• Johnson & Johnson Surgical Vision, Inc. v. Alcon Inc.No claims unpatentable
  PTAB · Dec 5, 2022 · IPR2021-01053 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1 and 2 were not shown unpatentable: Grounds 2 and 4 lacked motivation and a reasonable expectation of success, while Grounds 1 and 3 relied on a rejected construction.

  RulingsFinal written decision

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

    “under which “the ‘curvature of the focal plane’ must ‘track the natural curvature of the lens.’” Pet. 12. Petitioner asserts that this second “construction is the basis for Grounds 2 and 4 in [the] Petition.” Id. Petitioner’s second proposed construction repeats, word-for-word, language that appears in claim 1. Compare id. (“‘curvature of the focal plane’ must ‘track the natural curvature of the lens’”), with Ex. 1001, 12:17–18 (“curvature of the focal plane” will “track the natural curvature of the lens”). That suggests to us that Petitioner, in advancing this alternative construction, agrees with Patent Owner that those words can, and should, “be given their plain and ordinary meaning.” Resp. 19. We agree with the parties’ suggestions that those words, as they appear in the full claim limitation at hand, are clear and unambiguous. The challenged claims require multiple “layers of photodisrupted bubbles,” which “form a regular array of cells in the target region” defining “cell boundaries,” and wherein those “layers are created by scanning the pulsed laser with the optics module according to a curvature of the focal plane of the optics module to track the natural curvature of the lens.” Ex. 1001, 12:13–18 (Board’s emphasis). Where the same word, “curvature,” appears in two phrases within claim 1, namely, “curvature of the focal plane” and “curvature of the lens,” we determine that the phrases relate to one another and that the word should be assigned a single, cohesive meaning. Id. Read fairly, this limitation indicates that the layers of photodisrupted bubbles that form the cell boundaries are generated by scanning a pulsed laser according to a single curvature – a curvature that characterizes both the focal plane of the optics module and the natural bend of the lens. Id. Accordingly, on this record, we determine that the “curvature of the focal plane” itself must “track the natural curvature of the lens.” Id. Other evidence of record supports that determination. Most notably, the record of examination includes this unequivocal statement: “It was Applicant’s inventive idea to design the laser surgical system such that the curvature of its focal plane tracks the curvature of the eye.” Ex. 1002, 133.7” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “The problem of mismatch simply “is not present in flat-field corrected systems that are imaging a flat surface because there is no mismatch. As a result, Frey and Blumenkranz do not have the blurriness problem Koschmieder describes.” Resp. 15 (citing Ex. 2030, 88:21–89:7; Ex. 2033 ¶ 104). Furthermore, the proposed modification of Frey’s system would have been expected to “cause blurring or defocusing” to occur “when used with a pulsed laser source” system, such as Frey’s, that employs a laser-shot-by-laser-shot scan pattern to generate, point-by-point, layers of photodisrupted tissue in the eye. Ex. 2033 ¶ 122. Accordingly, on this record, we find that an ordinarily skilled artisan would not “have been motivated to modify Frey with Koschmieder’s solution to address a problem of laser focus that is nonexistent in Frey.” Id.” slip op. at 38

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “opinions regarding whether there would have been a reasonable expectation of success for Petitioner’s combination” of prior art references. Sur-reply 8 (citing cases). We agree with Patent Owner that, based on the record presented, Dr. Bentley “has no experience designing laser-based systems for eye surgery” and, further, that a question arises as to whether Dr. Bentley “even understand[s] what photodisruption is” within the context of claim 1. Id. at 7–8 (and citations therein to Exs. 1004, 1046, 1047, and 2051). Although Dr. Bentley possesses excellent credentials in optics generally, this witness reports no experience with surgical optics, much less optics for laser surgery of the eye. Ex. 1046 ¶¶ 3–9; see generally Ex. 1047 (curriculum vitae). Dr. Bentley currently advises students working on optics for “microscope objectives, digital and film camera lenses, zoom lenses, fisheye lens, riflescopes,” and other devices––but none, on this record, is 6 The record also includes a declaration of Edward A. DeHoog, Ph.D. (Ex. 2001), which Patent Owner filed with the Preliminary Response but does not advance in the Response. See generally Resp. demonstrated by Petitioner as applicable to laser surgery, much less a method of laser surgery whereby layers of photodisrupted bubbles are generated within eye tissue. Ex. 1047, 1; see Ex. 2051, 45:8–21 (Dr. Bentley’s deposition transcript). Dr. Bentley’s prior experience includes, for example, working on optics related to “broadband zoom lens for cancer screening, several high-resolution broadband infrared cameras,” and “a multi-photon endoscope objective,” but includes no work, on this record, that relates to optics for laser surgery of the eye. Id. We recognize that Dr. Bentley is named on four patents and frequently lectures and publishes articles on optical imaging in general, but the list of patents and publications persuades us that Dr. Bentley possesses little, if any, experience with surgical optics. Id. ¶¶ 3, 5–9. We agree with Patent Owner, moreover, that during Dr. Bentley’s deposition, it became clear that this witness “is not an expert in laser-based systems for photodisrupted surgery” and has no experience with, or specific knowledge about, optics that perform “photodisruption” of lens tissue. Sur-reply 8 (citing Ex. 2051, 61:17–62:17, 65:12–17, 66:18–68:21, 72:4–72:20, 73:10– 73:19, 75:11–76:13, 80:9–16, 81:13–83:25, 85:13–86:3, 89:25–92:7, 94:25– 95:23, 121:3–121:12 (deposition transcript)). By contrast, Patent Owner’s witness, Dr. Dhalla, has “many years of” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the information presented, we find that the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we adopt Petitioner’s definition because, on this record, it appears consistent with the disclosures of the asserted prior art and the written description of the invention provided in the ’356 patent. Pet. 10 (Petitioner’s asserted definition of the ordinarily skilled artisan). Neither party, however, advances information explaining how or why the result in this case would change based on the definition selected by the Board.” slip op. at 12

  Patent outcomesUS 9,427,356 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,427,356
• Polycom, Inc. v. Directpacket Research, Inc.No claims unpatentable
  PTAB · Aug 26, 2022 · IPR2019-01233 · APJ Sheila F Mcshane · IPR · Remand

  Claims 1–23 were not shown unpatentable over Ress or Ress and Doyle because the cited art did not teach receiving a multimedia data stream that includes media.

  RulingsRemand decision

  • RemandOther

    “Having analyzed the record in view of our reviewing court’s directive, we determine on remand, for the reasons that follow, that Petitioner has not shown by a preponderance of the evidence that claims 1–23 of the ’588 patent are unpatentable.” slip op. at 3

  • BurdenNot shown unpatentable

    “protocols for media stream communications (Pet. 24; Ex. 1004, 1:20–24), but the operative issue as to limitation1[a] is whether Ress teaches that a multimedia data stream, including media, is received at the communication controller (call server). We have reviewed the evidence and argument provided by Petitioner during trial, and we agree with Patent Owner that Petitioner fails to demonstrate that Ress teaches or suggests this limitation. PO Resp. 18–19. The evidence supports Patent Owner’s contention, referencing annotated Figure 3 reproduced below, that “Ress illustrates a ‘packetized media stream’ (in blue) communicated between gateways is not associated with the signaling messages (in red) communicated to the call server” and “[t]he ‘packetized media stream’ notably never reaches the call server 300 of Ress.” Id. at 14, 19.” slip op. at 16

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We determine that Petitioner presents new evidence and arguments post-appeal, which is impermissible. In its Opening Brief On Remand, Petitioner refers to multiple portions of Ress which had not been cited in either the Petition or Petitioner’s Reply. See Pet. Rem. Br. 1–6 (citing Ex. 1004, 5:62–65, 4:35–42, 7:49–53, 11:62–65, 12:3–9, 4:36–38, 12:6–12, 13:54–59, 12:25–29, 12:31–33, 18:21–24, 18:51–52, 19:6–12). Petitioner also refers to evidence that was cited in Petition and Reply but was not previously relied upon for any assertions related to any transmission of media to the call server in Ress. Id. (citing Ex. 1004, 6:16–19, 10:45–49, 18:11–14, 12:13–17, 12:18–21, Figs. 7, 12–19).” slip op. at 19

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

    “protocols for media stream communications (Pet. 24; Ex. 1004, 1:20–24), but the operative issue as to limitation1[a] is whether Ress teaches that a multimedia data stream, including media, is received at the communication controller (call server). We have reviewed the evidence and argument provided by Petitioner during trial, and we agree with Patent Owner that Petitioner fails to demonstrate that Ress teaches or suggests this limitation. PO Resp. 18–19. The evidence supports Patent Owner’s contention, referencing annotated Figure 3 reproduced below, that “Ress illustrates a ‘packetized media stream’ (in blue) communicated between gateways is not associated with the signaling messages (in red) communicated to the call server” and “[t]he ‘packetized media stream’ notably never reaches the call server 300 of Ress.” Id. at 14, 19.” slip op. at 16

  Patent outcomesUS 7,773,588 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,773,588
• Tennant Company v. Oxygenator Water Technologies, Inc.No claims unpatentable
  PTAB · Aug 17, 2022 · IPR2021-00625 · APJ Kristina M Kalan · IPR · Final written decision

  The Board found that Tennant did not prove claims 13, 14, and 17–27 unpatentable because the asserted references did not establish the claimed microbubbles and nanobubbles, and the obviousness combinations were inadequately supported.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner states, for “purposes of this proceeding, PO does not challenge Petitioner’s proposed level of ordinary skill.” PO Resp. 53 n.6. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Accordingly, we adopt Petitioner’s definition, because it is consistent with the cited prior art. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [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 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “Because patentee has acted as its own lexicographer, and because Petitioner agrees that the definition provided in the specification is the preferred construction, we adopt the construction of “nanobubble” provided in the specification. Cont’l Cirs. LLC v. Intel Corp., 915 F.3d 788, 796 (Fed. Cir. 2019) (citing Phillips, 415 F.3d at 1316) (“When the patentee acts as its own lexicographer, that definition governs.”). Namely, we construe “nanobubble” as “a bubble with a diameter less than that necessary to break the surface tension of water.” Ex. 1101, 4:12–13. We decline to add any additional language to our construction, as proposed by Petitioner, because the additional quoted sentence in the specification appears to describe an effect of nanobubbles on the appearance of water when nanobubbles are present, rather than define the nanobubbles themselves. On this record, we determine that no other claim terms require express construction.” slip op. at 14

  • BurdenDecided for patent owner

    “We disagree that our Institution Decision established a prima facie case that Petitioner met its burden at the Final Written Decision stage. An affirmative decision on institution is a determination that Petitioner has shown, on the record at that stage in the proceeding, that Petitioner has a reasonable likelihood of prevailing on its arguments as to at least one challenged claim. Dec. 40; 35 U.S.C. § 314(a). To prevail in an instituted inter partes review, however, 35 U.S.C. § 316(e) requires Petitioner to meet “the burden of proving a proposition of unpatentability by a preponderance of the evidence.” See TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (“[T]here is a significant difference between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at institution, and actually proving invalidity by a preponderance of the evidence at trial . . . . The Board’s findings in its Final Written Decision were thus not inconsistent with those in its Institution Decision; they were made under a qualitatively different standard.”). To state that our Institution Decision established a prima facie case that Petitioner was correct would be erroneous, as such a position conflates different burdens required of Petitioner and, in doing so, would have us improperly give Petitioner an advantage in the actual trial culminating in a final written decision. Fan Duel, 966 F.3d at 1341–42.” slip op. at 25

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “On this complete record, we find that Petitioner’s testing does not sufficiently demonstrate that Wikey inherently discloses nanobubbles. Pet. 22–29. Petitioner apparently had the ability to test for the express disclosure of nanobubbles in its Wikey-based apparatus, but did not do so. Sur-Reply 2–3. Patent Owner points out that nanobubbles, which Petitioner’s expert indicated were on the order of 0.1 microns, are detectable using available technology that Petitioner knew of and had used in the past. Id. However, Petitioner’s expert acknowledged that he did not do any testing that would determine whether nanobubbles were formed. Id. at 7 (citing Ex. 2172, 70:1–4). Petitioner’s reliance on milkiness and supersaturation to demonstrate the presence of nanobubbles is also unsupported. Petitioner argues that milky appearance equals supersaturation (Reply 9 (citing Ex. 1101, 9:38– 50)), and also that milky appearance equals nanobubbles (id. (citing Ex. 1101, 4:14–15)); the inference Petitioner apparently wants us to draw is that supersaturation equals nanobubbles. Patent Owner, however, persuasively argues that dissolved oxygen content over 100% does not prove the water is milky. PO Resp. 25–26; Sur-Reply 6–7; see also Tr. 13:24–26 (Petitioner’s counsel agreeing that “you can have supersaturation without milkiness”). Patent Owner also demonstrates that supersaturation does not necessarily mean that nanobubbles are present. PO Resp. 26; Sur-Reply 7; Ex. 2172, 76:9–14, 77:23–78:21. Thus, Petitioner’s argument based on supersaturation equaling nanobubbles because milkiness equals both breaks down because milkiness does not necessarily equal either. Accordingly, we determine that Petitioner’s arguments and testing fail to show that Wikey inherently discloses nanobubbles.” slip op. at 28

  Patent outcomesUS RE45,415 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Nanoco Technologies Ltd.No claims unpatentable
  PTAB · May 16, 2022 · IPR2021-00184 · APJ Erica A Franklin · IPR · Final written decision

  Claims 1–16 and 21–25 were not shown unpatentable because Banin’s gold clusters were not shown to be molecular cluster compounds, and the Zaban combinations lacked motivation to combine.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have had “at least a Ph.D. in chemistry, physics, chemical engineering, material science, or equivalent technical degree or equivalent work experience, with knowledge regarding nanoparticles and methods of synthesizing them” and “[a]dditional education might supplement practical experience and vice-versa.” Pet. 18–19 (citing Ex. 1002 ¶ 70). Patent Owner neither addresses Petitioner’s description of the level of ordinary skill in the art nor provides its own description. See PO Response. Accordingly, we adopt Petitioner’s definition as we find it is unopposed and consistent with the level of skill in the art at the time of the invention as reflected by the prior art in this proceeding.” slip op. at 10

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedMixed

    “suggested formula” assigned to them is “based on a calculation that relied on the average of a wide distribution of particle sizes reported in the literature by Hutchison.” Ex. 2030 ¶ 103(citing Ex. 2017, 12891). We assign persuasive weight to her testimony because it is based upon the disclosures in Hutchison, which Banin explicitly identifies as the published procedures by which it synthesized its clusters. In particular, Dr. Cossairt’s testimony is supported by the following discussion in Hutchison: To calculate an average molecular formula for 1 it is necessary to know the number of gold atoms in the metal core. Given the average particle size (1.5 nm) this number is estimated to be ~101 by the method of Whetten et al. and leads to an estimated formula of Au101(PPh3)21Cl5. Ex. 2017, 12891. In other words, Hutchison explains that it calculated an average molecular formula for its synthesized nanoparticles by estimating the number of gold atoms in the metal core based upon the average particle size of 1.5 nm. Id. Indeed, as Dr. Cossairt has recognized, Banin’s “suggested formula” is exactly the same molecular formula that Hutchison discloses as the “average molecular formula” for its nanoparticles. Thus, we determine that the record as a whole supports finding that a person of ordinary skill in the art would have understood that Banin’s “suggested formula” represents an average molecular formula for a disperse mixture of gold clusters that are not identical and do not have sufficiently well-defined chemical structure such that all molecules of the cluster compound possess the same relative molecular formula, as required for MCCs. slip op. at 23

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Specification expressly defines the term “molecular cluster” in a manner that refers to the cluster compound. According to the Specification, “Molecular cluster” is a term which is widely understood in the relevant technical field but for the sake of clarity should be understood herein to relate to clusters of 3 or more metal or nonmetal atoms and their associated ligands of sufficiently well defined chemical structure such that all molecules of the cluster compound possess the same relative molecular mass. Ex. 1001, 5:3–9. We note that the District Court determined that “the term ‘molecular formula’ as opposed to ‘molecular mass’ is most appropriate. By necessity, a compound with the same molecular formula will necessarily have the same molecular mass.” Ex. 1091, 16. The District Court explained also, “it appears that the difference between a molecular formula and a molecular mass, at least for purposes of this claim construction, in inconsequential.” Id. We agree and do not find any dispute on the current record from the parties on this matter. Accordingly, for purposes of this Decision, we agree with the District Court that the term “molecular cluster compound” means “clusters of 3 or more metal atoms and their associated ligands of sufficiently well-defined chemical structure such that all molecules of the cluster compound possess the same relative molecular formula.” Id. at 18.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “that Petitioner has not shown persuasively that a person of ordinary skill in the art would have considered Banin’s small Au clusters to be MCCs. According to Petitioner and Dr. Green, Banin’s gold clusters are MCCs because they are clusters of three or more metal atoms with their associated ligands and “each cluster is ‘identical to one another.’” Ex. 1002 ¶ 90; Pet. 23. To begin, we do not find that the record supports Petitioner’s contention or Dr. Green’s opinion that “each cluster is ‘identical to one another.’” Ex. 1002 ¶ 90; Pet. 23. Petitioner and Dr. Green do not identify any disclosure in Banin describing the clusters as being identical. Instead, they refer to Banin’s disclosure that the Au clusters have “the suggested formula Au101(PPh3)21Cl5” and are “1.4 nm in mean diameter.” In doing so, Petitioner and Dr. Green do not meaningfully address or adequately explain how Banin derived its “suggested” molecular formula for the gold clusters or why Banin reported a “mean” diameter for those clusters. To that end, Petitioner and Dr. Green have failed to provide any reason why a skilled artisan would have understood Banin’s disclosures of a “suggested formula” and a “mean diameter” to convey that the Au clusters are identical.” slip op. at 22

  Patent outcomesUS 7,803,423 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,803,423
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Nanoco Technologies Ltd.No claims unpatentable
  PTAB · May 16, 2022 · IPR2021-00183 · APJ Erica A Franklin · IPR · Final written decision

  Claims 1, 3–6, and 8–14 were not shown unpatentable because the asserted combinations failed to establish the claimed molecular cluster compounds or a reason to combine the references.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have had “at least a Ph.D. in chemistry, physics, chemical engineering, material science, or equivalent technical degree or equivalent work experience, with knowledge regarding nanoparticles and methods of synthesizing them” and “[a]dditional education might supplement practical experience and vice-versa.” Pet. 20 (citing Ex. 1002 ¶¶ 72–75). Patent Owner neither addresses Petitioner’s description of the level of ordinary skill in the art, nor provides its own description. See PO Resp. Accordingly, we adopt Petitioner’s definition as we find it is unopposed and consistent with the level of skill in the art at the time of the invention as reflected by the prior art in this proceeding.” slip op. at 9

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedMixed

    “on the average of a wide distribution of particle sizes reported in the literature by Hutchison.” Ex. 2030 ¶ 102 (citing Ex. 2017, 12891). We assign persuasive weight to her testimony because it is based upon the disclosures in Hutchison, which Banin explicitly identifies as the published procedures by which it synthesized its clusters. In particular, Dr. Cossairt’s testimony is supported by the following discussion in Hutchison: To calculate an average molecular formula for 1 it is necessary to know the number of gold atoms in the metal core. Given the average particle size (1.5 nm) this number is estimated to be ~101 by the method of Whetten et al. and leads to an estimated formula of Au101(PPh3)21Cl5. Ex. 2017, 12891. In other words, Hutchison explains that it calculated an average molecular formula for its synthesized nanoparticles by estimating the number of gold atoms in the metal core based upon the average particle size of 1.5 nm. Id. Indeed, as Dr. Cossairt has recognized, Banin’s “suggested formula” is exactly the same molecular formula that Hutchison discloses as the “average molecular formula” for its nanoparticles. Thus, we determine that the record as a whole supports finding that a person of ordinary skill in the art would have understood that Banin’s “suggested formula” represents an average molecular formula for a disperse mixture of gold clusters that are not identical and do not have sufficiently well-defined chemical structure such that all molecules of the cluster compound possess the same relative molecular formula, as required for MCCs.” slip op. at 24

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “Based on our consideration of the record as a whole, we find that the Specification expressly defines the term “molecular cluster” in a manner that refers to the cluster compound. According to the Specification, “Molecular cluster” is a term which is widely understood in the relevant technical field, but for the sake of clarity should be understood herein to relate to clusters of three or more metal atoms and their associated ligands of sufficiently well-defined chemical structure such that all molecules of the cluster compound possess approximately the same relative molecular formula. Ex. 1001, 3:28–34 (emphasis added). As there is no dispute that the term “molecular cluster compound” refers to “clusters of three or more metal atoms and their associated ligands of sufficiently well-defined chemical structure such that all molecules of the cluster compound possess approximately the same relative molecular formula,” we agree with the parties that no further construction of the claim is necessary for purposes of rendering this Decision. Additionally, we find that express construction of any remaining claim terms is unnecessary for purposes of rendering this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Moreover, we agree with Patent Owner that Petitioner has not demonstrated persuasively that a skilled artisan would have been motivated to replace Banin’s metal catalyst with Herron’s cluster compound. PO Resp. 44–49. Petitioner’s expert, Dr. Green, does not dispute that Banin’s SLS process requires the use of a metal catalyst. Ex. 1002 ¶ 79; Ex. 1005, 4:3–9, 6:9–16. Nor does Dr. Green dispute that Herron’s Cd32S14(SC6H5)36 cluster is not a metal, but rather a cadmium sulfide semiconductor. Ex. 1002 ¶ 80; Ex. 1016, 1426. According to Patent Owner and Dr. Cossairt, there is no indication on the record that anyone has ever tried or succeeded in using a semiconductor as a catalyst in SLS nanorod synthesis. PO Resp. 53; Ex. 2030 ¶ 137. We agree and determine that Petitioner has not shown otherwise by referring to the use of a semiconductor in a different type of nanoparticle synthesis, i.e., a vapor-liquid-solid nanoparticle synthesis. See Pet. Reply 12. In any event, we find that the Petition fails to support a motivation to combine Herron’s cadmium sulfide semiconductor with Banin’s process because the Petition fails to address sufficiently (or at all) the differences between metal catalysts and Herron’s semiconductor material and to explain why a person of ordinary skill in the art would have used such a semiconductor material in place of the metal as the catalyst in Banin’s process, despite Banin’s teachings that the catalyst must be a metal. Accordingly, for the foregoing reasons, we determine that Petitioner has failed to establish persuasively that a person of skill in the art would have been motivated to modify Banin’s nanoparticle synthesis by replacing its gold metal catalyst with Herron’s cadmium-based semiconductor.” slip op. at 30

  Patent outcomesUS 7,588,828 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,588,828
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Nanoco Technologies Ltd.No claims unpatentable
  PTAB · May 16, 2022 · IPR2021-00182 · APJ Christopher M Kaiser · IPR · Final written decision

  Claim 1 was not shown unpatentable because Petitioner did not establish that Dubrow’s disclosures concerned one embodiment or that separate embodiments should be combined.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for patent owner

    “of a first liquid phase in a second liquid phase” and invited the parties to address at trial whether that construction is correct. Inst. Dec. 16. In the parallel proceeding in the Eastern District of Texas, the court construed “emulsion” as “a colloidal dispersion of two or more immiscible liquids.” Ex. 2022, 35. Patent Owner argues that, for the purpose of resolving the unpatentability issues presented in this proceeding, “there is not a meaningful distinction between the Board’s or District Court’s construction of ‘emulsion,’” because “[b]oth constructions require the presence of two immiscible liquids (e.g., a suspension of a liquid in another liquid).” PO Resp. 14 (emphases omitted). Petitioner agrees that the unpatentability issue should be resolved identically under both our previous construction and that adopted by the District Court. Reply 2 n.2 (“Claim 1 is . . . unpatentable under [either] the district court’s construction [or the Board’s construction].”). Thus, both parties agree that there is no meaningful distinction between our previous construction and that adopted by the District Court. Accordingly, we maintain our previous construction, and we note further that the two liquid phases in the “suspension of a first liquid phase in a second liquid phase” must be immiscible. See Ex. 2022, 31–35.” slip op. at 6

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “b. To show anticipation, Petitioner must show that the separate portions of Dubrow on which it relies refer to the same embodiment When a prior-art reference discloses every limitation of the challenged claim only through a combination of multiple embodiments, it does not anticipate the challenged claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370–71 (Fed. Cir. 2008) (“it is not enough that the prior art reference discloses . . . multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention”). Accordingly, to prevail on its anticipation argument, Petitioner must show that both the “preferred embodiment” disclosure of Dubrow and the “experimental example” portion of Dubrow describe the same embodiment.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “argument relies on a single embodiment of Dubrow. Unlike an anticipation argument, an obviousness argument need not rely on a single embodiment within a prior-art reference. However, regardless of whether an obviousness argument “is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” In re Stepan, 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017). To the extent that Petitioner intends to argue that it relies on multiple embodiments of Dubrow to teach or suggest the limitation “forming an emulsion comprising a first phase that comprises a first polymer and quantum dots and a second phase that comprises a second polymer,” Petitioner does not provide a reason to combine the teachings of those embodiments. See Pet. 27–29. Instead, Petitioner relies solely on its anticipation argument as support for Dubrow teaching this limitation. Id. at 27 (citing Pet. 21–23). To the extent that Petitioner intends to argue that the multiple portions of Dubrow on which Petitioner relies all relate to a single embodiment, Petitioner does not prove this by a preponderance of the evidence, for the reasons discussed above with respect to the anticipation argument. Thus, Petitioner has not shown either (1) that Dubrow’s teachings regarding the “forming an emulsion” limitation all relate to a single embodiment or (2) that those teachings relate to multiple embodiments that a person of ordinary skill in the art would have had a reason to combine.” slip op. at 13

  Patent outcomesUS 9,680,068 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 9,680,068
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Nanoco Technologies Ltd.No claims unpatentable
  PTAB · May 16, 2022 · IPR2021-00186 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1–23 were not proven unpatentable; Petitioner failed to show Banin’s gold clusters were molecular cluster compounds or establish the proposed combinations.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Dr. Green’s annotated side-by-side comparison of the TEM images in Banin and Hutchison (Reply 3; Ex. 1093 ¶ 17), we are unable to discern any meaningful distinction between the images. We do not assign Dr. Green’s testimony on that point persuasive weight, as he does not supply sufficient facts and data to support his opinion that a skilled artisan would have understood that the differences in the appearances of the clusters in Banin’s TEM images are attributable to a different orientation of the non-spherical clusters and/or the aggregation of the clusters next to one another, as opposed to a size distribution among the clusters. See Ex. 1093 ¶¶ 19–20. As discussed in the Patent Trial and Appeal Board Consolidated Trial Practice Guide,18 expert testimony must be based on sufficient facts and data. See CTPG 35 (citing Fed. R. Evid. 702; 37 C.F.R. §42.65(a)). Although Dr. Green testifies that Banin’s gold clusters, as depicted in the TEM image, reflect “purified and size-selected” MCCs (Ex. 1093 ¶ 18), we remain unpersuaded by that testimony, because Dr. Green does not direct us to any disclosure in Banin reporting a size selection of the gold clusters, after being synthesized by Hutchison’s process, or prior to the TEM imaging (Ex. 1093 ¶¶ 17–21). Here again, we observe, a centrifugation step in Banin, to which Dr. Green refers as supporting his opinion in that regard, relates to the purification of the size-selected nanorods, not the gold metal clusters. See Ex. 1005, 7:4–5 (“The purification is carried out by centrifugation that affords purified nanorods having selected size.”); id. at 20:24–25 (“The rods were purified and size-selected by centrifugation.”); id. at 22:29–30 (“The rods were purified and size-selected by centrifugation.”).” slip op. at 28

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Our rules require a petitioner to explain with particularity, at the outset in the petition, why the patent it challenges is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). “Unlike district court litigation—where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of” inter partes review proceedings “bring with it an obligation for petitioners to make their case in their petition to institute.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). Accordingly, Petitioner carries a burden to “identify with particularity” at the outset, in the Petition, “the grounds on which the challenged to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). Although “the introduction of new evidence in the course of the trial is to be expected in inter partes review trial proceedings,” Genzyme Therapeutic Prods. LP v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366 (Fed. Cir. 2016), the shifting of arguments is not, Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017).” slip op. at 31

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Based on our consideration of the record as a whole, we agree with the District Court that the molecular cluster compound of the claimed invention must have “sufficiently well-defined chemical structure such that all molecules of the cluster compound possess the same relative molecular formula.” Ex. 1091, 18. To the extent that this or any other claim term requires further discussion, we provide it in our analysis of the challenges. No further express claim construction is necessary for purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). To the extent a more specific definition is required, we adopt Petitioner’s definition for purposes of this Decision, because that definition is unopposed and consistent with the disclosures of the asserted prior art references.” slip op. at 9

  Patent outcomesUS 8,524,365 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,524,365
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Nanoco Technologies Ltd.No claims unpatentable
  PTAB · May 16, 2022 · IPR2021-00185 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1–6, 16, and 17 were not proven unpatentable: Banin’s gold clusters were not shown to be MCCs, the Zaban combinations lacked adequate support, and the Lucey ground was withdrawn.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). In Petitioner’s view, an ordinarily skilled artisan would have had “at least a Ph.D. in chemistry, physics, chemical engineering, material science, or equivalent technical degree or equivalent work experience, with knowledge regarding nanoparticles and methods of synthesizing them” and “[a]dditional education might supplement practical experience and vice-versa.” Pet. 22 (citing Ex. 1002 ¶ 76). Patent Owner does not address Petitioner’s view or propose a counter definition. We determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). To the extent a more specific definition is required, we adopt Petitioner’s definition for purposes of this Decision, because that definition is unopposed and consistent with the disclosures of the asserted prior art references.” slip op. at 9

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Based on our consideration of the record as a whole, we agree with the District Court that the molecular cluster compound of the claimed invention must have “sufficiently well-defined chemical structure such that all molecules of the cluster compound possess the same relative molecular formula.” Ex. 1091, 18. To the extent that this or any other claim term requires further discussion, we provide it in our analysis of the challenges. No further express claim construction is necessary for purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedMixed

    “opinion, with supporting citations to evidence, that Banin describes gold clusters that range in size and, further, why the reference indicates that the suggested formula assigned to those clusters is based on a calculation that relies on the average of a wide distribution of particle sizes reported in the literature by Hutchison. Ex. 2030 ¶¶ 102–125; Ex. 2017, 12891. We assign persuasive weight to her testimony because it is supported by clear disclosures in Hutchison, which Banin explicitly identifies as the source of the procedures by which Banin synthesizes its gold clusters. In particular, Dr. Cossairt’s testimony comports with this discussion in Hutchison: To calculate an average molecular formula for [gold nanoparticle] 1 it is necessary to know the number of gold atoms in the metal core. Given the average particle size (1.5 nm) this number is estimated to be ~101 by the method of Whetten et al. and leads to an estimated formula of Au101(PPh3)21Cl5. Ex. 2017, 12891. In other words, as this disclosure makes plain, Hutchison calculates an average molecular formula for its gold clusters by estimating the number of gold atoms in the metal core based upon the average particle size of 1.5 nm. Id. Indeed, as Dr. Cossairt recognizes, Banin’s suggested molecular formula is exactly the same formula that Hutchison calculates based on the average molecular formula for the variably-sized gold clusters produced according to its process. Ex. 2030 ¶¶ 102–105. Dr. Cossairt provides persuasive reasons why a person of ordinary skill in the art would have understood that Banin’s suggested formula represents an average molecular formula for a disperse mixture of gold clusters that are not identical in size and do not have sufficiently well-defined chemical structure such that all molecules of the cluster compound possess the same relative molecular formula, as required for MCCs. Id. ¶¶ 102–125.” slip op. at 26

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Our rules require a petitioner to explain with particularity, at the outset in the petition, why the patent it challenges is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). “Unlike district court litigation — where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material — the expedited nature of” inter partes review proceedings “bring with it an obligation for petitioners to make their case in their petition to institute.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). Accordingly, Petitioner carries a burden to “identify with particularity” at the outset, in the Petition, “the grounds on which the challenged to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). Although “the introduction of new evidence in the course of the trial is to be expected in inter partes review trial proceedings,” Genzyme Therapeutic Prods. LP v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366 (Fed. Cir. 2016), the shifting of arguments is not, Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017).” slip op. at 30

  Patent outcomesUS 7,867,557 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,867,557
• Lenovo Holding Company, Inc. / Lenovo (United States) Inc. et al. v. Interdigital Technology CorporationNo claims unpatentable
  PTAB · Apr 14, 2022 · IPR2020-01505 · APJ John R Kenny · IPR · Final written decision

  Claims 1–10 were not shown unpatentable because Petitioner failed to establish that Zhang disclosed the claimed response to a non-zero grant construed as a power ratio greater than zero.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “Here, we determine that the term “power ratio” in the involved parenthetical in the Specification is a definition, and not merely an illustrative example, of a “grant.” First, the Specification does not identify any other type of grant. Dr. Mahon testifies that the Specification does not provide an example of any other type of grant. Ex. 2001 ¶ 35. Petitioner offers no rebuttal expert testimony and identifies no other type of grant disclosed in the Specification. See Pet. Reply 1–5. We credit Dr. Mahon’s unrebutted testimony that the Specification does not identify any other type of grant. Ex. 2001 ¶ 35. Thus, the parenthetical at issue in this case does not exclude any grant described in the Specification (nor, as set forth in Section II.B.2.ii, any grant set forth by ordinary meaning of the term grant based on the extrinsic evidence of record).” slip op. at 11

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Petitioner offers no extrinsic evidence, other than the testimony of Dr. Kakaes, regarding the ordinary meaning of the term “grant,” and Dr. Kakaes cites no extrinsic evidence to support his definition of the term “non-zero grant.” Pet. 12; Pet. Reply 1–5; Ex. 1003 ¶¶ 63–65. Dr. Kakaes does not separately address the meaning of “grant.” Ex. 1003 ¶¶ 63–65. We find Dr. Mahon’s testimony and the 3GPP Technical Specification persuasive. As set forth above, the 3GPP Technical Specification describes grants as power ratios—a fact that Petitioner does not dispute. Pet. Reply 1– 5. Further, as set forth above, in light of the Specification’s references to 3GPP standards and the 3GPP recitations in the preambles of claims 1 and 6, 3GPP standards from the time of the ’873 patent are highly relevant evidence to an ordinarily skilled artisan of the ordinary meaning of the terms “grant” and “non-zero grant.” iii. A Non-zero Power Ratio is a Power Ratio Greater than Zero Dr. Mahon testifies that a “non-zero grant” should be construed as “a power ratio greater than zero.” Ex. 2001 ¶ 33. Dr. Mahon explains that a power ratio cannot be negative, so a “non-zero” power grant must be greater than zero. Id. ¶ 38. Petitioner does not dispute Dr. Mahon’s testimony that a power ratio cannot be negative. Pet. Reply 1–5. Petitioner further does not dispute that if a “grant” is construed to be a “power ratio,” a “non-zero grant” should be construed to be a “power ratio greater than zero.” Id. We credit Dr. Mahon’s testimony that a power ratio cannot be negative. Ex. 2001 ¶ 38. Thus, in light of the Specification’s and extrinsic evidence’s teachings that a “grant” is a “power ratio,” we construe “non-zero grant” to be a “power ratio greater than zero.”” slip op. at 19

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “2. Claim 1 Claim 1 recites the following limitation: triggering transmission of scheduling information (SI), from the WTRU to a Node-B, in response to the WTRU having a non-zero grant smaller than needed preventing the WTRU from sending a medium access control protocol data unit (PDU) of any of a plurality of scheduled medium access control-d (MAC-d) flows. [“responsive limitation of claim 1”] Ex. 1001, 7:36–8:6 (emphasis added). Petitioner does not argue, let alone prove, that Zhang discloses the transmission of scheduling information “in response to the WTRU having a non-zero grant smaller than needed” when “non-zero grant” is construed as a “power ratio greater than zero.” Pet. 25–29; Pet. Reply 1–5, 12–13. Thus, Petitioner has not proven that claim 1 is anticipated by Zhang. 3. Claim 5 Claim 5 depends on claim 1. Ex. 1001, 8:15–16. Petitioner relies on its showing for claim 1 for the limitations that claim 5 incorporates from claim 1. Pet. 29–30. Thus, Petitioner has not proven that claim 5 is anticipated by Zhang.” slip op. at 25

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

    “B. Ground 2: Asserted Obviousness over Zhang Petitioner asserts that claims 1, 5, 6, and 10 would have been obvious over Zhang. Pet. 5. For the responsive limitations of claims 1 and 6, Petitioner relies on its showing for Ground 1. Id. at 32–33. Thus, Petitioner has not proven that claims 1 and 6 would have been obvious over Zhang. For claims 5 and 10, Petitioner also relies on its showing for Ground 1. Id. at 33. Thus, Petitioner has not proven that claims 5 and 10 would have been obvious over Zhang. C. Ground 3: Asserted Obviousness over Zhang and TS 25.321 Petitioner asserts that claims 1–10 would have been obvious over Zhang and TS 25.321. Pet. 5. For this ground, Petitioner argues “[t]o the extent one might argue that Zhang does not . . . sufficiently disclose a WTRU configured to process ‘a plurality of scheduled medium access control-d (MAC-d) flows,’ it would have been obvious to include that functionality in the WTRU of Zhang in view TS 25.321.” Id. at 34 (emphasis omitted). For the responsive limitations of claims 1 and 6, Petitioner relies on its showing for Ground 1. Id. at 34–40, 48. Thus, Petitioner has not proven that claims 1–10 would have been obvious over Zhang and TS 25.321. D. Ground 4: Asserted Obviousness of Claims 1, 5, 6, and 10 over Zhang and Lohr Petitioner asserts that claims 1, 5, 6, and 10 would have been obvious over Zhang and Lohr. Pet. 5. For this ground, Petitioner argues “[t]o the extent one might argue that Zhang alone, or Zhang in combination with TS 25.321 do not does not sufficiently disclose a WTRU configured to process “a plurality of scheduled medium access control-d (MAC-d) flows,’ it would have also been obvious to include that functionality in the WTRU of Zhang in view” of Lohr. Id. at 52–53 (emphasis omitted). For the responsive limitations of claims 1 and 6, Petitioner relies on its showing for Ground 1. Id. at 52–55. Thus, Petitioner has not proven that claims 1, 5, 6, and 10 would have been obvious over Zhang and Lohr. E. Ground 5: Asserted Obviousness of Claims 1–10 over Zhang, Lohr, and TS 25.321 Petitioner asserts that claims 1–10 would have been obvious over Zhang, Lohr, and TS 25.321. Pet. 5. For this ground, Petitioner argues that claims 1, 5, 6, and 10 would have been obvious over Zhang and Lohr for the reasons set forth for Grounds 1–4. Id. at 56. Thus, Petitioner has not proven that claims 1–10 would have been obvious over Zhang, Lohr, and TS 25.321. See Sections III.A–D above.” slip op. at 27

  Patent outcomesUS 8,797,873 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,797,873
• Google LLC / Ecobee, Inc. v. Ecofactor, Inc.No claims unpatentable
  PTAB · Mar 3, 2022 · IPR2021-00792 · APJ Scott B Howard · IPR · Final written decision

  Claims 1–20 were not shown unpatentable over Wedekind and Ehlers because the petition did not show the claimed distinct inputs used to determine the start time.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We are persuaded that Petitioner’s formulation, except for the qualifier “at least,” is correct.6 On the one hand, Patent Owner’s formulation is attorney argument without any supporting evidence. See PO Resp. 5–6. It is well settled that mere attorney arguments and conclusory statements, which are unsupported by factual evidence, are entitled to no probative value. See Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989) (“Attorney’s argument is no substitute for evidence.”); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not evidence). On the other hand, Petitioner’s proposal is supported by Mr. Shah’s testimony. See Pet. 26 (citing Ex. 1002 ¶¶ 26–27). Because Mr. Shah’s testimony is based on his years of experience, we give it some weight. See Ex. 1002 ¶¶ 2–10.” slip op. at 14

  • ExcludeMotion to exclude, deniedDenied

    “has more relevant experience. Pet. Reply 4–5; Pet. Supp. Br. 4–5. Petitioner further moves15 to exclude Dr. Palmer’s testimony. Pet. Supp. Br. 5. As our analysis does not rely on Dr. Palmer’s testimony, we dismiss Petitioner’s motion as moot. CONCLUSION For the foregoing reasons, we conclude that Petitioner has not demonstrated by a preponderance of the evidence the unpatentability of claims 1–20 of the ’753 patent. Specifically, Petitioner has not demonstrated by a preponderance of the evidence that claims 1–20 would have been obvious under 35 U.S.C. § 103(a) in view of Wedekind and Ehlers. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner has not shown by a preponderance of the evidence that claims 1–20 of the ’753 patent are unpatentable; FURTHER ORDERED that Petitioner’s motion to exclude the” slip op. at 30

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Reply: that the first internal temperature is acquired using the setpoint. See Pet. Reply 20. The Consolidated Trial Practice Guide states that a “Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019)10 73. Although “a reply . . . may . . . respond to arguments raised in the preceding brief,” “[r]espond . . . does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Id. at 74. As discussed below, we find Petitioner improperly shifted its position in the Reply by advocating a new approach. In the Petition, Petitioner argues that Wedekind teaches “acquiring at least a first internal temperature inside said structure at a third time prior to said target time” by the “continuous measurement of various air temperatures” including the internal temperature inside the structure. Pet. 42 (quoting Ex. 1006, code (57) and citing Ex. 1002 ¶ 97). According to Petitioner, “[t]he continuous measurement of temperatures includes measurement of a first a [sic] internal temperature inside said structure at or before time t3 in Fig. 2, which is the third time prior to said target time.” Id. (citing Ex. 1002 ¶ 98). Petitioner argues that “[e]ven during times of steady-state temperature, the temperature is being continuously measured to check against the current temperature setpoint.” Id. Nowhere does Petitioner mention acquiring a temperature by using the setpoint 10 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. temperature as opposed to a measured temperature. See Pet.; PO Sur-reply 9. In its Reply, Petitioner alternatively argues that the claim limitation is satisfied even if Wedekind uses the setback/setpoint11 temperature: Even Wedekind’s parameter Ti, however, would still meet the claim language. EcoFactor principally argues that Ti is not a measured temperature, but rather just a setpoint. A setpoint, according to EcoFactor, is at best a “predict[ion] [of] air temperature at or before time t3”. To this there are three responses. First, EcoFactor simply assumes that the “setback temperature” is a setpoint, but Wedekind refers to it in the relevant passage as “the setback temperature which exists at time, t3”. (Ex. 1006, 19:61)(Emphasis added). The phrase “setback temperature setpoint”, as used by EcoFactor, does not actually occur in Wedekind. Second, even if the setback temperature were a setpoint, the setpoint is a good estimate for the temperature (Ex. 1014, 19:23-21:3), and the claims do not require a measured “first internal temperature”, merely one that is “acquired”. Finally, even if the setback temperature of Wedekind were a predicted temperature, the ’753 patent works in exactly the same way, namely by using a “predicted initial temperature PT” as the temperature at the beginning of the recovery period. (Ex. 1001, 6:17-22)(Ex. 1014, 55:25-58:4). Thus, even if EcoFactor had made an express claim construction argument, the “first internal temperature” would not have been construed to exclude predicted temperatures.” slip op. at 22

  • BurdenNot shown unpatentable

    “Accordingly, Petitioner has not shown, based on the theory set forth in the Petition, that Wedekind teaches the disputed limitation.13 b) Conclusion Because Petitioner has not shown that one of the limitations was taught by the prior art, we conclude that Petitioner has failed to show by preponderance of the evidence that claim 1 would have been obvious to a person having ordinary skill in the art. 4. Analysis of Claims 2–8 Petitioner contends that the combination of Wedekind and Ehlers would have rendered the subject matter of claims 2–8 obvious to one of ordinary skill in the art. Pet. 61–65. Claims 2–8 depend from claim 1 and, therefore, recites the “determining a first time prior to said target time . . .” limitation. Accordingly, for the same reasons discussed with respect to claim 1, Petitioner’s analysis of these claims suffers from the same deficiency and Petitioner has failed to show by preponderance of the 13 Petitioner also states that Ehlers teaches the limitation. Pet. 54. The entirety of Petitioner’s statement follows: “Ehlers also teaches this limitation. (Ex. 1008, 29:23-36, 39:44-51, 19:39-40, 37:25-27. 11:53-63, 32:66-33:13, 36:27-38).” Id. Because Petitioner simply states Ehlers teaches the limitation and supplies a string citation without any explanation or supporting testimony, we do not consider Petitioner’s statement regarding Ehlers adequately explained or supported. See DeSilva v. DiLeonardi, 181 F.3d 865, 867 (7th Cir. 1999) (“[A] brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”). Despite being warned in the Institution Decision that we would not consider such conclusory arguments (Inst. Dec. 16–17 n.10), Petitioner did not argue in its Reply that we should consider it or provide any additional evidence or argument (see Pet. Reply). evidence that claims 2–8 would have been obvious to a person having ordinary skill in the art.” slip op. at 27

  Patent outcomesUS 8,498,753 not shown unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,498,753

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.