- Markforged Inc. v. Continuous Composites, Inc.Institution deniedPTAB · Sep 9, 2022 · IPR2022-00652 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–15 and 17–41 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level board ownOther
“Petitioner contends that a person having ordinary skill in the art (“POSITA”) would have had “a master’s degree in mechanical engineering, materials science, or a related degree, and at least 3–5 years of experience in composite materials or additive manufacturing,” or a bachelor’s degree in the same fields and at least 5–6 years of experience. Pet. 9 (citing Ex. 1002 ¶ 36). Patent Owner states that it “does not agree that Petitioner’s proposed level of skill in the art accurately reflects the level of ordinary skill in the art as of the priority date . . . . But regardless of what level of skill is applied, the Petition does not show a reasonable likelihood to prevail.” Prelim. Resp. 10. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to propose a level of ordinary skill in the art in this proceeding should it be instituted, or in other proceedings.”). On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe each 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) (2019). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“teachings of multiple references, an articulated reason with some rational underpinning to combine the known elements in the fashion claimed must be provided. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); see also In re Magnum Oil Tools, Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (It is the petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention[s], and that the skilled artisan would have had a reasonable expectation of success in doing so.”) (citation and internal quotation omitted). Having reviewed the parties’ arguments and evidence of record, we are not persuaded that Petitioner provides sufficient articulated reasoning with a rational underpinning as to why one of ordinary skill in the art would have combined the teachings of Lipsker and Wohrl in the manner recited in the challenged claims.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,511,543 - Markforged Inc. v. Continuous Composites, Inc.Institution deniedPTAB · Sep 9, 2022 · IPR2022-00548 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–15 and 17–41 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Skill levelOther
“(“POSITA”) would have had “a master’s degree in mechanical engineering, materials science, or a related degree, and at least 3–5 years of experience in composite materials or additive manufacturing,” or a bachelor’s degree in the same fields and at least 5–6 years of experience. Pet. 9–10 (citing Ex. 1002 ¶ 36). Patent Owner states that it “does not agree that Petitioner’s proposed level of skill in the art accurately reflects the level of ordinary skill in the art as of the priority date . . . . But regardless of what level of skill is applied, the Petition does not show a reasonable likelihood to prevail.” Prelim. Resp. 10. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to propose a level of ordinary skill in the art in this proceeding should it be instituted, or in other proceedings.”).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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) (2019). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019).” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“Thus, as we understand it, Petitioner is arguing that a POSITA would have understood Wohrl’s teaching of laying fiber strands on a core and precuring the fibers so that the fibers dry and stick to the core is “coupling a portion of the at least one path to an anchor point” as recited in claims 1 and 38. Petitioner’s argument appears to be premised on the understanding that any point at which the path contacts a “surface suitable for anchoring the part” is the claimed “anchor point.” The ’543 patent, however, describes an “anchor point” as something more than just any point to which a part of the path is affixed.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,511,543 - Markforged Inc. v. Continuous Composites, Inc.Institution deniedPTAB · Sep 9, 2022 · IPR2022-00732 · APJ Sheldon M Mcgee · IPR · Institution
The Board denied institution for claims 1–9 because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. ANALYSIS We have authority to institute an inter partes review only where “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). Our findings and conclusions set forth in this Decision are provided for the exclusive purpose of explaining our determination that Petitioner has not met that standard on this record.” slip op. at 5
- Skill levelSkill level board ownOther
“On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the 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))). A more specific definition is not necessary for purposes of deciding whether to institute review. To the extent a more specific definition is required, however, we adopt Petitioner’s proposed definition because, on this record, it is consistent with the disclosures of the asserted prior art references. In any event, for the reasons explained below, even under Petitioner’s definition, Petitioner fails to establish a reasonable likelihood of prevailing at trial with respect to any challenged claim based on the grounds of unpatentability advanced in the Petition.” slip op. at 12
- Expert testimonyPetitioner expert discountedOther
“Finally, we determine that Dr. Rosen’s testimony supporting Petitioner’s proffered motivations to combine is entitled to little or no weight. Prelim. Resp. 30 (citing 37 C.F.R. § 42.65(a)). Here, the relied-upon portions of Dr. Rosen’s Declaration simply parrot Petitioner’s conclusory assertions. Compare Pet. 35–36, 86, with Ex. 1002 ¶¶ 169–174, 280.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“The question of whether the prior art references are in the same field of endeavor is merely a threshold issue that must be satisfied before an obviousness determination can be made. See K-Tec, Inc. v. Vita-Mix, Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (to qualify as prior art in an obviousness analysis, references must be analogous art—either in the same field of endeavor, or reasonably pertinent to the problem with which the inventor is involved). In other words, once it is determined that the prior art is analogous to the claimed invention, it is then necessary to show that it would have been obvious for the skilled artisan to select and combine the teachings of the prior art in the manner claimed. Thus, we agree with Patent Owner that the Petition needs to set forth specific reasoning as to why an ordinarily skilled artisan would have been motivated to combine these references even if they are in the same or similar fields. Prelim. Resp. 31. Petitioner fails to do so on this record. The absence of such reasoning is particularly noteworthy here in view of Ma’s numerous teachings against the “passive” method of pulling the composite strand from the extruder as claimed. Patent Owner identifies no fewer than eight disclosures within Ma that seemingly disparage the passive “pulling” method and discuss benefits of the active “pushing” method. Prelim. Resp. 17–19 (citing Ex. 1007, 53, 95–96, 98–107, 143–147, 149, 167–168). In the absence of any explanation from Petitioner on this point, we are not persuaded that the skilled artisan would have ignored those teachings and selected Ma’s pulling method. Petitioner’s second reason to combine these references fares no better than the first because it lacks an explanation as to what specific disclosures in Lipsker and Ma would have been combined and for what reason(s). Instead, Petitioner provides little more than a conclusory assertion that Ma contains complementary teachings that would illuminate the skilled artisan’s understanding of Lipsker. Pet. 36. Petitioner, however, fails to provide a single citation to Ma in support of its position, much less an explanation regarding how Ma’s teachings would have enlightened the skilled artisan’s understanding of Lipsker such that it would have been obvious to arrive at the claimed subject matter. Bare assertions such as these fall far short of providing the requisite rationale sufficient to support a conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 US at 418). Petitioner’s third reason to combine is similarly deficient because it fails to address the teachings of Lipsker and Ma with any degree of specificity and again does not elaborate on how or why the ordinarily skilled artisan would have combined the teachings of these references to arrive at the claimed subject matter.” slip op. at 18
§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,759,109 - Arkema Inc. / Arkema France v. Honeywell International Inc.All claims unpatentablePTAB · 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 disclosurePatents in suitUS 9,157,017 - Arkema Inc. / Arkema France v. Honeywell International Inc.All claims unpatentablePTAB · 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 disclosurePatents in suitUS 9,157,017 - PTAB · Aug 15, 2022 · IPR2022-00381 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on claims 1–10 and 12–18 on all asserted grounds, finding a reasonable likelihood that the claims are unpatentable as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “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.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“Having reviewed the disclosures of the ’626 provisional application relied upon by Patent Owner, we do not agree that they would convey to a person of ordinary skill in the art that Mr. Niester had possession of using 222 or 282 nm wavelengths to disinfect human or animal skin. While they refer to human activity such as travel, surgery, and food preparation, the disclosures do not refer to disinfecting skin. Rather, they refer to sterilizing things in the presence of humans, such as surfaces and air, but not human or animal skin itself. Therefore, we determine that Petitioner has satisfied its initial burden of production on the effective-filing-date issue by identifying the absence of specific supporting disclosure for claim 1 from the ’626 provisional application. See Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1379–1380 (Fed. Cir. 2015) (discussing burden framework in inter partes review). Based on this record, we find that Petitioner has demonstrated a reasonable likelihood that it will prevail in establishing that challenged claims 1–10 are not entitled to an effective filing date earlier than the filing date of the PCT application. The parties will have an opportunity to develop their positions on the issue of the effective filing date of claims 1–10 during trial.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Having considered the evidence and arguments presented by both parties on the present record, we are persuaded Petitioner sufficiently shows that Eckhardt and Sosnin teach or suggest all of the limitations in claim 1, and sufficiently explains how a person of ordinary skill in the art would have used Eckhardt’s teaching of narrow spectrum light in the range of 220 to 310 nm to disinfect skin, with Sosnin’s implementation of excimer lasers including 222 and 282 nm to kill bacteria, to arrive at the method of claim 1 with a reasonable expectation of success. We disagree with Patent Owner’s argument that Eckhardt teaches away from the use of UV light on skin because it is based on a mischaracterization of Eckhardt, which does not teach bandages as a way to provide cover from direct UV light, but rather, compensates for application of UV light through a bandage by controlling the UV light intensity. Indeed, Eckhardt’s embodiment that Petitioner relies upon is titled “UV- Transmissive Bandage” and explains how to choose bandage materials that transmit UV-C light. See Ex. 1004 ¶¶ 69–72. We also disagree, on this record, with Patent Owner’s argument that Sosnin would dissuade a person of ordinary skill from using 222 or 282 nm wavelengths to disinfect skin . Although Patent Owner is correct that Sosnin refers to the need for additional testing before using its technology outside of a laboratory (Prelim. Resp. 31), Mr. Lawal directs us to evidence supporting his testimony that it was general knowledge in the art at the time of the invention that even though UV light poses safety risks to human skin, UV-C light of 222 nm on bare skin for disinfection was relatively safe. Ex. 1003 ¶¶ 88–91 (citing Exs. 1013, 1015, 1016, 1017). Patent Owner presents only attorney argument in response to Mr. Lawal’s testimony and supporting evidence. We invite the parties to continue to develop this issue during trial.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We disagree with Patent Owner’s argument that Eckhardt teaches away from the use of UV light on skin because it is based on a mischaracterization of Eckhardt, which does not teach bandages as a way to provide cover from direct UV light, but rather, compensates for application of UV light through a bandage by controlling the UV light intensity. Indeed, Eckhardt’s embodiment that Petitioner relies upon is titled “UV- Transmissive Bandage” and explains how to choose bandage materials that transmit UV-C light. See Ex. 1004 ¶¶ 69–72. We also disagree, on this record, with Patent Owner’s argument that Sosnin would dissuade a person of ordinary skill from using 222 or 282 nm wavelengths to disinfect skin . Although Patent Owner is correct that Sosnin refers to the need for additional testing before using its technology outside of a laboratory (Prelim. Resp. 31), Mr. Lawal directs us to evidence supporting his testimony that it was general knowledge in the art at the time of the invention that even though UV light poses safety risks to human skin, UV-C light of 222 nm on bare skin for disinfection was relatively safe. Ex. 1003 ¶¶ 88–91 (citing Exs. 1013, 1015, 1016, 1017). Patent Owner presents only attorney argument in response to Mr. Lawal’s testimony and supporting evidence. We invite the parties to continue to develop this issue during trial.” slip op. at 17
§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 9,700,642 - Jupiter Research, LLC v. VPR Brands, L.P.Institution deniedPTAB · Jul 12, 2022 · IPR2022-00299 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 13–18 were unpatentable over the asserted prior-art grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“It is the petitioner’s burden from the outset to show with particularity why a challenged claim is unpatentable. Harmonic Inc. v. Avid Tech. Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). In that regard, a petition for inter partes review must identify how the challenged claims are unpatentable, and must specify where each element of the claim is found in the relied-upon prior art. 37 C.F.R. § 42.104(b); see also 35 U.S.C. § 312(a)(3) (a petition must identify “with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for challenge to each claim”). A petition must also include “a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). Here, Petitioner contends that the “airflow sensor having elements (401), (403), (404), (405), and (406)” is “electronic at least in that it includes contact piece (404) and piece (403) that is connected to the integrated circuit board (3),” but does not provide a detailed explanation of the significance of the location of contact pieces 403 and 404, or how elements 401, 403, 404, 405, and 406 form an electric airflow sensor. Pet. 47–48 (citing Ex. 1009, 8), 54–55 (same). Zhu teaches that “integrated circuit board 3 is provided with two fixed contact pieces 403 and 404 that extend toward the elastic ring 401.” Ex. 1009, 8. Zhu further teaches that elastic ring 401 is fixed in plastic base 405, and that “fixed contact pieces 403 and 404 are fixed outside the plastic base 405.” Id. Considering the disclosures in Zhu regarding the arrangement and operation of these elements, Petitioner’s conclusory statement that Zhu teaches an electric airflow sensor simply because contact” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art Petitioner contends that a person having ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, mechanical engineering, chemical engineering, or a closely related field and one to two years of experience working in the consumer electronics or computer industry in the capacity of a design, application, customer marketing or technical marketing engineer.” Pet. 11 (citing Ex. 1004 ¶ 58). At this stage of the proceeding, Patent Owner neither responds to Petitioner’s proposed definition, nor provides a definition of its own. See generally, Prelim. Resp. Petitioner’s undisputed proposed definition appears to be consistent with the cited prior art and the disclosure of the ’622 patent, and we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (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 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“The parties stipulated to the construction of many claim terms in their related litigation currently pending in the District of Arizona. Pet. 11–12; Prelim. Resp. 12; Ex. 1006. Based on the parties’ apparent agreement, and considering the record before us, we adopt the parties agreed-upon claim constructions for purposes of this Decision. See Ex. 1006 (stipulated claim construction proposed in the district court). We provide the constructions of “electric airflow sensor” and “detecting an airflow,” which are of particular relevance to this Decision, below. “electric airflow sensor” an electric sensor to detect air movement generated by a user’s inhaling or puffing act “detecting an airflow” determining that a user is inducing airflow into or out of the device Ex. 1006, 2, 3.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Here, Petitioner neither directs us to an express disclosure in Cox that air flow detecting device 51 is an electric airflow sensor as required by claim 13, nor adequately explains that a person of ordinary skill in the art would have understood Cox as disclosing an electric airflow sensor, and could have combined Cox’s disclosures with their own knowledge to make the claimed invention. See Helifix Ltd. v. Bloc-Loc, Ltd., 208 F.3d 1339, 1347 (Fed. Cir. 2000) (A reference that does not expressly disclose a claimed limitation “might nevertheless be anticipating if a person of ordinary skill in the art would understand [the reference] as disclosing [the limitation] and if such a person could have combined the [reference’s] description of the invention with his own knowledge to make the claimed invention.”). We also do not understand Petitioner to be arguing that Cox inherently discloses an electric airflow sensor. See In re Montgomery, 667 F.3d 1375, 1379 (Fed. Cir. 2012) (“A reference may anticipate inherently if a claim limitation that is not expressly disclosed is ‘necessarily present, or v. Fibernet Va., Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010))). For these reasons, we are not persuaded that Petitioner sufficiently establishes that Cox discloses “an electric air flow sensor that is used to turn on and off the electric power source by way of detecting an airflow” as recited in independent claim 13. Accordingly, we determine that the Petition does not establish a reasonable likelihood that Petitioner will prevail in showing that claim 13, and claims 14 and 15 that depend therefrom, are anticipated by Cox.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,205,622 - PTAB · Jul 6, 2022 · PGR2022-00022 · APJ Elizabeth M Roesel · PGR · Institution
The Board denied institution because Petitioner failed to establish that the ’629 Patent was eligible for post-grant review.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Determining whether a patent is subject to the first-inventor-to-file provisions of the AIA, and therefore eligible for post-grant review, is straightforward when the challenged patent issued from an application filed before March 16, 2013, or when the challenged patent issued from an application filed on or after March 16, 2013, without any priority claim. The determination is more complex, however, for a patent that issues from a “transition application,” that is, an application filed on or after March 16, 2013, that claims the benefit of an earlier filing date. See MPEP § 2159.04.3 Entitlement to the benefit of an earlier filing date under 35 U.S.C. §§ 119, 120, 121, or 365 is premised on disclosure of the claimed invention “in the manner provided by § 112(a) (other than the requirement to disclose the best mode)” in the earlier application. See 35 U.S.C. §§ 119(e)(1), 120. Thus, for a patent issuing from a transition application, eligibility for post-grant review depends on whether the patent contains or contained at any time a claim that lacks written description or enabling support in a priority application filed before March 16, 2013.” slip op. at 5
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“We agree with Patent Owner that Petitioner disregards the second part of the Federal Circuit’s two-part test by failing to address whether the specification of the ’629 Patent discloses structural features common to the members of the alleged genus. Prelim. Resp. 15–16; see Pet. 39 (quoting AbbVie, but omitting the two-part test). More fundamentally, however, we determine that Petitioner fails to establish that the claims of the ’629 Patent recite a “functionally-defined genus” that would trigger the application of the Federal Circuit’s two-part test. Ajinomoto, 932 F.3d at 1358, 1360; AbbVie, 759 F.3d at 1299; Ariad, 598 F.3d at 1349. Petitioner fails to show that the ’629 Patent claims recite a functionally-defined genus. Petitioner asserts that “claim 1 of the ’629 Patent claims a genus range of acceptable proportions of sugar reactants and amine reactants to the overall binder reactants.” Pet. 39. We agree with Patent Owner, however, that the limitations that Petitioner characterizes as a “genus range” are structural, not functional. See PO Resp. 17 (asserting that “[t]he claims themselves identify the[] common ‘structural features,’ specifying the ‘percent by dry weight’ of the ‘reducing sugar reactant’ and ‘amine reactant’ in the ‘binder solution’ used in the claimed method,” citing Ex. 1001, 6:4–11)).” slip op. at 13
§ 112 disclosurePatents in suitUS 10,968,629 - PTAB · Apr 26, 2022 · IPR2022-00006 · APJ Christopher L Crumbley · IPR · Institution
The Board instituted IPR on claims 1–5 over all asserted grounds, finding a reasonable likelihood of success on at least one claim and declining §325(d) denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the parties’ arguments and the evidence of record, we determine that, for the reasons discussed herein, FFP has established a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. KGSI has not persuaded us that we should exercise our discretion under 35 U.S.C. § 325(d) to deny institution. We thus institute an inter partes review on all challenged claims on all asserted grounds. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); see also Patent Trial and Appeal Board Consolidated Trial Practice Guide 64 (Nov. 2019)2 (“TPG”) (“The Board will not institute on fewer than all claims or all challenges in a petition.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“§ 325(d), the Board applies a two-part framework: (1) first, we determine 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, we examine whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, 8.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Our preliminary construction at this stage of the proceeding is that claim 1 does contain a nested product-by-process limitation, which defines the claimed curing agent as containing a plant-based nitrite derived using a particular process involving heat treatment prior to introduction of the nitrite-producing organism. We are not persuaded on the current record, however, that this process imparts any structural or functional differences to the recited curing agent product, as opposed to curing agents produced by other means. KGSI contends that “the variations inherent in the biological processes for producing plant-derived nitrite, in addition to selecting the plant material and organism, result in qualitative differences in the curing agent that, when applied to meat, affect taste, smell, texture, and color, while also impacting the safety of the product.” Prelim. Resp. 23 (citing Ex. 2001 ¶¶ 127–131). But Dr. Milkowski does not provide any evidence of these “qualitative differences” beyond citations to FFP’s marketing materials. Ex. 2001 ¶ 129 n.23. On this preliminary record, therefore, we construe the product-by-process element of claim 1 to not be limited by the process steps recited.10” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Upon review, we are persuaded that FFP has set forth a sufficient rationale why a person of ordinary skill in the art would have modified Voorde’s process to use Hara’s sterilization step. We do not, on this record, believe the two disclosures to be incompatible or that application of Hara would render Voorde’s process inoperable. While recognize that Voorde warns against heating to 90°C as disclosed in Hara’s sterilization process, we note that the heating of Hara is at a different point in the curing process than Voorde’s heating. Specifically, Hara discloses heating prior to storage of the plant-derived solution, to sterilize it, whereas Voorde’s heating step is during treatment, to encourage the nitrate conversion process. We do not understand combining these two heating steps into one process to be incompatible. We do not understand Voorde’s disclosure to exclude processes in which the nitrite-generating microbes are added via starter culture, rather than naturally occurring in the plant material. Voorde does not express any preference for naturally-occurring microbes, or suggest that results are superior to processes in which a starter culture is added. Nor are we persuaded that a person of ordinary skill in the art, having used Hara’s sterilization step, would have been unaware that the sterilization would have reduced the microbial load of the plant material and that addition of a starter culture—which Voorde expressly suggests—would be beneficial.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,071,304 - Micron Technology, Inc. v. Flash-Control, LLCAll claims unpatentablePTAB · Apr 19, 2022 · IPR2020-01709 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 1–6 and 8–16 are unpatentable under § 103(a) over the listed Lee, Tsunoda/Kolokowsky, Li, and Miura grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We find that Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record, and, therefore, adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Expert testimonyPatent owner expert discountedDecided for patent owner
“Patent Owner does not provide persuasive argument explaining why limitation 1.B requires a “read/modify/write operation.” See, e.g., Reply 9, 12. Rather, much of Patent Owner’s arguments simply assume that it does. See, e.g., PO Resp. 21 (“the proposed construction clarifies that the read/write/modify operation involves both non-volatile and volatile memory”); Sur-reply 5–7. Dr. Bagherzadeh’s testifies that “this claim requires a read/modify/write operation involving both non-volatile and volatile memory.” Ex. 2004 ¶ 31 (cited at Sur-reply 5, 8, 11). But this testimony is conclusory and entitled to little weight. See 37 C.F.R. § 42.65 (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (nothing requires a fact finder to credit the inadequately explained testimony of an expert). According to Patent Owner, limitation 1.B “describes the capability wherein the memory system can command the” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We find that it is not. We find persuasive Petitioner’s arguments that limitations 1.C, 1.E, 1.F, and 1.G refer to “read operations” and “write operations,” whereas limitation 1.B does not refer to an “operation.” See Reply 12; see Acumed LLC v. Stryker Corp., 483 F.3d 800, 807 (Fed. Cir. 2007) (when “the specification . . . suggests that the patentees knew how to” use a particular term to restrict claim coverage, use of different term in the claims must have meaning). We note the difference in language used in limitation 1.H (“writ[ing] the digital information stored . . .”), as opposed to that used in limitations 1.E, 1.F, and 1.G (“perform a [read or write] operation”). Ex. 1001, 5:5–17. Similar to limitations 1.E, 1.F, and 1.G, Patent Owner’s proposed construction of limitation 1.B includes the language “the system is configured to perform a read/modify/write operation . . .” See PO Resp. 21. The language advanced by Patent Owner also changes the recited “modification,” which was passive, to an active “perform . . . modifying the read information,” similar to the language in limitations 1.E, 1.F, and 1.G. Nor do we find that the Specification supports Patent Owner’s position. The Specification is devoid of any description of a “read/write/modify operation” as advanced by Patent Owner in its proposed construction. Patent Owner argues that “[t]he specification also discloses that allowing for the performance of a read/modify/write operation involving nonvolatile memory, using coupled volatile memory, is an important aspect of the invention,” (PO Resp. 22, emphasis added) but Patent Owner lacks support for such an assertion. For example, we note that Dr. Bagherzadeh testifies that “[t]he ’184 patent is directed to novel systems and method coupling VM and NVM to improve performance by, inter alia, enhancing the random access performance of NVM systems allowing access at a more flexible and granular level than prior memory systems.” Ex. 2004 ¶ 42. This testimony is supported by the Specification, and says nothing about the “importance” of “performance of a read/modify/write operation involving nonvolatile memory using coupled volatile memory.” See Ex. 1001, Abstr., 1:59–66.” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“4. Conclusion Having considered the Graham factors,13 including the level of ordinary skill in the art, the scope and content of the prior art, and the differences between the prior art and the challenged claims, we are persuaded, based on the current record, that Petitioner has shown, by a preponderance of the evidence, that claims 1–3 and 9–16 would have been obvious over Lee.” slip op. at 45
Patent outcomesUS 9,257,184 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,257,184
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.