- PTAB · Nov 25, 2024 · IPR2024-00839 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR for claims 1–20 on all asserted grounds, finding a reasonable likelihood of unpatentability on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After considering the evidence and arguments presented in the Petition and Preliminary Response, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’863 patent. At this stage of the proceeding, however, we have not made a final determination with respect to the patentability of the challenged claims. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review is instituted for claims 1–20 of the ’863 patent on the unpatentability grounds asserted in the Petition; and” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that “a person of ordinary skill in the art (‘POSITA’) would have had a minimum of an undergraduate degree in electrical engineering, mechanical engineering, or physics and at least 2 years of experience in micro-optic based security features.” Pet. 11 (citing Ex. 1003 ¶¶ 88–94). Patent Owner proposes that a POSITA “would have had an undergraduate degree in electrical engineering, mechanical engineering, physics, or a similar field and at least 2 years of experience in micro-optic based security features.” Prelim. Resp. 7–8. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art with the exception of the phrase “at least,” which we determine to create a vague, open-ended upper bound for the level of ordinary skill in the art. Unlike Patent Owner’s proposal, Petitioner’s proposal has evidentiary support. Pet. 11 (citing Ex. 1003 ¶¶ 88–94). Further, Petitioner’s proposal is consistent with the ’863 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no claim terms require express construction to resolve the challenges here.” Pet. 11. “Patent Owner agrees that the terms do not require construction for purposes of evaluating the Petition.” Prelim. Resp. 8. We do not need to construe any terms explicitly to reach our decision on institution. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where construction is not material to the dispute).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Likewise, Fuhse925 does not explicitly disclose a random selection of micro mirrors within the base of a cone. See generally Ex. 1008. At most, Fuhse925 teaches that the normal vector of the reflective facets can have a parallel component N∥, which can vary randomly. Ex. 1008, 3:3–6 (“The second inclination component of the planar facets advantageously varies irregularly in the spreading range, especially according to a random distribution.”), 9:1–31, 11:14–27. Petitioner contends that a POSITA would look to Fuhse925 for explicit detail as to how to implement Fuhse847’s desired normal vector to direct the light to a focal point for the assigned light spot. Pet. 54–56. This, however, does not sufficiently explain why a POSITA would have combined Fuhse847’s teaching of assigning a group of micro mirrors within a sphere of influence to every light spot in an image, with Fuhse925’s teaching of a normal vector of the reflective micro mirrors having a randomly varying parallel component N∥, to arrive at a random selection of a set of micro mirrors from a plurality of the micro mirrors located in a base of a cone. On the record before us at this stage of the proceeding, we are not persuaded that the combination of Fuhse847, Rich, and Fuhse925 teaches the additional limitation of claim 3. Our determination whether claim 3 would have been obvious over these references is best left for trial after full development of the record.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,448,863 - PTAB · Nov 25, 2024 · IPR2024-00838 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR of claims 1–12 on all asserted grounds, finding a reasonable likelihood that claim 1 would be unpatentable over Fuhse262.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an 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.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’191 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art with the exception of the phrase “at least,” which creates a vague, open-ended upper bound for the level of ordinary skill in the art. Unlike Patent Owner’s proposal, Petitioner’s proposal has evidentiary support. Pet. 15 (citing Ex. 1003 ¶¶ 82–87 (testimony of Dr. Hesselink)). Further, Petitioner’s proposal is consistent with the ’191 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that Petitioner’s and Patent Owner’s proposals are very similar and that our analysis, at this stage of the proceeding, would be the same regardless of which proposal we adopt.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no claim terms require express construction.” Pet. 15. “Patent Owner agrees that the terms do not require construction for purposes of evaluating the Petition.” Prelim. Resp. 6. We do not need to construe any terms explicitly to reach our decision on institution. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where construction is not material to the dispute).” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“term voxel. See generally Ex. 1006; Ex. 1003 ¶ 176. However, on the record before us at this stage of the proceeding, we are persuaded by the Petition’s analysis and evidence (in particular, Dr. Hesselink’s testimony), that Fushe262 teaches a voxel created by intersecting two or more beams of the reflected ambient light. Dr. Hesselink’s testimony sufficiently explains that light beams reflecting from the entire surface of Fuhse262’s micromirrors would create a voxel when the light beams intersect, as shown by Annotated Figure 10. On this record, Patent Owner’s arguments as to the teachings of Fuhse262 are not sufficiently supported by evidence and amount to mere attorney argument. Mere attorney argument has little evidentiary value and does not outweigh the testimonial evidence of Dr. Hesselink, which presently stands unrebutted. See Icon Health & Fitness, Inc. v. Strava Inc., 849 F.3d 1034, 1046 (Fed. Cir. 2017) (“Attorney argument is not evidence or explanation in support of a conclusion.”); Invitrogen Corp. v. Clontech Lab., Inc., 429 F.3d 1052, 1068 (Fed. Cir. 2005) (“Unsubstantiated attorney argument regarding the meaning of technical evidence is no substitute for competent, substantiated expert testimony.”); In re Payne, 606 F.2d 303, 315 (CCPA 1979) (citing In re Lindner, 457 F.2d 506, 508 (CCPA 1972)) (“Arguments of counsel unsupported by competent factual evidence of record are entitled to little weight.”).” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,901,191 - Giesecke+devrient GmbH / Giesecke+devrient Currency Technology GmbH et al. v. Lumenco, LLCInstitutedPTAB · Nov 25, 2024 · IPR2024-00836 · APJ Nabeel U Khan · IPR · Institution
The Board instituted inter partes review of claims 1, 6–14, 28, and 32–39 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage of the proceeding, having reviewed Petitioner’s contentions and Patent Owner’s arguments to the contrary, we determine Petitioner has established a reasonable likelihood that Fuhse262 teaches limitation 1b.5. Dr. Hesselink testifies that while Fuhse262 depicts rays that form a light spot, the rays depicted are “chief rays” that depict only the center rays of light for each optical element. Ex. 1003 169–170. Ambient light, however, reflects from the entire surface of the mirrors and forms reflected beams of light, not just the center rays aimed at the center point. Ex. 1003 ¶ 170. The volume of the voxel is set by the intersection of these beams and the center of the voxel is the point at which the center rays of each beam intersect. Ex. 1003 ¶ 171. We determine Dr. Hesselink’s testimony, which is unrebutted at this stage of the proceeding, explaining that light beams reflected from the entire surface of Fuhse262’s micromirrors would create a voxel when they intersect with each other, provides sufficient support for Petitioner’s contentions. Patent Owner argues that light beams that intersect in an irregular manner would not necessarily form a voxel, but does not explicitly show that Fuhse262’s light beams do, in fact, intersect in an irregular manner. Moreover, Patent Owner’s argument is unsupported by expert testimony or other evidence at this stage of the proceeding and does not outweigh Dr. Hesselink’s testimony under the reasonable-likelihood standard.” slip op. at 16
- Skill levelSkill level petitioner adoptedOther
“skill in the art in the field “would have had a minimum of an undergraduate degree in electrical engineering, mechanical engineering, or physics and at least 2 years of experience in micro-optic based security features.” Pet. 12 (citing Ex. 1003, ¶¶ 68–74).” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“contentions and Patent Owner’s arguments to the contrary, we determine Petitioner has established a reasonable likelihood that Fuhse262 teaches limitation 1b.5. Dr. Hesselink testifies that while Fuhse262 depicts rays that form a light spot, the rays depicted are “chief rays” that depict only the center rays of light for each optical element. Ex. 1003 169–170. Ambient light, however, reflects from the entire surface of the mirrors and forms reflected beams of light, not just the center rays aimed at the center point. Ex. 1003 ¶ 170. The volume of the voxel is set by the intersection of these beams and the center of the voxel is the point at which the center rays of each beam intersect. Ex. 1003 ¶ 171. We determine Dr. Hesselink’s testimony, which is unrebutted at this stage of the proceeding, explaining that light beams reflected from the entire surface of Fuhse262’s micromirrors would create a voxel when they intersect with each other, provides sufficient support for Petitioner’s contentions. Patent Owner argues that light beams that intersect in an irregular manner would not necessarily form a voxel, but does not explicitly show that Fuhse262’s light beams do, in fact, intersect in an irregular manner. Moreover, Patent Owner’s argument is unsupported by expert testimony or other evidence at this stage of the proceeding and does not outweigh Dr. Hesselink’s testimony under the reasonable-likelihood standard.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“contentions and Patent Owner’s arguments to the contrary, we determine Petitioner has established a reasonable likelihood that Fuhse262 teaches limitation 1b.5. Dr. Hesselink testifies that while Fuhse262 depicts rays that form a light spot, the rays depicted are “chief rays” that depict only the center rays of light for each optical element. Ex. 1003 169–170. Ambient light, however, reflects from the entire surface of the mirrors and forms reflected beams of light, not just the center rays aimed at the center point. Ex. 1003 ¶ 170. The volume of the voxel is set by the intersection of these beams and the center of the voxel is the point at which the center rays of each beam intersect. Ex. 1003 ¶ 171. We determine Dr. Hesselink’s testimony, which is unrebutted at this stage of the proceeding, explaining that light beams reflected from the entire surface of Fuhse262’s micromirrors would create a voxel when they intersect with each other, provides sufficient support for Petitioner’s contentions. Patent Owner argues that light beams that intersect in an irregular manner would not necessarily form a voxel, but does not explicitly show that Fuhse262’s light beams do, in fact, intersect in an irregular manner. Moreover, Patent Owner’s argument is unsupported by expert testimony or other evidence at this stage of the proceeding and does not outweigh Dr. Hesselink’s testimony under the reasonable-likelihood standard.” slip op. at 16
§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,189,294 - Ascend Elements, Inc. v. Duesenfeld GmbHInstitutedPTAB · Nov 22, 2024 · IPR2024-00948 · APJ Kevin W Cherry · IPR · Institution
Instituted IPR on claims 1–3, 7–10, 12, 13, and 19 on all asserted grounds; Petitioner showed a reasonable likelihood of prevailing on the Hanisch-Dunagan combinations with added references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“d) Conclusion Regarding Claim 1 Based on the current record, we determine that Petitioner has shown a reasonable likelihood that it will prevail in demonstrating that claim 1 is unpatentable as obvious over Hanisch in view of Dunagan and Hayashi, Meador, or Shin. 5. Claims 2, 3, and 7–10 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’097 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 26
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner contends that one of ordinary skill in the art “would have had at least a master’s degree in chemical engineering, mechanical engineering, materials science/engineering, or a related field, and three to five years of experience in design and implementation of battery recycling processes.” Pet. 15–16. Patent Owner argues to the contrary that a person of ordinary skill in the art “would have [had] at least a Bachelor’s degree in electrical engineering, materials science, chemical engineering, or an equivalent field, as well as at least 2 to 3 years of academic or industry experience in the recycling or processing of lithium-ion batteries.” Prelim. Resp. 13. On the present record, neither party argues that the result would be any different should we adopt a different definition of a person of ordinary skill in the art. For purposes of this Decision, we adopt Patent Owner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’097 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner argues that “[t]he ’097 Patent expressly defines ‘drying’ to mean ‘the removal of at least one solvent in the conducting salt.’” Pet. 16 (quoting Ex. 1001, 2:23–25). Petitioner also argues that “[a]ll other terms should be given their plain and ordinary meaning under Philips and do not need further construction for the purposes of this Petition.” Id. Patent Owner argues that “[n]o claim terms require express construction to determine that the Petition does not establish a reasonable likelihood of unpatentability of any claim and, thus, deny institution.” Prelim. Resp. 13. Based on the present record, we need not expressly construe any claim terms at this time.6 See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“On the present record, we do not find the relationship between URT and Petitioner to be significant to the degree that raises concerns under Valve and General Plastic. In Valve, two factors affected the determination that there was a significant relationship between the two petitioners at issue: “Valve and HTC were co-defendants in the District Court litigation,” and “the petitions . . . challenge[d] the same claims of the [challenged] patent.” IPR2019-00062, Paper 11, 10. Here, one of these factors is absent, and the other is not entirely present. URT and Petitioner are not co-defendants in the related infringement lawsuit, which accuses only Petitioner. Ex. 2014, 1. As for the claims challenged in the two petitions, Patent Owner is correct that all claims challenged in the present proceeding are also challenged in IPR2024-00887, but the reverse is not true. The petition in IPR2024-00887 challenges claims 15–17 of the ’097 patent, none of which is challenged here. Compare Pet. 3, with IPR2024-00887, Paper 2, 4–5. Thus, there is a significant difference between the present situation and that in Valve.” slip op. at 31
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,050,097 - PTAB · Nov 20, 2024 · IPR2024-00887 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1–3, 7–10, 12, 13, and 15–19 on all asserted grounds, finding a reasonable likelihood that claim 12 is anticipated by LithoRec.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with 1 In the Introduction and section headings of the Petition, Petitioner identifies claims 1–3, 7–9, 12, 13, and 15–19 as the challenged claims. Pet. i–ii. In the substantive content of the Petition, however, Petitioner includes claim 10 as a challenged claim as well. Id. at 34–35. respect to at least one of the challenged claims, and we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have had a B.S. degree in electrical engineering, materials science, chemical engineering, or an equivalent field, as well as at least 2 to 3 years of academic or industry [experience] in the recycling or processing of lithiumion batteries.” Pet. 14. On the present record, Patent Owner does not contest Petitioner’s proposed definition of a person of ordinary skill in the art. Prelim. Resp. 19. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’097 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “[n]o claim construction is needed,” because “[t]he claims are unpatentable under any reasonable interpretation.” Pet. 15. That said, Petitioner directs us to alleged definitions of several terms in the specification or prosecution history of the ’097 patent. Id. at 15–17. Patent Owner argues that “[c]laim construction is not required to deny the Petition.” Prelim. Resp. 26. Based on the present record, we agree with both parties that we need not expressly construe any claim terms at this time.6 See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“In order to anticipate a claimed invention, a prior art reference must enable one of ordinary skill in the art to make the invention without undue experimentation.” Impax Labs., Inc. v. Aventis Pharms., Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008). In addition, “[a]n anticipatory reference need only enable subject matter that falls within the scope of the claims at issue, nothing more.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1381 (Fed. Cir. 2003). slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,050,097 - BTL Industries, Inc. v. Inmode Ltd.InstitutedPTAB · Oct 2, 2024 · IPR2024-00703 · APJ Robert A Pollock · IPR · Institution
The Board instituted IPR of claims 1–58 on all petition grounds, finding a reasonable likelihood that at least one claim would have been obvious over Edwards, Ingle, and Mosher.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 314. 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 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Further, a decision to institute may not do so on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art in the field of the ’511 patent would have had “a medical degree plus at least two years of experience in a field such as gynecology, urogynecology, or plastic surgery involving female genital anatomy, with clinical experience in the application of radiant energy to female genital tissue.” Ex. 1009, 8–9; Ex. 1010, 8. Petitioner here proposes a similar definition, specifically, “a medical doctor . . . [with] at least three years of experience in the non-surgical treatment of uro-gynecological conditions and/or the non-surgical cosmetic treatment of female genital tissues.” Pet. 6. Absent evidence or argument to the contrary, we apply Petitioner’s proposed definition, as it appears consistent with the prior art and is supported by the presently unopposed testimony of Dr. Berenholz. See Okajima v. Bourdeau, 261 F.3d 1350, 1355, (Fed. Cir. 2001) (the level of ordinary skill in the art may be reflected in the prior art itself); Ex. 1003 ¶¶ 28–31, 58–60.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“With respect to the challenged claims, Petitioner asserts that “no claim term requires construction—all terms should receive their ordinary and customary meaning in view of the patent specification.” Pet. 7 (citing Ex. 1003 ¶ 61). Accordingly, Petitioner contends that formal constructions are unnecessary. Id. (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. 2017) (explaining that only those terms need be construed “that are in controversy, and only to the extent necessary to resolve the controversy.”)). Petitioner, nevertheless, succinctly reviews the preliminary construction of certain terms of the ’511 patent claims in the ThermiGen IPRs, and the construction by the District Court in Viveve. See Pet. 8–11. We note first that, whereas these two sets of prior constructions may differ in focus or scope, we do not view them as in conflict. And although the preliminary constructions in the ThermiGen IPRs were conducted under the then-applicable broadest-reasonable-interpretation (BRI) standard, we are not presently aware of any reason that those definitions would differ under the Phillips standard, and we provisionally apply them here for clarity. And while we recognize that the Viveve constructions are not binding on this proceeding, the district court’s definitions are instructive and generally complementary to ThermiGen IPR constructions. Accordingly, we also provisionally apply them here for clarity. Although none of these terms are presently in dispute, we find it useful to clarify the meanings we apply at this stage of the proceeding. The parties are, of course, welcome to address the construction of any claim term at trial.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Mosher, and Ingle with a reasonable expectation of success of arriving at the claimed invention because 1) “loose vaginal or vulval tissue was a known problem facing women at the time,” 2) “Edwards, Mosher, and Ingle are all directed to methods for the non-invasive treatment of female uro-genital conditions, for therapeutic and/or cosmetic reasons,” and 3) each of the cited references teaches the application of radiant energy, including RF, to heat and denature collagen, thereby tightening and remodeling the affected tissues. See generally, Pet. 22–24; Ex. 1003 ¶¶ 84–91. More specifically, Petitioner relies on Edwards as providing general teachings of a non-invasive treatment using RF energy, and looks to Mosher and Ingle for details regarding parameters, techniques, and the physiological mechanism underlying heat-mediated collagen remodeling of female genital tissue. See Pet. 23. According to Petitioner, the asserted “combination is merely applying known techniques (Mosher/Ingle’s treatment methods) to a known method ready for improvement (Edward’s treatment method) to yield the predictable result of tightening via collagen denaturation.” Id.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,961,511 - Ravin Crossbows, LLC v. MCP IP, LLCInstitutedPTAB · Sep 12, 2024 · IPR2024-00524 · APJ Mitchell G Weatherly · IPR · Institution
Instituted review of claims 1–5 and 8–19 on the sole obviousness ground over Darlington and Islas.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). On April 24, 2018, the Supreme Court held that, under 35 U.S.C. § 314, the Office may not institute review of fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). Petitioner presents one ground, namely that the challenged claims are unpatentable as obvious in view of Darlington and Islas. Pet. 5. Patent Owner contends that the Petition should be denied in its entirety. For the reasons expressed below, we determine that Petitioner has demonstrated a reasonable likelihood of establishing that at least one claim is unpatentable. In accordance with the SAS decision and 37 C.F.R. § 42.108(a), we institute an inter partes review of all challenged claims of the ’831 patent on the sole ground proffered by Petitioner. B. Related Proceedings” slip op. at 2
- BurdenDecided for petitioner
“After reviewing Petitioner’s evidence, which is not disputed by Patent Owner, we find that the combination of Darlington and Islas sufficiently teaches the subject matter of limitations 1(e) and 1(f).” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts a person having ordinary skill in the art on the priority date of the ’831 patent: would have had (i) a Bachelor of Science degree in mechanical engineering, materials science, or a similar technical field; (ii) a working knowledge of and/or experience with projectile weapon (e.g., archery bow) operation and performance; and (iii) two to four years of experience with designing and manufacturing of consumer products. Pet. 4 (citing Ex. 1003 at ¶¶ 25–28). Patent Owner does not challenge Petitioner’s definition. See generally Prelim. Resp. For the purposes of this Decision, we apply Petitioner’s uncontested definition because it appears consistent with the problems addressed in the ’831 patent and the prior art. C. Claim Interpretation” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“2. Analysis The Federal Circuit instructs that: “[t]o demonstrate an actual reduction to practice, the applicant must have: (1) constructed an embodiment or performed a process that met all the limitations of the claim and (2) determined that the invention would work for its intended purpose.” Steed, 802 F.3d at 1318. “That is, to reduce any particular claim to practice, the applicant must have constructed an operational embodiment within the scope of that claim.” Nintendo of America Inc. v. iLife Technologies, Inc., 717 Fed. Appx. 996 (Fed. Cir. 2017) (addressing Steed’s above, two-prong standard). The Board may find an actual reduction to practice based on, for example, “testimony of the inventors, corroborating witnesses, and corroborating documentary evidence” (id. at 1002) if “[t]his evidence, taken together, is sufficient for a reasonable mind to conclude that the prototype created by the inventors . . . was within the scope of claims . . . and would work for its intended purpose” (id. at 1003). But if “[t]he prototype has not been shown to meet all the limitations of the[] claims, . . . the record thus lacks evidence sufficient to support the . . . conclusion [of an actual reduction to practice].” Id. at 1004 (citing Steed, 802 F.3d at 1318). “[A]n inventor’s testimony alone is insufficient to establish an earlier reduction to practice. Medichem[, S.A. v. Rolabo, S.L.], 437 F.3d [1157,] 1169–71.” “In the final analysis, each corroboration case must be decided on its own facts with a view to deciding whether the evidence as a whole is persuasive.” Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed. Cir. 1998) (quoting Berges v. Gottstein, 618 F.2d 771, 776 (C.C.P.A. 1980)).” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,909,831 - Fluidmaster, Inc. v. Danco, Inc.InstitutedPTAB · Sep 12, 2024 · IPR2024-00635 · APJ Robert J Silverman · IPR · Institution
The Board instituted IPR of claims 1–14 on the asserted §103 ground, finding a reasonable likelihood that Fluidmaster would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (footnote omitted). The Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d). Id. at 9 (referencing Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph)).” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition and the Preliminary Response (including any authorized submissions) “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.” For the reasons that follow, and solely for the purposes of this Decision, we determine that Petitioner’s asserted ground satisfies the standard for institution.” slip op. at 13
- BurdenDecided for petitioner
“particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d, 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). Although this Decision might appear to indicate that certain Patent Owner arguments would not be persuasive, we do not shift the ultimate burden away from Petitioner.” slip op. at 13
- Skill levelSkill level patent owner adoptedDecided for patent owner
“A PHOSITA in the field to which the ’698 Patent is directed would have had at least a Bachelor of Science degree in mechanical engineering or a related field or, as a substitute, at least two years of work or research experience in the design or development of toilet products, parts, and accessories. Prelim. Resp. 14. In view of the present record, we see no material difference between the level of skill proposed by Patent Owner and that proposed by Dr. Cameron. Accordingly, for purposes of this Decision, we adopt Patent Owner’s proposed definition of a POSITA, as it appears to be consistent with the ’698 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,934,698 - Ravin Crossbows, LLC v. MCP IP, LLCInstitutedPTAB · Sep 12, 2024 · IPR2024-00523 · APJ Arthur M Peslak · IPR · Institution
The Board instituted review of claims 1–6 and 9–20 on the § 103 ground over Darlington and Islas, finding a reasonable likelihood of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Considering the Petition, the Preliminary Response, the Preliminary Reply, and the Preliminary Sur-reply as well as all supporting evidence, we conclude that the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail in its challenge of at least one claim of the ’017 patent as unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all challenged claims of the ’017 patent on the ground stated in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts a person having ordinary skill in the art on the priority date of the ’017 patent: would have had (i) a Bachelor of Science degree in mechanical engineering, materials science, or a similar technical field; (ii) a working knowledge of and/or experience with projectile weapon (e.g., archery bow) operation and performance; and (iii) two to four years of experience with designing and manufacturing of consumer products. Pet. 4 (citing Ex. 1003 at ¶¶ 25–28). Patent Owner does not challenge Petitioner’s definition. See generally Prelim. Resp. For the purposes of this Decision, we apply Petitioner’s uncontested definition because it appears consistent with the problems addressed in the ’017 Patent and the prior art.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for patent owner
“Further, Patent Owner does not directly address Petitioner’s reasons why an ordinarily skilled artisan would have been motivated to combine the teachings of Darlington and Islas with a reasonable expectation of success. See generally Prelim. Resp. Rather, Patent Owner’s arguments against the proposed combination are based on the distinction between let out and take up ends of the cited references. See id. at 57–60. Patent Owner relies on the testimony of Dr. Reinholtz in support of this argument. However, Dr. Reinholtz merely restates Patent Owner’s arguments that an ordinarily skilled artisan would have recognized the distinction between the function of take up and let out ends of power cables and “would not have incorporated features from the ‘let out’ end of a power cable to the ‘take up’ end of a power cable because the ‘let out’ end and the ‘take up’ end perform different functions, namely, to ‘let out’ or ‘take up’ the power cable respectively.” Ex. 2007 ¶ 84. As we discussed above, at this stage of the proceeding, we preliminarily determine that this argument is not commensurate with the scope of claim 1. For these reasons, we find that Petitioner sufficiently shows that an ordinarily skilled artisan would have been motivated to combine Darlington and Islas with a reasonable expectation of success for the reasons stated by Mr. Lange. Ex. 1003 ¶¶ 55–61. His testimony is sufficiently supported by citations to Darlington and Islas as well as other references supporting his testimony of the knowledge of a person of ordinary skill in the art. Id. at ¶ 55 (citing Ex. 1007, 1008). Because his testimony is sufficiently based on evidence, Patent Owner’s contention that the proposed combination is based on improper hindsight is unavailing based on the present record. See In re Cree, 818 F.3d 694, 702, n.3 (Fed. Cir. 2016).” slip op. at 43
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“The crux of Patent Owner’s contentions that an ordinarily skilled artisan would not have been motivated to combine the teachings of Darlington and Islas is that the functions of the take up and let out ends of the cams disclosed in Darlington and/or Islas are different. To evaluate this argument, we first examine the language of claim 1. Claim 1 recites a first rotatable member and a second rotatable member. Ex. 1001, 6:55–57. Patent Owner’s “reverse wrap” concept, as claimed is recited with respect to only one of the rotatable members, i.e., the first rotatable member. Id. at 7:1–7. Claim 1 does not limit the first rotatable member to either a take up end or a let out end. See id. Patent Owner does not propose a construction of claim 1 that would limit the first rotatable member to a take up end. See generally Prelim. Resp. Consequently, at this stage of the proceeding, it appears arguments regarding allegedly different functions of the take up and let out ends of Darlington and/or Islas are not commensurate with the scope of claim 1. Further, Patent Owner does not directly address Petitioner’s reasons why an ordinarily skilled artisan would have been motivated to combine the teachings of Darlington and Islas with a reasonable expectation of success. See generally Prelim. Resp. Rather, Patent Owner’s arguments against the proposed combination are based on the distinction between let out and take up ends of the cited references. See id. at 57–60. Patent Owner relies on the testimony of Dr. Reinholtz in support of this argument. However, Dr. Reinholtz merely restates Patent Owner’s arguments that an ordinarily skilled artisan would have recognized the distinction between the function of take up and let out ends of power cables and “would not have incorporated features from the ‘let out’ end of a power cable to the ‘take up’ end of a power cable because the ‘let out’ end and the ‘take up’ end perform different functions, namely, to ‘let out’ or ‘take up’ the power cable respectively.” Ex. 2007 ¶ 84. As we discussed above, at this stage of the proceeding, we preliminarily determine that this argument is not commensurate with the scope of claim 1. For these reasons, we find that Petitioner sufficiently shows that an” slip op. at 42
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,354,017 - Ravin Crossbows, LLC v. MCP IP, LLCInstitutedPTAB · Sep 12, 2024 · IPR2024-00522 · APJ Arthur M Peslak · IPR · Institution
The Board instituted IPR on claims 1–4 and 7–19 based on Darlington and Islas, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314(a). See 37 C.F.R § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had (i) a Bachelor of Science degree in mechanical engineering, materials science, or a similar technical field; (ii) a working knowledge of and/or experience with projectile weapon (e.g., archery bow) operation and performance; and (iii) two to four years of experience with designing and manufacturing of consumer products. Pet. 3–4 (citing Ex. 1003 at ¶¶ 25–28). Patent Owner does not challenge Petitioner’s definition. See generally Prelim. Resp. For the purposes of this Decision, we apply Petitioner’s uncontested definition because it appears consistent with the problems addressed in the ’989 patent and the prior art.” slip op. at 12
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“contemporaneous knowledge of the activities of Mr. McPherson in or around 2008 or the bows that are pictured in Exhibits 2002 and 2003. See generally Ex. 2007. Rather, Dr. Reinholtz testifies “that the 2009 model year Mission Menace bow and the 2009 Mathews McPherson Series Monster bow embodied the claim limitations of the ’989 patent” based on his comparison of the disclosure in the Krenz articles “to the claims of the ’989 patent . . . from the perspective of a” person of ordinary skill in the art. Id. ¶ 32. Due his lack of personal contemporaneous knowledge, his testimony cannot corroborate Mr. McPherson’s testimony concerning reduction to practice and we give it no weight in that regard.13 We turn first to the Krenz articles. Mr. Ozanne14 holds the position of” slip op. at 21
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner
“reduction to practice, the applicant must have: (1) constructed an embodiment or performed a process that met all the limitations of the claim and (2) determined that the invention would work for its intended purpose.” Steed, 802 F.3d at 1318. “That is, to reduce any particular claim to practice, the applicant must have constructed an operational embodiment within the scope of that claim.” Nintendo of America Inc. v. iLife Technologies, Inc., 717 Fed. Appx. 996 (Fed. Cir. 2017) (addressing Steed’s above, two-prong standard). The Board may find an actual reduction to practice based on, for example, “testimony of the inventors, corroborating witnesses, and corroborating documentary evidence” (id. at 1002) if “[t]his evidence, taken together, is sufficient for a reasonable mind to conclude that the prototype created by the inventors . . . was within the scope of claims . . . and would work for its intended purpose” (id. at 1003). But if “[t]he prototype has not been shown to meet all the limitations of the[] claims, . . . the record thus lacks evidence sufficient to support the . . . conclusion [of an actual reduction to practice].” Id. at 1004 (citing Steed, 802 F.3d at 1318). “[A]n inventor’s testimony alone is insufficient to establish an earlier reduction to practice. Medichem[, S.A. v. Rolabo, S.L.], 437 F.3d [1157,] 1169–71.” “In the final analysis, each corroboration case must be decided on its own facts with a view to deciding whether the evidence as a whole is persuasive.” Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed. Cir. 1998) (quoting Berges v. Gottstein, 618 F.2d 771, 776 (C.C.P.A. 1980)).” slip op. at 20
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,683,989
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.