requirement in section 112.”). There are situations where a claim’s breadth results in a lack of written description support, but Petitioner fails to show that such a situation is present here. In its argument, Petitioner primarily relies on Reckitt, but” slip op. at 15

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

    “that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing that Oakes is prior art,8 and as a result, Petitioner fails to sufficiently show that any claim would have been unpatentable over Oakes and Maloney.” slip op. at 10

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “Preliminary Response and Exhibit 2006); Paper 13 (relating to the Reply); and Paper 19 (relating to the Sur-reply). In each of these motions, the parties seek to protect as confidential certain information that relates to the issue of whether Petitioner has properly identified all the real parties in interest in its Petition. See 35 U.S.C. § 312(a)(2). As we deny the Petition on the merits and do not grant the request to institute an inter partes review, the issue of identification of the real parties in interest to this proceeding is moot. Accordingly, we do not reach the arguments and evidence of the parties relating to whether the Petitioner identified all the real parties in interest in its Petition and we make no reference in this decision to the documents and information that the parties seek to protect as confidential.” slip op. at 25

  § 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,621,559
• PNC Bank, N.A. v. United Services Automobile AssociationInstitution denied
  PTAB · Jan 20, 2022 · IPR2021-01071 · APJ Terrence W Mcmillin · IPR · Institution

  Institution was denied for claims 1–23 because Petitioner did not show a reasonable likelihood that Oakes and Roach qualify as prior art.

  RulingsInstitution decision

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

    “In an [inter partes review], 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) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioner cannot satisfy its 2 US 7,873,200 B1, filed Oct. 31, 2006, issued Jan. 18, 2011 (Ex. 1038). 3 US 2013/0155474 A1, published June 20, 2013 (Ex. 1040). burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 10

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008). “To satisfy the written description requirement [in § 112,] the disclosure of the prior application must ‘convey with reasonable clarity to those skilled in the art that, as of the filing date sought, [the inventor] was in possession of the invention.’” Id. (alteration in original) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991)). “[T]he hallmark of written description is disclosure.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The sufficiency of written description support is based on “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. “Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. “The level of detail required to satisfy the written description requirement” necessarily “varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. The invention need not be described in haec verba, but a disclosure that merely renders obvious the claims does not provide adequate written description support. Id. at 1352.” slip op. at 14

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We have considered Dr. Noble’s testimony, but it suffers from the same deficiencies as Petitioner’s arguments. See Ex. 1002 ¶¶ 42–59. Moreover, in our view, Dr. Noble does not sufficiently explain his conclusions regarding what a person of ordinary skill would have understood the inventor of the ’247 application to possess (or not possess), and accordingly, we assign little weight to that testimony. E.g., id. ¶¶ 47, 53, 55; see TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1358 (Fed. Cir. 2019) (“Conclusory expert testimony does not qualify as substantial evidence.”).” slip op. at 21

  • ExcludeGranted

    “In the first Joint Motion to Seal, the parties request entry of a Protective Order that is substantially the same as the Board’s Default Protective Order (see Consolidated Trial Practice Guide12 at 107–122 (App. B, Protective Order Guidelines and Default Protective Order)). Paper 9, 2.13 The parties also request sealing of Exhibit 2006 and sealing of portions of the Preliminary Response relating to that exhibit. Id. at 2–3. The portions of the Preliminary Response (Paper 8) requested to be sealed can be identified from the redacted version of the Preliminary Response filed as Paper 11. Based on the representations in the Joint Motion to Seal (Paper 9), the parties have shown good cause for entering the Protective Order and for sealing Exhibit 2006 and the identified portions of the Preliminary Response. Paper 14 (Joint Motion to Seal the Reply) and Paper 19 (Joint Motion to Seal the Sur-reply) request sealing of the portions of the Reply and Sur-reply relating to Exhibit 2006. The portions of the Reply (Paper 13) and Sur-reply (17) requested to be sealed can be identified from the redacted version of the Reply filed as Paper 16 and from the redacted version of the Sur-reply filed as Paper 20. Based on the representations in these two Joint Motion to Seal (Papers 14 and 19), the parties have shown good cause for sealing the identified portions of the Reply and Sur-reply.” slip op. at 27

  § 112 disclosurecites KSR · Graham
  Patents in suitUS 10,482,432

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.