- Medtronic Corevalve LLC / Medtronic, Inc. v. Speyside Medical, LLCNo claims unpatentablePTAB · Aug 12, 2022 · IPR2021-00239 · APJ Patrick R Scanlon · IPR · Final written decision
The Board held that claims 1, 2, 5, 7–11, 13, 14, and 18–23 were not shown unpatentable because the combinations did not establish the claimed carrier-length limitation.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner submits that a person having ordinary skill in the art “would have had a minimum of either a medical degree and experience working as an interventional cardiologist or a Bachelor’s degree in bioengineering or mechanical engineering (or a related field) and approximately two years of professional experience in the field of prosthetic cardiovascular implants,” and “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 21–22 (citing Ex. 1002 ¶¶ 31–34). We adopted Petitioner’s proposed level of ordinary skill in the art in the Decision on Institution, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 9–10. In its Response, Patent Owner notes that it and its expert, Dr. Vesely, apply Petitioner’s level of ordinary skill in the art for the purposes of this proceeding. PO Resp. 20. Based on our review of the record before us, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Beyond addressing this new argument, we determine that we need not expressly construe any other claim term to resolve the parties’ disputes because doing so would have no effect on the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also 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 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Instead, we agree with Patent Owner that Leonhardt’s cylindrical end portions change in shape and length, at least to some degree, when stent 26 is expanded or collapsed. See PO Resp. 26–28. We also credit Dr. Vesely’s uncontroverted and well-reasoned testimony on this point. See Ex. 2004 ¶¶ 83–85. Furthermore, we agree that the Petition and Dr. Drasler rely 8 Patent Owner actually cites to Exhibit 2013, but this is an apparent typographical error because the quoted language appears in lines 20–22 on page 195 of Exhibit 2027. We note that the quoted testimony reiterates Dr. Drasler’s other testimony that “[t]he length of the Leonhardt device would be the length of the connecting bar plus the length of the stent components at each end of the connecting bar.” Ex. 2027, 195:11–14. solely on connecting bar 29 holding the cylindrical end portions a predetermined distance apart to support the assertion that the stent’s length is substantially equal in each configuration. See Pet. 46–47; Ex. 1002 ¶¶ 134– 137. As such, Petitioner has failed to explain the effect that the changes in Leonhardt’s cylindrical end portions have on the overall length of stent 26. Accordingly, we are not persuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that Leonhardt discloses “a length of the carrier element in the moveable configuration being substantially equal to or less than a length of the carrier element in the first expanded configuration.”” slip op. at 22
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“In view of the above, we are not persuaded on the complete record before us that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claim 1 is unpatentable over the combination of Leonhardt and Gabbay. Because we are not persuaded Petitioner has demonstrated sufficiently that the combination of Leonhardt and Gabbay renders claim 1 obvious, we need not reach Patent Owner’s assertions regarding objective indicia of nonobviousness.” slip op. at 24
Patent outcomesUS 8,377,118 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,377,118 - Best Buy Co., Inc. / Target Corporation et al. v. James L. DriessenAll claims unpatentablePTAB · Apr 15, 2022 · IPR2021-00198 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over NetPack, with Boyle additionally supporting claim 4’s scratch-off code limitation; alternate grounds were not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Petitioner’s proffered level of skill in the art because it appears consistent with the problems addressed in the ’052 patent. For example, the ’052 patent states the “invention is essentially retail point of sale for the Internet.” Ex. 1001, 4:21–22. This aligns with Petitioner’s proposed level of skill, which specifically requires working knowledge of such systems as opposed to Patent Owner’s assertion that experience in the prepaid card industry is required. The ’052 patent further describes the requirements for “Font Fingerprinting, hidden pixelization, concealed ASCII and non-visible/inaudible codification” and “ISO standard 10918” for delivery of images over the Internet. Id. at 5:64–67, 6:40–41; see also id. at 6:50–8:23 (describing the technical aspects of the invention), 9:44–46 (“Fig. 5 shows some examples of recording devices that are used or could be modified for use as the media delivery method, access CARD, or to deliver a small cookie-free-cache-back application.”), 9:51–54 (“[T]he CARD may also deliver a small amount of software code to run the mini-Application for Cookie Free Cache Back system.”). Based on this disclosure in the ’052 patent, we agree with Petitioner that a person of ordinary skill in the art would have had a degree in computer engineering or a related field as opposed to a degree in business or marketing, as Patent Owner asserts.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“After reviewing the evidence and argument presented by the parties, we determine that it is not necessary to resolve whether preselection is limited to seller side preselection only because, as discussed below in our analysis of claim 1, we find the prior art discloses preselection by the seller. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “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)).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“cards would be used, such as . . . the retail and backend computer systems and security mechanisms for selling cards and authorizing their use through a computer network, or details such as using scratch-off materials to conceal codes.” Pet. 18–19. Petitioner provides several reasons why a skilled artisan would have been motivated to implement “Boyle’s detailed teachings on retail sale of online access cards . . . into the NetPack system.” Id. at 19. First, Petitioner contends that “[g]iven the overlapping and complementary nature of these two references, a [skilled artisan] implementing the NetPack online access system would have quickly identified Boyle as providing relevant teachings.” Id. at 19–20 (citing Ex. 1003 ¶¶ 138–140, 144–250; Ex. 1004, 1). Second, Petitioner contends that, given NetPack’s lack of “express disclosure of certain implementation details,” a skilled artisan would have been motivated “to rely on and incorporate Boyle’s teachings for implementation details such as using computers to store prices for products, to record payments, and to authorize product downloads.” Id. at 20 (citing Ex. 1003 ¶ 141). Third, Petitioner contends that a skilled artisan “would have appreciated the benefits provided by certain aspects of Boyle, such as using a scratch-off label to conceal important information on a card ‘from public view prior to [a card] being sold’” and “would recognize the need to conceal the authentication information on a NetPack card from the public and naturally consider adopting a known and common method for doing so from Boyle.” Id. (citing Ex. 1003 ¶ 142; Ex. 1004, 6:31–7:3). Fourth, Petitioner contends that a skilled artisan “would have had a reasonable expectation of success in using Boyle’s teachings in NetPack” because “NetPack and Boyle describe highly-similar systems” and “by 1999 e-commerce was well known and used, and Boyle relied on many ‘well known’ aspects of e-commerce, such as webpages and authentication.” Id. (citing Ex. 1003 ¶ 143; Ex. 1004, 3:7–4:27, 12:14–20, 15:1–8, 15:26–32). Patent Owner does not address Petitioner’s stated reasons for combining the teachings of NetPack and Boyle or reasonable expectation of success. See PO Resp. 31–34. Based on our review of Petitioner’s contentions and evidence, we find Petitioner states reasons supported by a rational underpinning for combining the teachings of NetPack and Boyle.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“For the following reasons, we are persuaded by Petitioner’s contentions that NetPack’s Chat Pack is “preselected” under Patent Owner’s construction of that term. We make the following findings concerning the disclosure of NetPack. NetPack discloses a Chat Pack product available on a “Special Application Card.” Ex. 1005, Ex. A, 4 of 11. The Chat Pack product is described as “Send files to Anyone Without ‘E’ Mail.” Id. NetPack “makes it possible for Internet products and services to be purchased in a retail store” with one of “three discrete innovations.” Ex. 1005, Ex. A, 6 of 11. One of those innovations is “NetPack’s Special Application Package (SAP)™ [which] makes it possible for software manufactures, some book publishers, or other Internet products or services to be represented and purchased in a retail store environment and then later down loaded from the Internet.” Id. The SAP “will employ bar code inventory, theft control language, and magnetic terminal validation. A single bar code or terminal pass at the point of distribution will activate the product . . . . The card shall display the corresponding URL product description on the front and rear of the card.” Id. at 8 of 11. “In the retail store, [the] Special Application Package . . . can represent any specified value, product, or service.” Id. at 10 of 11. NetPack discloses that “the cards facilitate the ability to stock a large inventory of Internet deliverable software products or services with little or no investment.” Id. NetPack discloses “preselected” as required by claim 1 even under Patent Owner’s construction of “preselection,” which requires the seller to perform the preselection prior to the customer selecting the product for purchase. Chat Pack is sold as a Special Application card. The Special Application card “can represent any specified value, product, or service.” Ex. 1005, 10 of 11. In this case, Chat Pack is the specified product. Therefore, the Chat Pack product is preselected by the seller.” slip op. at 17
Patent outcomesUS 10,304,052 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,304,052 - Attends Healthcare Products, Inc. v. Paul Hartmann AGAll claims unpatentablePTAB · Feb 23, 2022 · IPR2020-01479 · APJ Neil T Powell · IPR · Final written decision
Claims 1–54 are unpatentable under §103 over combinations including Benning and Karami ’626, with additional references for certain claims.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Decision granting institution, we preliminarily adopted Petitioner’s unopposed proposal. Inst. Dec. 8–9. Patent Owner does not challenge Petitioner’s proposed level of ordinary skill and does not propose a level of ordinary skill. See generally PO Resp.; PO Sur-reply.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In our analysis of claims 1 and 34, we consider the parties’ dispute in view of Patent Owner’s reading of the claims and determine that Petitioner still shows that its proposed combination teaches or would have rendered obvious the above-quoted limitations. Thus, we determine that an express interpretation of these limitations is not necessary to resolve the parties’ dispute. Vivid Techs., 200 F.3d at 803 (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); Nidec Motor Corp., 868 F.3d at 1017 (citing Vivid Techs. in the context of an inter partes review). We also determine that no other claim term requires express interpretation. See id.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Taking these express teachings together, we determine that Karami ’626 provides factual support for Petitioner’s asserted motivation to use a film-nonwoven laminate like Karami ’626’s for Benning’s underlayer 30 because the film-nonwoven laminate would “improve adjustability by enabling fasteners like Karami ’626’s to ‘[e]ngage directly with any portion of [a diaper’s] nonwoven surface[s]’ to secure the diaper on a wearer.” Pet. 53–54 (alterations in original) (citing Ex. 1004 ¶ 40; Ex. 1012 ¶¶ 112– 113). Petitioner also contends that one of ordinary skill in the art would have been motivated to use Karami ’626’s film-nonwoven laminate for Benning’s underlayer 30 because Karami ’626’s film-nonwoven laminate would “provide a more comfortable and visually appealing cloth-like outer surface for Benning’s diaper.” Pet. 53 (citing Ex. 1004 ¶ 40; Ex. 1012 ¶¶ 112–113). Record evidence also supports Petitioner’s additional asserted motivation. Ex. 1012 ¶ 113; Ex. 1019, 1:55–2:32; Ex. 1023, 8:3–28; Ex. 1037 ¶ 60. Regarding whether these teachings are limited to Karami ’626’s T-shaped diaper, Karami ’626 expressly states that “absorbent article 10 is in the form of a T-shaped brief 12, although it may alternatively be in the form of a diaper 14 (as illustrated in FIGS. 9 and 10) or a pull-up 16 (as illustrated in FIG. 8)” and that “[t]he disposable article may be a diaper, a T-shaped brief, or a pull-up.” Ex. 1004 ¶¶ 35, 78. Karami ’626 also states that: Referring now to FIGS. 9 and 10, it will be appreciated by those skilled in the art that the same or analogous improvements in the fit, appearance and economy of diapers 14 according to the present invention, with tape tab or patch fastener elements 76 (adjacent opposed lateral edges of the back portion 20), may be realized.” slip op. at 43
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“In particular, we find that (1) Petitioner’s proposed level of ordinary skill in the art is consistent with the prior art of record, (2) Benning, Karami ’626, Miyamoto ’499, Jacobs, Anderson, and Fernfors teach or suggest all the limitations of claims 1–54, (3) one of ordinary skill in the art would have combined Benning, Karami ’626, and at least one of Miyamoto ’499, Jacobs, Anderson, and Fernfors with a reasonable expectation of success, and (4) no objective evidence of nonobviousness has been presented in relation to claims 1–54. Weighing these underlying factual determinations, a preponderance of the evidence persuades us that claims 1–54 of the ’249 patent are unpatentable over Benning and Karami ’626, and the same combination further modified by Miyamoto ’499, Jacobs, Anderson, or Fernfors. Arctic Cat, 876 F.3d at 1361.” slip op. at 62
Patent outcomesUS 8,771,249 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,771,249 - Attends Healthcare Products, Inc. v. Paul Hartmann AGAll claims unpatentablePTAB · Feb 22, 2022 · IPR2020-01477 · APJ Hyun J Jung · IPR · Final written decision
Claims 1–21 are unpatentable, primarily over Benning and Karami ’626, with additional claims held unpatentable over combinations including other references.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“preliminary finding regarding the level of ordinary skill in the art. Accordingly, we maintain and reaffirm that one of ordinary skill in the art “would have had a bachelor’s degree in chemistry, physics, mechanical, chemical, or process engineering, or a related degree and 2–3 years of experience designing diapers” and “would have been familiar with different diaper wing configurations (e.g., integral- and separate-wing), nonwoven materials, cloth-like backsheets, and hook-and-loop fastening systems.” Pet. 16–17; Inst. Dec. 7; Ex. 1012 ¶ 18. This level of skill in the art is consistent with the disclosure of the ’788 patent and the prior art of record.” slip op. at 9
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“K. Objective Indicia of Nonobviousness The parties do not rely on any objective indicia of nonobviousness for any of claims 1–21. See generally Pet.; PO Resp.; PO Sur-reply. “Once all relevant facts are found, the ultimate legal determination [of obviousness] involves weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. Above, based on full record before us, we provide our factual findings regarding (1) the level of ordinary skill in the art, (2) the scope and content of the prior art, (3) any differences between the claimed subject matter and the prior art, and (4) objective evidence of nonobviousness. In particular, we find that (1) Petitioner’s proposed level of ordinary skill in the art is consistent with the prior art of record, (2) Benning, Karami ’626, Miyamoto ’499, Kleinschmidt, Jacobs, Anderson, and Fernfors teach or suggest all the limitations of claims 1–21, (3) one of ordinary skill in the art would have combined Benning and Karami ’626, and Benning and Karami ’626 with at least one of Miyamoto ’499, Kleinschmidt, Jacobs, Anderson, and Fernfors with a reasonable expectation of success, and (4) no objective evidence of nonobviousness has been presented in relation to claims 1–21. Weighing these underlying factual determinations, a preponderance of the evidence persuades us that claims 1–21 of the ’788 patent are unpatentable over Benning and Karami ’626, and the same combination further modified by Miyamoto ’499, Kleinschmidt, Jacobs, Anderson, or Fernfors. Arctic Cat, 876 F.3d at 1361. M. Remaining Challenges” slip op. at 92
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Accordingly, after considering the full record in view of each party’s” slip op. at 62
Patent outcomesUS 8,152,788 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,152,788 - PTAB · Feb 8, 2022 · PGR2021-00103 · APJ Patrick R Scanlon · PGR · Institution
The Board instituted PGR on claims 1–28 and all petition grounds, finding the Luharuka, API 674, and Karassik challenge more likely than not to prevail on claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 324(a), a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” After considering the Petition and Patent Owner’s Preliminary Response, as well as all supporting evidence, we determine that Petitioner has satisfied the burden under 35 U.S.C. § 324(a) to show that it is more likely than not that at least one of the challenged claims is unpatentable.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“These arguments are not persuasive, however, because Patent Owner does not explain adequately how the disclosures of Oehring and Shampine are cumulative of the disclosure of Mu. In this case, the mere fact that 8 We note that Exhibit 2007 does not have ¶ 95 cited by Patent Owner. not mean necessarily that the references are cumulative of Mu. For instance, Petitioner relies on Mu for allegedly disclosing several claim limitations including “receiving a demand hydraulic horse power (HHP) signal,” “the first output power being in the range of approximately 70% to 100% of a maximum continuous power (MCP) level,” and “the second output power . . . being in the range of approximately 70% of the MCP level to approximately a maximum intermittent power (MIP) level.” Pet. 19–41. Patent Owner does not direct us to any disclosure in Oehring or Shampine that are cumulative of these alleged teachings in Mu. Accordingly, we do not agree with Patent Owner that either of Oehring or Shampine is cumulative of Mu. As such, we determine that Petitioner’s reliance on Mu does not involve the same or substantially the same art or arguments previously presented to the Office, and the first part of the Advanced Bionics framework is not satisfied with respect to Mu. And although Crowe is cited in the ’764 patent (see Ex. 1001, code (56)), Petitioner’s reliance on Crowe is minimal. The ground based on Mu and Crowe, thus, does not implicate § 325(d).” slip op. at 8
- Skill levelOther
“This dispute presents a factual issue best decided on a complete record. Accordingly, for purposes of the Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Lastly, on the current record, we disagree with Patent Owner’s argument that Mr. Marscher is not qualified to serve as an expert in this proceeding. See Prelim. Resp. 8. Mr. Marscher’s declaration and curriculum vitae show that he has extensive education and experience in relevant fields. Ex. 1003 ¶¶ 8–17; Ex. 1004.” slip op. at 11
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,815,764 - Phillips 66 v. Magēmā Technology, LLCInstitution deniedPTAB · Jan 21, 2022 · IPR2021-01173 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Weiss-based grounds teach or suggest the claimed residual marine fuel oil.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). 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 “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“D. Discretionary Denial Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution under Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Paper 15 (PTAB May 13, 2020) (precedential). Prelim. Resp. 12–31. Petitioner disagrees. Pet. 6–12. Because we deny institution based on the merits of Petitioner’s unpatentability arguments, we need not decide whether to exercise discretion to deny institution.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine we need not expressly construe any terms of the challenged claims at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 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))).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“feedstock HMFO and the product HMFO of the challenged claims, as Petitioner argues it does, Petitioner must show that Weiss ’974 teaches or suggests four facts: (1) the pre-hydrotreatment HSFO is a residual petroleum 10 Petitioner defines “HSFO” as being a “high-sulfur HMFO” and “LSFO” as being a “low-sulfur HMFO.” Pet. 1. product, (2) the pre-hydrotreatment HSFO is ISO-8217-compliant, (3) the post-hydrotreatment LSFO is a residual petroleum product, and (4) the posthydrotreatment LSFO is ISO-8217-compliant. Petitioner does not show all four of these facts sufficiently to demonstrate a reasonable likelihood of prevailing in showing that the challenged claims are anticipated by Weiss ’974 or obvious over the combination of Weiss ’974 and Weiss ’515.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,584,287 - Phillips 66 v. Magēmā Technology, LLCInstitution deniedPTAB · Jan 21, 2022 · IPR2021-01168 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–9 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“suggests four facts: (1) the pre-hydrotreatment HSFO is a residual petroleum product, (2) the pre-hydrotreatment HSFO is ISO-8217-compliant, (3) the post-hydrotreatment LSFO is a residual petroleum product, and (4) the posthydrotreatment LSFO is ISO-8217-compliant. Petitioner does not show all four of these facts sufficiently to demonstrate a reasonable likelihood of prevailing in showing that the challenged claims are anticipated by Weiss ’974.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine we need not expressly construe any terms of the challenged claims at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 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))).” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“E. Discretionary Denial Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (PTAB May 13, 2020) (precedential). Prelim. Resp. 11–32. Petitioner disagrees. Pet. 6–12. Because we deny institution based on the merits of Petitioner’s unpatentability arguments, we need not decide whether to exercise discretion to deny institution.” slip op. at 16
Claim constructionDiscretionary denialPatents in suitUS 10,308,884 - Phillips 66 v. Magēmā Technology LLCInstitution deniedPTAB · Jan 21, 2022 · IPR2021-01175 · APJ Brian D Range · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood that claims 1–4 were obvious over any asserted combination of references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claim on any asserted ground.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“feedstock HMFO and the product HMFO of the challenged claims, as Petitioner argues it does, Petitioner must show that Weiss ’974 teaches or suggests four facts: (1) the pre-hydrotreatment HSFO is a residual petroleum product, (2) the pre-hydrotreatment HSFO is ISO-8217-compliant, (3) the post-hydrotreatment LSFO is a residual petroleum product, and (4) the posthydrotreatment LSFO is ISO-8217-compliant. Petitioner does not show all four of these facts sufficiently to demonstrate a reasonable likelihood of prevailing in showing that the challenged claims are obvious over the combination of Weiss ’974, Weiss ’515, and ISO 8217:2017. Petitioner’s arguments show only that the fuel oil is a bunker fuel that complies with ISO 8217. See, e.g., Pet. 27, 47. These arguments alone are insufficient because ISO-8217-compliant bunker fuels can be either distillate-based or residual-based. Ex. 1003, 14–17; Ex. 1082 ¶ 29; Ex. 2007 ¶ 25. Thus, showing that a fuel is a bunker fuel or that a fuel complies with ISO 8217 does not show that the fuel is residual-based.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“D. Discretionary Denial Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (PTAB May 13, 2020) (precedential). Prelim. based on the merits of Petitioner’s unpatentability arguments, we need not decide whether to exercise discretion to deny institution.” slip op. at 16
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,533,141 - Phillips 66 v. Magēmā Technology, LLCInstitution deniedPTAB · Jan 21, 2022 · IPR2021-01174 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 4, or 5 were unpatentable on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). 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 “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We are not persuaded that Petitioner has shown sufficiently that a person of ordinary skill in the art would have found it obvious to use Buchanan’s blending units to carry out Parkash’s blending process to produce any of HSFO1, HSFO2, or HSFO3. First, paragraph 40 of Buchanan teaches blending a generic “residual fuel product” with a generic “distillate fuel oil product” in order “to form a homogeneous final blended fuel oil product.” Ex. 1049 ¶ 40. Petitioner does not explain why a person of ordinary skill in the art would have considered Buchanan’s generic blending teachings to apply to the production of the specific fuel oils Petitioner identifies as HSFO1, HSFO2, and HSFO3. Second, to the extent that Petitioner contends that Buchanan’s teaching applies to any mixture of two fuel oils, one residual and one distillate, we note that Parkash teaches blending multiple process streams, including several distillate streams and at least two residual streams. Ex. 1102, 14. Petitioner does not explain why a person of ordinary skill in the art would have considered Buchanan’s two-stream blending unit to apply to Parkash’s multi-stream blending process. Third, Petitioner’s statement that “it would have been obvious to employ ‘[a]ny blending process as known by a [POSITA]’” in carrying out Parkash’s blending method is conclusory. Pet. 67. “[A] finding of obviousness at the time of invention requires a ‘plausible rational[e] as to why the prior art references would have worked together.’” Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1335 (Fed. Cir. 2013) (quoting Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1352 (Fed. Cir. 2010)). In other words, Petitioner must provide “some articulated reasoning with some rational underpinning” to combine the known elements in the manner required in the claim at issue. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). A conclusory statement without supporting evidence or rationale does not provide the requisite reasoning. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”).” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“D. Discretionary Denial Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (PTAB May 13, 2020) (precedential). Prelim. Resp. 10–30. Petitioner disagrees. Pet. 7–13. Because we deny institution based on the merits of Petitioner’s unpatentability arguments, we need not decide whether to exercise discretion to deny institution.” slip op. at 21
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,604,709 - LG Electronics, Inc. And LG Electronics U.S.A., Inc. v. Gesture Technology Partners, LLCInstitution deniedPTAB · Jan 13, 2022 · IPR2021-01255 · APJ Brent M Dougal · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was obvious, including because the asserted combination did not teach recording the original acquired image.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“point] is clear and unambiguous.” Id. at 7. And that based on a plain reading of the claim, “the image” in the step of “recording by the computer, . . . , of the image,” refers back to and has antecedent support from “an image” in the step of “acquiring an image . . . with said at least one digital camera,” as opposed to the “processed image” also discussed in the claim.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(‘POSITA’) at the time [of the invention] would have had a bachelor’s degree in electrical engineering, computer engineering, computer science or similar field, and two to three years of experience in image and video capture, or the equivalent” and that “a person with more technical education but less experience, would also meet the relevant standard for POSITAs.” Pet. 6 (citing Ex. 1003 ¶¶ 23–25). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. Prelim. Resp. 4. We are persuaded, on the present record, that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’530 patent and prior art of record. We adopt this definition for the purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Neither party provides any express claim constructions. See Pet. 6; Prelim. Resp. 4. We agree that no terms require express construction at this stage. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms that are in (internal quotation omitted).” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“point] is clear and unambiguous.” Id. at 7. And that based on a plain reading of the claim, “the image” in the step of “recording by the computer, . . . , of the image,” refers back to and has antecedent support from “an image” in the step of “acquiring an image . . . with said at least one digital camera,” as opposed to the “processed image” also discussed in the claim.” slip op. at 13
Claim construction§ 103 obviousnessPatents in suitUS 7,804,530
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.