- Posco Co., Ltd. v. ArcelormittalInstitutedPTAB · Mar 18, 2025 · IPR2024-01376 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 1–30 on all petitioned grounds, finding a reasonable likelihood of success, including that GMW14400 likely qualifies as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the reasons above, we determine that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail with respect to challenged claims 1–30 of the ’602 patent. At this juncture in the proceeding, we have not made a final determination with respect to the patentability of the challenged claims, or with respect to claim construction. V. ORDER For the foregoing reasons, it is ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–30 of the ’602 patent is hereby instituted with respect to all grounds of unpatentability set forth in the Petition; and” slip op. at 36
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“efficiency and integrity of the system are best served by denying or instituting review.” Fintiv at 6. Here, Fintiv factors one and five are neutral, factors two and three favor discretionary denial, factor four strongly weighs against discretionary denial, and favor six weighs against discretionary denial. The integrity of the system will benefit from institution because of the strong merits the Petition presents (factor six), and the ITC Investigation will not resolve these merits (factor four). This outweighs any potential inefficiency as indicated by factors two and three. We further note that any inefficiency in resolving the grounds the Petition presents is mitigated by the stay of the district court action (factor one). We, thus, decline to exercise discretionary denial under 35 U.S.C. § 314(a).” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“After considering the record as a whole, we determine that Petitioner has adequately demonstrated that the Office erred in a manner material to the patentability of challenged claims. As we explain in Section III(G), infra, Petitioner’s challenges to the ’602 patent appear strong based on the current record, and Patent Owner’s present arguments to the contrary are weak. Given the strength of Petitioner’s challenges on the present record, this is not a situation where we would say that “reasonable minds can disagree regarding the purported treatment of the art,” and we therefore determine that the Examiner erred by not considering the art in substantially the combination Petitioner proposes. Where Patent Owner states that “evidence that the Examiner did not consider these references in combination” is lacking (PO Sur-Reply 5), we disagree. If the Examiner considered these references in combination, the Examiner would have, given the apparent strength of Petitioner’s position on the merits on this record, issued a rejection. The lack of a rejection based on the combination proposed in the Petition provides some evidence that the Examiner did not consider these references in combination (because the lack of such a rejection raises the likelihood that the Examiner did not make such a consideration). 3. Conclusion Because Petitioner adequately made a showing of material error, we decline to exercise discretion not to institute inter partes review under 35 U.S.C. § 325(d). See Advanced Bionics, LLC, IPR2019-01469, Paper 6 at 8–9.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,961,602 - PTAB · Mar 12, 2025 · IPR2024-01458 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR of claims 1, 7, 8, and 11 on all asserted grounds, finding a reasonable likelihood of unpatentability on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). Upon consideration of the Petition in view of the record at this stage, 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 grant institution of an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner’s construction of the claims as informed by its allegations of infringement in co-pending litigation, as best Petitioner is able to understand such allegations.” Pet. 18 (citing Exs. 1016–1017). Petitioner does not propose construction of any claim term at this stage of the proceeding. Upon review of the record, we determine that no claim terms require express construction for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would possess at least a Bachelor’s degree in mechanical engineering, electrical engineering, industrial design or product design or product design engineering, chemistry, or physics, or a related field, and at least three to four years of industry experience, or a Master’s degree in mechanical engineering, electrical engineering, industrial design or product design or product design engineering, chemistry, or physics, or a related field, and at least one to two years of industry experience. Pet. 15 (citing Ex. 1003 ¶ 18). Petitioner further argues a “POSA would have been familiar with electrically powered cigarettes and their components and underlying technologies or similar components and technologies.” Id. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’788 patent and the asserted prior art.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“second chamber. Pet 55 (citing Ex. 1005 ¶ 20, Fig. 1a). Petitioner concedes Lee does not disclose a bulb containing a heating wire, but contends this would have been obvious at least in view of Gilbert. Id. at 56 (referring to Pet. 41–42, citing Ex. 1004, 2:45–46, 2:50, 2:71–3:2, Fig. 2). Petitioner contends a person of ordinary skill in the art would have been motivated to explore other types of heating elements than the nichrome wire described in Lee due to issues with e-cigarettes at the time, such as metallic taste or inhalation risks associated with the use of a metal wire heating element. Id. at 57 (citing Ex. 1003 ¶ 117). Petitioner contends it was known to use bulb heaters for vaporizing fluids for almost 100 years (id. ¶¶ 117–118), and therefore a person of ordinary skill would have been motivated to implement a heating element within a glass bulb in Lee’s device to address the metal taste and inhalation risk issues. Pet. 57. Petitioner further contends a person of ordinary skill in the art would have been motivated to implement a heating element within a glass bulb to increase the life of the heating element and prevent failure of the device, because Levin teaches that directly contacting the heating element was known to reduce the life of the heating element, and discloses a heater bulb for vaporizing an active ingredient for inhalation by the user. Id. at 58–59 (citing Ex. 1009 ¶¶ 4, 49, 56). In view of the foregoing, we determine Petitioner has demonstrated sufficiently for purposes of institution that the combination of Lee, Gilbert, and Levin teaches or suggests limitation [1d], and that a person of ordinary skill in the art would have had reason to use Gilbert’s or Levin’s bulb heater in Lee’s electronic cigarette, with a reasonable expectation of success.” slip op. at 14
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,538,788 - Formfactor, Inc. v. Technoprobe S.P.A.InstitutedPTAB · Jan 24, 2025 · IPR2024-00933 · APJ Andrew L Nalven · IPR · Institution
Instituted IPR on all challenged claims, 1–23, and all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and associated evidence, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing in demonstrating the unpatentability of claims 1–23 of the ’885 patent. Accordingly, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“engineering, and materials engineering or another field applicable to wafer probing technology with three to five years of professional experience in designing and/or using probe technologies, or an equivalent level of skill, knowledge, and experience.” Pet. 22 (citing Ex. 1003 ¶¶ 50–53). Patent Owner does not offer a position as to the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of a POSITA, which is consistent with the level of skill reflected in the Specification and asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Only those claim terms that are in controversy need to be construed, and 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). After reviewing the record, at this stage, we determine that only claim 14 requires express construction for purposes of this Decision.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Further, we interpret claim 14, for purposes of this Decision, as contemplated by Petitioner such that the first and second types of signals may be the same type of signal. Pet. 26. In other words, the first and second type of signal may both be ground or power. This construction appears to have support within the ’885 patent. For example, the ’885 patent describes an embodiment where “at least two conductive portions . . . of the guide 40 are electrically connected to each other by means of a conductive track 39 in the guide, so as to be able to electrically connect to each other groups of contact elements apt to carry a same type of signal.” Ex. 1001, 16:49–59. This construction also appears consistent with parent claim 1, which recites “the first and second types of signals chosen between ground signals and power signals.” The parties are invited to address any claim construction issues during the course of trial.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,035,885 - PTAB · Dec 16, 2024 · IPR2024-01012 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on claims 1–16 and all asserted grounds, finding a reasonable likelihood of unpatentability and declining Fintiv discretionary denial.
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). Upon consideration of the Petition in view of the record at this stage, 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. We also determine that the arguments and evidence of record do not support discretionary denial of the Petition under 35 U.S.C. § 314(a). Accordingly, we grant institution of an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“parties on the present record, we are persuaded Petitioner sufficiently shows the combination of Bosnyak-392 and Son teaches or suggests all of the limitations of claim 1, and sufficiently explains how a person of ordinary skill in the art would have used Bosnyak-392’s teaching of using exfoliated, open-ended carbon nanotube fibers having two different aspect ratios in a composition with improved electrical and mechanical properties, with Son’s implementation of a specific bimodal distribution of aspect ratios, to arrive at the composition of claim 1 with a reasonable expectation of success. We do not find persuasive Patent Owner’s arguments that Bosnyak- 392 teaches away from using nanotubes with a lower aspect ratio, or that Bosnyak-392 has an objective of maintaining longer nanotubes. See Prelim. Resp. 5–9. Patent Owner’s arguments appear to be based on a mischaracterization of Bosnyak-392, which read as a whole, discusses methods for exfoliating carbon nanotubes and physical properties of exfoliated nanotubes, such as length and diameter, that are not apparent when the nanotubes are aggregated. E.g., Ex. 1005 ¶ 37. Although Bosnyak-392 recognizes that nanotube exfoliating techniques tend to reduce nanotube length (see Ex. 1003 ¶ 28), it does not discourage the use of shorter nanotubes. Rather, it recognizes that using short and long nanotubes together can produce a composite with improved electrical and mechanical properties. See id. (citing Ex. 1005 ¶ 73). See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (a reference does not teach away from a claimed invention unless it “criticizes, discredits, or otherwise discourages” the claimed solution).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We do not find persuasive Patent Owner’s arguments that Bosnyak- 392 teaches away from using nanotubes with a lower aspect ratio, or that Bosnyak-392 has an objective of maintaining longer nanotubes. See Prelim. Resp. 5–9. Patent Owner’s arguments appear to be based on a mischaracterization of Bosnyak-392, which read as a whole, discusses methods for exfoliating carbon nanotubes and physical properties of exfoliated nanotubes, such as length and diameter, that are not apparent when the nanotubes are aggregated. E.g., Ex. 1005 ¶ 37. Although Bosnyak-392 recognizes that nanotube exfoliating techniques tend to reduce nanotube length (see Ex. 1003 ¶ 28), it does not discourage the use of shorter nanotubes. Rather, it recognizes that using short and long nanotubes together can produce a composite with improved electrical and mechanical properties. See id. (citing Ex. 1005 ¶ 73). See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (a reference does not teach away from a claimed invention unless it “criticizes, discredits, or otherwise discourages” the claimed solution).” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Having considered both sides’ arguments as to Fintiv factors 2 and 3, we determine that the considerations of these factors weigh against exercising discretionary denial. Neither party directs us to any substantive order issued by the district court in the parallel litigation, which indicates the court has not yet considered claim construction or potential invalidity of the ’282 patent. The Markman hearing will not occur until June 2025, and the expert discovery cutoff is not until August 2025. Ex. 2002. Thus, although the parties have begun discovery as to invalidity issues, much further work remains in the parallel district court litigation. We also take into account Petitioner’s prompt filing of the Petition, as weighing against exercising discretionary denial. See Fintiv 11 (“If the evidence shows that the petitioner filed the petition expeditiously, such as promptly after becoming aware of the claims being asserted, this fact has weighed against exercising the authority to deny institution . . . .”).” slip op. at 34
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,608,282 - PTAB · Dec 16, 2024 · IPR2024-01005 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on claims 1–23 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been shown unpatentable.
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. We also determine that the arguments and evidence of record do not support discretionary denial under 35 U.S.C. § 314(a). Accordingly, we institute an 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
“under the sixth Fintiv factor only after a determination that the first five Fintiv factors favor discretionary denial. CommScope, 4–5. Here, we do not find the first five factors cumulatively weigh in favor of discretionary denial. Therefore, we determine that the circumstances here do not warrant an analysis of whether the Petition presents compelling merits, and the considerations of the sixth Fintiv factor weigh against exercising discretionary denial. F. Conclusion Having considered the parties’ arguments in view of the Fintiv factors, and taking into account Petitioner’s stipulation, we determine that the circumstances here do not warrant exercising discretion under § 314(a) to deny institution. IV.” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Thus, although both parties indicate that no claim construction is necessary at this stage of the proceeding, it is apparent that they disagree as to the meaning of “discrete carbon nanotubes.” While Petitioner appears to construe “discrete carbon nanotubes” as “nanotubes that are generally individually distinct” (Pet. 13), Patent Owner argues a more restricted construction requiring that “discrete carbon nanotubes” not be reacted with other components. Prelim. Resp. 3. The evidence relating to claim 10 In quotations from the Preliminary Response throughout this Decision, we have retained bolding and underlining added to the text by Patent Owner. construction that Patent Owner offers on the current record, however, does not address its proposed restriction. See id. at 9, n. 4, citing Ex. 1001, 3:9, 5:39–40 (“The ’649 Patent describes the ‘discrete carbon nanotubes’ as, for example, ‘individually dispersed’, ‘individualized carbon nanotubes’, ‘dispersed as individual nanotubes’, and ‘essentially discrete individual fibers, not entangled as a mass.’”). As discussed in Section II.D.2 below, we determine based on the record at this stage of the proceeding that Petitioner demonstrates sufficiently for purposes of institution that Sun discloses or suggests “discrete carbon nanotubes.” Therefore, we do not explicitly construe any claim terms in this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). If either party intends to argue a claim construction at trial, however, including what is the ordinary meaning of a term, they should do so in a clearly designated section of their briefing. See Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 21, 2019) (“CTPG”), 46, 49 (available at https://www.uspto.gov/TrialPracticeGuideConsolidated); O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (“A determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ meaning does not resolve the parties’ dispute.”). Claim construction arguments should not be relegated to patentability arguments on the facts.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had at least [a] Master’s degree in materials science, chemistry, chemical engineering, a field relevant to polymer science and engineering, or the equivalent, and at least three years of experience in nanomaterials, electrochemistry, batteries, or polymer related activities.” Pet. 5 (citing Ex. 1003 ¶ 19). Petitioner further argues that “[a]dditional work experience can compensate for less formal education, and vice versa.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 4. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’649 patent and the asserted prior art.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,636,649 - PTAB · Dec 16, 2024 · IPR2024-01013 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR on claims 1–4 and 7–18 on all three asserted obviousness grounds, finding a reasonable likelihood of success and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence set forth by Petitioner and Patent Owner, we determine that the information presented in the Petition demonstrates a reasonable likelihood that Petitioner would prevail on at least one of the challenged claims of the ’483 patent. We also determine that the arguments and evidence of record do not support discretionary denial under either 35 U.S.C. § 314(a) or § 325(d). Accordingly, we institute an inter partes review as to all of the challenged claims of the ’483 patent on all of the grounds of unpatentability set forth therein.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We agree with Patent Owner that, “given the breadth of remaining grounds of invalidity in parallel litigation,” Petitioner’s stipulation “would only resolve a small portion of the issues before the court.” Prelim. Sur-reply 3. Nevertheless, the stipulation offered by Petitioner does mitigate, at least to some extent, concerns of “potentially conflicting decisions.” Sand Revolution at 12. Accordingly, we determine that Fintiv factor 4 weighs, at least to some extent, against exercising our authority to deny institution.” slip op. at 33
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“During prosecution, the examiner stated that the carbon nanotubes of the applied prior art reference “are considered discrete and exfoliated . . . because they are dispersed in the composite cathode slurry mixture.” Ex. 1002, 5–6. The Board determined, however, that “without more,” the examiner’s bare statement was insufficient to address the prior art reference’s “express teaching that suggests bundling or agglomeration of carbon nanotubes.” Id. at 6 (noting that Figure 2 of the prior art reference suggested that the carbon nanotubes were in fact bundled and agglomerated). In contrast to the art and analysis provided by the examiner during prosecution, Petitioner identifies a specific disclosure in Ohata demonstrating that the carbon nanotubes are “discrete, non-agglomerated, and exfoliated.” Pet. 32–33 (citing Ex. 1004, Fig. 1(b)). In further contrast to the arguments presented during prosecution, Patent Owner identifies no disclosure in Ohata, or any other prior art reference, that would suggest that the carbon nanotubes of Ohata, Kavan, and Gong or Liu are agglomerated or non-discrete. Prelim. Resp. 22–23. As such, we determine that the prior art and arguments set forth in the Petition are not substantially the same as those previously analyzed by the Office. Thus, we decline to exercise discretion to dismiss the Petition under 35 U.S.C. § 325(d).” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art would have had “at least a Master’s degree in materials science, chemistry, chemical engineering, a field relevant to polymer science and engineering, or the equivalent, and at least three years of experience in nanomaterials, electrochemistry, batteries, or polymer related activities.” Pet. 7. Petitioner further contends that “[a]dditional work experience can compensate for less formal education and vice versa.” Id. For purposes of its Preliminary Response, Patent Owner “does not dispute the Petition’s definition of [the] level of ordinary skill in the art.” Prelim. Resp. 3. On this record, we preliminarily adopt Petitioner’s definition of the person of ordinary skill in the art as it appears consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,153,483 - PTAB · Dec 16, 2024 · IPR2024-01011 · APJ Jeffrey W Abraham · IPR · Institution
The Board instituted IPR on claims 1–5 under all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim and no basis for discretionary 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) (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.” Having considered the arguments and evidence set forth by Petitioner and Patent Owner, we determine that the information presented in the Petition demonstrates a reasonable likelihood that Petitioner would prevail on at least one of the challenged claims of the ’924 patent. We also determine that the arguments and evidence of record do not support discretionary denial of the Petition under 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review as to all of the challenged claims of the ’924 patent on all of the grounds of unpatentability set forth therein.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Although the parties appear to agree that this factor is neutral, we note that a district court denial of a motion to stay without prejudice, accompanied by an indication that the district court would consider a renewed motion, “suggests the district court may be willing to avoid duplicative efforts and await the PTAB’s final resolution of the patentability issues raised in the petition before proceeding with the parallel litigation.” Fintiv at 6–7. “This fact has usually weighed against exercising authority to deny institution.” Id. (also noting that factors 2 and 3 are relevant to how much weight to give to the court’s willingness to reconsider a stay); see also T-Mobile, Paper 16 at 12 (noting that a stay was unlikely in that case given the proximity of the trial date to the entry of the institution decision). In view of the forgoing, we determine that Fintiv factor 1 weighs against exercising our authority to deny institution.” slip op. at 39
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had at least a Master’s degree in materials science, chemistry, chemical engineering, a field relevant to polymer science and engineering, or the equivalent, and at least three years of experience in nanomaterials, electrochemistry, batteries, or polymer related activities” and that “[a]dditional work experience can compensate for less formal education, and vice versa.” Pet. 8 (citing Ex. 1003 ¶ 11). For purposes of its Preliminary Response, Patent Owner “does not dispute the Petition’s definition of [the] level of ordinary skill in the art.” Prelim. Resp. 2. On this record, we preliminarily adopt Petitioner’s definition of the person of ordinary skill in the art because it appears consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “no formal claim constructions are necessary.” Pet. 9. Patent Owner contends that all claim terms should be interpreted “in accordance with their ordinary and customary meaning.” Prelim. Resp. 2. Upon review of the record, we determine that no claim terms require express construction for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,968,924 - PTAB · Dec 16, 2024 · IPR2024-01006 · APJ Jeffrey W Abraham · IPR · Institution
The Board instituted IPR of claims 1–8 on all petitioned grounds, finding a reasonable likelihood of success on the Ohata–Kavan obviousness challenge and no basis for discretionary 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) (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.” Having considered the arguments and evidence set forth by Petitioner and Patent Owner, we determine that the information presented in the Petition demonstrates a reasonable likelihood that Petitioner would prevail on at least one of the challenged claims of the ’909 patent. We also determine that the arguments and evidence of record do not support discretionary denial of the Petition under 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review as to all of the challenged claims of the ’909 patent on all of the grounds of unpatentability set forth therein.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Contrary to Patent Owner’s arguments, the law on overlapping ranges in obviousness challenges is clear. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.”). Here, Petitioner directs us to evidence of an overlapping range, which is not meaningfully disputed by Patent Owner. As to Patent Owner’s arguments regarding the lower end of the claimed range of aspect ratios and Ohata’s warning about aspect ratios below 100, we note that Ohata states that its carbon nanotubes “preferably have an aspect ratio . . . of not less than 100,” and expressly includes examples with an aspect ratio of 50. Ex. 1004 ¶ 20 (emphasis added), Table 2 (Examples 12 and 14). Patent Owner also criticizes Petitioner for relying on oxidizing Ohata’s nanotubes in view of Kavan (discussed in more detail below). Prelim. Resp. 6. According to Patent Owner, oxidation is known to shorten the length of nanotubes, which would impact the aspect ratio of the nanotubes in the proposed combination. Prelim. Resp. 6. Specifically, Patent Owner contends that oxidizing Ohata’s nanotubes will reduce the aspect ratio below 100, and argues that “Petitioner has not explained why a [person of ordinary skill in the art] would ignore Ohata’s warning nor has Petitioner provided evidence that the resulting combination will perform as Petitioner alleges.” Prelim. Resp. 7; see also Prelim. Resp. 8 (arguing Petitioner has not explained why a person of ordinary skill in the art would try to retain Ohata’s aspect ratio and expect success when Ohata is altered in view of Kavan). Even giving Patent Owner’s arguments their full weight, there is no evidence on the present record as to how much the aspect ratio of Ohata’s nanotubes would be reduced as a result of oxidation. Rather, based on the present record, namely, the broad range of aspect ratios disclosed in Ohata (preferably 100–1000), it seems reasonably likely that the aspect ratio of at least some of the oxidized nanotubes in the proposed composition would remain within the range disclosed in Ohata and overlap the claimed range, as Petitioner asserts. Nevertheless, the parties may address during trial the expected level of carbon nanotube shortening in the proposed combination of Ohata and Kavan.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“To the extent Patent Owner is presenting a teaching away argument, these statements do not rise to the level of criticizing, discrediting, or discouraging investigation into the claimed invention. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009). Indeed, in addition to its statement regarding oxidation not being necessary for anchoring to TiO2, Kavan also states that oxidation of carbon nanotubes “was sometimes mentioned to improve anchoring of TiO2.” Ex. 1005, 2. Moreover, the full statement from Kavan regarding storage capacity reads: “The Li-storage capacity of TiO2 is not enhanced in the composite, but the rate of electrochemical charge transfer is higher due to nanotube networking.” Ex. 1005, 9. Thus, in its entirety, this statement supports Petitioner’s argument that there are advantages to using oxidized nanotubes, and, in turn, provides a reason why a person of ordinary skill in the art would have used oxidized nanotubes. Moreover, the evidence Petitioner presents regarding the use of oxidized nanotubes in combination with TiO2, coupled with Ohata’s statement that the electrode active material to be used can vary depending on the battery type (Ex. 1004 ¶¶ 26–27), undermines Patent Owner’s criticism that Petitioner’s arguments are circular.” slip op. at 24
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Although the parties appear to agree that this factor is neutral, we note that a district court denial of a motion to stay without prejudice, accompanied by an indication that the district court would consider a renewed motion, “suggests the district court may be willing to avoid duplicative efforts and await the PTAB’s final resolution of the patentability issues raised in the petition before proceeding with the parallel litigation.” Fintiv at 6–7. “This fact has usually weighed against exercising authority to deny institution.” Id. (also noting that factors 2 and 3 are relevant to how much weight to give to the court’s willingness to reconsider a stay); see also T-Mobile, Paper 16 at 12 (noting that a stay was unlikely in that case given the proximity of the trial date to the entry of the institution decision). In view of the forgoing, we determine that Fintiv factor 1 weighs against exercising our authority to deny institution.” slip op. at 37
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,808,909 - PTAB · Oct 22, 2024 · IPR2024-00758 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted IPR on claims 1–24 on all petitioned grounds and granted Qorvo’s motion to join IPR2024-00609, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv. See USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Fintiv Memo”).9 The Fintiv Memo instructs that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Id. at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)); see id. at 7, 9. The Fintiv Memo also explains that such a stipulation (a Sotera stipulation) “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. at 7. Petitioner presents a Sotera stipulation in the present Petition. See Pet. 70. Specifically, Petitioner stipulates that it will not pursue invalidity of the Challenged Claims (i.e., all claims of the ’360 patent) in the Akoustis- Qorvo litigation on the grounds raised, or that reasonably could have been raised, in this IPR Petition. Id.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the same reasons stated in our Decision on Institution in the IQE IPR, we determine that institution is warranted here. See IPR2024- 00609, Paper 9 at 41–44. With respect to Patent Owner’s additional argument that Petitioner failed to provide a reason to combine Guo and Ashby to arrive at the claimed invention of claim 10 for the same reasons set forth with respect claims 5 and 17 (Prelim. Resp. 61), we note that, as stated in our Decision on Institution, Petitioner provides argument and declaratory testimony that a person of ordinary skill in the art would have had reason to 11 In Ground 6, Petitioner asserts that dependent claims 5, 10, and 17 would have been obvious over the combination of Guo and Ashby. Pet. 60–66. sufficient to show a reason to combine the references is best resolved on a full record. IPR2024-00609, Paper 9 at 43. For the above reasons, we determine Petitioner has set forth a reasonable likelihood that it would prevail with respect to at least one challenged claim, and we, therefore, institute an inter partes review on all grounds raised in the Petition.” slip op. at 12
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). In deciding whether to grant joinder, we consider: (1) the reasons why joinder is appropriate, (2) whether the petition raises any new grounds of unpatentability, (3) any impact that joinder would have on the cost and trial schedule for the existing review, and (4) whether joinder will add to the complexity of briefing or discovery. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15, 4 (PTAB Apr. 24, 2013); Trial Practice Guide at 76. Petitioner contends that joinder with the IQE IPR is appropriate because Qorvo’s Petition (Paper 1) is substantially the same as the IQE Petition. Mot. 2, 4–5. Petitioner states that its Petition challenges the same claims on the same grounds, relies on the same art, and is supported by substantially the same expert declaration by the same expert as the IQE Petition. Id. at 2, 4. Petitioner states that no additional burden would be created and that joinder would lead to an efficient resolution of the asserted invalidity of the ’360 patent. Id. at 2, 5–6. Petitioner further stipulates that if joinder is granted, that it will act as an “understudy” unless IQE ceases to participate in the proceeding and that joinder will not unduly complicate the IQE IPR or delay its schedule. Id. at 2, 5–8.” slip op. at 14
Discretionary denialPatents in suitUS 7,250,360 - PTAB · Oct 11, 2024 · IPR2024-00774 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR on all challenged claims and petition grounds, and granted Texas Instruments’ motion to join the Cirrus IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IPR. Compare id., with IPR2024-00019, Paper 46 at 1–4, 6–22 (Patent Owner’s response in the Cirrus IPR) (public version). We decline to resolve the material issue of fact surrounding this limitation on this preliminary record, because the trial in the Cirrus IPR is the better proceeding in which to do so. Specifically, as compared to the preliminary phase of this case, the instituted trial in the Cirrus IPR affords the parties a better opportunity to fully and fairly brief, argue, and develop evidence in support of their positions, and, in particular, to address Cirrus Logic’s alleged admission that the existence of a gradient alone is insufficient to disclose the “aid carrier movement” limitations of independent claims 1 and 21. We observe only that, on this record, the disputed issue of material fact is not sufficient to undermine the sufficiency of Petitioner’s evidence supporting institution of review.” slip op. at 16
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 15– 35. The one-year time bar under § 315(b), however, “shall not apply to a request for joinder under subsection (c).” 35 U.S.C. § 315(b); see 37 C.F.R. § 42.122(b). And, because the Petition is accompanied by a timely request for joinder (Paper 1) to the instituted proceeding (IPR2024-00019), which we grant as further discussed below, Patent Owner’s argument that the Petition is time-barred under 35 U.S.C. § 315(b) is moot, irrespective of whether Petitioner is in privity with time-barred entities.” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Based on the facts and circumstances discussed above, we determine Petitioner has established good cause for joining the Cirrus IPR. Specifically, we find that joining Petitioner to the Cirrus IPR is unlikely to require any delay or modification to the scheduling order already in place for that proceeding. We also determine that Patent Owner will not be prejudiced unduly by the joinder of this proceeding. Thus, we determine that granting the Motion for Joinder would help “secure the just, speedy, and inexpensive resolution” of these proceedings. See 37 C.F.R. § 42.1(b). Accordingly, we grant Petitioner’s Motion for Joinder and join Petitioner as a party to the Cirrus IPR.” slip op. at 19
NonePatents in suitUS 11,316,014
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.