- ARM Limited v. Icpillar LLCInstitutedPTAB · Aug 7, 2024 · IPR2024-00476 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted review of claims 1, 5, 6, 8, and 14 on all asserted grounds, finding a reasonable likelihood that Banerjee renders at least claim 1 obvious.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art would be “familiar with automated circuit design” and “possess[] this knowledge through training and work experience, including have a Bachelor’s or Master’s Degree in computer science, electrical engineering, or a related field, with at least three years of practical experience.” Pet. 11–12. At this stage of the proceeding, Patent Owner does not challenge the Petitioner’s definition of a person of ordinary skill in the art. See Prelim. Resp., generally. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’899 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“According to Petitioner, the term should be broadly construed to encompass “internal outputs from compilers that are then used by other portions of the design” and “any form of software or mechanics of ‘providing’ software.” Prelim. Reply 1–3. Petitioner contends that the term must be construed broadly to encompass the embodiment shown in the ’899 patent’s Figure 4 illustrating output 71 of compiler 67, which is an internal input to ASIC Design 69 described as “a circuit design such as a layout or a schematic that can be sent out to a manufacturer for fabrication.” Id. at 1–2 (quoting Ex. 1001, 9:59–61) (emphasis omitted). Petitioner directs us to the disclosure that Figure 4’s output 71 (ASIC Programming) “may be software to be programmed and/or stored in a fabricated ASIC.” Id. at 2 (quoting Ex. 1001, 9:61–62) (emphasis omitted). Petitioner contends that the ’899 patent defines “software” broadly. Id. Specifically, Petitioner directs us to a portion of the ’899 patent’s specification that states “[h]erein, reference to software may encompass one or more applications, byte code, one or more computer programs, one or more executable, one or more instructions, logic, machine code, one or more scripts, or source code, and vice versa where appropriate.” Ex. 1001, 17:6–10. Patent Owner asserts that Petitioner’s proffered claim construction is incorrect because the language of the claim itself “does not suggest ‘internal’ software for use by the design tool, nor that the second recited ‘output[]’ could be part of the first.” Prelim. Sur-Reply 2. According to Patent Owner, viewed in context, the ’899 patent defines “software” broadly for “an exemplary computer system, not the invention’s outputs.” Id. Patent Owner asserts this definition describes the software types that a computer could execute, not a definition of “software programming commands” recited in claim 1[d]. Id. Regarding the ’899 patent’s Figure 4, Patent Owner asserts that Petitioner has not shown that Programming 71 must be an internal output for internal use because both Design 69 and Programming 71 are shown as outputs, not inputs, of the compiler. Id. at 4. Regarding the term “layout,” Patent Owner asserts this is merely a description of physical hardware for fabrication and that “[i]t is impossible for ‘software programming commands’ to be ‘stored in “layouts.”’ Id. at 3 (citing Ex. 2001 ¶¶ 32, 76, 90). For purposes of this Decision, we construe the term “outputting by the processor software programming commands to be executed by the hardware integrated circuit for controlling the electronic device” as referring to software programming commands that are capable of controlling an electronic device, that are output by a processor, and that are not merely a circuit design for fabrication. We emphasize that this construction is preliminary and based on the current record; to the extent the parties wish to argue for a different construction or to further clarify this construction, we encourage them to present arguments and supporting evidence at trial.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“clarifications concerning the application of the Fintiv factors. See Interim Procedure For Discretionary Denials In AIA Post-Grant Proceedings With Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”).5 The Guidance Memo clarifies “the PTAB’s current application of Fintiv to discretionary institution where there is parallel litigation.” Id. at 2. The Guidance Memo instructs us not to “discretionarily deny institution in view of parallel district court litigation where a petitioner presents a 5 Available at https://www.uspto.gov/sites/default/files/documents/interim_ proc_discretionary_denials_aia_parallel_district_court_litigation_memo_ 20220621_.pdf. stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Id. at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). When such a stipulation is offered after the Board’s decision on whether to institute review, it is too late to gain the benefit of the rule articulated in the Guidance Memo. NXP USA, Inc. v. Impinj, Inc., IPR2021-01556, Paper 13, 4 (PTAB Sept. 7, 2022) (precedential). Here, Petitioner “stipulates ‘not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.’” Prelim. Reply 10 (quoting Ex. 1020, 1). Petitioner offered this stipulation prior to a decision on whether to institute review, so it is timely under NXP. Accordingly, pursuant to the Guidance Memo, we do not exercise discretion under Fintiv to deny institution.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Conclusion Regarding Claim 1 Based on the current record, we determine that there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious in view of Banerjee. Accordingly, we institute inter partes review with respect to all grounds asserted in the Petition. 3. Claims 5, 6, 8, and 14 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’899 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,924,899 - Motif Foodworks, Inc. v. Impossible Foods, Inc.All claims unpatentablePTAB · Jun 12, 2024 · IPR2023-00206 · APJ Donna M Praiss · IPR · Final written decision
Claims 1–12 and 14–24 are unpatentable as obvious over Giacino, Proulx, and Conrad, with Perret or MacLeod for certain dependent claims; the Board did not reach other grounds.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for petitioner
“The District Court’s claim construction for the term “compound” is shown below. Ex. 2016, 8–11. Claim Term District Court Construction The “sulfur compound” limitation must be satisfied by a compound that is present compound10 separately from a protein; “compound” will not be construed as being limited to compounds used as flavor precursors The District Court’s claim construction order cites to U.S. Patent 11,013,250 (the ’250 patent”) as representative of the ’096 patent and other related patents involved in the District Court litigation. See Ex. 2016, 7 (“Claim 1 of the ʼ250 patent claims is generally representative for purposes of the parties’ dispute.”). The District Court determined that plant proteins 10 Ex. 2016, 9, 11 (citing Ex. 1001, 15:26–27).” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“24. Pet. 20–26. Focusing on independent claim 1’s limitation “a compound selected from cysteine, cystine, thiamin, methionine, and mixtures of two or more thereof,” Petitioner asserts Brown’s disclosure of “pea flour” meets this limitation because “pea flour contains cystine, thiamine, and methionine.” Id. at 22–23 (citing Ex. 1012 (Brown) ¶ 364; Ex. 1003 (Tarte) ¶¶ 121–125; Ex. 1050/Ex. 1059 (Jahreis), 39, 41, 86; Ex. 1106, 3, 6–7). Petitioner qualifies that its mapping of “pea flour” to this claim limitation is based on the interpretation of “compound” as “not . . . limited to free compounds.” Id. at 22 n.7. Specifically, Petitioner states that the mapping is based on Brown’s “pea flour, which contains proteins having the claimed sugar and sulfur compounds.” Id. at 12; see Ex. 1003 ¶ 105 (reiterating this statement). Brown states, in pertinent part, “[a] muscle replica comprising pea flour, sunflower oil, and glucose.” Ex. 1012 ¶ 364. Dr. Tarté states in his declaration that a person of ordinary skill “would have understood that pea flour includes cystine, methionine, and thiamine.” Ex. 1003 ¶¶ 121–125. On cross-examination, Dr. Tarté stated that this mapping to the claim is based on an understanding that Brown’s proteins satisfy the sulfur compound limitation. Ex. 2032, 33:19–34:12; 98:11–99.9 (“[I]n as much as . . . Patent Owner considers proteins to satisfy the sulfur compound claim, then . . . the pea protein flour of Brown also satisfies the [sulfur] compound claim.”), 117:9–118:8. Patent Owner asserts that the Petition’s anticipation ground must fail if the claimed compound limitation does not extend to proteins. PO Resp. 13. Because we adopt the District Court’s construction of the claim term “compound,” Petitioner’s contention that Brown anticipates the ’096 patent necessarily fails. See Verdegaal Bros., 814 F.2d at 631 (“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.”). Petitioner concedes that the viability of this ground depends on construing the term “compound” to include whole proteins, and has failed to present evidence in this proceeding that Brown discloses a sulfur compound that is separate from a protein. Tr. 50:21–52:13 (Petitioner’s counsel conceding that the anticipation ground is not viable under the District Court’s claim construction for “compound”). Thus, Petitioner has not shown by a preponderance of the evidence that claim 1 is unpatentable as anticipated by Brown.” slip op. at 19
- Obviousness (§103) › Analogous artNon analogous artDecided for patent owner
“The analogous-art test requires a showing that a reference is either in the field of endeavor of the challenged patent or is reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for unpatentability. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). Patent Owner argues that Petitioner fails to establish Crane as analogous art under this legal framework. PO Resp. 36–40; PO Sur-Reply 1–2. First, Patent Owner asserts Crane is not “from the same field of endeavor” as the ’096 patent. Id. at 37 (citing Ex. 2030 (Qian Decl.) ¶ 86). Based on this record, the ’096 patent is directed to food products while Crane, on the other hand, relates to “methods for producing recombinant functional heme-binding proteins.” Ex. 1001, 1:22–25; Ex. 1014, code (57). As Patent Owner points out, Crane does not even mention food products or any flavor functionality of heme-binding proteins. PO Resp. 37. Petitioner does not address Crane’s field of endeavor in its Petition or Reply. See Pet. 36–50; Pet. Reply 1 (“Petitioner . . . relies on the arguments made in the Petition for Ground 1 and 3A-3D”). We agree with Patent Owner that Crane is not from the same field of endeavor as the ’096 patent. Next, Patent Owner asserts the Petition fails to explain how Crane’s recombinant heme-binding protein is pertinent to the problem addressed by the ’096 patent inventors. According to Patent Owner, the problem solved by the inventors was “to provide meat-like-food products that overcome the limitations of prior-art meat substitutes.” PO Resp. 38. Crane, however, is directed to producing recombinant heme-binding proteins with complete heme incorporation. Ex. 1014 ¶¶ 3–5; Ex. 2030 ¶ 87. Neither Crane nor the Petition addresses how this is relevant to improving meat-associated flavors or aromas in food flavor additives. See generally, Ex. 1014; Pet. 36–50. The Petition asserts that Crane’s recombinant heme-binding protein, if used in place of Conrad’s blood/hemoglobin, which is added to improve taste, “would have produced the proteins with a high degree of purity.” Pet. 47–48. The Petition asserts that the benefit of high purity is greater control over the amount added and consistency in the end product. Id. at 48.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“argument at trial, we do not agree with Patent Owner that Petitioner’s basis for improving the nutritional content of the food product of Giacino is unsupported by the record. Proulx identifies iron deficiency as “a major nutritional problem, affecting over 2 billion people[.]” Ex. 1019, 1518; Ex. 1003 ¶ 93; see also Pet. Reply 25. Based on the evidence in this record, Giacino’s compositions lack a significant source of iron. Ex. 1003 ¶¶ 387, 407. Furthermore, like Proulx, Giacino’s composition is intended to be an additive to food products. Specifically, Giacino’s composition is intended to be added to synthetic meat fibers, that may benefit from a source of iron, by mimicking not only the “meaty flavor” or aroma of meat, but the nutritional profile of conventionally sourced beef as well. Ex. 1003 ¶ 410; Ex. 1015, 7:22–26. This reasoning is supported by Petitioner’s expert, Dr. Tarté. Ex. 1003 ¶ 410. Patent Owner acknowledges the nutritive aspect of the addition is a “bonus” to the flavor impact. PO Sur-Reply 25–26. Proulx explicitly teaches adding leghemoglobin as an additive to food (“food fortificant”), therefore a POSITA would have had a reasonable expectation of success in doing so. Ex. 1019, Abs.; see id. at 1521 (“added with tortillas”). Even if the addition of Proulx’s leghemoglobin were to produce autooxidation and impact Giacino’s meaty flavor, the benefit of Proulx’s leghemoglobin as an additive to a food composition is not disputed and supports the combination. “The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000). Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”). Moreover, the evidence of record regarding the asserted negative effect on aroma and flavor due to heme proteins is that this negative impact is merely a possibility. Ex. 2030 ¶ 76 (Dr. Qian states that heme proteins have an “unpredictable effect” and refers to statements made in related patent prosecution that “fortification [with] iron has a potential negative effect on organoleptic quality of maize products, in that soluble forms of iron can cause oxidative rancidity,” quoting Ex. 1148, 2715). Based on the evidence of record, the benefit of adding heme protein taught by Proulx outweighs the potential negative effect that it may have on Giacino’s flavoring additive. Thus, the preponderance of the evidence in this record supports Petitioner’s assertion that a POSITA would have been motivated to nutritionally fortify Giacino’s meat flavoring composition by adding Proulx’s soy leghemoglobin.” slip op. at 31
Patent outcomesUS 9,943,096 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,943,096 - PTAB · May 9, 2024 · IPR2024-00084 · APJ Donna M Praiss · IPR · Institution
The Board instituted IPR on claims 1–3 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been shown obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’484 patent, and we institute inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Guidance Memo explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB. . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. Here, in an email to Patent Owner, Petitioner “stipulates that if the PTAB institutes IPR, Structural Wrap will not pursue in [the Florida Litigation] the same grounds asserted in the petition, or any grounds that could have reasonably been raised in the petition.” Ex. 1022, 1.” slip op. at 12
- Adverse judgmentDecided for petitioner
“Patent Owner’s argument is not persuasive because the cited discussion in the prosecution history does not relate to the challenged claims in this proceeding. Pages 25–26 of Exhibit 2008 correspond to the Declaration of Christopher Mouriz (“Mouriz Declaration”). The Mouriz Declaration relates to claim language that “recites attaching the construction material to a specific component of a roof, namely, the vertical, outward facing [fascias] of the eaves of the roof.” Ex. 2008, 25 ¶ 7. The Mouriz Declaration explains that “the roof component to which a waterproofing membrane is attached is not recognized as a particular parameter that can be experimented with, in order to increase or optimize the waterproofing process in a structural waterproofing system.” Id. at 26 ¶ 8. Thus, the claim language discussed in the Mouriz Declaration relates to attaching construction material specifically to “vertical, outward facing facias of the eaves of the roof.” Id. at 25 ¶ 7. There is no discussion of wrapping battens. Pages 40–41 of Exhibit 2008 correspond to a Response to Office Action wherein the applicant distinguishes the ’554 application claims over prior art references cited by the Examiner, namely, Lennox and Wiki. Ex. 2008, 40–41. The applicant argues that “neither Lennox nor Wiki discloses attaching the construction material that was rolled in the end of the strip to the vertical, outward-facing fascia of the eaves of the roof, as claimed by Applicant.” Ex. 2008, 41 (emphasis original). Again, the claim limitation at issue, which Patent Owner directs us to, relates to the location for attaching construction material, namely, vertical outward-facing fascia. We see no similar limitation in the challenged claims. We also note that Petitioner does not rely on Lennox and Wiki in this proceeding. Accordingly, we are not persuaded that Petitioner should be estopped from arguing that the challenged claims of the ’484 patent are obvious based on arguments presented to the Office concerning claims and references that are not involved in this proceeding.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine we need not explicitly construe any claim term at this stage of the proceeding. See Realtime Data, 912 F.3d at 1375. We encourage the parties to further discuss an express construction for “sheet” during trial if they choose.” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,168,484 - PTAB · Mar 26, 2024 · IPR2023-01424 · APJ Donna M Praiss · IPR · Institution
The Board instituted IPR on claims 1–16 and 18–20, finding a reasonable likelihood of prevailing on the asserted grounds, including anticipation by Ueda and obviousness over Plante and Cho.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any argument not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at 1 Petitioner identifies itself as the real party in interest. Pet. 1. In addition, Petitioner notes that Spectrum Holdco LLC is its parent company and that Spectrum Holdco LLC and Spectrum Intermediate LLC “have a financial interest in, or could be substantially affected by the outcome of, this proceeding.” Id. 2 Patent Owner identifies itself as the real party in interest and notes that it is a wholly owned subsidiary of OraSure Technologies, Inc. Paper 4, 2. least one claim. We hereby institute an inter partes review as to claims 1–16 and 18–20 of the ’632 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We decline to exercise our discretion here. As pointed out by Petitioner, the same or substantially the same art or arguments were not previously presented with respect to the ’632 patent. Pet. 123–24. Petitioner challenges the ’632 patent on grounds that were not asserted against the ’646 patent, namely the grounds based on Ueda. Id. at 71–123. In addition, we found Petitioner’s arguments based on Plante sufficiently persuasive and determined that the challenged ’646 patent claims are unpatentable. IPR2022-01347, Paper 43 (Feb. 7, 2024). For these reasons, we do not exercise our discretion to deny institution.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(POSITA) “would have had at least a bachelor’s degree in mechanical engineering, biomedical engineering, or similar technical degree and at least 3 years of experience in the medical device industry, including experience with containers and valves used in disposable medical devices.” Pet. 8 (citing Ex. 1002 ¶¶ 51–52). Petitioner further asserts that such a person would have collaborated with a team member with training and experience in the biological aspects of the invention and education and experience relating to the collection of biological samples. Id. (citing Ex. 1002 ¶¶ 51– 52). Patent Owner does not offer an alternative definition of a person of ordinary skill in the art at this time. See generally Prelim. Resp. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that it is not necessary for us to construe “biological sample” or “annular valve” at this stage of the proceeding because neither party contends that construing either term is material to deciding whether to institute a trial on the asserted grounds in the Petition. See Nidec Motor Corp. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,536,632 - PTAB · Mar 13, 2024 · IPR2023-01206 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR on claims 1, 2, and 4–23 based on three obviousness challenges involving Fugitt and the listed papermaking references.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We agree with Patent Owner that Papermaking is cumulative to Mohan. Petitioner relies on Papermaking to teach claim 1’s recitation that “a contact surface of said thermo-roller is heated to an elevated temperature of at least 250°F.” Pet. 32–34. Mohan discloses hot hard calendering of paper and paperboard to improve smoothness, where calender rolls have “a roll surface temperature of 250–400°F. during calendering of the web.” Ex. 2002, 1:7–10, 4:46–57.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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). Institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons discussed below, the facts do not warrant exercise of discretion to deny institution, and the reasonable likelihood standard is met. We, therefore, grant institution of an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner
“Patent Owner is correct that the ’142 Patent does not mention heating a counter-roller of a hot-hard calender, and the surface temperature of the counter-roller is not discussed. Prelim. Resp. 12. But nowhere does the ’142 Patent suggest that the counter-roller should not be heated to an elevated temperature. Under the applicable legal standard, the’142 Patent’s silence about whether the counter-roller is heated is not enough to justify reading a negative limitation into the claim. “negative limitation.” Ethicon LLC v. Intuitive Surgical, Inc., 847 Fed. App’x 901, 907 (Fed. Cir. Mar. 15, 2021). “[S]uch exclusions must find support either in ‘the words of the claim’ or through an ‘express disclaimer or independent lexicography in the written description that would justify adding that negative limitation.’” Id. (citing Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366–67 (Fed. Cir. 2002)). “The standards for finding lexicography and disavowal are exacting.” GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term,’ and ‘clearly express an intent to define the term.’” Id. (citing Thorner, 669 F.3d at 1365). Similarly, disclaimer or disavowal requires that the specification or prosecution history demonstrate that the invention does not include a particular feature. Id. Here, Patent Owner does not point to any claim language, lexicography, or disclaimer in the ’142 Patent or its file history that would support defining a “hot-hard calender” as requiring that only one of the two rollers be heated to an elevated temperature.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“As we understand it, one theory of obviousness advanced by Petitioner is combining Fugitt’s teaching that “[t]he rolls of the calender may be steam heated” with Papermaking’s teaching about the surface temperature that can be obtained when using steam to heat the rolls. Pet. 32–33; temperature of Fugitt’s steam-heated rollers in order to achieve a contact surface temperature of at least 250°F, as recited in claim 1. Instead, we understand Petitioner to be relying on Papermaking to teach the temperature of the unmodified rollers of Fugitt. Under this theory, it was not necessary for Petitioner to show that the paperboard substrate properties disclosed in Fugitt would still be achieved after increasing the temperature. Nevertheless, the Petition also relies on Papermaking’s teaching of temperatures that exceed the upper limit for steam-heated rolls, e.g., “[h]igh thermo roll temperatures (in some cases over 200°C [392°F]” or oil-heated rollers having surface that “can reach over 220°C [428°F].” Pet. 33 (citing Ex. 1005, 82; Ex. 1010, 98). Patent Owner is correct that Petitioner relies on Fugitt’s disclosure of paperboard properties (smoothness and basis weight Y2 as a function of caliper thickness) obtained without modifying the roller surface temperature. Pet. 35–36; Prelim. Resp. 44. There is a factual issue as to whether a person of ordinary skill in the art would have expected to achieve the paperboard properties disclosed in Fugitt and recited in claim 1, if the roller temperature were increased above the level achievable by steamheated rolls. There is also a factual issue as to whether Patent Owner’s evidence of increased energy cost would outweigh Petitioner’s asserted benefits of increased temperature. These issues are best resolved after the parties have had to the opportunity to develop the record and cross-examine the opposing experts. See Arctic Cat Inc. v. Polaris Indus., Inc., 795 F. App’x 827, 833 (Fed. Cir. 2019) (“The Board must weigh the benefits and drawbacks of the modification against each other, to determine whether there would be a motivation to combine.”).” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,293,142 - Amperex Technology Ltd. v. Semiconductor Energy Laboratory Co., Ltd.Institution deniedPTAB · Mar 12, 2024 · IPR2023-01349 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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.” For the reasons set forth below, we determine the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review of any claim on any ground asserted in the Petition.” slip op. at 2
- BurdenDenied
“Given this, to show that Blangero’s disclosure of MgO or LiF in its coating teaches or suggests a rock-salt crystal structure, Petitioner needs to explain why a person of ordinary skill in the art either would have understood the compounds to have a rock-salt crystal structure when manufactured according to the disclosure of Blangero or would have chosen to use MgO or LiF in a rock-salt crystal structure rather than in another available form. On the first point, Petitioner argues that “‘the stable phase at room temperature and pressure conditions’ of MgO is ‘a rocksalt cubic structure of NaCl (space group Fm-3m).’” Pet. 28 (quoting Ex. 1030, 16; citing Ex. 1003 ¶ 142). But, as Petitioner’s declarant, Dr. Hayes, points out, Blangero does not teach forming MgO in a room-temperature process. Ex. 1003 ¶ 142 (Blangero’s “second firing step” occurs at “925 °C for 12 hours”); see Ex. 1005 ¶ 110 (teaching the firing step to which Dr. Hayes refers). Thus, the significance of rock-salt-type MgO being “the stable phase at room temperature and pressure conditions” is unclear. To the extent that Dr. Hayes explains why MgO, which “is well known to crystallize even at substantially lower temperatures,” such as “room temperature and pressure conditions,” would “do so more readily at [a higher temperature of] 925 °C,” this argument is not discussed, nor even cited, in the Petition. Ex. 1003 ¶¶ 90–94; see Pet. 28. Accordingly, any reliance on this argument by Petitioner constitutes improper incorporation by reference. 37 C.F.R. § 42.6(a)(3). Thus, Petitioner does not show sufficiently that a person of ordinary skill in the art either would have understood MgO to have a rock-salt crystal structure when manufactured according to the disclosure of Blangero or would have chosen to use MgO in a rock-salt crystal structure rather than in another available form. Similarly, with respect to LiF, neither Petitioner nor Dr. Hayes sufficiently explains the choice of rock-salt-type material over other options. Pet. 29 (arguing only that Ex. 1013 shows that “LiF has rock salt structure”); Ex. 1003 ¶ 143 (same). Thus, Petitioner does not show sufficiently that Blangero teaches or suggests a rock-salt crystal structure by virtue of its teaching that either MgO or LiF is present.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“The 2012 study on which Petitioner relies did not find “superior structural stability” over other lithium-titanium-oxygen compounds, as Petitioner argues. Instead, the study noted that the structure of “LiTiO2 prepared by high-temperature sintering TiO2 with lithium salt . . . impl[ies] LiTiO2 has superior structural stability in organic electrolyte as compared to other Li-Ti-O oxides.” Ex. 1029, 1. Thus, the structural stability was implied from the chemical structure of the material rather than found through study of the material. Moreover, the implied structural stability was only for LiTiO2 that was prepared in a particular way, by high-temperature sintering of TiO2 with lithium salt, and Petitioner does not allege that a person of ordinary skill in the art would have prepared the LiTiO2 they substituted for Blangero’s Li2TiO3 using this method. As for Petitioner’s argument that the study found that LiTiO2 outperformed Li2TiO3, we are not persuaded. The study compared particles with an LiTiO2 coating to uncoated particles, not to particles coated with Li2TiO3. Ex. 1029, 4, Figs. 4(c), 4(d). Although the study notes that particles coated with “[m]onoclinic Li2TiO3 and spinel Li4Ti5O12” exhibit “a noticeable capacity decay . . . when charged at high operating voltage and cycled above room temperature,” it concludes only that particles coated with LiTiO2 “exhibited inspiring high-voltage cycling capability as well as thermal stability than the pristine counterpart.” Id. at 1, 4. In addition, the pristine particles used in the study were made from “Li[NixCoyMnz]O2 (0≤x,y,z<1) (called as LNCM),” and the particles in Blangero do not contain either nickel or manganese in their cores. Ex. 1005 ¶¶ 9–40 (particles contain lithium, oxygen, cobalt, and metals chosen from the group consisting of aluminum, gallium, boron, magnesium, titanium, iron, copper, calcium, barium, yttrium, tin, antimony, sodium, zinc, zirconium, silicon); Ex. 1029, 1. Petitioner does not explain why a person of ordinary skill in the art would expect the study’s results to extend to Blangero’s particles made from a different material. Pet. 29–30. Because Petitioner has not shown sufficiently that Blangero teaches or suggests a second region comprising a rock-salt crystal structure or that a person of ordinary skill in the art would have had a reason to substitute rocksalt-type LiTiO2 for the materials disclosed in Blangero, Petitioner has not shown a reasonable likelihood that it would prevail on claim 1 on its Blangero-based grounds.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, “[i]ndividuals with different education and additional experience could still [have been] of ordinary skill in the art if that additional experience compensate[d] for a deficit in their education and experience.” Id. On the present record, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 19. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’660 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’660 patent and the prior art. 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 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,043,660 - Spectrum Solutions, L.L.C. v. Dna Genotek Inc.All claims unpatentablePTAB · Feb 7, 2024 · IPR2022-01347 · APJ Donna M Praiss · IPR · Final written decision
Claims 1, 3–8, 11, and 12 are unpatentable as obvious over each of four grounds: Plante and Cho, with or without Maples, and Plante and Patterson, with or without Maples.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“(POSITA or POSA) “would have had at least a Bachelor’s degree in mechanical engineering, biomedical engineering, or similar technical degree and at least 3 years of experience in the medical device industry, including experience with containers and valves used in disposable medical devices.” Pet. 16 (citing Ex. 1002 ¶ 49). Petitioner further asserts that such a person would have collaborated with a team member with training and experience in the chemical/biological aspects of the invention, having a Ph.D. in microbiology, molecular biology, biochemistry, or related discipline and “at least two years of post-graduate experience in the area of biological sample preservation and nucleic acid extraction, preservation, and analysis.” Id. at 16–17 (citing Ex. 1011 ¶¶ 24–26). Patent Owner does not dispute using Petitioner’s proposed definition. PO Resp. 6.8 We apply Petitioner’s proposed definition because it is consistent with the problems addressed in the ’646 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings on 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, 162 (Fed. Cir. 1985))).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989)). “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Id. (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). “Conversely, a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’” Id. (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). The court in Catalina noted that although no litmus test exists for determining whether to treat a preamble as a limitation, several “guideposts” have emerged from the case law in this area. Id. In particular, guideposts tending to show that the preamble is a claim limitation include: Jepson claiming, dependence on a particular disputed preamble phrase for antecedent basis, when the preamble is essential to understand limitations or terms in the claim body, and when the preamble recites additional structure or steps underscored as important by the specification. Id. On the other hand, the preamble might not constitute a claim limitation when the claim body describes such a structurally complete invention that deleting the preamble phrase does not affect the structure or steps of the claimed invention. Id. at 809. Also, “preambles describing the use of an invention generally do not limit claims because the patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of the structure.” Id.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“the claim must be given their plain meaning unless the plain meaning is inconsistent with the Specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Additionally, ordinary, simple English words whose meaning is clear and unquestionable are to be construed to mean exactly what they say–– absent, of course, any indication that their use in a particular context changes their meaning. Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1372 (Fed. Cir. 2004). The abstract of the ’646 patent describes isolating and preserving cells from bodily fluids “for cellular analysis” and “genomic studies.” Ex. 1001, code (57). In the field of the disclosure portion of the ’646 patent, cells isolated from bodily fluids are preserved “for studies in any of: functional genomic and epigenetic studies, and biomarker discovery.” Id. at 1:25–29. In the background section, the ’646 patent describes the interest in “large-scale epigenetic research” for the purpose of “understanding the mechanisms of gene-environment interactions” suggesting that “epigenetic mechanisms may provide a molecular memory of environmental experiences.” Id. at 1:60–67. The background section further describes the challenges of collecting bodily fluids, such as saliva, is that it is a digestive fluid that can be rich in proteases and that existing solutions used to stabilize cells from blood, which is a transporter fluid, “will not protect cells from proteases found in some bodily fluids, such as saliva.” Id. at 3:24–36, 4:43–47. The detailed description section of the ’646 patent discloses “a solution for preserving cells in one or more bodily fluids, such as saliva and urine” that “may be beneficial for further separation into cell types and downstream molecular analysis” and “allows for storage of cells in the bodily fluid to retain their antigenicity and cellular architecture.” Id. at 16:9–15. The Specification describes some embodiments of solutions for preserving cells in one or more bodily fluids where the solutions contain a chemical fixing agent, a protease inhibitor, an antimicrobial agent, serum proteins, and are buffered to preferred pH ranges. Id. at 16:15–22. Thus, the plain meaning of “preserving a biological sample,” consistent with the ’646 patent disclosure focused on maintaining the architecture of cells contained in a bodily fluid that may include digestive proteases for further study downstream, is “preserving the integrity of a cell contained in a bodily fluid sample.”” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We agree that it is not necessary for us to construe these claim terms because neither party asserts that they are material to the asserted grounds in the Petition. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 18
Patent outcomesUS 11,002,646 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,002,646 - Wenzhou Xin Xin Sanitary Ware Co., Ltd. v. Delta Faucet CompanyInstitution deniedPTAB · Feb 7, 2024 · IPR2023-01332 · APJ Jane E Inglese · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–7, 10–17, 20, 21, 23, and 24 were unpatentable on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“C. Principles of Law “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”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). When an obviousness challenge asserts a combination of identified prior art, “it [is] important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The relevant inquiry is “whether ‘a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention.” Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (internal citations omitted) (emphasis added); Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (“Obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination.”).” slip op. at 12
- BurdenDenied
“We are unable to discern how the Petitioner proposes modifying Van Der Linden’s vessel rinsing apparatus “to incorporate the longitudinal mounting member (body 3) and mounting method of Shen Wei,” however. Neither the Petitioner nor Mr. Cook describes the proposed modifications with sufficient particularity to allow us to understand the specific nature of the proposed modifications. Pet. 9; Ex. 1005 ¶ 59. Furthermore, the Petitioner does not provide any objective evidence to support the Petitioner’s assertions that modifying Van Der Linden’s vessel rinsing apparatus as the Petitioner proposes would minimize the number of components in the apparatus “for cost and reliability,” and would provide “increased standalone stability.” Pet. 9. Although the Petitioner cites the Cook Declaration when making these assertions, the cited paragraph of the Declaration simply mirrors the Petitioner’s conclusory statements without providing any objective, supporting evidence. Ex. 1005 ¶ 59. In contrast, as discussed above, Van Der Linden explicitly describes advantages associated with the approach Van Der Linden uses to mount its washing device. Specifically, Van Der Linden discloses that mounting the washing device to the base of a kitchen faucet permits a common channel to be used for the tap of the kitchen faucet and for a supply line of the washing device, which advantageously reduces the number of bores in a kitchen worktop required to mount the washing device. Ex. 1006 ¶¶ 17, 39, Fig. 5. Van Der Linden further discloses that positioning the abutment surface defined by the abutment member of the device at “an angle of about 45 degrees with the vertical” directs the washing device “towards the user . . . which is advantageous for ergonomic reasons.” Id. ¶ 32. Due to the absence of any objective evidence to support the” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not found
“Due to the absence of any objective evidence to support the Petitioner’s asserted advantages of modifying Van Der Linden’s washing device “to incorporate the longitudinal mounting member (body 3) and mounting method of Shen Wei,” and Van Der Linden’s disclosure of advantages associated with its mounting approach, the Petitioner’s rationale for the proposed modifications appears to be based on impermissible hindsight. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion.”); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). Simply because Van Der Linden’s washing device could be modified as the Petitioner proposes,7 in the absence of reasoning supported by objective evidence that explains why one of ordinary skill in the art actually would have so modified the device, the Petitioner does not establish that the proposed modification would have been obvious under section 103. This is because “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015).” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“B. Claim Interpretation We interpret claims “using the same claim construction standard that would be used to construe the claims in a civil action held under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b). Under this standard, claim terms generally are given their plain and ordinary meaning as would have been understood by the ordinarily skilled artisan at the time of the invention when read in the context of the specification and prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). We construe terms in controversy only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,473,277 - Amperex Technology Ltd. v. Semiconductor Energy Laboratory Co., Ltd.Institution deniedPTAB · Dec 5, 2023 · IPR2023-01016 · APJ Christopher M Kaiser · IPR · Institution
Institution was denied because the petition did not show a reasonable likelihood that claims 1–8 were unpatentable over the asserted Shim- or Fujiki-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Because Petitioner relies on Shim and Fey to show that a person of ordinary skill in the art would have understood that fluorine would be present in a crack portion of the Shim or Shim/Lee particle, because the requirement for fluorine to be present in a crack portion appears in all the challenged claims, and because Petitioner does not show sufficiently that Shim and Fey would have suggested the presence of fluorine in a crack portion, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to any claim challenged on the basis of Shim.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had at least a bachelor’s degree in chemistry, chemical engineering, or materials science and at least five years of experience in the field of batteries and battery materials.” Pet. 33. According to Petitioner, “[i]ndividuals with different education and additional experience could still be of ordinary skill in the art if that additional experience compensates for a deficit in their education and experience.” Id. (citing Ex. 1003 ¶¶ 83–91). On the present record, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 19–20. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’828 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’828 patent and the prior art. 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 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As explained more fully below, we need not construe any claim terms to determine that Petitioner fails to show sufficiently that the prior art teaches or suggests the subject matter of the challenged claims. Thus, after considering the arguments and information presented in the Petition and Preliminary Response, we determine that we do not need to construe any terms expressly for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Because Petitioner relies on Shim and Fey to show that a person of ordinary skill in the art would have understood that fluorine would be present in a crack portion of the Shim or Shim/Lee particle, because the requirement for fluorine to be present in a crack portion appears in all the challenged claims, and because Petitioner does not show sufficiently that Shim and Fey would have suggested the presence of fluorine in a crack portion, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to any claim challenged on the basis of Shim.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,741,828 - Zhuhai Cosmx Battery Co., Ltd. v. Ningde Amperex Technology Ltd.Institution deniedPTAB · Oct 24, 2023 · IPR2023-00585 · APJ Kristina M Kalan · IPR · Institution
The Board denied institution on claims 1–3 and 5–12 under § 314(a), finding the Fintiv factors favored denial and no compelling unpatentability challenge overcame them.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“When determining whether to exercise discretion to deny institution in view of a parallel proceeding, we consider the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Given the testimony regarding Wang’s use of relatively low- temperature “ultrasound welding” (Ex. 1004 ¶¶ 43, 48, 109; Ex. 2001 ¶¶ 85– 86 (ultrasonic welding “involves the use of a high frequency of ultrasonic energy to produce oscillating shears to create solid-state bonds between two sheets clamped under pressure at elevated but relatively low temperatures”); Ex. 2005, 3), and in the absence of any articulation of the benefit of heat reduction in Wang’s process, we are not persuaded that a person of ordinary skill in the art would have looked to combine Deng’s heat-dissipating notch with Wang’s secondary battery in the manner proposed by Petitioner. See also Prelim. Resp. 22 (arguing that the “use of resistance welding in Wang would cause significant damage to Wang’s current collector, rendering Wang’s lithium-ion battery inoperable”), 24–25 (citing Ex. 2001 ¶ 78). As Patent Owner also points out, Deng’s notch is not located in an electrode tab receiving groove to receive an electrode tab, nor does it mitigate a burr problem (Prelim. Resp. 16, Sur-Reply 5)), which calls into question Petitioner’s asserted motivation to combine Deng’s notch with Wang’s electrode tab receiving groove in the manner proposed (Pet. 30 (“In view of Deng’s stated benefits of its electrode notch, such as to reduce the accumulation of heat and the resulting deformation and/or warping of the electrode to which the tab is welded,” one of ordinary skill in the art “would on the current collector where the first (e.g., anode) electrode tab will be welded.” (citing Ex. 1002 ¶ 76))), because Deng’s notch lacks the location and function that would have motivated one of ordinary skill in the art to make the combination. We also consider Patent Owner’s concerns about the suitability of Deng’s availability for combination with Wang sufficiently well-founded, based in part on Patent Owner’s argument and evidence indicating that Deng is directed to a flat metal plate type battery that would use a resistance welding process, instead of a lithium-ion wound battery that would use an ultrasonic welding process. See In re Bigio, 381 F.3d at 1325. Accordingly, we find Petitioner’s rationale for the combination lacking. As discussed above, “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Fintiv Memo, 4. While Petitioner’s arguments and evidence provide an explanation for the proposed combination with respect to limitation 1(g), they do not plainly lead to a conclusion that one of ordinary skill in the art would have been motivated to make the combination of Wang and Deng to attain limitation 1(g) and, thus, are not sufficiently supported by the record for purposes of an obviousness challenge under this framework. Consequently, Petitioner does not present a compelling, meritorious challenge to claim 1 as obvious over Wang and Deng.” slip op. at 26
- Obviousness (§103) › Analogous artNon analogous artDecided for patent owner
“Patent Owner also argues that Deng is not analogous art. Id. at 23–30 (citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed” and “(2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.”)). As to the first prong of the analogous art test, Patent Owner argues that Deng is a flat metal plate type battery, whereas Wang and the ’352 patent are lithium-ion batteries. Id. at 23. According to Patent Owner, one of ordinary skill in the art “would not weld electrode tabs in lithium-ion batteries in such a manner” as the resistance welding used in Deng. Id. at 25. As to the second prong of the analogous art test, Patent Owner argues that Deng is not reasonably pertinent to the particular problem with which the inventor of the ’352 patent was involved, because “Deng discloses, at best, heat mitigation techniques related to resistance welding,” which “would damage the current collector of a lithium-ion battery,” and “would not have been considered by the inventors when solving the problems of the ’352 Patent.” Id. at 27. As argued by Patent Owner, Deng’s benefit of reducing heat accumulation and warping from resistance welding “is not an issue for the lithium-ion battery of Wang or the ’352 patent,” which one of ordinary skill in the art would understand to benefit from the low operating temperature and good welding performance of ultrasonic welding. Id. at 29–30. Next, Patent Owner argues that Petitioner’s proposed modification would render Wang’s current collector susceptible to damage and tearing. Id. at 30–32. Finally, Patent Owner argues that even if Wang” slip op. at 23
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,329,352
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.