- 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 - Sma Solar Technology America, LLC v. Tigo Energy, Inc.No claims unpatentablePTAB · Oct 28, 2024 · IPR2023-00879 · APJ Elizabeth M Roesel · IPR · Final written decision
Claims 1–20 were not shown unpatentable because Mieth does not disclose the claimed micro-controller, and the Petition did not present the reply’s new obviousness theory.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) “would have had a bachelor’s degree in electrical engineering, or a similar discipline and at least two years of design experience with circuit design.” Pet. 22. Patent Owner does not dispute Petitioner’s contention, except to add that “a person may qualify as a POSITA with more education and less experience or vice versa.” PO Resp. 5. We apply Petitioner’s articulation of the level of ordinary skill in the art, as modified by Patent Owner, and further modified to omit “at least,” which expands the range of experience with no upper bound, thus encompassing a person of extraordinary skill in the art. We determine that the foregoing is consistent with the level of skill in the art at the time of the” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In an inter partes review, we apply the same claim construction standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We determine that no claim terms require express construction for purposes of resolving the controversy.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“The “at once envisage” standard does not permit us to fill in a missing claim limitation for purposes of anticipation. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 851 F.3d 1270, 1274 (Fed. Cir. 2017). Petitioner invites the same error the Federal Circuit identified in Nidec, where the Board erred by holding that “anticipation can be found even when a prior art reference fails to disclose a claim element so long as a skilled artisan reading the reference would ‘at once envisage’ the claimed arrangement.” Id. (citing Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015)). As our reviewing court explained, “Kennametal does not stand for the proposition that a reference missing a limitation can anticipate a claim if a skilled artisan viewing the reference would ‘at once envisage’ the missing limitation.” Id.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Petitioner’s obviousness challenge relies on the same argument and evidence that it presents for anticipation of claim 1. Pet. 26 (section VII.A.1.iv addressing anticipation and the micro-controller limitation of claim 1); Pet. 50, 60, 71 (cross-referencing section VII.A.1.iv for obviousness challenge to independent claims 1, 10, and 18). The Petition presents reasons to combine Mieth and Balogh. Pet. 51–55. But Petitioner’s obviousness rationale does not modify Mieth’s load 20, which remains Pet. 52 (relying on “load 20 of Mieth” as part of the combination with Balogh). The Petition presents no rationale for modifying or replacing Mieth’s load 20 and presents no argument or evidence that it would have been obvious to modify Mieth’s circuit by adding or substituting a micro-controller. In short, the Petition and Holberg Declaration assert that the micro- controller limitation is expressly disclosed in Mieth and do not present or support any obviousness rationale for that limitation. Pet. 26, 50–55; Ex. 1007 ¶ 105. Petitioner presents a new theory of unpatentability in the Reply, arguing that “the differences between Mieth’s ‘load 20’ and the claimed micro-controller are such that the subject matter as a whole would have been obvious to a [POSITA].” Pet. Reply 11–19 (reformatted). More particularly, Petitioner argues that “a [POSITA] understands that a micro-controller is a typical type of load that could be substituted into and replace whatever type of load is being employed by Mieth.” Id. at 17 (citing Exs. 1012, 1014, 1022). The Petition does not present that argument.” slip op. at 23
Patent outcomesUS 9,584,021 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,584,021 - 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 - PTAB · Sep 27, 2024 · IPR2024-00672 · APJ Julia Heaney · IPR · Institution
The Board instituted review of claims 1–18 on all asserted grounds and granted Texas Instruments’ motion to join IPR2023-01243 in an understudy role.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage of the proceeding, we determine that the arguments and evidence of record favor Petitioner. Both parties agree that a downward-sloping gradient, as disclosed in Kawagoe, will create an electrical field with a force in a direction toward the substrate. See generally Prelim. Resp.; Ex. 1007, 16:7–9. Patent Owner does not meaningfully dispute that Kawagoe has a graded dopant concentration in an active region. See generally Prelim. Resp. Further, Patent Owner contradictorily stated during prosecution of the ’195 patent that a graded dopant concentration itself creates “a built-in electrical field that forces the movement of carriers in a particular direction” (Ex. 1016, 289–290) and is “the additional parameter for ensuring that all minority carriers are being moved in one direction” (id. at 290). In light of this evidentiary record, which at most presents a material issue of fact for resolution at trial, we determine Petitioner establishes a reasonable likelihood of prevailing in its challenge of claim 1. We decline to further discuss the parties’ arguments or resolve any disputed issues as to challenges based on Kawagoe on this preliminary record, because the trial in the 1243 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 1243 IPR affords the parties better opportunity to brief, argue, and develop evidence in support of their positions. Thus, for the same reasons stated in our Decision on Institution in the 1243 IPR, we determine the Petition here warrants institution.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“deficient because Kawagoe’s disclosure of graded dopant concentration teaches impeding carrier movement rather than aiding it, as required by claim element 1.5. Prelim. Resp. 13–14. Patent Owner relies on Kawagoe’s disclosure that the concentration gradient prevents electrons from entering the p-well. Id. at 14 (citing Ex. 1007, 16:7–11). Patent Owner further argues Kawagoe’s carriers are not in the active regions, as required by claim element 1.5. Id. at 14–16 (citing Ex. 1003 ¶ 91, n.5). At this stage of the proceeding, we determine that the arguments and evidence of record favor Petitioner. Both parties agree that a downward-sloping gradient, as disclosed in Kawagoe, will create an electrical field with a force in a direction toward the substrate. See generally Prelim. Resp.; Ex. 1007, 16:7–9. Patent Owner does not meaningfully dispute that Kawagoe has a graded dopant concentration in an active region. See generally Prelim. Resp. Further, Patent Owner contradictorily stated during prosecution of the ’195 patent that a graded dopant concentration itself creates “a built-in electrical field that forces the movement of carriers in a particular direction” (Ex. 1016, 289–290) and is “the additional parameter for ensuring that all minority carriers are being moved in one direction” (id. at 290). In light of this evidentiary record, which at most presents a material issue of fact for resolution at trial, we determine Petitioner establishes a reasonable likelihood of prevailing in its challenge of claim 1.” slip op. at 15
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“II. TIMELINESS OF PETITION UNDER 35 U.S.C. § 315(B) Pursuant to 35 U.S.C. § 315(b), “[a]n inter partes review may not be 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.” 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), included revisions to 35 U.S.C. §§ 102 and 103 that became effective in 2013, after the effective filing date of the challenged claims. See Ex. 1001, codes (22), (60). Therefore, we apply the pre-AIA versions of 35 U.S.C. §§ 102 and 103(a). 2 US 6,043,114, issued March 28, 2000 (Ex. 1007, “Kawagoe”). Petitioner asserts that Kawagoe is prior art under 35 U.S.C. § 102(b). Pet. 4. 3 US 6,163,877, issued December 19, 2000 (Ex. 1014, “Gupta”). Petitioner asserts that Gupta is prior art under 35 U.S.C. § 102(b). Pet. 5. 4 US 2003/0183856 A1, published October 2, 2003 (Ex. 1006, “Wieczorek”). Petitioner asserts that Wieczorek is prior art under 35 U.S.C. §§ 102(a),(e). Pet. 4. 5 Stanley Wolf and Richard N. Tauber, Silicon Processing for the VLSI Era, Vols. 1–4, Lattice Press (2000) (Ex. 1008, “Wolf”). Petitioner asserts that Wolf was published and publicly available no later than 2002, and is prior art under 35 U.S.C. § 102(b). Pet. 5 (citing Exs. 1012, 1013, 1036). Exhibit 1008 was submitted in four parts (A–D) and includes selected portions of Wolf. We cite to Wolf using its original page numbers and omit the exhibit part designations. 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. 18– 39. However, 35 U.S.C. § 315(b) also provides that the one-year time bar “shall not apply to a request for joinder under subsection (c).” See also 37 C.F.R. § 42.122(b). Because the Petition is accompanied by a timely request for joinder (Paper 2) to the instituted proceeding (IPR2023-01243), 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
“Patent Owner’s first argument is not persuasive because it is based on speculation that Petitioner “is trying to block settlement with any of these defendants unless [Patent Owner] also settles with” Petitioner. Opp. Mot. Join. 5. As discussed below, we determine that Patent Owner will not be prejudiced unduly by the joinder. Moreover, we note that even in a situation where the petitioner and patent owner in the proceeding to be joined had settled (Code200 v. Bright Data Ltd., IPR2022-00861, Paper 17 at 5 (PTAB July 25, 2022) (vacated)), the Director nevertheless vacated a decision to deny a motion for joinder. Code200 v. Bright Data Ltd., IPR2022-00861, Paper 18 at 7 (Office of the Director of the USPTO Aug. 23, 2022) (precedential); see also eBay, Inc. v. Lexos Media IP, LLC, IPR2024-00336, Paper 11 at 13–15 (PTAB Feb. 23, 2024). Patent Owner’s second argument is moot because Patent Owner’s Request for Director Review has been denied. 1243 IPR, Paper 43 (PTAB Apr. 24, 2024). Based on the facts and circumstances discussed above, we determine Petitioner has established good cause for joining the 1243 IPR. Specifically, we find that joining Petitioner to the 1243 IPR is unlikely to require any delay or modification to the scheduling order already in place for the 1243 IPR. 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). For the above reasons, we grant Petitioner’s Motion for Joinder and join Petitioner as a party to the 1243 IPR.” slip op. at 19
§ 103 obviousnessPatents in suitUS 10,510,842 - PTAB · Sep 18, 2024 · IPR2024-00603 · APJ Sheldon M Mcgee · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on claim 1 over Honermann and Cline.
RulingsInstitution decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Pet. 5–6 (citing Ex. 1003 ¶ 50). Petitioner further states “that more education could compensate for less experience and vice versa.” Id. at 6. Petitioner’s position is, therefore, consistent with Patent Owner’s proffered level of skill in the art which reflects less education and more experience in substantially the same fields. Specifically, Patent Owner asserts that such a skilled artisan “would have at least a bachelor’s degree in mechanical or automotive engineering and/or five or more years of experience in the automotive industry designing, developing, testing, and engineering automotive components or practical experience servicing, assembling, repairing, and/or developing internal combustion engines and/or engine oil filters.” Prelim. Resp. 4. On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985))). A more specific definition is not necessary for purposes of deciding whether to institute review. To the extent a more specific definition is required, however, we adopt Patent Owner’s definition because it is consistent with the disclosures of the asserted prior art references. We note, however, that we would reach the same conclusion under either parties’ definition.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that all non-“means” terms in the challenged claims should be afforded their plain and ordinary meaning, and that the “means” limitations recited in claims 1 and 15 should not be construed as means-plus- function terms pursuant to 35 U.S.C. § 112(6). Pet. 7. According to Petitioner, claims 1 and 15 include additional limitations that denote structure for those “means” limitations and furthermore do not recite a function corresponding to the recited means. Id. Patent Owner asserts that “the Board need not make a determination on claim construction in assessing whether to institute” trial. Prelim. Resp. 5. After review of the preliminary record, we determine that no claim terms require an express construction for purposes of institution. 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.’”).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“2. Advanced Bionics Prong One: whether “the same or substantially the same art or arguments previously were presented to the Office” As Petitioner acknowledges, a Japanese-language version of Yokoyama was cited in an IDS without an English translation. Pet. 19; Ex. 1002, 34 (indicating that an English translation was not provided by virtue of the absence of a checkmark in the “T” column on the far right of the PTO/SB/08a form).4 The Yokoyama reference relied on in the Petition (Ex. 1008) however, includes an English language translation of the text in 4 It is also not readily apparent that Patent Owner complied fully with the “Content Requirements for an Information Disclosure Statement” as set forth in MPEP § 609 in its IDS submission dated March 30, 2015. Specifically, § 609.04(a)(III) states that “[e]ach information disclosure statement must further include a concise explanation of the relevance . . . of the information listed that is not in the English language.” (italicized emphasis added, underlining in original); see also § 609.01 B.3 (stating this requirement). It does not appear that any concise explanation was filed with respect to either Japanese reference filed in the IDS. See Ex. 1002, 13–38 (IDS documents pertaining to Yokoyama reference); Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368, 1376 (Fed. Cir. 2000) (“[A]lthough MPEP Section 609[] allows the applicant some discretion in the manner in which it phrases its concise explanation, it nowhere authorizes the applicant to intentionally omit altogether key teachings of the reference.”). addition to the Drawings that also appear in the untranslated Japanese-language version of Yokoyama submitted during prosecution. Compare Ex. 1007 (containing Japanese text with Figures 1–7c), with Ex. 1008 (containing English text along with Figures 1–7c). As such, the Yokoyama reference relied on in the Petition––being in English––contains roughly ten pages of more readily discernible information than the Japanese-language version of this reference submitted during prosecution. Significantly, Petitioner relies on textual disclosure in the English-translated version of Yokoyama in its challenges. Pet. 28–51, 54, 58, 59 (citing Ex. 1008 repeatedly). Such English-translated disclosure was not previously before the Examiner. Ex. 1002, 13–38. In view of this additional disclosure before us in English, i.e., disclosure that was not presented previously to the Office, we find that the English translated version of Yokoyama relied on here (Ex. 1008) is not “the same or substantially the same art” that was previously presented to the Office (Ex. 1007).” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“discretionary denial, we must also consider whether the Petition presents compelling merits. IPR2022-01242, Paper 23 at 4–5. As set forth above, we have considered the circumstances and facts before us in view of Fintiv factors 1–5, and determine that: Factor 1 is neutral, Factor 2 weighs heavily against discretionary denial, Factor 3 is neutral, Factor 4 weighs against discretionary denial, and Factor 5 weighs in favor of discretionary denial. Factors 1–5, considered as a whole, collectively weigh against exercising discretion to deny institution. As such, we need not undertake a “compelling merits” analysis as set forth under CommScope. The Merits Even though we do not consider here whether the merits are “compelling,” we do consider the merits of the Petition under Fintiv factor 6. As set forth below, we determine that Petitioner has satisfied the reasonable likelihood standard for purposes of institution. Such satisfaction weighs further against discretionary denial of the Petition.” slip op. at 19
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 9,023,203 - Eden Park Illumination, Inc. / Larson Electronics LLC et al. v. S. Edward NeisterAll claims unpatentablePTAB · Sep 17, 2024 · IPR2023-00695 · APJ Julia Heaney · IPR · Final written decision
Claims 1–5 and 7–18 are unpatentable as obvious over Eckhardt and Sosnin.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had at least a bachelor’s degree in an engineering discipline such as biological, chemical, environmental, electrical, mechanical, and/or systems engineering, or an equivalent degree such as one in physics or similar subject matter.” Pet. 16 (citing Ex. 1003 ¶ 21). Petitioner further argues that “[s]uch a person would also have two to three years of work or research experience with UV disinfection technology and/or systems and would be familiar with the fundamentals of UV excimer lamps” but, “less education could be compensated by more experience and vice versa.” Id. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’951 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’951 patent and the” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“art references advanced in this Petition” but “[b]eyond these arguments, the challenged claims require no express construction to evaluate their patentability.” Pet. 16–17. After considering the arguments and information Petitioner presents, we determine that we do not need to expressly construe any terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner demonstrates by a preponderance of the evidence that a person of ordinary skill in the art would have had reasons to combine Eckhardt’s teaching of narrow spectrum UV light in the range of 220 to 310 nm to disinfect skin (Ex. 1004 ¶¶ 31, 69–70), with Sosnin’s teaching of a KrCl excimer lamp having a narrow band UV emission at 222 nm to kill bacteria (Ex. 1005, 320). In particular, Petitioner shows that a person of ordinary skill in the art would have wanted to obtain the benefits of Eckhardt’s teaching of disinfecting skin using any light source capable of sterilization or disinfection and would therefore have considered Eckhardt’s suggestion of using narrow spectrum UV light in combination with Sosnin’s disclosure of using germicidal excimer lamps within the range of wavelengths taught by Eckhardt. See KSR, 550 U.S. at 417 (stating that the “mere application of a known technique to a piece of prior art ready for the improvement” suggests obviousness). The teachings of both Eckhardt and Sosnin support Petitioner’s combination. In particular, both references teach using UV lamps with narrow bands or monochromatic emissions to sterilize surfaces. Eckhardt teaches “light source 7 may be any light source that emits light capable of sterilization or disinfection” and may be a UV light source such as a lamp that “may emit narrow spectrum light (e.g., a line spectrum) or broad spectrum light” including UVA, UVB, and UVC light. Ex. 1004 ¶ 31. Eckhardt also teaches flash light source 7a generates a flash sufficient for sterilization or disinfection and may be a xenon flash lamp having a wavelength in the range of 220 to 310 nm. Id. ¶¶ 43, 70. Additionally, Eckhardt teaches “[t]he sterilization/disinfection units previously described are designed to have a beneficial effect when used on bare skin.” Id. ¶ 69. Sosnin teaches using excimer lamps for sterilization and specifically discloses a KrCl lamp which generates photons having wavelengths of 222 nm. Ex. 1005, 320. We find that Eckhardt would have led a person of ordinary skill to consider using a 222 nm excimer lamp because that wavelength falls within the range of UV light (220–310 nm) suggested by Eckhardt, and the range known to provide disinfection. Ex. 1004 ¶ 70; Ex. 1005, 320 (describing “the high rate of bactericidal effect of excilamps”). We find that Eckhardt also supports Petitioner’s contention that it was within the knowledge of a person of ordinary skill in the art to use UV light in the range of 254 nm for disinfection, even though that wavelength presented safety concerns. Ex. 1004 ¶¶ 54, 56; see Pet. 25.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Based on the evidence before us, we determine that Petitioner has shown by a preponderance of evidence that the combination of Eckhardt and Sosnin discloses claim limitation [1A]. We find that Eckhardt’s disclosure of a lamp emitting sterilizing light in the range of 220 to 310 nm (Ex. 1004 ¶¶ 31, 43, 70), combined with Sosnin’s disclosure of irradiation of E. coli with a KrCl excimer lamp generating a 222 nm wavelength (Ex. 1005, 320, Fig. 3), which correspond to peak absorption wavelengths of DNA or RNA (Ex. 1003 ¶¶ 116–118), discloses limitation [1A]. [1B] Petitioner contends that the Eckhardt-Sosnin combination teaches “directing the photons to a substance or surface to be disinfected, whereby the photons are generated to destroy a plurality of chemical bonds within the proteins, DNA, or RNA of the microorganism,” as recited in limitation [1B]. Pet. 30. According to Petitioner, Eckhardt discloses directing light towards wound 1 and surrounding skin 3. Id. (citing Ex. 1003 ¶ 120; Ex. 1004 ¶¶ 31–32). Petitioner contends Sosnin teaches the photons destroy a plurality of chemical bonds within the DNA or RNA of the microorganism because it discloses using 222 nm radiation, “which intrinsically destroys proteins and the chemical bonds in the proteins associated with the DNA or RNA of the microorganism.” Id. (citing Ex. 1003 ¶ 121; Ex. 1005, 319– 321). Based on the evidence before us, we determine that Petitioner has shown by a preponderance of evidence that the combination of Eckhardt and Sosnin discloses claim limitation [1B]. We find that Eckhardt’s disclosure of directing sterilizing light in the range of 220 to 310 nm toward a surface to be disinfected (Ex. 1004 ¶¶ 31–33, 43, 70), combined with Sosnin’s disclosure of bacterial survival curves resulting from irradiation of E. coli with KrCl excimer lamps (Ex. 1005, 320, Fig. 3), discloses claim limitation [1B]. [1C] Petitioner contends that the combination of Eckhardt and Sosnin” slip op. at 16
Patent outcomesUS 11,246,951 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,246,951
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.