• Maxlite, Inc. v. Jiaxing Super Lighting Electric Appliance Co., Ltd.All claims unpatentable
  PTAB · Apr 29, 2022 · IPR2020-00208 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 7, and 12–18 are unpatentable as anticipated by Duan under § 102(a)(1).

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a B.S. degree in electrical engineering, or an equivalent field, as well as at least 2-4 years of academic or industry experience in lighting design, including knowledge of LEDs and related technology for driving LEDs. A person of ordinary skill in the art with a higher level of education may have fewer years of academic or industry experience, or vice versa. Pet. 22 (citing Ex. 1002 ¶ 10). Patent Owner does not contest Petitioner’s articulation of the level of skill in the art. PO Resp. 4–5. We regard Petitioner’s definition as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, we adopt Petitioner’s proposal.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “embodiments that operate with a low frequency driving signal in a double-ended configuration, Patent Owner did not recite “low frequency” or “double-ended” in its claims and instead chose the broader term “first driving mode.” See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). The fact that a limitation in the specification may define over the prior art does not justify importing that limitation into the claims unless a term is expressly defined such that the patentee becomes his own lexicographer or there is an express disavowal of claim scope. See GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1308–09 (Fed. Cir. 2014). There is no evidence of an express disavowal here. As to lexicography, we disagree with Patent Owner’s contention that the Specification defines the phrase “first driving mode.” Patent Owner relies on the mere fact that the specification describes an embodiment with a first driving mode that has a low frequency driving signal and is in a “double-ended” configuration, but this is not sufficient to define the term. The specification does not require that a low frequency driving signal must necessarily be used. In fact the specification, although not entirely clear, suggests that the driving signal may be from a high frequency ballast. Ex. 1001, 51:8–14. Thus, the fact that the patent here discloses a low frequency driving signal does not mean that all the claims are directed to such a driving signal. See E-Pass Tech., Inc. v. 3Com Corp., 343 F.3d 1364, 1368–69 (Fed. Cir. 2003). Indeed, dependent claim 15 recites “the first driving mode is performed when the external driving signal is a relatively low frequency or voltage signal,” while the independent claims were directed to a more general driving signal. The doctrine of claim differentiation suggests that the independent claims here should not include explicit limitations of a dependent claim. See Phillips, 415 F.3d at 1315 (“[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.”); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004).” slip op. at 7

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “We determine that Patent Owner has not shown sufficiently that the Chinese priority patent applications it relies on—the ’636 Chinese Application and the ’586 Application—provide written description support for the limitation of “a mode determination circuit, configured to generate a first determined result signal based on the external driving signal” and “a mode switching circuit, coupled to the filter circuit and the driving circuit, configured to determine whether to perform a first driving mode or a second driving mode based on the first determined result signal,” recited in claim 1. PO Resp. 31–34, 60–67. Specifically, Patent Owner relies on structures in the ’636 Chinese Application and the ’586 Application that are not sufficiently similar to structures in the ’826 patent i.e., DR Circuit 140, excluding diodes D5 and D6, as shown in Figs. 24i-j and 29b. Id. at 27 (citing Ex. 2001, 23–24, 29, and 33, Fig. 24i–j and 29b).” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “For the reasons above, Patent Owner has not established that claim 1 of the ’826 patent is entitled to the effective filing date of the ’636 Chinese Application (i.e., June 10, 2015) or the ’586 Application (i.e., March 26, 2015). Because the remaining asserted claims are dependent claims, Patent Owner has also not established that claims 7 and 12–18 of the ’826 patent are entitled to the effective filing date of the ’636 Chinese Application or the ’586 Application. The application that led to the ’826 patent was filed on March 25, 2016. The ’826 patent claims it is a continuation-in-part of application No. 15/055,630 (“the ’630 Application”), filed on February 28, 2016. So, even if the challenged claims were entitled to the earlier February 28, 2016 filing date, Duan issued on July 1, 2015, and is, thus, prior art to the challenged claims of the ’826 patent under 35 U.S.C. § 102(a)(1).” slip op. at 18

  Patent outcomesUS 9,807,826 unpatentable
  Claim construction§ 102 anticipation§ 112 disclosurecites Phillips
  Patents in suitUS 9,807,826
• Vudu, LLC v. Ideahub, Inc.All claims unpatentable
  PTAB · Apr 14, 2022 · IPR2020-01688 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1, 3, 4, 6, 8, 11, 13, 15, 18, 19, 21, and 23 are unpatentable over DIS 23009-1; the revised contingent motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art (“POSA”) in the relevant field as of the earliest priority date would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject and two or more years of experience in the field of media streaming over the Internet. Pet. 18–19 (citing Ex. 1003 ¶ 82). Patent Owner does not dispute Petitioner’s assertions regarding the level of ordinary skill in the art, nor 6 Patent Owner does not present objective evidence of nonobviousness. does it present its own definition. We adopt Petitioner’s definition as it is consistent with the specification of the ’830 patent and the cited references.” slip op. at 10

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

    “Petitioner proposes that we construe “adaptation set,” “SegmentBase,” and “SegmentTemplate.” Pet. 19–21. Patent Owner does not address claim construction in its briefing. We need not construe any claim term to resolve any issues before us, and therefore, do not expressly define any claim term in our Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 11

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied

    “not describe additional configuration information nor user characteristic information. Instead, it describes “an additional configuration to select a representation based on a user characteristics and terminal characteristics.” Ex. 2004 ¶ 232. It is unclear from Patent Owner’s argument whether Patent Owner intends for the claimed “user characteristic information” to include or refer to additional configuration information, accessibility features of a representation, or both. Reply Rev. Opp. 1 (citing Ex. 2004 ¶¶ 232, 234, 253). In any event, merely because paragraph 253 uses the term “[h]ereinafter” before it discloses “two simple attributes [] for the above-described purpose”––and not even in close proximity to the “user characteristics” and “additional configuration” in paragraph 232––is not sufficient to provide support for “the user characteristic information includ[ing] the usedWith attribute and the equivalentTo attribute,” as recited 8 Ex. 2005 is Application No. 16/168,933 (“the ’933 application”). in limitations [38.6], [40.6], and [46.6]. None of the cited portions (i.e., Ex. 2004 ¶¶ 232, 234, 253, 255–257, Table 13; Ex. 2005 ¶¶ 254–256, Table 13) indicates a sufficient connection or relationship, or the claimed inclusive relationship, between user characteristic information and the usedWith and equivalentTo attributes. Contra Reply Opp. Rev. MTA 1 (Patent Owner arguing that the cited disclosures “clearly show this relationship between the claimed attributes and user characteristic information”). For the foregoing reasons, we determine that claims 38, 40, and 46 do not find sufficient written description support in the ’644 application nor in the ’933 application, whether considered individually or collectively, and thus, these claims contain new matter.” slip op. at 35

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “rationale for combining DIS 23009-1 with M20060, Petitioner persuasively contends that: A POSA would have been motivated to add the additional “metadata” described in M20060 to the MPDs described in the DIS 23001-6 or DIS 23009-1 references in order to enable the client to choose the most suitable version of media content among alternative versions of media content. For example, M20060 describes that the additional metadata (e.g., the extended accessibility element and the usedWith, equivalentTo, bitDepth, minBitDepth, and maxBitDepth attributes) helps “both users and clients to select appropriate representations” by, for example, “1) supporting accessibility, 2) describing relationships of representations, and 3) describing media’s bit depth.” Moreover, a POSA would have had an expectation of success in modifying the MPDs in DIS 23001-6 or DIS 23009-1 to include the additional metadata described below because it simply would have been a matter of adding additional metadata to the MPD XML schemas described in DIS 23001-6 or DIS 23009-1. Id. (citing Ex. 1094 ¶ 33; Ex. 1097 § 1, 1). Dr. Bestavros persuasively explains that “M20060 expressly references the DIS 23001-6 reference and proposes specific modifications to the MPEG DASH metadata included in the MPD XML schema.” Ex. 1094 ¶ 34 (citing Ex. 1097 § 1, 1 (introduction of M20060); Ex. 1097, 7 (references cited by M20060)).” slip op. at 41

  Patent outcomesUS 10,270,830 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,270,830
• Vudu, Inc. v. Ideahub, Inc.All claims unpatentable
  PTAB · Apr 14, 2022 · IPR2020-01689 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1, 11, 25, 27, and 29 are unpatentable as anticipated by and obvious over DIS 23009-1; the revised contingent motion to amend proposing claims 31–35 is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level Of Ordinary Skill In The Art Petitioner contends that: A person of ordinary skill in the art (“POSA”) in the relevant field as of the earliest priority date would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject and two or more years of experience in the field of media streaming over the Internet. Pet. 19 (citing Ex. 1003 ¶ 82). Patent Owner does not dispute Petitioner’s assertions regarding the level of ordinary skill in the art, nor does it present its own definition in any of its briefing. We adopt Petitioner’s definition as it is consistent with the Specification of the ’414 patent and the cited references.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Petitioner proposes that we construe “adaptation set,” and “SegmentTemplate.” Pet. 19–21. Patent Owner does not address claim construction in any of its briefing. 6 Patent Owner does not present objective evidence of nonobviousness. and therefore, do not expressly define any claim term in our Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 10

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot shown unpatentable

    “The newly-cited portion in paragraph 232 does not describe additional configuration information nor user characteristic information. Instead, it describes “an additional configuration to select a representation based on a user characteristics and terminal characteristics.” Ex. 2004 ¶ 232. It is unclear from Patent Owner’s argument whether Patent Owner intends for the claimed “user characteristic information” to include or refer to additional configuration information, accessibility features of a representation, or both. Reply Rev. Opp. 1 (citing Ex. 2004 ¶¶ 232, 234, 253). In any event, merely simple attributes [] for the above-described purpose”––and not even in close proximity to the “user characteristics” and “additional configuration” in paragraph 232––is not sufficient to provide support for “the user characteristic information includ[ing] the usedWith attribute and the equivalentTo attribute,” as recited in limitations [31.11], [32.12], and [35.7]. None of the cited portions (i.e., Ex. 2004 ¶¶ 232, 234, 253, 255–257, Table 13; Ex. 2005 ¶¶ 254–256, Table 13) indicate a sufficient connection or relationship, or the claimed inclusive relationship, between user characteristic information and the usedWith and equivalentTo attributes. Contra Reply Opp. Rev. 1 (Patent Owner arguing that the cited disclosures “clearly show this relationship between the claimed attributes and user characteristic information”). For the foregoing reasons, we determine that claims 31, 32, and 35 do not have sufficient written description support in the ’644 application and the ’092 application, either individually or collectively, and as such, contain new matter.” slip op. at 29

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “are not entitled to a priority date earlier than March 16, 2012 (the filing date of PCT ’922), because the disclosure of KR10-2011-0023271 does not support at least the limitations of: “the adaptation set includes one or more attributes or elements that are common to each of the representations for that adaptation set,” as recited in independent claims 1 and 11, and the “SegmentTemplate” recited in independent claims 25. Patent Owner has not asserted, after institution, that the challenged claims are entitled to an earlier date. See Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327–28 (Fed. Cir. 2008) (indicating that patent owner bears a burden of production in arguing that the asserted references are not prior art based on entitlement to an earlier priority date). As such and for the reasons discussed below, Petitioner has persuasively demonstrated that DIS 23001-6, DIS 23009-1, and 3GPP TS 26.247 qualify as prior art to the challenged claims, because Petitioner has sufficiently demonstrated that the references were publicly accessible prior to the applicable priority date of March 16, 2012.” slip op. at 12

  Patent outcomesUS 10,313,414 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,313,414
• Rimfrost As v. Aker Biomarine Antarctic AsAll claims unpatentable
  PTAB · Apr 6, 2022 · IPR2020-01533 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–19 are unpatentable as obvious over the combined prior art, considered with the knowledge of a person of ordinary skill in the art.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Neither Patent Owner nor Dr. Jaczynski disputes Petitioner’s definition of a person of ordinary skill in the art. Ex. 2015 ¶ 8 (“For purposes of this proceeding, I will accept [Petitioner’s] definition of a [person of ordinary skill in the art].”). Upon review of the ’046 patent and the prior art of record, we find Petitioner’s uncontested definition reasonable and supported by the evidence of record. Accordingly, we adopt this definition of one of ordinary skill in the art for purposes of this Decision.” slip op. at 8

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

    “Upon review of the parties’ arguments and supporting evidence, we determine that no terms of the ’046 patent require construction in order to resolve the disputes in this proceeding. See 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) (“[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

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “Collateral estoppel protects a party from having to litigate issues that have been fully and fairly tried in a previous action and adversely resolved against a party-opponent.” Ohio Willow Wood Co. v. Alps South, LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013). In the context of patent claims, collateral estoppel applies “[i]f the differences between the unadjudicated patent claims and adjudicated patent claims do not materially alter the question of invalidity.” Id. Petitioner points to no prior decision of the Board where the issue of whether it would have been obvious to denature a krill product and then store it for 1 to 36 months before extraction was at issue. Moreover, to demonstrate that the added limitation would have been obvious, Petitioner relies heavily on the disclosures of Budziński, which was not at issue or analyzed in the prior proceedings. Pet. 39. Accordingly, Petitioner has not demonstrated that collateral estoppel applies to any issue in this proceeding. slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Breivik II’s disclosures would have understood that extraction of fresh krill is preferable over stored krill products, and that extraction should be performed on the fishing vessel as opposed to on land. PO Resp. 53. On this record, we agree with Patent Owner that Breivik II teaches or suggests a successful method of immediately processing and extracting fresh caught krill on-board a fishing vessel. We also agree that Breivik II suggests that its disclosed method may have advantages over conventional krill oil extraction processes. The disclosed advantages to immediately denaturing and extracting krill oil discussed in Breivik II, however, are only “expected,” not definitive, and we are directed to no disclosure in Breivik II to suggest that extraction from a stored, denatured krill meal was unlikely to result in a useful krill oil. See In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (noting that the case law “does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention”); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (explaining that a reference teaches away when it suggest that a particular course of action “is unlikely to be productive of the result sought by the applicant,” and that “[a] known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product of the same use”). Moreover, although, as noted in Breivik II, oxidation and enzymatic hydrolysis are of particular concern during krill processing procedures, Petitioner and Dr. Tallon persuasively demonstrate that the denatured and “stable” krill meal of Budziński was not subject to significant enzymatic hydrolysis or deterioration of krill lipid antioxidants, such as astaxanthin. Ex. 1006 ¶¶ 172, 421, 434; Ex. 1086 ¶¶ 50–51; see also Ex. 1010, 822–823 (Fricke disclosing storing denatured krill products for a period of time before extraction with a polar solvent). As such, we are not persuaded that Breivik II would have taught away from, or otherwise discouraged, one of ordinary skill in the art from extracting krill oil from a denatured and stable krill meal that has been stored from between 1 and 36 months. Patent Owner further argues that, consistent with Breivik II’s disclosures, Budziński instructs that krill should be “processed as soon as possible after capture” and that “[t]he only way to meet this requirement is to install processing facilities on-board the vessel.” PO Resp. 51 (citing Ex. 1008, 25). The required processing of Budziński, however, is to denature the problematic krill enzymes, not to extract krill oil. Ex. 1008, 25. And, once the krill products are denatured, Petitioner persuasively demonstrates that krill oil extraction could be successfully performed either on-board a vessel or on land after a storage period of up to 13 months. In view of the foregoing, we find that Breivik II and Budziński do not teach away from, or counsel against, extracting krill oil from a krill meal that had been denatured and stored for 1 to 36 months.” slip op. at 26

  Patent outcomesUS 9,816,046 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,816,046
• Rimfrost As v. Aker Biomarine Antarctic AsAll claims unpatentable
  PTAB · Apr 6, 2022 · IPR2020-01532 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over the asserted combinations of prior art, because the combined teachings establish every limitation and a reason to combine with a reasonable expectation of success.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “Collateral estoppel protects a party from having to litigate issues that have been fully and fairly tried in a previous action and adversely resolved against a party-opponent.” Ohio Willow Wood Co. v. Alps South, LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013). In the context of patent claims, collateral estoppel applies “[i]f the differences between the unadjudicated patent claims and adjudicated patent claims do not materially alter the question of invalidity.” Id. Petitioner points to no prior decision of the Board where the issue of whether it would have been obvious to denature a krill product and then store it for 1 to 24 months before extraction was at issue. Moreover, to demonstrate that the added limitation would have been obvious, Petitioner relies heavily on the disclosures of Budziński, which was not at issue or analyzed in the prior proceedings. Pet. 45; PO Resp. 13 (asserting that the prior art in the previous proceedings “did not include Budziński”). Accordingly, Petitioner has not demonstrated that collateral estoppel applies in this proceeding. slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Neither Patent Owner nor Dr. Jaczynski dispute Petitioner’s definition of a person of ordinary skill in the art. Ex. 2015 ¶ 8 (“For purposes of this proceeding, I will accept [Petitioner’s] definition of a [person of ordinary skill in the art].”). Upon review of the ’169 patent and the prior art of record, we find Petitioner’s uncontested definition reasonable and supported by the evidence of record. Accordingly, we adopt this definition of one of ordinary skill in the art for purposes of this Decision.” slip op. at 8

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

    “oil,” “denature lipases and phospholipases,” “polar solvent,” “astaxanthin esters,” “krill meal,” and “freshly harvested.” Pet. 32–39. With respect to “krill meal,” Petitioner contends this term should be construed to mean “processed krill with reduced water content from which krill oil can be extracted.” Id. at 38. Patent Owner provides proposed constructions for the terms “krill meal” and “denature lipases and phospholipases.” PO Resp. 7–12. With respect to “krill meal,” Patent Owner contends Petitioner’s proposed construction of “krill meal” is overbroad and ignores the ordinary and customary meaning of a meal, which is a “powder formed by particle size reduction of a starting material.” Id. at 8 (citing Ex. 2015 ¶¶ 14–16). Thus, Patent Owner construes “krill meal” to mean “a krill powder resulting from the processing of krill.” Id. Upon review of the parties’ arguments and supporting evidence, we determine that no terms of the ’169 patent require construction in order to resolve the disputes in this proceeding. See 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) (“[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 foundReasonable expectation foundUnpatentable

    “As noted by Patent Owner, the evidence of record suggests that one of ordinary skill in the art would have known that krill processing—both denaturation and krill oil extraction—could be successfully performed on board a ship. Ex. 1037, 3–4; Ex. 2019, 49:18–25 (Dr. Tallon testifying 12 Because Patent Owner relies on various disclosures of Breivik II as potentially counselling against combining the references to arrive at the claimed subject matter, we will consider these teachings in our Decision. We do not, however, consider Breivik II or Petitioner’s arguments with respect to this reference in determining whether the prior art teaches or suggests every limitation of the challenged claims. during cross-examination that flammable solvents can be successfully managed on a ship). At the same time, Petitioner and Dr. Tallon explain that the dangers of using flammable solvents on a vessel are still a relevant consideration. Ex. 1086 ¶¶ 97–99; Ex. 2019, 49:18–25 (Tallon Deposition). Moreover, Dr. Tallon also persuasively identifies several other benefits of land-based krill oil extraction, such as the reduced costs of outfitting each ship with its own processing equipment (which is often essentially identical to that used on land), the ability to extract krill oil to meet specific demand in the market, and cheaper access to fuel. Pet. 61 (citing Ex. 1006 ¶¶ 173, 443); see KSR, 550 U.S. at 418 (noting that market forces and design needs can provide the reason to combine or modify prior art references). Patent Owner presents no argument or evidence to refute these additional benefits of land-based extractions, other than to note that Dr. Tallon does not cite any specific documents to support his assertions. PO Resp. 45 (Patent Owner noting the testimony of Dr. Tallon). Upon review of the evidence of record, we credit the testimony of Dr. Tallon that one of ordinary skill in the art would have understood that, in addition to avoiding the need to manage the use of flammable solvents at sea, there were a number of other benefits to land-based extractions of krill oil that would have motivated a skilled artisan to store the denatured krill products for between 1 and 24 months, as recited in claim 1.” slip op. at 25

  Patent outcomesUS 9,644,169 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,644,169
• Unified Patents Inc. v. Ideahub, Inc.All claims unpatentable
  PTAB · Feb 7, 2022 · IPR2020-01338 · APJ Michael T Cygan · IPR · Final written decision

  Claims 1–9 are unpatentable; substitute claims 13–16 are denied as obvious over Chen, OAI, 3GPP, and Brueck, and claims 17–20 are withdrawn.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert discountedDenied

    “B. Patent Owner’s Motion under § 42.64(c) is denied as based on untimely objections to testimony. Patent Owner styled its Motion as a “Motion to Exclude Petitioner’s” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner offers an assessment as to the level of skill in the art as of” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “9. Rationale to combine Chen and OAI” slip op. at 39

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “8. Whether OAI is Analogous Prior Art Petitioner set forth reasons why OAI is analogous art in its Petition.” slip op. at 34

  Patent outcomesUS 8,645,562 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 8,645,562
• Sealed Air Corporation v. Ranpak Corp.All claims unpatentable
  PTAB · Jan 12, 2022 · IPR2020-01249 · APJ Wesley B Derrick · IPR · Final written decision

  Claims 13–15 are unpatentable as obvious over Kirkpatrick; the Board did not reach the alternative grounds.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner fails to cite any authority to support its argument that we should, in effect, disregard Mr. Klass’ testimony as to the level of ordinary skill in the art because he is not a person of ordinary skill in what Patent Owner contends is the relevant field. See PO Resp.; PO Sur-Reply. Patent Owner’s counsel similarly was unable to identify any such authority at the hearing. Tr. 42:9–15. Further, Mr. Klass’ testimony was not that he is not a person of ordinary skill in the art, but rather that his opinions set forth in his earlier declaration would not be different under the level of ordinary skill as defined by Mr. May. Ex. 1028 ¶¶ 4–5. On this record, we find Mr. Klass’ testimony well-supported as it pertains to relevant issues and see no reason to summarily disregard it. See Exs. 1002, 1028. Complete overlap between a witness’ technical qualifications in the field of the invention is not necessary for the witness’ testimony to be admissible. See SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010); see also Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019 (“CTPG”)5 at 34 (“There is . . . no requirement of a perfect match between the expert’s experience and the relevant field.”). Nor must they themselves be a person of ordinary skill in the art, but only that they are “qualified in the pertinent art.” CTPG at 34 (citing Sundance, Inc. v. DelMonte Fabricating Ltd., 550 F.3d 1356, 136364 (Fed. Cir. 2008)). Mr. Klass’ education includes a minor in Pulp & Paper Technology (Ex. 1006) and his lengthy experience in the pulp and paper industry includes work—as a process engineer—involving splicing and corrugators (Ex. 1002 ¶ 8). Mr. Klass has the “knowledge, skill, experience, training, [and] education” of a “specialized” nature that is likely to “assist the trier of fact to understand the evidence.” Fed. R. Evid. 702. Accordingly, we find Mr. Klass has sufficient relevant technical expertise to consider and weigh his testimony as we have in this decision. See SEB S.A., 594 F.3d at 1373.” slip op. at 8

  • Skill levelSkill level board ownDecided for petitioner

    “On this record, we determine that a person of ordinary skill in the relevant art would have included those with a bachelor’s degree in mechanical or paper engineering with at least a year’s experience relating to producing cushioning materials, dunnage pads, and other protective packaging. As admitted by Patent Owner, production of such materials using kraft paper stock was known. PO Resp. 14. As to the use of double-sided adhesive, we do not agree with Patent Owner that it was unknown to the person of ordinary skill in the art because using double-sided tape to join rolls of sheet stock was known in the wider field of paper processing and we find that field reasonably includes producing paper cushioning products, and that such related knowledge reasonably would also have been within the knowledge of a skilled artisan in the “cushioning conversion machine” field as the same or similar paper cushioning products are produced. Moreover, regardless of whether double-sided tape was used in what Patent Owner contends is the “cushioning conversion machine” field, Mr. May’s testimony is limited to it not being used in that field, not that double-sided tape itself was not known to one of ordinary skill in the art in the field. Ex. 2001 ¶¶ 53–57. It reasonably follows that a person having knowledge of double-sided tape would also have knowledge of joining together sheets of paper or other stock using double-sided tape. Further, to the extent that Patent Owner and Mr. May rely on “cushioning conversion machines” differing from paper processing machines that produce paper cushioning products, on this record, there is insufficient evidence of a meaningful difference in their complexity, size, or operation. For example, Patent Owner relies heavily on the paper processing machines including machinery to allow splicing on the fly, but the prior art also teaches that non-continuous roll-to-roll splicing can be used. See Ex. 1010, 1:13–16 (disclosing that a splicing tape system “is applicable both to systems in which the splice is made on the fly and to systems in which the splice is made while the running web is stationary”); Ex.1017, 1:15–19 (disclosing that “[t]he splicing operation can be performed in a static or a dynamic mode.”). As to size, similarly, Patent Owner relies on the machinery for paper making or producing corrugated cardboard being larger than “cushioning conversion machines,” but there is no clear distinction between the two as to size, as discussed below. Also, there is no evidence that paper processing machines forming paper cushioning products from paper itself do not do so in the same general manner as the ’096 patent. Accordingly, finding no meaningful distinction to “cushioning conversion machines,” we discern no meaningful difference in the knowledge of the skilled artisan as it relates to the challenged claims. Moreover, to the extent that there would be a narrower “cushioning conversion machine” field that did not include the use of double-sided tape, as Patent Owner contends, there would be no difference in the outcome of this case. As to obviousness, the scope of analogous prior art is not limited to the field of inventor’s endeavor, but also includes references that are “still reasonably pertinent to the particular problem with which the inventor is involved.” See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). As discussed below, we find Kirkpatrick reasonably pertinent to the particular problem with which the inventor is involved.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “On this record, we determine that the preamble’s recitation of “sheet stock material for use in a cushioning conversion machine” is a statement of intended use and does not constitute a limitation. In doing so, we must construe the meaning of the term “cushioning conversion machine.” In construing “cushioning conversion machine,” we note there is no guidance elsewhere in the remaining claim language as to its meaning, including in other claims, and so turn to the specification of the ’096 patent. See Phillips, 415 F.3d at 1312–13, 1315. The ’096 patent states that “[c]ushioning conversion machines convert [paper] sheet stock material . . . into a cushioning dunnage product.” Ex. 1001, 1:23–25 (Background). The ’096 patent also identifies its “invention [as] relat[ing] to machines for converting sheet stock material into a dunnage product.” Id. at 1:15–16 (Field of the Invention). Figures 1 and 2 are identified as top plan and side elevational views of a cushioning conversion machine. Id. at 3:57–63. The ’096 patent discloses that the “operation of the [cushioning] conversion machine 10 may be controlled by a controller, also in a well-known manner” (emphasis added). Id. at 6:42–44. The ’096 patent provides no disclosure as to the size of the cushioning conversion machine or the sheet stock material that it converts into cushioning dunnage product. See Ex. 1001.” slip op. at 20

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

    “On this record, Mr. May’s testimony of what “cushioning conversion machine” means in the field of paper dunnage machines fails to bear the weight required to limit the term as Patent Owner proposes. The ’096 patent identifies “cushioning conversion machines” to be machines that “convert sheet stock material . . . into a cushioning dunnage product.” Ex. 1001, 1:23–25 (Background). This is in effect the plain and ordinary meaning of the words themselves identifying a machine that converts feedstock into cushioning. Further, we find it consistent with the ’096 patent as a whole. Mr. May’s contrary testimony, as discussed above, lacks sufficient evidentiary basis to support Patent Owner’s contended construction over the plain and ordinary meaning. In effect, the basis for Mr. May’s testimony is limited to a showing that the meaning of the term encompasses a machine such as shown in the ’096 patent’s Figure 1 and 2. Mr. May’s testimony as to the PadPak machine being a “popular cushioning conversion machine[]” only goes to establishing that “cushioning conversion machine” encompasses similar machines, not that the term would be understood to be limited to the PadPak machine. Ex. 2001 ¶¶ 65–66. As to “cushioning conversion machines” being stop/start machines, the ’096 patent’s states that “the conversion machine 10 may be controlled by a controller” (emphasis 7 Elsewhere Patent Owner cites a number of its patents for using the term “cushioning conversion machine,” but this only supports that Patent Owner uses the term. See PO Resp. 27. added), not that it must be. Ex. 1001, 6:42–43. As to size, as discussed above, the ’096 patent provides no limitation as to the size of the apparatus or the sheet stock material. Petitioner highlights that another of Patent Owner’s patents, U.S. Patent No. 6,200,251 B1 (Ex. 1026, “the ’251 patent”), discloses “that in a ‘preferred cushioning conversion machine, the stock supply assembly is adapted to supply stock material which is between 25 to 35 inches wide’” (emphasis added). Pet. Reply 14 (citing Ex. 1026, 2:56–59). Petitioner also highlights that the ’251 patent was filed before the ’096 patent’s priority date and names the ’096 patent’s inventor among its inventors. Id.; compare Ex. 1026, codes (22), (75), with Ex. 1001, codes (22), (75). Such disclosure of a preferred embodiment in this circumstance is reasonable evidence that a skilled artisan would understand that a “cushioning conversion machine” included those “adapted to supply stock material . . . between 25 and 35 inches wide,” but not that such machines were limited to using such widths. The relevance of this is that the sheet stock material used is not manifestly distinct from the sheet stock material used for corrugators, ranging from 35 to 110 inches in width, where Patent Owner contends corrugators are distinct from “cushioning conversion machines.” See Ex. 2003, 95:22–96:6 (Mr. Klass testifying that the “width of commercial corrugators could be anywhere from 35 to 110 inches.”); PO Resp. 33–34 (relying on Mr. Klass’ testimony). Similarly, there is no persuasive evidence of a clear distinction in weight. Patent Owner and Mr. May rely on Mr. Klass’ testimony as to the weight of paper rolls for corrugators, focusing solely on testimony as to the weight of large rolls and ignoring that the testimony also set forth that “[s]ome corrugators use smaller rolls.” PO Resp. 34; Ex. 2001 ¶¶ 77–79; Pet. Reply 14–15; see also Ex. 1028 ¶¶ 21–22 (Mr. Klass’ testimony that “web feed rolls at the lower end of that range would be especially well suited for use in a cushioning conversion machine, even under [Patent Owner’s] narrow definition of such a machine” and that “my testimony certainly was not that Kirkpatrick’s web feed rolls would weigh tons.”). In sum, on this record, we determine that “cushioning conversion” slip op. at 22

  Patent outcomesUS 6,756,096 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,756,096
• Peag LLC (D/B/A Jlab Audio) / Audio Partnership LLC et al. v. Varta Microbattery GmbHAll claims unpatentable
  PTAB · Jan 5, 2022 · IPR2020-01214 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 1–8 are unpatentable as obvious over Kobayashi and skilled-artisan knowledge; the contingent motion to amend is granted for substitute claims 9–16.

  RulingsFinal written decision

  • ExcludeNew argument disregardedNew argument consideredGranted in part

    “regarding (1) the motivation to combine Kaun with Kobayashi based on dendrite formation (id. at 2–4), (2) additional motivations to modify Kaun with Kobayashi (id. at 4–6), (3) a reasonable expectation of success relating to Kaun’s central fastener (id. at 6–7), and (4) a reasonable expectation of success regarding Kobayashi’s modified electrode assembly (id. at 7–9). Because we do not reach Petitioner’s challenge based on the combination of Kaun and Kobayashi, as discussed below, we similarly need not reach Patent Owner’s Motion to Exclude Mr. Gardner’s opinions as they relate to the Kaun/Kobayashi combination. Accordingly, we dismiss Patent Owner’s Motion to Exclude these purportedly new opinions as moot. We address Patent Owner’s remaining concerns, relating to Mr. Gardner’s allegedly new testimony regarding Kobayashi, below.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision on Institution, we determined that a person of ordinary skill in the art at the time of the invention of the ’913 patent would have had at least a bachelor’s degree in mechanical engineering, or a similar field, such as materials engineering, chemical engineering, or physics with at least five years of experience in the field of battery design and manufacturing. A person with a master’s degree in one of the above fields could have less practical experience of approximately three years. A person with a PhD could have less practical experience, about two years. A person with less education but more relevant practical experience may also meet this standard. DI 20–21 (adopting Petitioner’s proposed definition). For purposes of this Final Written Decision, we maintain our determination from the Decision on Institution because neither party asserts that our decision depends on that determination and because the level of skill is consistent with the record. See PO Resp. 8 (stating that “[t]he claims are patentable regardless of which definition is used.”); see generally Pet. Reply; MTA Opp. 1–2 (“Regardless of which definition is used, however, Patent Owner’s Substitute Claims are still not patentable.”).” slip op. at 12

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

    “In their briefing, the parties dispute the meaning of three claim terms or phrases—(1) “insulating means”, (2) “connected to one another by at least one flat separator,” and (3) “button cell.” See Pet. 17–21; PO Resp. 9–12. We discern no material difference between the parties’ respective constructions. Additionally, Patent Owner, during the hearing, expressed a general view that claim construction was unlikely to affect the parties’ positions.6 In particular, Patent Owner states that “[o]ur position is that really nothing turns on claim construction. You don’t have to engage in claim construction in this case.” Tr. 56:18–20, 56:21–24 (explaining that 6 The parties disagree as to what the newly added phrase “the cup casing include[ing] a first part proximal to the flat bottom area and a second part disposed in the overlapping area, the first part of the casing being disposed radially inward with respect to the second part” means. See generally MTA Opp.; MTA Reply; MTA Sur-reply. Neither party proposes an express construction for this phrase. Id. We address the interpretation of this phrase below and only to the extent necessary to resolve the dispute raised by the parties’ substantive arguments. limitations were submitted for construction “to gain some benefit in the co-pending litigations.”). 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) (applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) in the context of an inter partes review). Because the outcome of our decision does not depend on either parties’ claim construction position, we determine that none of the identified claim terms require construction to resolve the issues in dispute in this proceeding.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “On this issue, we agree with Petitioner. Mr. Gardner explains that the skilled artisan “would further recognize that the output conductor can be comprised of various materials . . . . which could be metal or various materials . . . . [and] the shape of the output conductor is not particularly limited.” Ex. 1003 ¶ 322. Mr. Gardner further testifies that a person of ordinary skill in the art “would recognize, not only that metal foil conductors could be inserted into these grooves without difficulty, but also that the depth of the grooves can be altered in order to better accommodate metal foil output conductors.” Ex. 1041 ¶¶ 53, 70. We recognize Patent Owner’s argument that numerous factors must be considered and that conventional battery design does not necessarily translate to button cell designs (PO Resp 25–26), but as Mr. Gardner testifies, “this may be true in some cases, [but] the lessons and advantages of using techniques from conventional battery design and applying it to button cell would be obvious to a [person of ordinary skill in the art].” Ex. 1041 ¶ 103. He continues to explain that “[n]aturally, such transposition of techniques would require some modification and adjustments. . . . [and that] each of these adjustments, . . . would be well within the skill of a [person of ordinary skill in the art].” Id. ¶ 104 (describing, for example, “reducing the thickness of the conductor plates of Kobayashi”). We credit Mr. Gardner’s testimony. Moreover, Patent Owner does not allege that any proposed modification would be beyond the skill of a person of ordinary skill in the art or explain how any of the “constraints unique to . . . button cell design” (PO Resp. 25) are relevant to the proposed substitution of a metal foil for a metal terminal electrode plate. See generally id.; Sur-reply. Finally, Patent Owner argues that “[r]eliance upon the general knowledge of a [person of ordinary skill in the art] to provide a missing element in a combination of references is an exception rather than the rule” and “is particularly true where the proposed modification goes to the essence of the claims.” PO Resp. 26. Patent Owner states that “Petitioners have provided no more than ‘conclusory statements and unspecified expert testimony’ to supply a metal foil that is admittedly missing from Kobayashi, and is not shown in any other button cell art.” Id. at 27. We disagree. As the Federal Circuit has explained ‘common sense and common knowledge have their proper place in the obviousness inquiry,’ (a) invoking ‘common sense . . . to supply a limitation that was admittedly missing from the prior art’ should generally only be done when the [missing] limitation in question [is] unusually simple and the technology particularly straightforward;’ and (b) references to common sense ‘cannot be used as a wholesale substitute for reasoned analysis and evidentiary support’ Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1338 (Fed. Cir. 2020)(quoting Arendi S.A.R.L v. Apple Inc., 832 F.3d 1355, 1361–1362 (Fed. Cir. 2013)). Here, Petitioner proposes to substitute a metal foil for a metal terminal electrode plate to provide contact with the inner surface of the button cell housing. Ex. 1006 ¶ 34. As detailed above, Petitioner and Mr. Gardner direct our attention to the prior art of record which suggests use of foil within small battery cells to provide electrical contact was well-known and explains why the skilled artisan would have reduced the thickness of the terminal electrode plate to maximize the available space for active electrode components. Accordingly, unlike the expert in Arendi, Petitioner here provides more than “conclusory statements and unspecific expert testimony.” Arendi, 832 F.3d at 1366.” slip op. at 22

  Patent outcomesUS 9,799,913 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,799,913
• Peag LLC (D/B/A Jlab Audio) / Audio Partnership LLC et al. v. Varta Microbattery GmbHAll claims unpatentable
  PTAB · Jan 5, 2022 · IPR2020-01212 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 1–12 are unpatentable as obvious over Kobayashi and Kaun; the contingent motion to amend is granted for substitute claims 14–25.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “that “Kaun discloses that the cell is sealed ‘by a ‘U’ shaped insulator/gasket 32 . . . to seal the cell without pressure-loading,’” and therefore, venting via a pressure release seal is not required. Pet. 64 (citing Ex. 1005 ¶ 120). In an alternate embodiment, Kaun provides a means to relieve gas pressure “via the peripheral gasket which can reseal after an event.” Ex. 1005 ¶ 91. As Petitioner explains, “Kaun discloses that it is sealed, but upon the application of certain conditions, the internal pressure of gases within the cell can cause gases to vent. During such events, Kaun discloses ‘[t]he specified limit for internal pressure is handled by release via the peripheral gasket which can reseal after an event.’” Pet. Reply 13 (citing Ex. 1041 ¶¶ 37–39; Ex. 1005 ¶¶ 91, 101). Thus, while Kaun discloses venting to prevent pressure build up, Kaun “is otherwise sealed at all times during functioning.” Id. (citing Ex. 1041 ¶¶ 38–39; Ex. 1005 ¶ 101). Neither the ’835 patent nor Patent Owner’s own proposed construction of “closed without being beaded over” requires closure at all times. Furthermore, Mr. Gardner testifies that “[i]f a battery which, upon application of significant internal pressure, would be considered not ‘closed’ at other times, th[e]n almost no battery could be considered closed. [Because] [a]ny battery, when subjected to certain pressures, would leak or burst.” Ex. 1041 ¶ 39. We credit Mr. Gardner’s undisputed testimony in this regard. Mr. Gardner reasons that a person of ordinary skill in the art would understand that Kaun is closed.” Id. Dr. Peckerar similarly testifies that Kaun shows a housing that is closed without being beaded over. Ex. 1034, 131:4–11; 237:19–238:22 (describing Kaun as “closed during normal operation”). Accordingly, the record evidence supports Petitioner’s assertion that the combination of Kobayashi and Kaun suggests a button cell that is closed without being beaded over.” slip op. at 28

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

    “We discern no material difference between the parties’ respective constructions. Additionally, Patent Owner, during the hearing, expressed a general view that claim construction was unlikely to affect the parties’ positions.8 In particular, Patent Owner states that “[o]ur position is that really nothing turns on claim construction. You don’t have to engage in 8 The parties disagree as to what the newly added phrase “the cup casing include[ing] a first part proximal to the flat bottom area and a second part disposed in the overlapping area, the first part of the casing being disposed radially inward with respect to the second part” means. See generally MTA Opp.; MTA Reply; MTA Sur-reply. Neither party proposes an express construction for this phrase. Id. We address the interpretation of this phrase below and only to the extent necessary to resolve the dispute raised by the parties’ substantive arguments. claim construction in this case.” Tr. 56:18–20, 56:20–24 (explaining that limitations were submitted for construction “to gain some benefit in the co-pending litigations.”). 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) (applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) in the context of an inter partes review). Because the outcome of our decision does not depend on either parties’ claim construction position, we determine that none of the identified claim terms require construction to resolve the issues in dispute in this proceeding.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “Thus, Patent Owner identifies three claimed features—i.e., the jelly- roll configuration, the insulating layer, and a housing closed without being beaded over—as responsible for the improved performance of the VARTA CoinPower® button cell batteries. Id. However, Patent Owner’s declarants testify further and explain that it is the combination of the three identified features, in addition to a flat foil conductor resting flat between the electrode top and housing and welding the foil conductor from outside the housing, that are responsible for improved performance. In particular, Mr. Miehlich, employed in VARTA’s marketing and sales department, testifies that the new cell design, which “provided unprecedented increases in performance, including in energy density, charge capacity, and cycling stability,” consisted of a “jelly roll electrode coil packed tightly into an uncrimped, button-like housing. The electrode coil was protected against short-circuiting by [an] insulating means, and was connected to the cell terminals by a flexible flat foil conductors resting flat between the electrode top and housing, and welded to the housing components from the outside. These features are all found in the claims of the VARTA patents here under review. Ex. 2045 ¶¶ 15–16. And, Dr. Lindner, one of the named inventors of the ’835 patent, testifies that the complex issues we faced were how to safely pack the required amount of electrode material into the very small “button”-sized housing and protect it against short circuits; how to connect the “jelly roll” electrode to the terminals in such a confined space without itself consuming much volume, and how to seal the top and bottom of the cell housing, all while accommodating the expansion and contraction of the electrode winding and the resulting mechanical forces. Ex. 2046 ¶ 33. According to Dr. Linder, the jelly-roll configuration with an insulator, flexible foil output conductors, sealing the cell without crimping, and welding the foil conductors from outside the housing each contributed to the improved battery performance. Id. ¶¶ 34–43. Thus, it is the combination of five elements—not the three claimed in the ’835 patent—that are purportedly responsible for the “vastly increased performance characteristics” of the CoinPower® products. Id. ¶ 43; see also id. ¶ 45 (noting that “various aspects of our invention are covered by 10 issued patents, including the four United States patents here under review” (emphasis added)); Tr. 84:24–85:10 (explaining that welding, for example, is “also part of the success”). Like the patent owner in Fox Factory, “[i]n light of the patentee’s own assertions about the significance of the unclaimed features, no reasonable fact finder could conclude that these features are insignificant.” Fox Factory, 944 F.3d 1375. As a result, the patent claims are not coextensive with the CoinPower® products because those products include “‘critical’ unclaimed feature[s] that [are] claimed by a different patent and materially impacts the product’s functionality.” Id.” slip op. at 40

  Patent outcomesUS 9,153,835 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,153,835
• Peag LLC (D/B/A Jlab Audio) / Audio Partnership LLC et al. v. Varta Microbattery GmbHAll claims unpatentable
  PTAB · Jan 5, 2022 · IPR2020-01213 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1–8 are unpatentable as obvious over Kobayashi and Kwon; substitute claims 10–14, 16, and 17 are allowed, while the motion to amend is denied as to claim 15.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “On this issue, we agree with Petitioner. Mr. Gardner explains that the skilled artisan “would further recognize that the output conductor can be comprised of various materials . . . . which could be metal or any various materials [and] the shape of the output conductor is not particularly limited.” Ex. 1003 ¶ 322. Mr. Gardner further testifies that a person of ordinary skill in the art “would recognize, not only that metal foil conductors could be inserted into these grooves without difficulty, but also that the depth of the grooves can be altered in order to better accommodate metal foil output conductors.” Ex. 1041 ¶¶ 53, 70. We recognize Patent Owner’s argument that numerous factors must be considered and that conventional battery design does not necessarily translate to button cell designs (PO Resp. 20– 21), but as Mr. Gardner testifies, “this may be true in some cases, [but] the lessons and advantages of using techniques from conventional battery design and applying it to button cell would be obvious to a [person of ordinary skill in the art].” Ex. 1041 ¶ 103. He continues to explain that “[n]aturally, such transposition of techniques would require some modification and adjustments. . . . [and that] each of these adjustments, . . . would be well within the skill of a [person of ordinary skill in the art].” Id. ¶ 104 (describing, for example, “reducing the thickness of the conductor plates of Kobayashi”). We credit Mr. Gardner’s testimony. Moreover, Patent Owner does not allege that any proposed modification would be beyond the skill of a person of ordinary skill in the art or explain how any of the “difficulties in manufacturing a button cell” (PO Resp. 52) are relevant to the proposed substitution of a metal foil for a metal terminal electrode plate. See generally id.; Sur-reply. Thus, based on the evidence and argument of record, we determine that the combination of Kobayashi and Kwon, and the general knowledge of those skilled in the art, would suggest the use of foil in place of Kobayashi’s terminal electrode plates, and that the foil would bear flat on one of the lateral ends of the electrode separator assembly.” slip op. at 24

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision on Institution, we determined that a person of ordinary skill in the art at the time of the invention of the ’858 patent would have had at least a bachelor’s degree in mechanical engineering, or a similar field, such as materials engineering, chemical engineering, or physics with at least five years of experience in the field of battery design and manufacturing. A person with a master’s degree in one of the above fields could have less practical experience of approximately three years. A person with a PhD could have less practical experience, about two years. A person with less education but more relevant practical experience may also meet this standard. DI 20 (adopting Petitioner’s proposed definition). For purposes of this Final Written Decision, we maintain our determination from the Decision on Institution because neither party disputes that determination and because the level of skill is consistent with the record. See PO Resp. 7 (person of ordinary skill “would possess a Bachelor’s degree in electrical, mechanical or chemical engineering or equivalent [and] would also have two to three” slip op. at 12

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

    “We discern no material difference between the parties’ respective constructions. Additionally, Patent Owner, during the hearing, expressed a general view that claim construction was unlikely to affect the parties’ positions. In particular, Patent Owner states that “[o]ur position is that really nothing turns on claim construction. You don’t have to engage in claim construction in this case.” Tr. 56:18–20, 56:20–22 (explaining that limitations were submitted for construction “to gain some benefit in the co-pending litigations.”). 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) (applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) in the context of an inter partes review). Because the outcome of our decision does not depend on either parties’ claim construction position, we determine that none of the identified claim terms require construction to resolve the issues in dispute in this proceeding.” slip op. at 13

  • ExcludeMotion to exclude, deniedMixed

    “We are not persuaded that the identified portions of Mr. Gardner’s Supplemental Declaration are improper. In the Petition, Petitioner alleged that a person of ordinary skill in the art would have had reason to substitute known metal foils for the metal conductor plates of Kobayashi in order to reduce the size of inactive materials and improve performance. Pet. 69–70 (citing Ex. 1003 ¶ 323). In its Response, Patent Owner argued, among other things, that the metal foil lacks the requisite rigidity to support the remaining components of the winding axis core (PO Resp. 26–27, 31) and that because metal connecting plates 4a and 5b are positioned within recesses of insulating plates 8 and 9, replacing the metal connecting plates with metal foils would result in an unreliable connection because the metal foil would become embedded within the grooves of the insulating plates (id. at 28–29, 30). Mr. Gardner’s supplemental testimony specifically addresses Dr. Peckerar’s and Patent Owner’s concerns that metal foils would be unsuitable in Kobayashi due to their flexibility and thickness as compared to the insulating plates. Ex. 1041 ¶¶ 53 (“the depth of the grooves can be altered in order to better accommodate metal foil output conductors”), 70, 71 (explaining that it is the winding core that provides structure not the output conductor plates), 81, 86 (explaining that the person of ordinary skill in the art could either adjust the size of the output conductors or the depth of the cavities themselves), 87. Therefore, Mr. Gardner’s testimony that the ordinarily skilled artisan would have understood how to account for the technical challenges Patent Owner identified properly responds to arguments raised by Patent Owner in its Patent Owner response. Accordingly, we deny Patent Owner’s Motion to Exclude as to Mr. Gardner’s testimony on this issue.” slip op. at 9

  Patent outcomesUS 9,799,858 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,799,858

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.