- Abbott Diabetes Care Inc. v. Dexcom, Inc.All claims unpatentablePTAB · Nov 2, 2023 · IPR2022-00921 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 1, 5, 7, 8, 66, 67, 89, and 91 are unpatentable as obvious under § 103 based on Heller combinations; Gross-based grounds were not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art at the time of the invention would have: 8 Neither party relies on objective evidence in this proceeding. a bachelor’s degree in biomedical engineering, chemical engineering, chemistry (or a related or equivalent field), and two or more years of experience researching, developing, designing and/or evaluating (or supervising the same) medical devices for measuring analyte levels, including some experience with algorithms for calibrating such devices, or equivalent experience” and that “[s]uch experience could include either formal coursework in signal processing, computer science, or electrical engineering, or could also be obtained during on-the-job experience.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We interpret claims in the same manner used in a civil action under 35 U.S.C. § 282(b) “including construing 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.” 37 C.F.R. § 42.100(b). When applying that standard, we interpret the claim language as it would be understood by one of ordinary skill in the art in light of the specification. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1279–80 (Fed. Cir. 2017). Thus, we give claim terms their ordinary and customary meaning as understood by an ordinarily skilled artisan. See Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We read the claims according to the principles set forth above because neither party expressly interprets any language in the independent claims. See generally Pet. and PO Resp. We also address below other portions of the various claims as required by our analysis. B. The Parties’ Post-Institution Arguments” slip op. at 7
- ExcludeMotion to exclude, deniedDenied
“In light of the foregoing multiple egregious misrepresentations, Petitioner’s Motion is denied regarding the sufficiency of Dr. Baura’s qualifications because Petitioner did not timely object to the evidence on the basis asserted in the Motion, fails to refute Patent Owner’s showing that Dr. Baura is sufficiently qualified (see Opp. 3–7; Ex. 2010 ¶ 30), and abandons its argument in its Reply to the Motion. B. Petitioner’s Challenge to the Basis of Dr. Baura’s Opinions” slip op. at 38
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner persuades us that Flaherty suggests entering a code printed on a sensor or its packaging into the control device for that sensor and using that code as an index to access the correct calibration data for the sensor. Pet. 40–41 (cross-referencing Pet. 38–39). Flaherty explains: Depending on the repeatability of the manufacturing process, calibration coefficients could be determined for a batch of sensors or, if necessary, for each individual sensor. The calibration coefficients or code corresponding to a look-up table could then be printed on the sensor packaging so that they can be entered into the analyzer and used for the calculation of the analyte concentration. Ex. 1019, 5:55–62. Petitioner persuasively relies on this portion of Flaherty to demonstrate a motive to modify Heller by using Flaherty’s printed code to access correct calibration data in the control device. Pet. 40 (citing Ex. 1019, 5:53–58), id. at 32 (citing Ex. 1019, 5:58–62, 5:64–6:6 (“sensors could be provided with a calibration code that, when entered into the device, could be used as an index in a lookup table to find the appropriate coefficients. . . . The analyzer could read a bar code printed on the sensor and use that code to look up coefficients.”)). Because Petitioner made its showing in the Petition as just described, we disagree with Patent Owner’s argument that Petitioner “attempts to rewrite the Petition” in the Reply. Surreply 1–2. Based on our review of Petitioner’s argument and cited evidence, we conclude that Petitioner has demonstrated by a preponderance of evidence that an ordinarily skilled artisan would have modified Heller as suggested by Flaherty to meet the requirements of element 1e.” slip op. at 19
Patent outcomesUS 10,993,642 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,993,642 - PTAB · Nov 3, 2022 · IPR2022-00922 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR on claims 10, 38, and 101 on all asserted grounds, finding a reasonable likelihood that claim 10 is unpatentable over Heller.
RulingsInstitution decision- Parallel petitionsDenied
“This summary reflects that the pair of petitions do not overlap in the claims challenged, but rather overlap in the sense that both petitions include two “families” of challenges to claims, Heller-based challenges and Gross-based challenges. Patent Owner argues that Petitioner should have presented its Heller-based challenges in one petition and the Gross-based challenges in another petition so that we could have separately decided whether to institute review of each family of challenges. Patent Owner’s argument has merit insofar as presenting each family of challenges against all 11 of the claims that are collectively challenged may have resulted in fewer words overall. We would have preferred Patent Owner’s suggested approach. Nevertheless, we institute review in both proceedings for two primary reasons. First, we find Petitioner’s explanation for why it could not fit both families of challenges into the word-count allocated to one petition reasonable. For example, Petitioner spent a substantial portion of its allocated word-count addressing issues of discretionary denial under §§ 314 and 325(d) on the chance that Patent Owner would request such a denial. See, e.g., Pet. 80–88. Doing so, trimmed the space available to address the merits of its challenges, the subject matter that forms the basis of inter partes review. Ultimately, Patent Owner chose not to request discretionary denial on the issues Petitioner addressed. We consider it reasonable for Petitioner to have used space to address these issues of discretionary denial, with the result that addressing all issues of patentability could not fit in one petition. Petitioner also devoted considerable space explaining the relevant prosecution history and educating the panel on concepts that were within the background knowledge of an ordinarily skilled artisan relating to calibration of glucose monitoring devices and methods. Pet. 8–15, 30–35. These portions of the Petition provide critical context for deciding the merits of all the challenges presented. The merits of Petitioner’s challenges as collectively presented in the ’921 Petition and this Petition warrant an inter partes review, and a trial will resolve the dispute over all those challenges with estoppel effect. Second, we find that material differences exist between the Heller- based and Gross-based challenges that require independent analyses. These material differences are apparent from even a high-level review of the arguments presented in the Petitions and Preliminary Responses. We agree with Patent Owner that substantial overlap exists between the two Petitions when comparing the Heller-based challenges in the two petitions or the Gross-based challenges in the two petitions. Ranking Resp. 2–3. But this overlap reduces the burden that the Patent Owner will bear in responding to those challenges and the burden that we will face in adjudicating them. Accordingly, we discern no undue burden placed upon us or the parties in having a trial in both proceedings so that the merits of the Heller-based and Gross-based challenges can be resolved with estoppel effect by a final written decision. Collectively, the two petitions reasonably challenge the patentability of 11 claims based on two different primary references. We discern nothing unusual about the scope of this dispute that justifies considering only the challenges set forth in the ’921 Petition.” slip op. at 8
- BurdenDecided for petitioner
“Regarding Patent Owner’s first argument, Petitioner persuades us that Heller’s “factory-determined calibration measurements” are reasonably likely to constitute “prior calibration information” that includes “prior sensitivity information associated with the transcutaneous glucose sensor.” First, that the calibration measurements are “factory-determined” implies “prior” generation of the information. Second, Heller expressly describes its processing circuit 109 using this calibration data to “correct signals from sensor 42.” Ex. 1005, 77:6–7. Second, Dr. Smith strongly supports his testimony regarding what an ordinarily skilled artisan “would have recognized” about Heller’s calibration measurements by citing numerous examples of objective evidence that appear to be highly probative based on our initial review. Third, Patent Owner offers no expert testimony at all much less testimony that refutes Dr. Smith’s opinion or establishes that the objective evidence upon which he relies fails to support his opinion. Instead, Patent Owner merely responds with argument from its attorneys and their implied opinion about what an ordinarily skilled artisan “would have recognized” about Heller’s factory-determined calibration measurements. Accordingly, we find Dr. Smith’s testimony to be unopposed at this stage of the proceeding and more than sufficient to meet Petitioner’s burden to establish a reasonable likelihood that Heller describes limitation 10d.” slip op. at 21
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“of the challenged claims expressly recites “means” and all are presumed not to contain terms that are subject to interpretation under § 112, ¶ 6. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). The Federal Circuit explained the procedure for rebutting the presumption against interpreting a claim term that does not recite “means” as a means-plus-function limitation as follows: The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. . . . When a claim term lacks the word “means,” the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to “recite sufficiently definite structure” or else recites “function without reciting sufficient structure for performing that function.” Id. at 1349 (internal citations omitted). At this stage of the proceeding, neither party has presented evidence probative of whether an ordinarily skilled artisan would understand “processor programmed to calibrate . . .” as recited in claim 1 has a “sufficiently definite meaning as the name for structure.” In the absence of such evidence, we must presume that the term is not interpreted as a means-plus-function limitation, just as Petitioner proposes. See Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1008 (Fed. Cir. 2018) (vacating conclusion that “program that can operate” and “code being configured to” were means-plus-function limitations when challenger failed to adduce evidence probative of the understanding of ordinarily skilled artisan). We discern no requirement in Rule 42.104(b)(3) to require Petitioner to advance” slip op. at 12
- Other 314aInstitution denied discretionary otherDenied
“Recognizing that the briefing and evidence before us may not result in a violation of Rule 42.104(b) because the parties place no issue in dispute on whether § 112, ¶ 6 applies, the dissent concludes that we should deny the Petition in our discretion. The exercise of discretion would be warranted to promote the interests of: “efficiency in the patent system, improvement of patent quality, and reduction of counterproductive litigation costs.” Dissent 11–12. We disagree. The District Court of Delaware has stayed its consideration of all issues of patent infringement, patent invalidity, and unenforceability pending resolution of Petitioner’s defense of non-infringement due to license and counterclaim for breach of license. Ex. 1089, 2. Trial in the District Court on the issues not stayed has been set for July 10, 2023. Id. at 12. In effect, the District Court of Delaware likely will not reach the merits of Petitioner’s obviousness arguments until after we enter a final written decision in this proceeding. Petitioner provides the evidence necessary to decide the issues it has presented, and Patent Owner will have a full and fair opportunity to meet that evidence. If Patent Owner wishes to make a case that § 112, ¶ 6 applies to the processor limitations, it is free to do so. After we enter a final written decision, Petitioner will be estopped under 35 U.S.C. § 315(e) from litigating an invalidity defense that it raised or could have raised before us. Assuming that Petitioner were to press an indefiniteness defense based on § 112, ¶ 6 applied to the processor limitations in the District Court, that Court will be able to decide whether positions taken by Petitioner before us would preclude it from advancing that defense in that forum. Simply, we find it to be most efficient for us to resolve the issues of patentability presented by both parties during a trial before the Board and for the District Court to resolve the legal issues presented by the parties in that forum when the time comes, which will exclude invalidity defenses that were or could have been raised by Petitioner here. For all these reasons, we do not discretionarily deny the Petition. D. Legal Standards” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,993,642 - Toyota Motor Corp. v. Intellectual Ventures II LLCInstitution deniedPTAB · Oct 26, 2022 · IPR2022-00710 · APJ Frederick C Laney · IPR · Institution
The Board denied institution on claims 1–20 because the Petition did not show a reasonable likelihood that either Ikeda or Nakajima disclosed the limitations of independent claims 1, 9, and 15.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“whether an individual asserted fact is indisputable or whether a preponderance of the evidence supports Petitioner. Our review is to determine whether the totality of the information presented in the Petition and Preliminary Response shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. For the above reasons, we determine Petitioner has not established a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim of the ’158 patent. Therefore, we deny inter partes review of the ’158 patent on all challenged claims and all grounds asserted in the Petition. See 35 U.S.C. § 314(a). IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of the ’158 patent is denied.” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, and based on the current record, we adopt Petitioner’s characterization of the level of skill for one of ordinary skill in the art, except we decline to adopt “at least,” as that language is vague and open-ended. However, we note Patent Owner’s proposed characterization of a skilled artisan is not meaningfully different than the one proposed by Petitioner without the “at least” language. Because we find the parties’ characterizations to be consistent with the ’158 patent and the asserted prior art, we apply in our analysis below Petitioner’s characterization, as modified by the Board, for the level of ordinary skill in the art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“phrase “wherein each optics component of the plurality of optics components is configured to pass light to a sensor of the plurality of sensors” requires each optics component to pass light separately to a distinct sensor of the plurality of sensors.6 Ex. 1001, 25:34–36. This is so because the phrase expressly singles out “each optics component” from “the plurality of optics components” and associates it with passing light to “a sensor” that is 6 In the context of the ’158 patent, a sensor may be an array of photo-detectors and multiple sensors may be formed on a single semiconductor substrate or chip. Ex. 1001, code (57), 4:18–21, 4:67–5:3, 7:17–39, 11:62– 676, 14:45–47, 15:46–65, 16:8–15, Figs. 2, 3, 9, 14, 15. distinguished from “the plurality of sensors.” Id. (emphasis added). As a result, claim 1 requires each optics component to have a configuration that allows it to pass light separately to an individual sensor distinct from the other sensor(s) in the plurality of sensors.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“We agree. For the reasons discussed above (supra §II.C.1), “each optics component of the plurality of optics components is configured to pass light to a sensor of the plurality of sensors,” as recited in claim 1, requires each of the plurality of optics components to be configured to pass light separately to a distinct sensor of the plurality of sensors and cannot rely on a common optics component to pass light to all of the sensors. Although Petitioner provides little guidance, the only two structures in Figure 11 of Ikeda that can even arguably be optics components “configured to pass light” are lens 1 and prism 23. And Ikeda discloses those structures as functioning as a single unit that is common to the three disclosed sensors. See Ex. 1005, 11:62–12:1. As such, Ikeda only discloses a single optical component/unit configured to pass light to a plurality of sensors, rather than a plurality of optical components/units that are each able to pass light to their respective sensor(s) out of the plurality of sensors. In fact, the only structure included in Figure 11 that Petitioner’s expert, Dr. Bovik, suggests is configurable to pass light to a sensor is the lens. See Ex. 1004 ¶¶ 39–41, 49, 66. For example, Dr. Bovik describes that, during operation of the device Ikeda discloses, the light from an object enters lens 1, which then passes the light through filters to projects the light upon an image sensing device. Id. ¶ 39. Although the Petition and Dr. Bovik lump “a lens 1, a prism 23, optical low-pass filters 2, and a color filter 20 (all purple)” together and refer to them collectively as “provid[ing] a ‘light path’ to pass light (yellow) from an object image to be ‘projected upon the first, second, and third image sensing devices 18, 3, and 19’” (Pet. 16, Ex. 1004 ¶ 66), Ikeda suggests that lens 1 is the only structure configured to pass light (i.e., establish the light path) to a sensor. This is evidenced by the fact that Ikeda describes the prism, optical low-pass filters, and a color filter as all being “provided at the intermediate position of the light path” that begins at lens 1. Ex. 1005, 13:34–38, 13:59– 63 (emphasis added). In order for the prism, optical low-pass filters, and a color filter to be at an intermediate position of the light path, the light path must necessarily have been established before reaching them. Consistent with this understanding, Dr. Bovik only describes lenses as being configurable to pass light to a sensor (i.e., to zoom and focus incident light); the diaphragms, irises, and neutral density (ND) filters are described as “varying the amount of incident light” that has been passed; the optical low pass filters are described as “combat[ing] high-frequency moiré patterns” in the light that has been passed; and the color filters and filter arrays are described as “filtering specific wavelengths, or colors” of light that has been passed. Ex. 1004 ¶ 40. Therefore, because Ikeda only discloses a single optical component” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 9,232,158 - PTAB · Oct 12, 2022 · IPR2022-00708 · APJ Matthew S Meyers · IPR · Institution
The Board instituted IPR on claims 1–20 over all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“[W]here the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) 4–5 (“Interim Procedures”).9 Further, “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. On the current record, we agree with Petitioner that “[t]he petition presents ‘compelling evidence of unpatentability.’” Pet. Reply 1 (citing Interim Procedures 1). As Petitioner notes, “despite the centrality of the merits to the Fintiv analysis, the POPR is silent on the substance of the petition.” Id. For the reasons below in our analysis, we determine that the merits of Petitioner’s anticipation grounds based on Fernandez appear to be particularly strong for the independent claims and for the dependent claims for this ground. See infra § III.G (explaining that, on the current record, slip op. at 7
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“were co-defendants in the District Court litigation and were accused of infringing the [challenged] patent based on HTC’s VIVE devices that incorporate technology licensed from Valve.” Id. By contrast, here Petitioner asserts that it “has no control over the [429] IPR, did not participate or provide input into the [429] IPR, and had no knowledge of the [429] IPR until after it was filed.” Pet. 15; see also Pet. Reply 2. Although we agree with Patent Owner that Unified’s subscription fees provide an incentive to challenge patents asserted against its members, and recognize that Unified has challenged at least eight patents asserted against Petitioner in the past (Prelim. Resp. 25–27), that alone does not create the type of “significant relationship” that was found in Valve to favor denying institution.10 Moreover, the Director recently initiated a sua sponte Director review “to clarify the application of General Plastic.” IPR2022-00861, Paper 18 at 3 (PTAB Aug. 23, 2022). There, the Director determined that “factors 1–3 only weigh in favor of discretionary denial when there are ‘road-mapping’ concerns under factor 3 or other concerns under factor 2.” Id. at 5. The Director stated that “‘road-mapping’ concerns are minimized when, as in this case, a petitioner files a later petition that raises unpatentability challenges substantially overlapping with those in the previously-filed petition and the later petition is not refined based on lessons learned from 10 See, e.g., Netflix Inc. and Hulu, LLC v. DivX, LLC, IPR2020-00052, Paper 42 at 8–11 (PTAB May 14, 2020); Mercedes-Benz USA, LLC v. Carucel Investments, L.P., IPR2019-01404, Paper 12 at 12–13 (PTAB Jan. 22, 2020) (finding petitioner’s membership in Unified did not amount to a relationship that justifies discretionary denial in light of other General Plastic factors); Apple, Inc. v. Uniloc 2017 LLC, IPR2019-01667, Paper 7 at 7–8 (PTAB Apr. 21, 2020). later developments.” Id. Here, road-mapping is minimized because the present Petition was filed less than two months after the petition in the 429 IPR, no patent owner preliminary response was filed at that time, and no decision to institute was issued to refine the later petition. See Pet. 16. This is further evident from our below discussion of General Plastic factors 2 and 3.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. 35 U.S.C. § 314; 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 “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 [one] of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, the Reply, the Sur-Reply, and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one of claims 1–20. Accordingly, we institute an inter partes review of all challenged claims on all asserted grounds pursuant to 35 U.S.C. § 314. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–1360 (2018) (requiring institution on all claims, if any); see also Patent Trial and Appeal Board” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Having considered Petitioner’s unrebutted position, we conclude that, at this stage of the proceeding, Petitioner has shown a reasonable likelihood that it would prevail in challenging the patentability of independent claim 1. 3. Dependent Claims 2 and 4–7 Petitioner contends that the additional limitations of dependent claims 2 and 4–7 are disclosed by Flick. Pet. 27–32. Patent Owner does not specifically dispute Petitioner’s contentions for dependent claims 2 and 4–7 at this time. See generally Prelim. Resp. Petitioner has made a sufficient showing that Flick discloses the limitations of these dependent claims by providing an analysis of each limitation and a comparison of the limitations to the disclosure of Flick. See Pet. 27–32. We have reviewed Petitioner’s cited evidence and explanation regarding why Flick anticipates claims 2 and 4–7, and find it sufficient at this stage. For example, claim 2 requires that “the information about the vehicle comprises one or more of a location of the vehicle, a time that the vehicle was at a location, or a speed of the vehicle.” Ex. 1001, 10:59–62. Flick discloses (“‘vehicle speed and location that the speeding started and how long speeding accrued’ (Detected from GPS).”) Ex. 1005 ¶ 147. On this record, we determine that Petitioner has shown a reasonable likelihood of success that Flick anticipates claims 2 and 4–7.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,291,475 - PTAB · May 26, 2022 · IPR2022-00163 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–8, 10–13, and 15–25 on all petitioned grounds, finding a reasonable likelihood that at least one claim is obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“state of a parallel district court action is a factor that may weigh in favor of denying a petition under § 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Patent Trial and Appeal Board Consolidated Trial Practice Guide 58 & n.2 (Nov. 2019) (“Trial Practice Guide”), available at https://www.uspto.gov/TrialPracticeGuideConsolidated. We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 5–6. In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims. slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Owner argues that “[s]imply stating that the combination is the mere application of a known technique to a known system, without explaining why a POSITA [(person of ordinary skill in the art)] would have been motivated to seek out that particular technique to achieve the purported result, does not satisfy Petitioner’s burden.” Id. at 30 (citing Ancestry.com DNA, LLC v. DNA Genotek Inc., IPR2016-01152, Paper 11 at 10 (PTAB Nov. 23, 2016)).” slip op. at 32
- Skill levelSkill level petitioner adoptedOther
“Pet. 7 (citing Ex. 1004 ¶ 49). Patent Owner agrees with, and reiterates this level of ordinary skill. Prelim. Resp. 6–7. On this record, the level of ordinary skill in the art is not disputed and is consistent with our review of the technology and descriptions in the ’647 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “the level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention”). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,243,647 - The Hillman Group, Inc. v. Hy-Ko Products Co. LLCInstitution deniedPTAB · May 9, 2022 · IPR2022-00174 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution of IPR on all challenged claims under § 314(a), finding the Fintiv factors and the advanced Texas litigation favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“requested in the Texas Litigation. See Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“A judge determines whether to grant a stay based on the facts of each specific case as presented in the briefs by the parties. We decline to infer, based on actions taken in different cases with different facts, how the District Court would rule should a stay be requested by the parties in the parallel case here.”). We view this factor as neutral because neither of the parties in the Texas Litigation has requested a stay thus far. See id. at 12 (determining that Factor 1 is neutral when neither party has requested a stay and the issue has not been ruled on by the district court).” slip op. at 9
Discretionary denialPatents in suitUS 9,687,920 - The Hillman Group, Inc. v. Hy-Ko Products Co. LLCInstitution deniedPTAB · May 9, 2022 · IPR2022-00175 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution of inter partes review for all challenged claims, exercising its discretion under § 314(a) based on the Fintiv factors and the Texas Litigation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“currently scheduled to begin on July 11, 2022. See Prelim. Resp. 21; Ex. 2006 (First Amended Docket Control Order in the Texas Litigation) at 1. Based on the date of issuance of this Decision, the beginning of the jury trial in the Texas Litigation is nine or ten months before any final decision would have been due had inter partes review been instituted. This factor weighs strongly in favor of denial.” slip op. at 9
Discretionary denialPatents in suitUS 9,682,432 - Brunswick Corporation v. Volvo Penta Of The Americas, LLCAll claims unpatentablePTAB · Apr 13, 2022 · IPR2020-01512 · APJ Eric C Jeschke · IPR · Final written decision
Claims 1–18 are unpatentable: claims 1–3, 11–13, 15, 17, and 18 as anticipated by Kiekhaefer, and claims 4 and 7 as obvious over Kiekhaefer and Stechauner.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“3. The Claims Are Limited to “Stern Drives” Patent Owner argues that independent claims 1, 8, and 18 are limited” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“102(a) Kiekhaefer 15, 17, 18 18” slip op. at 118
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“presumption of nexus as to the Forward Drive. As noted by Petitioner (Pet. Reply 16 n.4), the Federal Circuit has made clear that the coextensiveness requirement is separate from the requirement that the product or process embodies the claims. See Fox Factory, 944 F.3d at 1377 (“We reject [the patent owner’s] attempt to reduce the coextensiveness requirement to an inquiry into whether the patent claims broadly cover the product that is the subject of the evidence of secondary considerations.”). Here, Patent Owner concludes that the “Forward Drive is a commercial embodiment of the ’692 Patent and coextensive with the claims” and cites to one paragraph of one of Dr. Winkel’s Declarations. PO Resp. 52 (citing 3d Winkel Decl. ¶ 51). Even assuming that this reliance on Dr. Winkel’s Declaration is not improper incorporation by reference (Pet. Reply 16 n.4 (citing 37 C.F.R. § 42.6(a)(3)), Dr. Winkel (via his Appendix C) addresses why the Forward Drive embodies the claims, but does not even mention, let alone provide testimony supporting Patent Owner’s conclusion regarding, the separate coextensiveness requirement. See 3d Winkel Decl. ¶ 51.” slip op. at 66
Patent outcomesUS 9,630,692 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,630,692 - PTAB · Apr 13, 2022 · IPR2022-00229 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution for claims 1 and 46 under § 314(a), finding that the Fintiv factors and parallel litigation supported discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“court has stayed or may stay the proceeding pending inter partes review. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” See Fintiv, Paper 11 at 6.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Section 314(a) of Title 35 of the United States Code provides that inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the evidence and arguments in the Petition as well as the evidence and arguments in the Preliminary Response, for the reasons below and based on the particular facts of this case, we exercise our discretion under 35 U.S.C. § 314(a) and decline to institute inter partes review of the ’040 patent.” slip op. at 2
Discretionary denialPatents in suitUS 7,464,040 - Google LLC / Samsung Electronics Co., Ltd. et al. v. Agis Software Development, LLCInstitution deniedPTAB · Feb 22, 2022 · IPR2021-01384 · APJ Frederick C Laney · IPR · Institution
The Board denied institution for claims 1, 13, 18, 20, 32, 37, and 75 because Patent Owner disclaimed all challenged claims.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“We agree with Patent Owner. Under our rules, “[n]o inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e); General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (declining to institute inter partes review pursuant to § 42.107(e) because the patent owner disclaimed all challenged claims) (precedential). Because Patent Owner has disclaimed all of the challenged claims, we do not institute an inter partes review.” slip op. at 2
NonePatents in suitUS 9,706,381
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.