- PTAB · Jul 22, 2024 · IPR2024-00278 · APJ Michael A Valek · IPR · Institution
The Board instituted inter partes review of claims 1, 4–6, 9, 10, 12, 13, and 15–17 on all grounds presented in the Petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Considering the arguments and evidence of record, we determine that the Petition demonstrates “a reasonable likelihood that [P]etitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill in the art (“POSITA”) would have had (1) a Doctor of Medicine (M.D.) or at least a bachelor of science degree in engineering or a related discipline and (2) at least three years of experience in the clinical use, design, development, and/or testing of medical devices, including medical devices that deliver energy to tissue. Pet. 19–20 (citing Ex. 1002 ¶¶ 24–28). Patent Owner does not respond to Petitioner’s description of a POSITA in its Preliminary Response. At this stage, we find Petitioner’s description of the level of ordinary skill in the art to be sufficiently supported by the record and apply it for purposes of this decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends “the Board need not construe any terms because the Challenged Claims are invalid under any reasonable interpretation.” Pet. 20. At this stage, Patent Owner does not respond to this contention, nor propose any express claim construction of its own. For this decision, and given that neither party seeks any express claim construction, we determine that no express claim construction is necessary. To the extent our consideration of Petitioner’s grounds touches on any implicit issues of claim construction, those are addressed in our analysis below.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“several reasons. First, Petitioner’s reasoning for combining Edwards-535 and Stern is supported by testimony from Dr. Martin who identifies multiple, specific reasons for the combination. Ex. 1002 ¶¶ 103–122, 129–148. This testimony is not conclusory and is supported with numerous citations to other evidence of record. Id. Patent Owner does not offer any countervailing testimony with its Preliminary Response, electing instead to rely on attorney argument at this stage. Second, Patent Owner’s assertions that Petitioner’s reasoning is insufficient because Stern describes treating the endometrium and ablating different tissue, i.e., surface versus underlying tissue, are undermined by Edwards-535’s citation to Baker. As Petitioner points out, “Edwards-’535 points a POSITA” to, and incorporates teachings from, Baker. Pet. 47. This is true even though Baker, like Stern, is largely focused on treating the uterus and describes preferred embodiments for delivering RF energy to the endometrium. See, e.g., Ex. 1011, Abstr., 3:5–9, 5:50–65. Moreover, Petitioner offers evidence to show that Baker and Stern depict similar devices, including the figure from Dr. Martin’s declaration reproduced below. See Ex. 1002 ¶¶ 117–119, 144–147. Dr. Martin’s figure above is a side-by-side comparison of Figure 8 of Baker and Figure 4a of Stern, depicting devices that, at least on their face, appear to share a similar shape and configuration. See id. ¶¶ 119, 146 (testifying that the comparison above shows “Baker and Stern both depict very similar devices”). At this stage, Patent Owner does not dispute that Petitioner’s comparison is apt, nor otherwise address Petitioner’s reliance on Baker as evidence of a motivation to combine Stern. Thus, on the current record, we agree with Petitioner that Edwards-535’s express citation to Baker suggests that a POSITA would have been motivated to combine the similar teachings Petitioner identifies in Stern. Third, Stern also contradicts Patent Owner’s assertion that a POSITA would have considered its teachings to be inapplicable to treating the nasal concha as taught in Edwards-535. While Stern is primarily concerned with endometrial ablation applications, that does not mean its teachings are limited to such. Indeed, Stern explains that its “electrode partitioning structure” may be used to treat “other body organs or tissues either externally or internally” and that its “principles with respect to the delivery of controlled RF energy” can be applied “not only for controlled destruction of tissue but also for controlled heat treatment of tissue.” Id. Such teachings further support the testimony of Dr. Martin that “[a] POSITA would have known that technology from ablation devices for one part of the body would be applicable to devices used in other areas of the body.” Pet. 41 (citing Ex. 1002 ¶ 117–121; Ex. 1033, 18:27–40). We also disagree with Patent Owner’s argument that “Edwards-535 and Stern are so in conflict with one another that they rise to the level of teaching away.” Prelim. Resp. 21. A teaching away requires that the reference “criticize, discredit, or otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). But Patent Owner has not shown that any of the references cited here discourage the articulated combination of Stern’s electrode configuration, i.e., multiple pairs of bipolar electrodes connected to separate radiofrequency output channels, with Edwards-535’s device. To the contrary, Stern expressly states that its “electrode partitioning structure” can be used for other applications (see Ex. 1033, 18:27–40), which on the current record would seem to include Edwards-535’s device for ablating nasal tissue.” slip op. at 22
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,033,318 - PTAB · Jul 22, 2024 · IPR2024-00277 · APJ Michael A Valek · IPR · Institution
Instituted IPR of claims 1–4, 6–12, and 16 on all asserted grounds; the Board found a reasonable likelihood of prevailing on the Edwards-535, Kong, and Stern obviousness challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Considering the arguments and evidence of record, we determine that the Petition demonstrates “a reasonable likelihood that [P]etitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had (1) a Doctor of Medicine (M.D.) or at least a bachelor of science degree in engineering or a related discipline and (2) at least three years of experience in the clinical use, design, development, and/or testing of medical devices, including medical devices that deliver energy to tissue. Pet. 20–21 (citing Ex. 1002 ¶¶ 27–29; Ex. 1004 ¶¶ 24–28). Patent Owner does not respond to Petitioner’s description of a POSITA in its Preliminary Response. At this stage, we find Petitioner’s description of the level of ordinary skill in the art to be sufficiently supported by the record and apply it for purposes of this decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends “the Board need not construe any terms because the Challenged Claims are invalid under any reasonable interpretation.” Pet. 21. At this stage, Patent Owner does not respond to this contention, nor propose any express claim construction of its own. For this decision, and given that neither party seeks any express claim construction, we determine that no express claim construction is necessary. To the extent our consideration of Petitioner’s grounds touches on any implicit issues of claim construction, those are addressed in our analysis below.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“On the current record, Patent Owner’s arguments are unavailing for several reasons. First, Petitioner’s reasoning for combining Edwards-535 and Stern is supported by testimony from its declarants who identify multiple, specific reasons for the combination. Ex. 1002 ¶¶ 93–94; Ex. 1004 ¶¶ 75–97. This testimony is not conclusory and is supported with numerous citations to other evidence of record. Id. Patent Owner does not offer any countervailing testimony with its Preliminary Response, electing instead to rely on attorney argument at this stage. Second, Patent Owner’s assertions that Petitioner’s reasoning is insufficient because Stern describes treating the endometrium and ablating a different tissue, i.e., surface versus underlying tissue, are undermined by Edwards-535’s citation to Baker. As Petitioner points out, “Edwards-’535 instructs a POSITA to look to Baker for how to dispose electrodes on the surface of a membrane.” Pet. 47. This is true even though Baker, like Stern, is largely focused on treating the uterus and describes preferred embodiments for delivering RF energy to the endometrium. See, e.g., Ex. 1011, Abstr., 3:5–9, 5:50–65. Moreover, Petitioner offers evidence, including the figure reproduced below, to show that “Baker and Stern depict similar devices for ablating tissue.” Pet. 46. Petitioner’s figure above is a side-by-side comparison of Figure 8 of Baker and Figure 4a of Stern, depicting devices that, at least on their face, appear to share a similar shape and configuration. Petitioner offers a similar figure showing that both Baker and Stern teach the arrangement of “electrodes in rows.” See id. at 47 (showing side-by-side comparison of Figure 8 of Baker to Figure 19 of Stern). At this stage, Patent Owner does not dispute that Petitioner’s comparisons are apt, nor otherwise address Petitioner’s reliance on Baker as evidence of a motivation to combine Stern. Thus, on the current record, we agree with Petitioner that Edwards-535’s express citation to Baker suggests that a POSITA would have been motivated to combine the similar teachings Petitioner identifies in Stern.” slip op. at 21
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,241,271 - PTAB · May 14, 2024 · IPR2024-00193 · APJ Timothy G Majors · IPR · Institution
The Board instituted IPR on claims 1–6 and 9 on all petitioned grounds, finding a reasonable likelihood of prevailing on the obviousness challenges and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless it is determined that there is a reasonable likelihood that the petitioner will prevail with respect to at least one of the claims challenged in the petition. Considering the parties’ arguments and evidence, for reasons explained below, we conclude that Petitioner shows a reasonable likelihood that it will prevail with respect to at least one of the ’868 patent’s challenged claims. We decline to deny the Petition on a discretionary basis. We institute an inter partes review on all challenged claims. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“pending lawsuit involving the challenged patent, the Board considers six non-exclusive factors set forth in Fintiv. Fintiv, Paper 11 at 6. The Director of the USPTO has, however, clarified the Board’s application of the Fintiv factors according to an “Interim Procedure” established June 21, 2022. Interim Procedure For Discretionary Denials In AIA Post-Grant Proceedings With Parallel District Court Litigation, issued June 21, 2022 (“Interim Procedure”).6 The Interim Procedure explains that, “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure 2– 3 (internal footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A) (“Sotera”)). The Interim Procedure also indicates that a Sotera-type stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . [and] allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“encountered in the art, the art’s solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“construction standard used to construe claims in a civil action before the courts under 35 U.S.C. § 282(b), including construing claims’ language in accordance with its ordinary and customary meaning as understood by the POSA, in view of the patent’s specification and considering the patent’s prosecution history. 37 C.F.R. § 42.100(b). We need only construe terms that are in controversy and only to the extent needed to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019); U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (holding claim construction is for “resolution of disputed meanings”).” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,143,868 - PTAB · May 14, 2024 · IPR2024-00192 · APJ Michael A Valek · IPR · Institution
The Board instituted inter partes review of claims 6–12 on both obviousness grounds based on Pilz I, Morgan, and Pilz II.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“deny institution because Petitioner has offered “a Sotera stipulation,” i.e., Petitioner stipulates that if review is instituted here, it will not pursue in the Delaware litigation the invalidity grounds raised in the Petition or any other ground that could have reasonably been raised in this proceeding. Pet. 76; Ex. 1015, 1–2. The Director has issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation.5” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine the Petition demonstrates “a reasonable likelihood that [P]etitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Accordingly, inter partes review is instituted.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“denied because the Petition and Puchovsky Declaration often use the same or similar verbiage. It is true that conclusory expert testimony is not entitled to substantial weight. See TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1358–61 (Fed. Cir. 2019) (collecting cases rejecting “obviousness determinations based on conclusory and unsupported expert testimony”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential) (conclusory and unsupported declaration testimony entitled to little weight). However, the relevant inquiry is not whether the declaration and Petition use the same verbiage, but instead whether the substance of the expert’s testimony is so conclusory as to be inadequate to support the proposition for which it is cited. See TQ Delta, 942 F.3d at 1362–63 (determining conclusory testimony was “inadequate to support the Board’s factfinding”). Accordingly, Patent Owner’s attempts to show that the Puchovsky Declaration uses the same or similar verbiage as various arguments in the Petition (see, e.g., Prelim. Resp. 13–17) do not demonstrate that either the testimony or Petitioner’s arguments are conclusory.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill in the art (“POSITA”) as of June 11, 2013, would have had at least a bachelor’s degree in mechanical engineering, civil engineering, fire protection engineering, applied science or a related field, with three to five years’ experience in building construction, fire safety, or the firestopping field. Pet. 3 (citing Ex. 1003 ¶ 9). Patent Owner does not respond to Petitioner’s description of a POSITA in its Preliminary Response. At this stage, we find Petitioner’s description of the level of ordinary skill in the art to be sufficiently supported by the record and apply it for purposes of this Decision.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,157,232 - PTAB · Feb 1, 2024 · IPR2023-01254 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR on claims 1, 2, and 5–18 on all six asserted grounds, finding a reasonable likelihood of unpatentability under at least one ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute trial in an inter partes review. We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314. After reviewing the parties’ submissions in view of the preliminary record, we conclude Petitioner demonstrates a reasonable likelihood it would prevail in showing that at least one challenged claim of the ’332 patent is unpatentable under the presented grounds. See Pet.; Prelim. Resp.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ORDINARY LEVEL OF SKILL IN THE ART Petitioner contends: A POSITA,[11] on or before August 17, 2007, or alternatively on or before April 11, 2008, would have had a minimum of a Bachelor’s degree in Industrial Design, Mechanical Engineering, or related field and approximately 5 years of professional experience in the field of consumer product design and manufacturing. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Pet. 4 (citing Ex. 1008 ¶ 44).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“CLAIM CONSTRUCTION Petitioner asserts that the claim language “angled capsule retaining elements” is a means-plus-function limitation under 35 U.S.C. § 112(6), where the function is “retaining an oral care capsule in a capsule receiving zone,” and the Specification’s corresponding structure is “angled bristles.” Pet. 8–11 (citing Ex. 1001, Abstract, 2:59–61, 2:65–67, 3:20–22, 4:64–5:13, 6:23–24, 6:26–30, 6:34–37, 7:19–23, 7:33–42, 9:61–10:1, 10:5–8, Figs. 1, 4, 5, 6; Ex. 1002, 224; Ex. 1008 ¶¶ 96–97). Petitioner argues that “angled capsule retaining elements” is non- structural and includes the generic placeholder nonce word “elements,” modified by functional language, and the claim does not further recite sufficiently definite structure for the elements. Id. at 8–9. Thus, it is Petitioner’s position that this limitation, although not using the presumptive word “means,” should be interpreted to be a means-plus-function limitation. Further, Petitioner argues that the only structure disclosed in the ’332 patent’s Specification that performs the claimed function is “angled bristles,” and that the Specification’s express mentioning of the term “retaining element” relates to a non-claimed feature having a different function, i.e., a movable back cover on the toothbrush to contain rear-loaded capsules in the head. Id. at 11 (discussing Ex. 1001, 5:10–19, 6:8–25; Ex. 1002, 228, 353–355). Patent Owner does not directly address Petitioner’s claim construction position. See generally Prelim. Resp. However, even if not addressing whether the claim language is a means-plus-function limitation, Patent Owner appears to agree with Petitioner that the claims’ scope includes angled bristles as the recited retaining elements, as disclosed in the Specification, although not expressly conceding at this point that the claims are limited to the disclosed angled bristles structure and equivalents under 35 U.S.C. § 112(6). See id. at 3–4 (citing paragraph 36 and Figure 1 of the application that issued as the ’332 patent). For the purposes of this institution decision, we find it unnecessary to construe any claim language because there is no dispute that the “angled capsule retaining elements” limitation recited by the claims includes angled bristles, even if it may not be limited to only such a structure (and its equivalents), and we find that angled bristles appear to be taught in the prior art, as discussed below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Thus, whether or not the disputed claim language constitutes a means-plus-function limitation is not determinative at this stage of the proceeding.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Motivation foundReasonable expectation foundInstituted
“2. Analysis We find that, on the current record, Petitioner has sufficiently mapped the limitations of the claims to the disclosures of Wolcott, Davidson, and Fitz-Gibbon, identified a reason with rational underpinnings why the ordinarily skilled artisan would have combined the teachings of the 15 Although we note that Patent Owner submits no supporting evidence, we do so with the understanding that Patent Owner was not required to do so, as the burden here is upon, and remains with, Petitioner. references, and identified that there would have been a reasonable expectation of success.” slip op. at 26
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,881,332 - PTAB · Nov 21, 2023 · IPR2023-00865 · APJ Carl M Defranco · IPR · Institution
The Board instituted IPR of claims 1–19, finding a reasonable likelihood that claims 1 and 14 are obvious over Carr and Lauka.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the above reasons, we determine that the information presented in the Petition demonstrates a reasonable likelihood that at least claims 1 and 14 of the ’465 patent are unpatentable as obvious over Carr and Lauka. And because Instacart demonstrates that at least one claim of the ’465 patent meets the threshold for institution, we institute an inter partes review of all claims as challenged in the Petition. See 37 C.F.R. § 42.108(a),(c); SAS, 138 S. Ct. at 1359–60. IV. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–19 of the ’465 patent is instituted; and” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Consumeron responds that one skilled in the art would have been “someone with a background in electrical engineering, computer science, or the like” and that “industry experience can make up for a lack of technical training, and more education can make up for a lack of industry experience.” Prelim. Resp. 29. Consumeron’s definition appears to overlap significantly with Instacart’s definition. Accordingly, for purposes of institution, we adopt the level of skill in the art as articulated by Instacart.” slip op. at 5
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“product ordered by the customer is available and does not contemplate a scenario where the product is unavailable or otherwise describe the action to be taken if the product is unavailable. See Pet. 17–22. We agree, at least based on the preliminary record. In particular, with reference to Figures 2 and 3, the ’848 parent application describes a method where (1) a customer chooses “a store where a desired product is being sold” (step 105), (2) the customer selects a delivery agent and sends an “acquisition request” to the delivery agent (steps 108, 109, 110), and (3) “the selected delivery agent travels to the store location . . . and finds the desired product to be acquired” (step 113). Ex. 1011 ¶¶ 17, 20, 23 (emphasis added). “The delivery agent then communicates to the customer that the product has been identified, and the customer has the option of inspecting the product in real-time” (step 117). Id. ¶ 23 (emphasis added). “Next, the customer either approves or rejects acquisition of the inspected product” (steps 119, 120, 122). Id. ¶ 24 (emphasis added). That description in the ’848 parent application clearly presumes that the product ordered by the customer has been located and is available for inspection, which is at odds with the additional requirements of claims 1 and 14 of “failing to locate an identified product” and “determining that the identified product is not available.” Ex. 1001, 11:20 (claim 1), 12:30 (claim 14) (emphases added). To the extent Consumeron argues otherwise, we are not persuaded at this preliminary stage. According to Consumeron, the customer’s rejection of the product means that “the agent fails to locate a product that is satisfactory.” See Prelim Resp. 11. But nowhere do we discern that the ’848 parent application hinges the identity and availability of a product on whether it is satisfactory to the customer. That a product might not meet a customer’s satisfaction does not negate the description in the ’848 parent application that the agent locates and identifies the product in the first instance before giving the customer the option to inspect and reject the product. Indeed, because the customer placed the online order with a store advertising the product, the presumption is that the advertised product is available and satisfactory to the customer.8 And, while conceivably the purchase of a product cannot be fulfilled in the event the product is unavailable, it would seem to be improper hindsight to derive written description support by “[w]orking backward from a knowledge of the claims.” Novozymes A/S v. DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1349 (Fed. Cir. 2013). “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed. It extends only to that which is disclosed.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997). Thus, based on the preliminary record, the ’848 parent application does not provide sufficient written description for the terms noted above. As such, we find that Instacart demonstrates a reasonable likelihood it will prevail in showing that the asserted references are prior art to the challenged claims.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“and Lauka. See Pet. 30–44, 47–49. We begin with Instacart’s challenge of method claim 1. Instacart provides a detailed mapping of how Carr satisfies all the recited limitations of claim 1, except limitation [1.0.3], for which Instacart points to Lauka. See id. at 35–44. In particular, Instacart cites the following evidence in support of its contentions that Carr and Lauka, when combined, teach or suggest each of the recited limitations of claim 1: Limitation 1.0.1—“A method for remote acquisition and delivery of goods through one or more agents of a service provider” (Pet. 35 (citing Ex. 1005 ¶¶ 36, 39, 43, 45, 92, Figs. 1, 3, 6;; Ex. 1001 ¶¶ 97–100)); Limitation 1.0.2—“each agent having a mobile agent system in communication with at least one remote server,” (Pet. 35–37 (citing Ex. 1005 ¶¶ 2, 6, 40–43, 53, Fig. 1 (annotated); Ex. 1003 ¶¶ 101–104)); Limitation 1.0.3—“with each mobile agent system including: a digital image capture device and a communication device, said method comprising:” (Pet. 37–38 (citing Ex. 1005 ¶¶ 74, 88, 94, 122; Ex. 1006, 3:19–28, 3:49–57, 4:10–21; Ex. 1003 ¶¶ 105– 109)); Limitation 1.1—“receiving, through the at least one remote server, a first acquisition request from a customer for a first set of one or more goods;” (Pet. 38 (citing Ex. 1005 ¶¶ 9, 60, 73, Fig. 1; Ex. 1003 ¶¶ 110–112)); Limitation 1.2—“contacting, through the communications device, the one or more agents;” (Pet. 38 (citing Ex. 1005 ¶¶ 57, 74; Ex. 1003 ¶¶ 113–115)); Limitation 1.3—“upon failing to locate an identified product of the set of one or more goods, electronically transmitting information on a replacement product for the identified product of the set of one or more goods to the customer using the digital image capture device of the agent, including:” (Pet. 38–40 (citing Ex. 1005 ¶¶ 90, 95, 96, 105, 107, ; Ex. 1003 ¶¶ 116– 119)); Limitation 1.4—“obtaining a bar or QR code of the replacement product;” (Pet. 40 (citing Ex. 1005 ¶¶ 95, 107; Ex. 1003 ¶¶ 120– 122)); Limitation 1.5—“determining the information from the bar or QR code, wherein the information includes at least one image of the replacement product; and” (Pet. 40–42 (citing Ex. 1005 ¶¶ 95–96, 116; Ex. 1003 ¶¶ 123–127)); Limitation 1.6—“sending the information for the customer to approve the purchase of the replacement product based on the information determined from the bar or QR code; and” (Pet. 42– 43 (citing Ex. 1005 ¶¶ 51, 96–99, Fig. 12; Ex. 1003 ¶¶ 128– 130)); and Limitation 1.7—“upon receiving approval of the purchase from the customer, acquiring the replacement product, via the agent.” (Pet. 43–44 (citing Ex. 1005 ¶¶ 99, 101; Ex. 1003 ¶¶ 131–132)); Instacart also provides a reason why one skilled in the art would have combined the teachings of Carr and Lauka with a reasonable expectation of success. See Pet. 31–34 (citing Ex. 1003 ¶¶ 86–96); see also id. at 37 (“In view of the teachings of Lauka, a POSITA would have recognized that it was obvious to implement the UPC scanner functionality of Carr’s handheld device using an ‘imaging device’ such as that taught by Lauka, which specifies that the ‘imaging device 206 can comprise a video or still camera’ and ‘can be used to capture images.’ Ex.1006, 3:49-57; Ex.1003, ¶¶105- 107.”).” slip op. at 11
Claim construction§ 103 obviousness§ 112 disclosurePatents in suitUS 11,238,465 - PTAB · Oct 26, 2023 · IPR2023-00883 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on the challenges to claims 1–20 and joined Micron as a petitioner in IPR2022-01427, with its role limited as stated in its motion.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response 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 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, Petitioner’s Motion is unopposed by Samsung and Patent Owner. Petitioner argues that, if joinder is granted, it will take an “understudy” role and would only assume a primary role if Samsung ceases participation in the proceeding. Motion 6–9. In the “understudy” role, Petitioner represents, among other things, that it “will not be making any substantive filings,” that it “agrees to be bound by all filings by Samsung . . . except for filings regarding termination and settlement,” and that it “will not cross-examine or defend any witness at deposition.” Motion 7–8. We have reviewed the Motion, and we determine that it is appropriate under these circumstances to join Petitioner as a party to the 1427 IPR.” slip op. at 4
NonePatents in suitUS 9,318,160 - PTAB · Oct 26, 2023 · IPR2023-00882 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on all petition challenges and joined Micron as a petitioner in IPR2022-01428, subject to its stated understudy role.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response 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 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“1 Although Petitioner requests that we “join this IPR with the [1428] IPR” (Motion 2), the joinder statute does not permit this. See Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1335 (Fed. Cir. 2020) (“[W]e hold that the clear and unambiguous meaning of § 315(c) does not authorize joinder of two proceedings . . . .”). Thus, we treat Petitioner’s Motion for Joinder as a request to be joined as a petitioner to the 1428 IPR, and, for the reasons discussed herein, we grant that request.” slip op. at 2
NonePatents in suitUS 8,787,060 - Orthocision, Inc. v. Pain Teq, LLCInstitutedPTAB · Sep 20, 2023 · IPR2023-00625 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR on claims 1, 2, 9, and 10 over all five asserted § 103 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
“institute trial in an inter partes review. We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314. After reviewing the parties’ submissions, we conclude Petitioner demonstrates a reasonable likelihood it will prevail in showing that at least one challenged claim of the ’129 patent is unpatentable under the presented grounds. Therefore, we grant institution of inter partes review. Our reasoning is discussed below. A.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties appear to largely agree on who the person of ordinary skill in the art would have been in terms of education and field of work experience; the disagreement being on the precise type and focus of that experience. Each party cites only its witness’s definition of the ordinarily skilled artisan as support for its proposed definition. Neither party nor their witnesses cite any further supporting evidence for their proposed definitions.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Considering the parties’ proposed interpretations, we find Petitioner’s unsupported on the current record. The portion of the ’129 patent’s written description and Petitioner’s proposed interpretation of “open tip” share little in common, for example, the Specification does not mention “an exposed tapered edge,” much less, suggest that the term “open tip” requires such. See Pet. 19. On the other hand, Patent Owner’s proposed interpretation is more supported in view of the ’129 patent’s Specification and the plain language of the claim as some sort of “opening” seems necessary for an “open tip.” Prelim. Resp. 10. However, Patent Owner appears to read too much structure from the written description into the claim language as a limitation because it is not apparent that an “open tip” requires all the structural features proposed by Patent Owner, i.e., the distal end of the abrading head has a leading edge that encloses the opening. “[W]hile it is true that claims are to be interpreted in light of the specification . . . , it does not follow that limitations from the specification may be read into the claims. . . . [T]he claims define the invention.” Sjolund v. Musland, 847 F.2d 1573, 1581–82 (Fed. Cir. 1988). The claim terms “open” and “tip” and their combination, “open tip,” are common words, used in their ordinary way, and are understandable on their face. And, what the ’129 patent’s written description makes clear is that the abrading head of the invention has a void (some empty space) and that the tip of the abrading head is open to that void. See Ex. 1001, 6:14–50. This would include, but is not limited to Patent Owner’s proposed tip where the leading edge entirely encloses the void. Thus, we interpret the claim term “open tip,” consistently with the” slip op. at 18
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“A claim limitation is presumed to invoke 35 U.S.C. § 112(f) (or pre- AIA § 112(6)) if, as here, it explicitly uses the term “means” and includes functional language; this presumption is overcome if the limitation further includes the structure, material, or acts necessary to perform the recited function. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). Here, the word “means” is recited, followed by functional language, and the claim recites no structure associated with the means or function. Moreover, the parties appear to agree that this is a means plus function limitation. See Pet. 19–20; Prelim. Resp. 10–19. We find “releasing means” is a means plus function limitation and, based on the plain language of the claim, the recited “releasing means” is a component element of the also recited “slide hammer assembly,” as the above-quoted claim language defines. Ex. 1001, 13:10–17.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,020,129 - PTAB · Sep 13, 2023 · IPR2023-00589 · APJ Timothy G Majors · IPR · Institution
The Board instituted IPR on claims 1–3 and 5 on all four §103 grounds, finding a reasonable likelihood that at least one challenged claim would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The weight of the evidence at this stage, therefore, favors Petitioner’s position that modifying the weight ratio of hydrogenated jojoba oil in the feedstock to an amount within the scope of the claims would have been obvious as a matter of routine experimentation. Based on the preliminary record, we find that Petitioner has shown a reasonable likelihood that it will prevail in establishing that the prior art teaches or suggests limitation [1a].” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that the person of ordinary skill in the art (“POSA”) would have had “at least a B.S. in Chemical Engineering, Chemistry, or a related field, and three years[’] work experience working in the specialty chemicals industry . . . although more education or skill might make up for less experience and vice-versa.” Pet. 9 (citing Ex. 1003 ¶¶ 30– 32). Patent Owner proposes essentially the same description of the POSA’s qualifications, and adds that the “specialty chemicals industry” includes “the beauty, personal care, home care, food, or environmental chemical industries.” Prelim. Resp. 7. For purposes of this decision, we apply Petitioner’s POSA definition with Patent Owner’s further elaboration to that definition. On this record, this POSA definition appears consistent with the skill level reflected in the prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“understood by the POSA. Pet. 9–10. Petitioner does not identify any claim terms for which it is seeking a further express claim construction. Id. Patent Owner cites the district court’s claim construction order (Ex. 2006, 1) but, like Petitioner, does not identify any terms for which it is seeking an express claim construction. Prelim. Resp. 8 (“Given the arguments before the Board at this time, it is not currently necessary to resolve the issues related to claim construction.”). We have considered the court’s claim construction order. Ex. 2006, 1. However, it is not apparent at this time and on the current record that additional interpretation of the claims will be needed to resolve the controversy before us. See Realtime Data, 912 F.3d at 1375. Thus, for purposes of this decision, we apply the plain and ordinary meaning of the claims as written.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“rationale for why a POSA “would have been motivated to use Sessa’s calibration set of jojoba wax ester blends in preparing a feedstock for the preparation of the jojoba esters described in Cummings.” Prelim. Resp. 33– 34. On the current record, we disagree. Patent Owner queries why the POSA would have considered Sessa’s calibration sets, but never grapples persuasively with Petitioner’s assertion that Sessa evidences that the selection of various ratios—including ratios squarely within the scope of 13 Regarding Patent Owner’s argument that Petitioner’s estimates rely on an assumption that all ester products are fully saturated or fully unsaturated and that the ratios remain unchanged (Prelim. Resp. 31–32), we do not entirely follow Patent Owner’s argument. We understand that, in general, Petitioner is using IV as a measure of the double bonds in the final product and, conversely, in the feedstock. Ex. 1003 ¶¶ 101–102 (Rockstraw testimony that the amount of iodine directly correlates to the average number of double bonds and that the number of double bonds remains “constant,” not changing due to transesterification). It would seem that double bonds in the final product would contribute to IV, whether the double bonds appear in monounsaturated or fully unsaturated jojoba esters. If the feedstock comprises unsaturated jojoba oil and fully saturated jojoba oil, it would, thus, seem that the source of the double bonds in the products was the unsaturated oil portion of the feedstock. As appropriate, the parties may consider developing further argument and evidence on this point at trial. experimentation (see Pet. 32–33). Id. Cummings discloses that interesterification involves the reaction of “different ratios” of jojoba oil and fully saturated jojoba oil but does not specify specific ratios to choose. Ex. 1004, 2 (suggesting that the ratios used for starting materials allows for the ratios of saturated, unsaturated, and monounsaturated esters in the jojoba ester products to be engineered for the characteristics desired). Sessa describes a series of blends (including 20%, 30%, 40%, and 50%) that were examined and compared to the thermal characteristics of cocoa butter. Ex. 1009, 295–296. Sessa, thus, evidences that proportional blends of jojoba wax ester (oil) and hydrogenated jojoba wax ester (oil) within the scope of claim 1 were known and subject to routine experimental inquiry and testing. In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”); Genentech, Inc. v. Hospira, Inc., 946 F.3d 1333, 1341–42 (Fed. Cir. 2020) (same, citing In re Aller). And Sessa’s and Cummings’s teachings do not stand alone. Petitioner cites other evidence probative of “POSA’s background knowledge,” such as Otero14 and Haumann15 that recognized that properties of transesterified products are based on the amounts of the starting reagents chosen. Pet. 34– 35; Ex. 1013, 878 (disclosing that “[t]he properties of the [transesterified] 14 Otero et al., Continuous Enzymatic Transesterification of Sesame Oil and a Fully Hydrogenated Fat: Effects of Reaction Conditions on Product Characteristics, 94 Biotech & Bioeng’g 877 (2006) (Ex. 1013). 15 Barbara Fitch Haumann, Tools: hydrogenation, interesterification, 5 Inform 668 (June 1994) (Ex. 1012). precursor reagents [and] their respective proportions in the starting mixture”); Ex. 1012, 675 (teaching that “melting and solidification properties [of the product] ultimately depends on the type and mixture of the starting materials”); see also Ex. 1007, 4:49–51 (teaching that “the properties of the [transesterified] emollient depend upon the relative amounts of IIn [(unsaturated jojoba wax esters)] and III[n] [(fully saturated jojoba wax esters)]”); Ex. 1003 ¶¶ 111–112 (testifying that “manipulating the ratio of the reacting fats and oils in a feedstock would have been within the background knowledge possessed by a [POSA] as such concepts are fundamental to the topic of chemical reaction engineering”); see also id. ¶¶ 42–44 (testifying no “criticality” for 20–50% range noted in the patent). The weight of the evidence at this stage, therefore, favors Petitioner’s” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,248,245
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.