- Corning Incorporated v. Panduit Corp.Institution deniedPTAB · Sep 16, 2019 · IPR2019-00776 · APJ Debra L Dennett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–4 obvious over any of the three asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). We may not institute an inter partes review “unless . . . 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). Applying that standard, and upon considering the information presented in the Petition and the Preliminary Response, we determine Petitioner does not show a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claims. Accordingly, we do not institute an inter partes review as to claims 1–4 of the ’115 patent.” slip op. at 2
- BurdenNot shown unpatentable
“On this record, we agree with Patent Owner that Petitioner fails to set forth a sufficient basis as to how an ordinarily skilled artisan would have arrived at the choosing step from Abbott’s disclosures and the knowledge of a POSITA, relying instead on conclusory statements from Dr. Ralph to bridge the gaps in Abbott. As Patent Owner highlights, and Dr. Ralph acknowledges, Abbott does not explicitly disclose that its MMF must be chosen based on the criterion in claim 1, i.e., choosing optical fibers in which the result of subtracting the pulse delay at the first radius from the pulse delay at the second radius is a negative number. Prelim. Resp. 14; Ex. 1005 ¶ 252 (“Abbott does not explicitly teach choosing multimode optical fibers on the specific basis of calculating a negative DMD slope (or shift).”). Although Petitioner argues that such a choosing step would have been obvious, Petitioner does not direct us to sufficient evidence to support that argument.” slip op. at 20
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“On this record, we agree with Patent Owner that Petitioner fails to set forth a sufficient basis as to how an ordinarily skilled artisan would have arrived at the choosing step from Abbott’s disclosures and the knowledge of a POSITA, relying instead on conclusory statements from Dr. Ralph to bridge the gaps in Abbott. As Patent Owner highlights, and Dr. Ralph acknowledges, Abbott does not explicitly disclose that its MMF must be chosen based on the criterion in claim 1, i.e., choosing optical fibers in which the result of subtracting the pulse delay at the first radius from the pulse delay at the second radius is a negative number. Prelim. Resp. 14; Ex. 1005 ¶ 252 (“Abbott does not explicitly teach choosing multimode optical fibers on the specific basis of calculating a negative DMD slope (or shift).”). Although Petitioner argues that such a choosing step would have been obvious, Petitioner does not direct us to sufficient evidence to support that argument.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“Moreover, although Petitioner argues that it would have been obvious for a POSITA to have chosen a MMF on the basis of calculating a negative DMD slope given Abbott’s disclosure, we agree with Patent Owner that Petitioner’s showing falls short on this record. Specifically, Petitioner does not direct us to a teaching or suggestion in Abbott of choosing a MMF based on the negative slope or DMD shift. Rather, Petitioner’s argument that “it would have been obvious to a POSITA to choose for use in a communications network those optical fibers in which the results of subtracting the pulse delay at the first radius from the pulse delay at the second radius is a negative number in order to obtain the optimized MMF described in Abbott (Pet. 42), appears to be the product of hindsight, coupled with Dr. Ralph’s conclusory testimony that the choosing step would have been obvious in view of Abbott’s teaching that its new MMF “has a variety of uses in the telecommunication industry.” Ex. 1005 ¶ 252 (quoting Ex. 1006, 4:1–6); see Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016) (in reaching a conclusion on obviousness, “the court must avoid ‘hindsight bias and must be cautious of arguments reliant upon ex post reasoning’” (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (a lack of objective support for expert opinion “may render the testimony of little probative value in a validity determination”); 37 C.F.R. § 42.65(a) (opinion testimony that does not disclose underlying facts “is entitled to little weight”). Accordingly, we determine that Petitioner fails to show a reasonable likelihood of prevailing in its assertion that claim 1 of the ’115 patent would have been obvious over Abbott and a POSITA’s knowledge.” slip op. at 22
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,488,115 - Corning Incorporated v. Panduit Corp.Institution deniedPTAB · Sep 16, 2019 · IPR2019-00775 · APJ Michelle N Ankenbrand · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–4 were unpatentable as obvious over any of the three asserted combinations.
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). We may not institute an inter partes review “unless . . . 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). Applying that standard, and upon considering the information presented in the Petition and the Preliminary Response, we determine Petitioner does not show a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claims. Accordingly, we do not institute an inter partes review as to claims 1–4 of the ’027 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“ordinary skill in the art at the time of the invention of the ’027 patent would have “a working knowledge of fiber optic systems, a bachelor’s degree in Engineering or Physics or equivalent coursework, and approximately two years of professional experience or graduate studies involving optical fiber data transmission.” Pet. 15–16 (citing Ex. 1005 ¶ 20). At this stage of the proceeding, Patent Owner does not propose a definition for the level of ordinary skill in the art, or otherwise dispute Petitioner’s definition. See generally Prelim. Resp. Petitioner’s definition appears consistent with the level of ordinary skill in the art reflected in the prior art, and we apply it for purposes of this decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). Further, based on the information presented at this stage of the proceeding, we consider Petitioner’s declarant, Dr. Ralph, qualified to opine from the perspective of an ordinary artisan at the time of the invention. See Ex. 1005 ¶¶ 5–11 (Dr. Ralph’s background and qualifications); Ex. 1036 (Dr. Ralph’s curriculum vitae).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“282(b).” 37 C.F.R. § 42.100(b) (2018).7 Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Furthermore, at this stage in the proceeding, we expressly construe the claims only to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner proposes that we construe the term “peak delay” recited in claim 1 of the ’027 patent. Pet. 14–15. Patent Owner does not challenge Petitioner’s proposed construction, but reserves the right to do so “at a later time.” Prelim. Resp. 10. Our resolution of the parties’ disputes does not turn on our interpretation of the term “peak delay.” Accordingly, it is not necessary to construe that term for purposes of this decision.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“forth a sufficient basis as to how an ordinarily skilled artisan would have arrived at the choosing step from Abbott’s disclosures and the knowledge of a POSITA, relying instead on conclusory statements from Dr. Ralph to bridge the gaps in Abbott. As Patent Owner highlights, and Dr. Ralph acknowledges, Abbott does not explicitly disclose that its MMF must be chosen based on the criterion in claim 1, i.e., choosing optical fibers in which the result of subtracting the peak delay at the first radius from the peak delay at the second radius is a negative number. Prelim. Resp. 13; Ex. 1005 ¶ 164 (“Abbott does not explicitly teach choosing multimode optical fibers on the specific basis of calculating a negative DMD slope (or shift).”). Although Petitioner argues that such a choosing step would have been obvious, Petitioner does not direct us to sufficient evidence to support that argument. For example, Petitioner argues that “[a]s exhibited by Figures 2 and 3 of Abbott, the preferred embodiment of Abbott would always have a negative DMD slope when measured at a 850 nm wavelength.” Pet. 43 (emphasis added). Dr. Ralph testifies similarly. Ex. 1005 ¶ 162 (“As exhibited by Figures 2 and 3 of Abbott, the preferred embodiment of Abbot would always have a negative DMD slope when measured at a 850 nm wavelength.”). However, as Patent Owner highlights with its annotation to Figure 2, some portion of Figure 2 has an upward or positive slope. Prelim. Resp. 14; see Ex. 1006, 9:44–46 (explaining that the slope is upward or positive in a certain region of the DMD curve). And Petitioner does not explain how Abbott’s Figure 3, which depicts a DMD curve at a 1300 nm wavelength, supports its negative DMD slope argument.11 See Pet. 43. Thus, the record does not support Petitioner’s assertion that Abbott’s Figures 2 and 3 show that Abbott’s DMD slope would “always” be negative. 11 Like Figure 2, Figure 3 also has a positive slope in a certain region of the DMD curve, as Patent Owner’s annotation to the figure indicates. See Prelim. Resp. 14; Ex. 1006, Fig. 3. Moreover, although Petitioner argues that it would have been obvious for a POSITA to have chosen a MMF on the basis of calculating a negative DMD slope given Abbott’s disclosure, we agree with Patent Owner that Petitioner’s showing falls short on this record. Specifically, Petitioner does not direct us to a teaching or suggestion in Abbott of choosing a MMF based on the negative slope or DMD shift. Rather, Petitioner’s argument that “Abbott teaches the desirability of optical fibers exhibiting a negative DMD slope in telecommunications systems” (Pet. 44), appears to be the product of hindsight, coupled with Dr. Ralph’s conclusory testimony that the choosing step would have been obvious in view of Abbott’s teaching that its new MMF “has a variety of uses in the telecommunication industry.” Ex. 1005 ¶ 164 (quoting Ex. 1006, 4:1–6); see Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016) (in reaching a conclusion on obviousness, “the court must avoid ‘hindsight bias and must be cautious of arguments reliant upon ex post reasoning’” (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (a lack of objective support for expert opinion “may render the testimony of little probative value in a validity determination”); 37 C.F.R. § 42.65(a) (opinion testimony that does not disclose underlying facts “is entitled to little weight”).” slip op. at 23
Claim construction§ 103 obviousnessPatents in suitUS 8,351,027
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.