• Chongqing HKC Optoelectronics Technology Co., Ltd. v. 138 East LCD Advancements LimitedInstitution denied
  PTAB · Aug 28, 2023 · IPR2023-00475 · APJ Wesley B Derrick · IPR · Institution

  Institution was denied because the petition did not sufficiently show that the counter-electrode potential line was one of the claimed main wiring lines coupled to peripheral driving circuits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) as the evidence that supports the grounds for the challenge to each claim’”). When challenging claims based on obviousness, the Petitioner must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (citations omitted). The burden of persuasion, whether for anticipation or for unpatentability for obviousness, never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. See Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in the art “would have either a bachelor’s degree in electrical or computer engineering with three years of experience in the field of display technology or a master’s degree with one year of experience in the field of display technology.” Pet. 8 (citing Ex. 1002 ¶¶ 38‒41). Patent Owner, “[f]or purposes of th[e]” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “5. Analysis Claim 1 recites “in a peripheral region of the image display region on the element substrate, a plurality of external circuit connection terminals, a plurality of main wiring lines . . . and peripheral driving circuits.” Ex. 1001, 21:55‒60. The plain and ordinary meaning of this phrase includes that the plurality of main wiring lines and peripheral driving circuits are formed on the element substrate. Claim 1 further recites, for the main wiring lines, “each having one end coupled to each of the plurality of external circuit connection terminals, and peripheral driving circuits coupled to the other ends of the main wiring lines.” Id. at 21:57‒59. The plain and ordinary meaning of this phrase is that each main wiring line is connected at one end to an external circuit connection terminal and, at the other end, to the peripheral driving circuits; this is how Petitioner addresses “a plurality of main wiring lines” as to this portion of claim 1 in accordance with the plain and ordinary meaning. Pet. 15 (“Figure 4 shows wiring lines coupled to the external connection terminals 102 at one end and coupled to peripheral circuits, including data line driving circuit 101, and scanning line driving circuit 104, at the other.”); see also Ex. 1002 ¶ 59. Petitioner and its driving circuit 104 as peripheral circuits. Pet. 15‒16 (citing Ex. 1005 ¶¶ 1, 78‒80, Fig. 4; reproducing Fig. 4 without annotation); Ex. 1002 ¶¶ 56‒59.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Petitioner fails, however, to address the clause, “which is at least one of the plurality of main wiring lines,” and the implication that follows from the plain language of the claim. Id. Specifically, as set forth above, the “plurality of main wiring lines” are coupled at one end to peripheral circuits, and Petitioner provides no basis for the wiring 400 (LCCOM) to be coupled to any element identified by Petitioner as a peripheral circuit. Id. at 15‒17 (identifying data line driving circuit 101 and scanning line driving circuit 104 as peripheral circuits). Rather, Petitioner sets forth that wiring 400 (LCCOM) “supplies potential from the external input terminal 102 to the vertical conduction terminal 106 and then to the counter electrode 21 on the counter substrate 20.” Id. at 17 (citing Ex. 1005 ¶ 85, Figs. 3, 4; Ex. 1002 ¶¶ 63‒65). Further, to the extent Petitioner states that Muraide “discloses a counter electrode provided in the peripheral region on a counter substrate that is arranged to face the element substrate” (id. at 16 (citing Ex. 1005 ¶ 41; Ex. 1002 ¶¶ 60‒62)), Petitioner does not clearly identify the counter electrode as a peripheral circuit (id.) and, further, the counter electrode on the counter substrate is not a peripheral driving circuit on the element (“in a peripheral region of the image display region on the element substrate, . . . peripheral driving circuits” (emphasis added))). Accordingly, on this record, we determine that Petitioner fails to sufficiently establish “a counter electrode potential line that supplies counter electrode potential to the counter electrode, which is at least one of the plurality of main wiring lines.” Although Patent Owner did not clearly raise this particular issue, “[i]n an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3)). The burden of persuasion, whether for anticipation or for unpatentability for obviousness, never shifts to Patent Owner. See Dynamic Drinkware, 800 F.3d at 1378. Further, our role is not to remedy the deficiencies in Petitions that fall short. Sirona Dental Sys. GMBH v. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018) (quoting SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356–57 (2018)) (explaining that because “‘the petitioner’s contentions, not the Director’s discretion, define the scope . . . [,]’ [i]t would thus not be proper for the Board to deviate from the grounds in the petition and raise its own obviousness theory” “institut[ing] a different inter partes review”); cf. Magnum Oil Tools, 829 F.3d at 1380–81 (rejecting an argument that the Board properly “ma[de] an obviousness argument on behalf of [petitioner]” that “could have been included in a properly-drafted petition,” because “petitioner . . . bears the burden of proof”).” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,116,390
• Motif Foodworks, Inc. v. Impossible Foods Inc.Institution denied
  PTAB · Aug 7, 2023 · IPR2023-00322 · APJ Kimberly Mcgraw · IPR · Institution

  The Board denied institution on all grounds because Petitioner did not show a reasonable likelihood that any challenged claim was obvious.

  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). 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.” 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) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “sufficiently shown why a POSITA would have been motivated to produce a nucleic acid that encodes both (1) a heme-containing protein operably linked to a promoter element as well as (2) a Mxr1 transcriptional activator sequence as required by claim element 1[a] with a reasonable expectation of success.” slip op. at 11

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “G. Discretion under 35 U.S.C. § 325(d) Patent Owner requests that the Board exercise its discretion under 35 U.S.C. § 325(d) to deny institution because the same or substantially the same prior art or arguments were previously presented to the Office. Prelim. Resp. 22. Because we deny institution on the merits, we do not reach Patent Owner’s § 325(d) argument.” slip op. at 18

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 10,273,492
• Motif Foodworks, Inc. v. Impossible Foods Inc.Institution denied
  PTAB · Aug 7, 2023 · IPR2023-00321 · APJ Kimberly Mcgraw · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner failed to show a reasonable likelihood of prevailing on any asserted § 103 ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “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) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “Moreover, Petitioner does not articulate a sufficient reasonable basis as to why a POSITA would have sought to create a single nucleic acid encoding both a transcriptional activator such as Mxr1 as well as a second exogenous nucleic acid. Rather, Petitioner’s arguments and evidence are directed to the general concept of providing a vector that encodes more than one gene of interest and do not address why one of the genes would encode a transcription factor, let alone a transcription factor such as Mxr1. Dr. Batt does identify some benefits from using a single vector to express “more than one heterologous gene sequence,” including (1) increased efficiency (i.e., only one transformation to introduce multiple heterologous gene sequences into a host cell) and (2) increased control (as use of such constructs affords a POSITA more control over the levels of the different gene’s respective expression levels, as double transfection events may lead to different levels of vector incorporation in a cell). See Ex. 1003 ¶ 128. Dr. Batt, however, does not provide any explanation as to how these benefits apply to a nucleic acid sequence encoding transcription factors such Mxr1. See e.g., id. ¶¶ 126–131 (discussing creation of a single expression vector comprising multiple gene sequences of interest, but providing no discussion of genes encoding transcription factors). Thus, Petitioner has not sufficiently shown 4 Sambrook was not provided as an Exhibit. Thus, it is unclear what particular “ample teachings” in Sambrook Petitioner relies upon.” slip op. at 13

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “G. Discretion under 35 U.S.C. § 325(d) Patent Owner requests that the Board exercise its discretion under 35 U.S.C. § 325(d) to deny institution because the same or substantially the same prior art or arguments were previously presented to the Office. Prelim. Resp. 43–48. Because we deny institution on the merits, we do not reach Patent Owner’s § 325(d) argument.” slip op. at 26

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 10,689,656
• Motif Foodworks, Inc. v. Impossible Foods, Inc.Institution denied
  PTAB · Jun 16, 2023 · IPR2023-00209 · APJ Jeffrey W Abraham · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the 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 (2018); 37 C.F.R. § 42.4(a) (2022). 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.” For the reasons set forth below, we determine the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have had “(i) a Bachelor of Science degree in food sciences, biology, chemistry, microbiology, or a related discipline, and (ii) a Master’s degree or Ph.D. in food science or at least three years of experience working as a food scientist.” Pet. 5. Petitioner also asserts that a person of ordinary skill in the art could be “part of a team of food scientists, including flavor chemists.” Pet. 5 (citing Ex. 1003 ¶¶ 34–36; Ex. 1005 ¶¶ 82–83; Ex. 1007 ¶ 39). Patent Owner does not challenge Petitioner’s definition or offer its own. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’306 patent and the prior art. 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)).” slip op. at 7

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

    “Petitioner argues that the preamble of the challenged claims should not be found limiting, that the term “thereby imparting a beef-like aroma to the meat replica matrix” should not be limiting, and that the term “matrix” should be given its plain and ordinary meaning. Pet. 9–11. Petitioner also states that “[i]n parallel litigation, [Patent Owner] asserts that ‘no animal products’ covers bovine myoglobin, which is native to an animal (Bos taurus (cow)), even when produced in engineered yeast.” Pet. 11 (citing Ex. 1116 if the Board adopts Patent Owner’s infringement interpretation advanced in the parallel litigation. Pet. 11. Patent Owner disagrees that the preamble of the challenged claims and the term “thereby imparting a beef-like aroma to the meat replica matrix” are not limiting. PO Resp. 5–7. After considering the arguments and information presented in the Petition and Preliminary Response, 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 8

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

    “record, we are not persuaded by Petitioner’s arguments that a person of ordinary skill in the art would have added Mottram’s precursors (e.g., cysteine/ribose) to Conrad’s grain/wheat meat in order to improve the “meaty flavor” and enhance the “meat-like” qualities of Conrad’s products. Conrad already addresses concerns regarding taste improvement of its grain/wheat meat by adding animal blood/hemoglobin to its product. Ex. 1013, 4:14–16. In addition, Conrad’s grain/wheat meat is intended to be mixed with actual meat, which, as Petitioner acknowledges, already contains cysteine and ribose. Ex. 1013, code (57), 1:32–40, 4:45–49, 5:23–41; Pet. 21. It is undisputed that these components present in actual meat enhance the meat-like aroma of products. Pet. 21; Prelim. Resp. 14. These facts undermine Petitioner’s assertion that a person of ordinary skill in the art would have looked to a different reference (i.e., Mottram) to add these same precursors to Conrad’s products. Furthermore, we agree with Patent Owner that Petitioner’s motivation to combine Mottram and Conrad is driven by hindsight. As Petitioner acknowledges, Conrad teaches that a suspended aqueous phase containing soluble proteins, salts, and sugars, is separated from its grain/wheat meat during manufacturing. Pet. 22–23; Ex. 1013, 2:1–46. Conrad explains that “[t]he suspended aqueous phase of starch granules can be used directly in the production of glue or in the production of sugars by hydrolysis in a way known per se.” Ex. 1013, 2:21–24. Conrad does not disclose adding the suspended aqueous phase, or any of its components, back into the grain/wheat meat. Nevertheless, Petitioner argues that a person of ordinary skill in the art would have added materials similar to those that were just removed from Conrad’s product back into it. This approach is the fact that the materials Petitioner suggests adding back into Conrad’s products correspond to the specific compounds recited in the claim further demonstrates that hindsight is driving Petitioner’s arguments. For all of these reasons, we are not persuaded by Petitioner’s argument that a person of ordinary skill in the art would have had reason to combine the teachings of Conrad and Mottram to arrive at the invention recited in independent claims 1, 14, and 27. Accordingly, we determine Petitioner has failed to establish a reasonable likelihood of prevailing on its challenge that claims 1, 14, and 27 are unpatentable as obvious in view of Conrad and Mottram, further in view of Crane or Proulx.” slip op. at 13

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,039,306
• Motif Food Works, Inc. v. Impossible Foods, Inc.Institution denied
  PTAB · Jun 16, 2023 · IPR2023-00208 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “argument that a person of ordinary skill in the art would have had reason to combine the teachings of Conrad and Mottram to arrive at the invention recited in independent claims 1 and 13. Accordingly, we determine Petitioner has failed to establish a reasonable likelihood of prevailing on its challenge that claims 1 and 13 are unpatentable as obvious in view of Conrad and Mottram, and further in view of Crane or Proulx. b) Dependent Claims 3–12 and 15–23 Claims 3–12 depend from independent claim 1, and claims 15–23 depend from independent claim 13. For its challenges of these claims, Petitioner relies on the arguments presented for independent claims 1 and 13. See, e.g., Pet. 30 (reciting “As explained above (claim 1)” in its analysis of claims 3 and 15), 44. Nothing in Petitioner’s analysis of the additional references relied upon for its challenges of the dependent claims cures the deficiencies discussed above regarding the proposed combination of Conrad and Mottram. Therefore, for the same reasons discussed above for independent claims 1 and 13, we determine Petitioner has failed to establish a reasonable likelihood of prevailing on its challenge that claims 3–12 and 15–23 are unpatentable as obvious in view of Conrad and Mottram, further in view of Crane, Proulx, and Boye.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had “(i) a Bachelor of Science degree in food sciences, biology, chemistry, microbiology, or a related discipline, and (ii) a Master’s degree or Ph.D. in food science or at least three years of experience working as a food scientist.” Pet. 5. Petitioner also asserts that a person of ordinary skill in the could be “part of a team of food scientists, including flavor chemists.” Id. (citing Ex. 1003 ¶¶ 34–36; Ex. 1005 ¶¶ 82–83; Ex. 1007 ¶ 39). Patent Owner does not challenge Petitioner’s definition or offer its own. Prelim. Resp. 1–61. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’250 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 ’250 patent and the prior art. 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)).” slip op. at 7

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

    “After considering the arguments and information presented in the Petition and Preliminary Response, 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 9

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

    “record, we are not persuaded by Petitioner’s arguments that a person of ordinary skill in the art would have added Mottram’s precursors (e.g., cysteine/ribose) to Conrad’s grain/wheat meat in order to improve the “meaty flavor” and enhance the “meat-like” qualities of Conrad’s products. Conrad already addresses concerns regarding taste improvement of its grain/wheat meat by adding animal blood/hemoglobin to its product. Ex. 1013, 4:14–16. In addition, Conrad’s grain/wheat meat is intended to be mixed with actual meat, which, as Petitioner acknowledges, already contains cysteine and ribose. Ex. 1013, code (57), 1:32–40, 4:45–49, 5:23–41; Pet. 19. It is undisputed that these components present in actual meat enhance the meat-like aroma of products. Id.; Prelim. Resp. 14. These facts undermine Petitioner’s assertion that a person of ordinary skill in the art would have looked to a different reference (i.e., Mottram) to add these same precursors to Conrad’s products. Furthermore, we agree with Patent Owner that Petitioner’s motivation to combine Mottram and Conrad is driven by hindsight. As Petitioner acknowledges, Conrad teaches that a suspended aqueous phase containing soluble proteins, salts, and sugars, is separated from its grain/wheat meat during manufacturing. Pet. 20; Ex. 1013, 2:1–46. Conrad explains the “[t]he suspended aqueous phase of starch granules can be used directly in the production of glue or in the production of sugars by hydrolysis in a way known per se.” Ex. 1013, 2:21–24. Conrad does not disclose adding the suspended aqueous phase, or any of its components, back into the grain/wheat meat. Nevertheless, Petitioner argues that a person of ordinary skill in the art would have added the materials that were just removed from Conrad’s product back into it. This approach is counterintuitive and indicative of reasoning based on hindsight. Moreover, the fact that the materials Petitioner suggests adding back into Conrad’s products correspond to the specific compounds recited in the claim further demonstrates that hindsight is driving Petitioner’s arguments. For all of these reasons, we are not persuaded by Petitioner’s argument that a person of ordinary skill in the art would have had reason to combine the teachings of Conrad and Mottram to arrive at the invention recited in independent claims 1 and 13. Accordingly, we determine Petitioner has failed to establish a reasonable likelihood of prevailing on its challenge that claims 1 and 13 are unpatentable as obvious in view of Conrad and Mottram, and further in view of Crane or Proulx.” slip op. at 13

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,013,250
• Motif Food Works, Inc. v. Impossible Foods, Inc.Institution denied
  PTAB · Jun 16, 2023 · IPR2023-00207 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). 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.” For the reasons set forth below, we determine the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had “(i) a B.S. degree in food sciences, biology, chemistry, microbiology, or a related discipline, and (ii) a Master’s degree or Ph.D. in food science or at least three years of experience working as a food scientist.” Pet. 12. Petitioner also asserts that a person of ordinary skill in the could be “part of a team of food scientists, including flavor chemists.” Id. at 12–13 (citing Ex. 1003 ¶ 37; Ex. 1005 ¶¶ 82–83; Ex. 1007 ¶¶ 24–25). Patent Owner does not challenge Petitioner’s definition or offer its own. Prelim. Resp. 1–52. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’241 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 ’241 patent and the prior art. 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” slip op. at 7

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

    “After considering the arguments and information presented in the Petition and Preliminary Response, 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 9

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

    “begin with, Petitioner’s argument that “Brown invites a [person of ordinary skill in the art] to modify its composition to add ‘amino acids’ which result in ‘[c]haracteristic flavor and fragrance components . . . similar[] to meat’” is incorrect. Id. at 30. Brown does teach that “[c]haracteristic flavor and fragrance components are mostly produced during the cooking process by chemical reactions [between] molecules including amino acids.” Ex. 1012 ¶ 295. But Brown does not teach adding amino acids to its composition. Instead, it teaches that amino acids and other molecules are present in its composition, allowing its composition to produce “flavor and fragrance components . . . during the cooking process” in a way that is “similar[] to meat.” Id.; see id. ¶ 362 (“in some embodiments, the characteristic flavor and fragrance components are produced during the cooking process by chemical reactions involving amino acids”).” slip op. at 14

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,224,241
• Canon U.S.A., Inc. / Canon Inc. v. Slingshot Printing LLCInstitution denied
  PTAB · May 24, 2023 · IPR2022-01415 · APJ John D Hamann · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10, 13, or 14 were unpatentable over any asserted ground.

  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 under 35 U.S.C. § 314 (2018) and 37 C.F.R. § 42.4(a) (2022). An inter partes review may be instituted if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the papers, we determine that the information presented in the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that at least one challenged claim is unpatentable. Accordingly, we deny the Petition and do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that one of ordinary skill in the art at the time of the invention of the ’629 patent would have had “at least a Bachelor’s level college degree in Mechanical Engineering, Electrical Engineering, Physics, Computer Science or a related field, and at least two years of training or experience in the design of inkjet printheads.” Pet. 14–15 (citing Ex. 1007 ¶ 45). Patent Owner does not identify a level of skill in the art that one would have had at the time of the invention of the ’629 patent or identify any shortcoming in Petitioner’s formulation. See Prelim. Resp. 42–43. For purposes of this Decision on Institution, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art, except we decline to adopt the recitals of “at least” as that language is vague and openended. Pet. 14–15. This definition is consistent with the ’629 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “The parties both argue that we should construe “non-contiguous hybrid arrangement” to mean “[a]n arrangement in which the first set of logic cells are interleaved or interlaced with the second set of logic cells.” Pet. 15; Prelim. Resp. 43. Petitioner supports its argument by pointing to the claim construction order from the HP litigation, which provides this construction for this term. Pet. 15 (citing Ex. 1010, 4 (construing non-contiguous hybrid arrangement)). Patent Owner supports its argument by citing to the written description and figures of the ’629 patent. Prelim. Resp. 43–46 (citations omitted). For example, Patent Owner cites Figure 4 of the challenged patent, and its accompanying text, and argues that Figure 4 illustrates that the “logic cells [are] interleaved in a manner that minimizes the space between heater arrays by forming a single linear array.” Id. at 44 (citing Ex. 1001, Fig. 4). The accompanying text teaches that “the magenta logic cells 440a–n may be interleaved between the cyan logic cells 420a–n in an alternating manner to form a single, linear hybrid cyan/magenta P-logic array 302.” Ex. 1001, 5:67–6:4; Prelim. Resp. 45 (citing same). The ’629 patent adds that “[b]ecause of this interlacing of cyan P-registers 420a–n and magenta P-registers 440a–n, neither the cyan P-registers 420a–n nor the magenta P-registers 440a–n remain contiguous,” and that “[f]or example, in F[igure] 4, the cyan logic cell 420b is followed by the magenta logic cell 440a instead of the next cyan logic cell 420c.” Ex. 1001, 6:10–15; Prelim. Resp. 45 (citing same). We have reviewed the parties’ arguments, and we adopt the parties’ proposed construction for this term. In addition, we determine that no express construction is needed for any other term for us to render our Decision on Institution. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 9

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

    “However, we agree with Patent Owner that Hayasaki does not disclose that AND circuit array 5M’ and AND circuit array 5Y are arranged in a non-contiguous hybrid arrangement. Prelim. Resp. 51–52, 54–63. Rather, Hayasaki’s AND gates are arranged in a grid, with each magenta 6 Petitioner argues that “‘a first and a second set of logic cells’ is indefinite because it is unclear if this requires (i) a first set of logic cells and a second set of logic cells, (ii) first and second sets of logic cells, or (iii) a set of first logic cells and second logic cells.” Pet. 30 n.5. We disagree. The plain reading of this limitation corresponds to a first set of logic cells and a second set of logic cells, which is in accord with the interpretation Petitioner applies in this proceeding. Id. AND gate of AND circuit array 5M’ located directly aligned with the corresponding yellow AND gate of AND circuit array 5Y—they are not interleaved or interlaced. Ex. 1004, Fig. 9. Put differently, Hayasaki teaches that AND circuit array 5M’ and AND circuit array 5Y comprise two separate columns of logic cells that are not interleaved or interlaced. See Ex. 1004, Fig. 9, ¶ 93. Thus, Hayasaki does not teach sets of logic cells in a non-contiguous hybrid arrangement.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,559,629
• Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution denied
  PTAB · May 12, 2023 · IPR2023-00122 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–22 were unpatentable on the proposed obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We are not persuaded, on this record, that Petitioner adequately establishes that a POSITA would have been motivated to modify Brown in the manner proposed. Brown teaches that its battery casing with the stacking mechanism is used in both single and multi-cell batteries: A cell casing for a primary dry cell battery of the button type is disclosed which includes a case with a first elongated electrically conductive member affixed centrally to its exterior surface, and a cover with a second elongated electrically conductive hollow member affixed centrally to its interior surface in communication with an aperture. Both a single and a multi-cell battery are described which include the above battery casing.” slip op. at 11

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

    “establishes that a POSITA would have been motivated to modify Brown in the manner proposed. Brown teaches that its battery casing with the stacking mechanism is used in both single and multi-cell batteries: A cell casing for a primary dry cell battery of the button type is disclosed which includes a case with a first elongated electrically conductive member affixed centrally to its exterior surface, and a cover with a second elongated electrically conductive hollow member affixed centrally to its interior surface in communication with an aperture. Both a single and a multi-cell battery are described which include the above battery casing. Ex. 1016, 1:11–18 (emphasis added). Consistent with this teaching, Brown’s Example I describes a cell casing “formed generally in accordance” mechanism, in particular a screw (member 14) welded to the outside center of case 11. Id. at 2:58–81. In Example II, Brown teaches using the “cell casing of Example I,” which includes the stacking mechanism, in a single-cell battery. Id. at 3:1–18. Brown explicitly states that the aperture in the cover is sealed when the cell is used in a single cell battery, but provides for no other modifications to the casing. Id. at 3:13–16 (“The aperture was then sealed by means of a short #2-56 round-head machine screw and a 10-mil thick polytetrafluoroethylene polymer gasket.”). In Example III, Brown similarly teaches a battery with fifteen stacked cell casings wherein, after each casing member of each cell was threaded into the hollow member of the cover of the adjacent, the aperture on the last cover was “sealed with a threaded screw as in Example II.” Id. at 3:19–29. These teachings demonstrate that Brown contemplated using the casing with the stacking mechanism in a single cell battery, and accounted for that by sealing the aperture in the cover. In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 18 (citing Ex. 1003 ¶¶ 159–160); see Ex. 1016, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a” slip op. at 11

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends that a person having ordinary skill in the art (“POSITA”) would have had “a bachelor’s degree in engineering (mechanical, electrical or chemical), general science, materials science or the equivalent and 3-4 years of work experience with electrochemical cell packaging systems.” Pet. 5 (citing Ex. 1003 ¶¶ 39–41). Petitioner further 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011), revised 35 U.S.C. §§ 102 and 103 effective March 16, 2013. Petitioner argues, and Patent Owner does not contest, that the pre- AIA statutory provisions apply to this case. See Pet. 5 n.1. Neither party indicates the result would change based on which version of the statute the Board applies for purposes of deciding whether to institute review. 2 Brown, US 3,748,182, issued July 24, 1973 (Ex. 1016). 3 Higuchi, Chinese Patent App. Pub. CN101286572 A, published October 15, 2008 (Exs. 1009 (English translation), 1010 (original Chinese)). 4 Okochi, EP 0829105 B1, published May 21, 2003 (Ex. 1013). 5 Brenner, DE 102005058132 A1, published June 6, 2007 (Ex. 1014, with English translation). 6 Kubota, US 5,654,114, issued August 5, 1997 (Ex. 1015). of education, such as a master’s or doctorate degree,” and “less education may be compensated by more work experience.” Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 11. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to dispute Petitioner’s definition of a [person of ordinary skill in the art] if an IPR is instituted.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner.” slip op. at 5

  • Expert testimonyPetitioner expert discountedOther

    “In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 18 (citing Ex. 1003 ¶¶ 159–160); see Ex. 1016, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential).” slip op. at 12

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 11,258,092
• Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution denied
  PTAB · May 12, 2023 · IPR2023-00161 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–30 would have been obvious over the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . 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 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2

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

    “We are not persuaded, on this record, that Petitioner adequately establishes that a POSITA would have been motivated to modify Brown in the manner proposed. Brown teaches that its battery casing with the stacking mechanism is used in both single and multi-cell batteries:” slip op. at 10

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 23 (citing Ex. 1003 ¶ 67–68); see Ex. 1010, 1:17–18, 2:38–46, 3:2–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Compare Ex. 1003 ¶¶ 67–68, with Pet. 22–23. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential).” slip op. at 11

  • Skill levelSkill level petitioner adoptedOther

    “(‘POSITA’) would have had at least a bachelor’s degree in mechanical engineering, electrical engineering, materials or chemical engineering, physics, chemistry or a related discipline.” Pet. 19. In addition, Petitioner argues that a person of ordinary skill in the art would have had “at least five years of experience in the design of lithium-ion button cell battery structures.” Id. Petitioner further contends that “[l]ess work experience may be compensated by a higher level of education, such as a master’s or doctorate degree,” and vice-versa. Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 12. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. at 11–12 (“Patent Owner reserves the right to dispute Petitioner’s definition of a [person of ordinary skill in the art] if an IPR is instituted.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner.” slip op. at 6

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 11,024,869
• Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution denied
  PTAB · Apr 11, 2023 · IPR2022-01477 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–30 would be unpatentable, including a sufficient motivation to remove Brown’s stacking mechanism.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . 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 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 13. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to dispute Petitioner’s definition of a [person of ordinary skill in the art] if an IPR is instituted.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner.” slip op. at 7

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

    “establishes that a POSITA would have been motivated to modify Brown in the manner proposed. Brown teaches that its battery casing with the stacking mechanism is used in both single and multi-cell batteries: A cell casing for a primary dry cell battery of the button type is disclosed which includes a case with a first elongated electrically conductive member affixed centrally to its exterior surface, and a cover with a second elongated electrically conductive hollow member affixed centrally to its interior surface in communication with an aperture. Both a single and a multi-cell battery are described which include the above battery casing. Ex. 1005, 1:11–18 (emphasis added). Consistent with this teaching, Brown’s Example I describes a cell casing “formed generally in accordance” with the casing depicted in Brown’s Figure that includes a stacking mechanism, in particular a screw (member 14) welded to the outside center of case 11. Id. at 2:58–81. In Example II, the “non-stacking variant” cited by Petitioner, Pet. 15, Brown teaches using the “cell casing of Example I,” which includes the stacking mechanism, in a single-cell battery. Ex. 1005, 3:1–18. Brown explicitly states that the aperture in the cover is sealed when the cell is used in a single cell battery, but provides for no other” slip op. at 12

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 15 (citing Ex. 1002 ¶ 54); see Ex. 1005, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential).” slip op. at 13

  § 103 obviousnesscites Phillips
  Patents in suitUS 11,024,907

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.