- Robert Bosch LLC / Mercedes-Benz USA, LLC v. Westport Fuel Systems Canada Inc.No claims unpatentablePTAB · Feb 3, 2025 · IPR2023-00293 · APJ Frances L Ippolito · IPR · Final written decision
Claims 1–3, 6, 13, 14, 17–21, and 26–28, 41 were not shown unpatentable because the asserted combinations did not establish the claimed hydraulic link limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A POSITA in the technology field of the ’138 patent would have had a degree in mechanical engineering or a similar discipline, along with 2 years of professional experience working with the design and development of fuel injection systems for internal combustion engines or an equivalent level of skill, knowledge, and experience. (See Ex. 1003, ¶¶ 37–39, 41.) This POSITA would be aware of and generally knowledgeable about how fuel injector valves are structured and operate, and how they are used to deliver fuel to an engine’s combustion chambers. (Id., ¶ 40.) Pet. 23. Patent Owner does not dispute Petitioner’s proposed definition. See PO Resp. 4. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Based on the complete record, we do not perceive the need to construe any claim limitation. Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe the claim preambles here where the construction is not ‘material to the [obviousness] dispute.’” (citations omitted, alteration in original)).” slip op. at 12
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“mere fact” that Klügl labels the membrane as “flexible.” As discussed, Patent Owner explains Klügl teaches membrane 6 is flexible and that membrane 6 deflects and moves in response to fluid pressure in chamber 5 and contact with piston 3. PO Resp. 34 (citing Ex. 1006, 3:63–4:10). Additionally, Dr. Atkinson’s testimony is consistent with Klügl’s disclosure. Dr. Atkinson, explains that “[i]n all embodiments shown, Klügl only ever specifies and describes membrane 6 as a “flexible” membrane or element acknowledging that this flexibility is a necessary and desired feature of its intended purpose and behavior.” Ex. 2022 ¶ 80. With this underlying disclosure in mind, Dr. Atkinson further reasons that a flexible membrane will tend to deform longitudinally upward where it contacts the drive piston and bulge outward based on the structure disclosed in Figure 1. See id. ¶¶ 63, 66–67, 77–81, 87. In contrast, Dr. Quinlan’s testimony in many instances, including this one, is substantively incomplete and fraught with contradictions that undermine the weight of his testimony. For example, at his cross- examination deposition, he testified that he had seen and worked with membranes, but could not provide his opinion on the meaning of “flexible” or “membrane” as disclosed in Klügl. See Ex. 2025, 47:14–48:1. Dr. Quinlan was then directed to column 8 in Klügl, where Klügl teaches among other things that “the transmission module (2) has a pressure chamber (5), which is filled with a transmission medium and is delimited by a first flexible membrane (6).” See id. at 65:5–15; Ex. 1006, 8:44–46 (emphasis added). Provided below is the exchange between Patent Owner’s counsel and Dr. Quinlan regarding this express disclosure: slip op. at 37
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Figure 1 of Klügl depicts an injection valve including housing 12 and piezoelectric actuator 1, which is arranged between upper stop 13 and transmission module 2. Ex. 1006, 1:47–51. We observe that transmission module 2 includes pressure chamber 5 that is at least partially filled with hydraulic fluid and is “delimited” by first membrane 6. Id. at 1:60–62, 1:68–2:2. Throttle or connecting bore 10 connects pressure chamber 5 to compensation chamber 7. Id. at 1:62–66. The connecting bore or throttle allows transmission fluid to flow between pressure chamber 5 and compensation chamber 7. Id. at 3:56–4:10. We further note that Klügl expressly teaches first membrane 6 is “flexible.” Ex. 1006, 7:45–47 (“[F]lexible membranes 6, 8, 26 . . . have a progressive characteristic curve of the spring force in relation to the spring deflection.”). Indeed, consistent with this flexibility, Klügl explains that membrane 6 “moves” to maintain contact with drive piston 3. Specifically, Klügl teaches: [i]f the piezoelectric actuator 1 shortens in the rest position without being actuated due to thermal influences or signs of aging in relation to the housing 12, the spring plate 8 pushes the transmission medium from the compensation chamber 7 via the throttle 10 into the pressure chamber 5, so that the first membrane 6 is moved in the direction of the drive piston 3 and, as a result, the drive piston 3 bears against the first membrane 6 despite the shortening of the piezoelectric actuator 1. However, if the distance between the piezoelectric actuator 1 and the drive piston 3 is reduced, the first membrane 6 is pushed in by the drive piston 3 so that the transmission medium is pressed through the throttle 10 into the compensation chamber 7 against the spring force of the spring plate 8. As a result, the drive piston 3 is always in contact with the first membrane 6 in this case as well. Id. at 3:63–4:10 (emphases added).” slip op. at 34
Patent outcomesUS 6,575,138 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 6,575,138 - PTAB · Jan 29, 2025 · IPR2024-00842 · APJ Michael L Woods · IPR · Institution
The Board instituted review of claims 1–29 based on a reasonable likelihood of prevailing and granted EndyMed’s motion to join the ’386 IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the foregoing reasons, the underlying premise of Serendia’s arguments here and in the ’386 IPR remains substantially the same. Thus, for the same reasons discussed in our decision instituting the ’386 IPR, we find that EndyMed demonstrates a reasonable likelihood of prevailing with respect to at least one of challenged claims 1–29 of the ’836 patent. See ’386 IPR, Paper 18. That is not to say, however, that Serendia may not ultimately persuade us at trial of the deficiency of EndyMed’s showing based on a preponderance of the evidence.” slip op. at 13
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“evidences nonobviousness for four different patents. In this situation, a presumption of nexus is appropriate only if patent owner demonstrates that the claims of all four patents “generally cover the same invention.” See Fox Factory, 944 F.3d at 1377 (“Where a product embodies claims from two patents, a presumption of nexus can be appropriate only if the claims of both patents generally cover the same invention.”). “The same evidence of secondary considerations cannot be presumed to be attributable to two different combinations of features.” Id. at 1378 (citation omitted). “In such situations, the patentee retains the burden of proving the degree to which evidence of secondary considerations tied to a product is attributable to a particular claimed invention.” Id. (citation omitted). Here, Serendia does not demonstrate that the four different patents cover the same invention. See Prelim. Resp. 59–74. Indeed, Serendia does not address U.S. Patents 9,775,774, 9,320,536, and 10,869,812 at all. See id. That Serendia separately sought patent protection for each of these four patents suggests that these patents do not generally cover the same invention. Cf Fox Factory, 944 F.3d at 1378 (“The same evidence of secondary considerations cannot be presumed to be attributable to two different combinations of features.”). We made a similar determination in the ’386 IPR. See, e.g., ’386 IPR, Paper 18 at 38 (“Patent Owner fails to set forth which patents ‘generally cover’ the Sylfirm X device.” (citations omitted)).” slip op. at 12
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We disagree with Serendia. EndyMed need not justify its delay where, as here, EndyMed satisfies the joinder requirement of filing the petition within one month of our institution of trial in the ’386 IPR. See 37 C.F.R. § 42.122(b); see also 37 C.F.R. §§ 1.7(a), 42.1(a). Indeed, by rule, EndyMed could not have filed the instant petition prior to institution of the IPR it was seeking to join. See 37 C.F.R. § 42.122(b) (“Any request for joinder must be filed . . . no later than one month after the institution date of any inter partes review for which joinder is requested.”) (emphasis added). And, although there is a one-year statutory bar from the date of service of a complaint alleging infringement for requesting inter partes review, that bar does not apply to a request for joinder. See 35 U.S.C. § 315(b). Thus, despite being filed more than one year from the service date of Serendia’s complaint alleging infringement of the ’836 patent, EndyMed’s petition and motion are nonetheless timely. Serendia also argues that joinder should be denied due to duplicative efforts with the parallel Delaware litigation, which involves the same parties and patent as here. See PO Opp. 3–4. That argument fails for the simple reason that EndyMed submits a Sotera stipulation, agreeing not to pursue in the Delaware litigation the same grounds that are asserted in the petition here or any grounds that reasonably could have been raised here. See Pet. Reply 1–2. A Sotera stipulation mitigates concerns of duplicative efforts, and we decline to discretionarily decline institution where a petitioner makes such a stipulation. See Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Director Memo”), at 3, 7–8. Thus, we will not discretionarily deny the petition or motion for joinder on the basis of the parallel Delaware litigation.8” slip op. at 14
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“the joinder requirement of filing the petition within one month of our institution of trial in the ’386 IPR. See 37 C.F.R. § 42.122(b); see also 37 C.F.R. §§ 1.7(a), 42.1(a). Indeed, by rule, EndyMed could not have filed the instant petition prior to institution of the IPR it was seeking to join. See 37 C.F.R. § 42.122(b) (“Any request for joinder must be filed . . . no later than one month after the institution date of any inter partes review for which joinder is requested.”) (emphasis added). And, although there is a one-year statutory bar from the date of service of a complaint alleging infringement for requesting inter partes review, that bar does not apply to a request for joinder. See 35 U.S.C. § 315(b). Thus, despite being filed more than one year from the service date of Serendia’s complaint alleging infringement of the ’836 patent, EndyMed’s petition and motion are nonetheless timely.” slip op. at 14
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,480,836 - PTAB · Jan 28, 2025 · IPR2024-01137 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR of claims 1–7 and 9–23 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Our consideration of discretionary denials is guided by the Director’s Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, issued on June 21, 2022 (“Memorandum”).7 The Memorandum states that, consistent with Sotera Wireless, Inc. v. Massimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential), “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.” Memorandum, 3 (footnote and emphasis omitted).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c. Discussion At this stage, we preliminarily determine Petitioner has shown that Nakajima teaches or reasonably suggests each element of claim 1, but we encourage the parties to develop the record regarding the meaning of “pivotal about an axis” as recited in Limitation 1[b][3][i] during the trial phase. As cited by Petitioner, from the closed position, for example, the Nakajima’s mouthpiece would appear to move based on clockwise rotation about hinge shaft 19. Pet. 35. Patent Owner appears correct that at some point in the opening (or closing) process, Nakajima’s mouthpiece additionally moves based on rotation about protrusions 25. Prelim. Resp. 44–45. At this stage, we preliminarily determine that such additional rotation is not foreclosed by the plain language of the claims.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have had “an undergraduate degree in mechanical engineering or equivalent coursework, and a year or more of experience in designing, prototyping, and/or manufacturing fluid containers or similar products.” Pet. 18 (citing Ex. 1003 ¶ 26). Patent Owner states that it applies the level of skill set forth in the Petition. Prelim. Resp. 35. At this stage, we apply Petitioner’s proposed definition, as it appears reasonable and consistent with the level of skill reflected in the asserted prior art and the ’255 patent. D. Claim Construction” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner contends that “adapted to” in independent claims 1 and 20 means “‘designed or configured to’ and is not satisfied by mere hypothetical capability.” Prelim. Resp. 36; see Prelim. Resp. 36–41. We address Patent Owner’s arguments below with our discussion of Petitioner’s Ribartis-based arguments. Based on the current record, however, we determine that it is not necessary to provide an express interpretation of any claim terms at this stage of the proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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)). E. Alleged Obviousness” slip op. at 8
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,676,255 - PTAB · Jan 27, 2025 · IPR2024-01179 · APJ Carl M Defranco · IPR · Institution
The Board instituted IPR of claims 1–25; it found a reasonable likelihood that claims 1, 2, 4–11, 16–20, and 22–24 are obvious over Waldner and Dynatek.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on our preliminary review, we agree with Solaris that Waldner discloses each of the assemblies, as claimed, except for the limitation requiring that the “inboard” and “outboard” segments of the conveyor extension assembly be “pivotally connected” to each other “about a substantially vertical axis,” as recited in claim elements 1(j) and 1(k). See Pet. 25–46 (mapping elements 1(a)–1(h) to Waldner and elements 1(i)–1(k) to Waldner and Dynatek).7 For those missing claim limitations, Solaris relies on Dynatek’s express teaching of constructing a conveyor belt assembly for granular materials from pivotally-connected segments capable of rotating relative to one another about a vertical axis. See id. at 43–46 (citing Ex, 1005, at 2). In doing so, Solaris provides persuasive reasoning for why a skilled artisan would have considered it obvious “to substitute” Dynatek’s two-part conveyor assembly for Waldner’s two-part conveyor chute and/or “to modify” Waldner’s two-part conveyor chute with Dynatek’s teaching of coupling the two-parts of a conveyor assembly to be pivotally connected. See id. at 26–28. Given Solaris’s persuasive and detailed showing at this stage, we find that Solaris demonstrates a reasonable likelihood that claim 1 is unpatentable” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Based on our preliminary review, we agree with Solaris that Waldner discloses each of the assemblies, as claimed, except for the limitation requiring that the “inboard” and “outboard” segments of the conveyor extension assembly be “pivotally connected” to each other “about a substantially vertical axis,” as recited in claim elements 1(j) and 1(k). See Pet. 25–46 (mapping elements 1(a)–1(h) to Waldner and elements 1(i)–1(k) to Waldner and Dynatek).7 For those missing claim limitations, Solaris relies on Dynatek’s express teaching of constructing a conveyor belt assembly for granular materials from pivotally-connected segments capable of rotating relative to one another about a vertical axis. See id. at 43–46 (citing Ex, 1005, at 2). In doing so, Solaris provides persuasive reasoning for why a skilled artisan would have considered it obvious “to substitute” Dynatek’s two-part conveyor assembly for Waldner’s two-part conveyor chute and/or “to modify” Waldner’s two-part conveyor chute with Dynatek’s teaching of coupling the two-parts of a conveyor assembly to be pivotally connected. See id. at 26–28. Given Solaris’s persuasive and detailed showing at this stage, we find that Solaris demonstrates a reasonable likelihood that claim 1 is unpatentable” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Based on our preliminary review, we agree with Solaris that Waldner discloses each of the assemblies, as claimed, except for the limitation requiring that the “inboard” and “outboard” segments of the conveyor extension assembly be “pivotally connected” to each other “about a substantially vertical axis,” as recited in claim elements 1(j) and 1(k). See Pet. 25–46 (mapping elements 1(a)–1(h) to Waldner and elements 1(i)–1(k) to Waldner and Dynatek).7 For those missing claim limitations, Solaris relies on Dynatek’s express teaching of constructing a conveyor belt assembly for granular materials from pivotally-connected segments capable of rotating relative to one another about a vertical axis. See id. at 43–46 (citing Ex, 1005, at 2). In doing so, Solaris provides persuasive reasoning for why a skilled artisan would have considered it obvious “to substitute” Dynatek’s two-part conveyor assembly for Waldner’s two-part conveyor chute and/or “to modify” Waldner’s two-part conveyor chute with Dynatek’s teaching of coupling the two-parts of a conveyor assembly to be pivotally connected. See id. at 26–28. Given Solaris’s persuasive and detailed showing at this stage, we find” slip op. at 8
§ 103 obviousnessPatents in suitUS 11,780,689 - PTAB · Jan 10, 2025 · IPR2024-00845 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of the remaining challenged claims across three patents, granted EndyMed’s joinder motions, joined the proceedings, and terminated the three original IPRs.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“More importantly, as shown in the above comparison, the underlying premise of Serendia’s arguments here and in the 383 IPR remains substantially the same. Thus, for the same reasons discussed in our decision instituting the 383 IPR, we find that EndyMed demonstrates a reasonable likelihood of prevailing with respect to at least one of challenged claims 13 and 14 of the ’774 patent. See 383 IPR, Paper 17, 11–18. That is not to say, however, that Serendia may not ultimately persuade us at trial of the deficiency of EndyMed’s showing based on a preponderance of the evidence.” slip op. at 10
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Here, there is no dispute that EndyMed’s petition is materially identical to the petition in the 383 IPR. Instead, Serendia argues that joinder should be denied due to EndyMed’s “unreasonable and unjustifiable delay” in filing the petition and seeking joinder with the 383 IPR, despite being aware of the ’774 patent and Jeisys’s petition for “more than 7 months” before filing. PO Opp. 1–2. We disagree. EndyMed need not justify its delay where, as here, EndyMed satisfies the joinder requirement of filing the petition within one month of our institution of trial in the 383 IPR. See 37 C.F.R. § 42.122(b); see also 37 C.F.R. §§ 1.7(a), 42.1(a). Indeed, per our rules, EndyMed could not have filed the instant petition prior to institution of the IPR it was seeking to join. See 37 C.F.R. § 42.122(b) (“Any request for joinder must be filed . . . no later than one month after the institution date of any inter partes review for which joinder is requested.” (emphasis added)). And, although there is a one-year statutory bar from the date of service of a complaint alleging infringement for requesting inter partes review, that bar does not apply to a request for joinder. See 35 U.S.C. § 315(b). Thus, despite being filed more than one year from the service date of Serendia’s complaint alleging infringement of the ’774 patent, EndyMed’s petition and motion are nonetheless timely.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Serendia also argues that joinder should be denied due to duplicative efforts with the parallel Delaware litigation, which involves the same parties and patent as here. See PO Opp. 3–4. That argument fails for the simple reason that EndyMed submits a Sotera stipulation, agreeing not to pursue in the Delaware litigation the same grounds that are asserted in the petition here or any grounds that reasonably could have been raised here. See Pet. Reply 1–2. And because a Sotera stipulation mitigates concerns of duplicative efforts, we decline to discretionarily deny institution where a petitioner makes such a stipulation. See Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Director Memo”), at 3, 7–8. Thus, we will not discretionarily deny the petition or joinder on the basis of the parallel Delaware litigation.6 Also, to the extent Serendia contends EndyMed should not be permitted to join and continue an IPR that would otherwise be terminated due to Serendia’s settlement with Jeisys, we disagree for several reasons. First, this is EndyMed’s first (and only) petition challenging the ’774 patent. As such, there is no risk of “repeated attacks” by the “same petitioner,” as was the case in Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9, 5– 13 (October 28, 2020) (precedential), where joinder was denied because the 6 To the extent Serendia also relies on duplicative efforts with the pending ITC investigation, the Director has expressly stated that the Board “will not” discretionarily deny a petition based on a parallel ITC proceeding. See Director Memo, at 7.” slip op. at 13
Discretionary denialPatents in suitUS 10,869,812 - PTAB · Jan 10, 2025 · IPR2024-00844 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of the remaining challenged claims, granted EndyMed’s joinder motions, joined the proceedings, and terminated the three new IPRs.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“More importantly, as shown in the above comparison, the underlying premise of Serendia’s arguments here and in the 383 IPR remains substantially the same. Thus, for the same reasons discussed in our decision instituting the 383 IPR, we find that EndyMed demonstrates a reasonable likelihood of prevailing with respect to at least one of challenged claims 13 and 14 of the ’774 patent. See 383 IPR, Paper 17, 11–18. That is not to say, however, that Serendia may not ultimately persuade us at trial of the deficiency of EndyMed’s showing based on a preponderance of the evidence.” slip op. at 10
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Here, there is no dispute that EndyMed’s petition is materially identical to the petition in the 383 IPR. Instead, Serendia argues that joinder should be denied due to EndyMed’s “unreasonable and unjustifiable delay” in filing the petition and seeking joinder with the 383 IPR, despite being aware of the ’774 patent and Jeisys’s petition for “more than 7 months” before filing. PO Opp. 1–2. We disagree. EndyMed need not justify its delay where, as here, EndyMed satisfies the joinder requirement of filing the petition within one month of our institution of trial in the 383 IPR. See 37 C.F.R. § 42.122(b); see also 37 C.F.R. §§ 1.7(a), 42.1(a). Indeed, per our rules, EndyMed could not have filed the instant petition prior to institution of the IPR it was seeking to join. See 37 C.F.R. § 42.122(b) (“Any request for joinder must be filed . . . no later than one month after the institution date of any inter partes review for which joinder is requested.” (emphasis added)). And, although there is a one-year statutory bar from the date of service of a complaint alleging infringement for requesting inter partes review, that bar does not apply to a request for joinder. See 35 U.S.C. § 315(b). Thus, despite being filed more than one year from the service date of Serendia’s complaint alleging infringement of the ’774 patent, EndyMed’s petition and motion are nonetheless timely.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Serendia also argues that joinder should be denied due to duplicative efforts with the parallel Delaware litigation, which involves the same parties and patent as here. See PO Opp. 3–4. That argument fails for the simple reason that EndyMed submits a Sotera stipulation, agreeing not to pursue in the Delaware litigation the same grounds that are asserted in the petition here or any grounds that reasonably could have been raised here. See Pet. Reply 1–2. And because a Sotera stipulation mitigates concerns of duplicative efforts, we decline to discretionarily deny institution where a petitioner makes such a stipulation. See Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Director Memo”), at 3, 7–8. Thus, we will not discretionarily deny the petition or joinder on the basis of the parallel Delaware litigation.6” slip op. at 13
- PTAB / AIA Trials › §315(b) time barDecided for petitioner
“identical to the petition in the 383 IPR. Instead, Serendia argues that joinder should be denied due to EndyMed’s “unreasonable and unjustifiable delay” in filing the petition and seeking joinder with the 383 IPR, despite being aware of the ’774 patent and Jeisys’s petition for “more than 7 months” before filing. PO Opp. 1–2. We disagree. EndyMed need not justify its delay where, as here, EndyMed satisfies the joinder requirement of filing the petition within one month of our institution of trial in the 383 IPR. See 37 C.F.R. § 42.122(b); see also 37 C.F.R. §§ 1.7(a), 42.1(a). Indeed, per our rules, EndyMed could not have filed the instant petition prior to institution of the IPR it was seeking to join. See 37 C.F.R. § 42.122(b) (“Any request for joinder must be filed . . . no later than one month after the institution date of any inter partes review for which joinder is requested.” (emphasis added)). And, although there is a one-year statutory bar from the date of service of a complaint alleging infringement for requesting inter partes review, that bar does not apply to a request for joinder. See 35 U.S.C. § 315(b). Thus, despite being filed more than one year from the service date of Serendia’s complaint alleging infringement of the ’774 patent, EndyMed’s petition and motion are nonetheless timely.” slip op. at 12
Discretionary denialPatents in suitUS 9,320,536 - PTAB · Jan 10, 2025 · IPR2024-00843 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of claims 13 and 14 of the ’774 patent, granted EndyMed’s motion for joinder with IPR2024-00383, and terminated IPR2024-00843.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“More importantly, as shown in the above comparison, the underlying premise of Serendia’s arguments here and in the 383 IPR remains substantially the same. Thus, for the same reasons discussed in our decision instituting the 383 IPR, we find that EndyMed demonstrates a reasonable likelihood of prevailing with respect to at least one of challenged claims 13 and 14 of the ’774 patent. See 383 IPR, Paper 17, 11–18. That is not to say, however, that Serendia may not ultimately persuade us at trial of the deficiency of EndyMed’s showing based on a preponderance of the evidence.” slip op. at 10
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Here, there is no dispute that EndyMed’s petition is materially identical to the petition in the 383 IPR. Instead, Serendia argues that joinder should be denied due to EndyMed’s “unreasonable and unjustifiable delay” in filing the petition and seeking joinder with the 383 IPR, despite being aware of the ’774 patent and Jeisys’s petition for “more than 7 months” before filing. PO Opp. 1–2. We disagree. EndyMed need not justify its delay where, as here, EndyMed satisfies the joinder requirement of filing the petition within one month of our institution of trial in the 383 IPR. See 37 C.F.R. § 42.122(b); see also 37 C.F.R. §§ 1.7(a), 42.1(a). Indeed, per our rules, EndyMed could not have filed the instant petition prior to institution of the IPR it was seeking to join. See 37 C.F.R. § 42.122(b) (“Any request for joinder must be filed . . . no later than one month after the institution date of any inter partes review for which joinder is requested.” (emphasis added)). And, although there is a one-year statutory bar from the date of service of a complaint alleging infringement for requesting inter partes review, that bar does not apply to a request for joinder. See 35 U.S.C. § 315(b). Thus, despite being filed more than one year from the service date of Serendia’s complaint alleging infringement of the ’774 patent, EndyMed’s petition and motion are nonetheless timely.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Other
“Serendia also argues that joinder should be denied due to duplicative efforts with the parallel Delaware litigation, which involves the same parties and patent as here. See PO Opp. 3–4. That argument fails for the simple reason that EndyMed submits a Sotera stipulation, agreeing not to pursue in the Delaware litigation the same grounds that are asserted in the petition here or any grounds that reasonably could have been raised here. See Pet. Reply 1–2. And because a Sotera stipulation mitigates concerns of duplicative efforts, we decline to discretionarily deny institution where a petitioner makes such a stipulation. See Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Director Memo”), at 3, 7–8. Thus, we will not discretionarily deny the petition or joinder on the basis of the parallel Delaware litigation.6 Also, to the extent Serendia contends EndyMed should not be permitted to join and continue an IPR that would otherwise be terminated due to Serendia’s settlement with Jeisys, we disagree for several reasons. First, this is EndyMed’s first (and only) petition challenging the ’774 patent. As such, there is no risk of “repeated attacks” by the “same petitioner,” as was the case in Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9, 5– 13 (October 28, 2020) (precedential), where joinder was denied because the 6 To the extent Serendia also relies on duplicative efforts with the pending ITC investigation, the Director has expressly stated that the Board “will not” discretionarily deny a petition based on a parallel ITC proceeding. See Director Memo, at 7.” slip op. at 13
Discretionary denialPatents in suitUS 9,775,774 - Maplebear Inc. D/B/A Instacart v. Consumeron, LLCAll claims unpatentablePTAB · Nov 20, 2024 · IPR2023-00865 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–19 are unpatentable under § 103 over Carr and Lauka, with additional references for the dependent-claim grounds, because the challenged claims lack priority support in the ’848 application.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Instacart submits that a person of ordinary skill in the art (“POSITA”) would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of electronic commerce” and that “[l]ack of work experience can be remedied by additional education, and vice versa.” Pet. 27 (citing Ex. 1003 ¶¶ 22–25). 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.” PO Resp. 7 (citing Ex. 2016 ¶¶ 19–23). But, as Consumeron’s expert acknowledges, Consumeron’s proposed definition “is not materially different” from Instacart’s. See Ex. 2016 ¶ 22. Accordingly, while we adopt the level of skill in the art as defined by Instacart our findings and analysis would be the same under Consumeron’s proposal.” slip op. at 7
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“8 Consumeron argues Dr. Houh’s testimony should be given little weight because he “admitted he did not evaluate what the ’848 Application reasonably conveys to a skilled artisan.” Resp. 26 (citing Ex. 2011, 74:8– 76:6, 83:4–84:1, 92:22–95:5). We disagree. Dr. Houh’s testimony indicates that he properly considered what the ’848 application reasonably conveys to a POSITA. See Ex. 1003 ¶¶ 52, 56, 58, 61, 65. The portions of his cross-examination testimony cited by Consumeron do not suggest otherwise. For the reasons explained below, we credit Dr. Houh’s testimony over the competing interpretations offered by Consumeron and Dr. Mitzenmacher. 9 The dissent criticizes the majority’s analysis as “overly narrow” and too focused on the preferred embodiment. See Dissent 7–8. We disagree. Our analysis considers the entirety of the ’848 application, including all of the passages cited by Consumeron and the dissent.” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“But it does not follow that an agent encountering a stock-out would necessarily respond according to the specific steps recited in claims 1 and 14.10 For example, instead of sending information about a replacement product, the agent could travel to another location to look for the same product, or notify the customer that the desired product could not be found and terminate the transaction. Because the ’848 application only contemplates scenarios where a product can be located, it does not describe the agent’s response in the event the identified product cannot be located or is unavailable, much less reasonably convey possession of a method comprising the specific, responsive steps in claims 1 and 14.11” slip op. at 17
- Prior constructionPrior construction adoptedTerm construed petitioner constructionDecided for petitioner
“construed the terms “acquisition request” and “acquiring” in our final written decision in the related 1357 IPR to encompass “not only a request for a delivery agent to shop for and purchase goods, but also a request for the agent to pick up or obtain pre-paid goods.” See 1357 IPR, Paper 35 at 11. It is undisputed that the ’465 patent at issue here and the ’835 patent at issue in the 1357 IPR are related and share essentially identical specifications, figures, and claim terms. See Pet. Reply 16; PO Resp. 38 n.6. Thus, for the same reasons as in our final written decision in the related 1357 IPR, we likewise determine here that Instacart’s construction of “acquisition request” is the correct one. See SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir. 2015) (“Where multiple patents ‘derive from the same parent application and share many common terms, we must interpret the claims consistently across all asserted patents.’” (quoting NTP, Inc., v. Research in Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005)). Consumeron provides no persuasive justification for us to depart from our prior reasoning in the related 1357 IPR.” slip op. at 23
Patent outcomesUS 11,238,465 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 11,238,465 - PTAB · Nov 7, 2024 · IPR2024-00884 · APJ Richard H Marschall · IPR · Institution
The Board instituted review of claims 1–15, finding a reasonable likelihood that claims 1–3, 6–11, 14, and 15 are obvious over Aker, Aker ’724, and Thomas.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art relating to the ’602 patent would have “a working knowledge of Doppler radar systems,” a “Bachelor of Science degree in an academic discipline emphasizing electrical, mechanical, instrumentation engineering or other disciplines related [to] measurement science,” and “specific training or at least one to two years of related work experience with Doppler radar systems.” Pet. 4 (citing Ex. 1003 ¶ 18). Petitioner asserts that one of ordinary skill could, alternatively, have a “Master of Science degree in electrical engineering with less than a year of related work experience in the same discipline.” Pet. 5 (citing Ex. 1003 ¶ 18). Patent Owner does not contest Petitioner’s proposal at this time. Prelim. Resp. 21–22. At this stage, and based on Petitioner’s undisputed contentions, we apply Petitioner’s proposed level of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Based on this preliminary record, we agree with Petitioner that its first proposed construction more naturally follows from the claim language and specification. That construction reads the limitation as requiring a “a radar transceiver configured to transmit and receive radar beams” either “in a front zone . . . or in a rear zone,” but does not require a single transceiver configured to transmit and receive radar beams in both the front and rear zones. See Pet. 6. Based on this record, the specification supports this approach because it describes separate transceivers operating in the front zone and rear zone of the patrol vehicle. See Ex. 1001, 4:29–5:24; see also Fig. 2 (showing front radar transceiver 12 associated with first radar beam 42 and separately showing rear radar transceiver 14 associated with second radar bean 44).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Based on the current record, Petitioner sufficiently establishes for the purposes of institution that one of ordinary skill in the art would have been motivated to combine Aker, Aker ’724, and Thomas in the manner Petitioner proposes. See Pet. 9–13. Patent Owner’s arguments do not undermine Petitioner’s showing on these issues, based on the current record, for several reasons. First, Patent Owner premises its arguments on detailed assertions as to how one of ordinary skill in the art would interpret the teachings of the references, and then includes detailed calculations based on those teachings. See Prelim. Resp. 24–36. None of these assertions are supported by any testimony from one of ordinary skill in the art, and, on this record, amount to mere attorney argument. See id. For example, even if Patent Owner’s calculations are arithmetically correct, Patent Owner does not explain or provide evidence that a skilled artisan would gauge the accuracy of GPS for law enforcement based on Patent Owner’s asserted calculations and “baseline” assumptions. See id. at 28–29. While expert testimony is not required at any stage of these proceedings, Patent Owner’s arguments here fail to undermine Petitioner’s arguments and evidence, which include currently unrebutted testimony from one of ordinary skill in the art. See, e.g., Pet. 9–13 (citing Ex. 1003 ¶¶ 31–33, 35–40). Second, the specifics of Patent Owner’s arguments do not justify denial of institution, based on the current record. Patent Owner does not dispute that using GPS to determine the speed of a vehicle as Thomas teaches could be easily incorporated into Aker’s system. Instead, Patent Owner focuses almost entirely on the lack of accuracy when using the GPS approach. As Petitioner points out, the claims do not require a specific level of accuracy and appear to allow for some degree of inaccuracy. See Prelim. Reply 1–2. In addition, Patent Owner does not argue for a claim construction that requires a specific level of accuracy. Prelim. Resp. 17–21. Even if accuracy concerns militate against the proposed combination to some degree, Patent Owner does not assert, with probative evidence, that a specific level of accuracy must be achieved in this art and how the proposed combination fails to meet that standard such that use of GPS for speed readings would be rejected despite their ready availability. See id. at 24–36. These arguments, based on the current record, do not undermine Petitioner’s reasons for its proposed combination. Final resolution of these highly factual disputes based on interpretations of the references and the standards in the art are best resolved after further development during trial.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Fourth, we are not persuaded by Patent Owner’s teaching away argument, based on the current record. See Prelim. Resp. 28–36. Patent Owner does not support its argument with citations to Aker disparaging the use of GPS to obtain speed, or the inaccuracy of such a system generally, or citations to Thomas disparaging the accuracy of its GPS approach or its suitability for use in a patrol car. See id. Instead, Patent Owner appears to argue that the Aker references disclose two methods for obtaining speed, show a preference for one method as more accurate, and Thomas’s GPS method provides no more accuracy than the method Aker disparages. See id. Patent Owner’s arguments rely on inferences drawn by one of ordinary skill in the art when reading the references and error calculations to determine the suitability of GPS-based speed readings. See id. While these arguments may ultimately prevail, they do not appear to reach the threshold of “teaching away” from Petitioner’s proposed combination. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“[T]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.”).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,703,602 - PTAB · Nov 7, 2024 · IPR2024-00829 · APJ Richard H Marschall · IPR · Institution
The Board instituted IPR on claims 1–15, finding a reasonable likelihood that claims 1–3, 6–11, 14, and 15 are obvious over Aker, Aker ’724, and Thomas.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have jurisdiction under 35 U.S.C. § 314. Under § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the challenged claims in the petition.” Id. at § 314(a). Because we determine that Petitioner demonstrates a reasonable likelihood that at least one challenged claim is unpatentable, we institute an inter partes review of all claims as challenged in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art relating to the ’039 patent would have “a working knowledge of Doppler radar systems,” a “Bachelor of Science degree in an academic discipline emphasizing electrical, mechanical, instrumentation engineering or other disciplines related measurement science,” and “specific training or at least one to two years of related work experience with Doppler radar systems.” Pet. 4 (citing Ex. 1003 ¶ 16). Petitioner asserts that one of ordinary skill could, alternatively, have a “Master of Science degree in electrical engineering with less than a year of related work experience in the same discipline.” Id. Patent Owner does not contest Petitioner’s proposal at this time. Prelim. Resp. 18. At this stage, and based on Petitioner’s undisputed contentions, we apply Petitioner’s proposed level of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Here, Petitioner posits that “no formal claim constructions are necessary in this proceeding.” Pet. 5. Patent Owner also states that “no construction is necessary” at this time. Prelim. Resp. 17–18. We determine that we need not expressly construe any terms to resolve the dispute between the parties at this time. Nidec, 868 F.3d at 1017.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Based on the current record, Petitioner sufficiently establishes for the purposes of institution that one of ordinary skill in the art would have been motivated to combine Aker, Aker ’724, and Thomas in the manner Petitioner proposes. See Pet. 7–11. Patent Owner’s arguments do not undermine Petitioner’s showing on these issues, based on the current record, for several reasons. First, Patent Owner premises its arguments on detailed assertions as to how one of ordinary skill in the art would interpret the teachings of the references, and then includes detailed calculations based on those teachings. See Prelim. Resp. 20–33. None of these assertions are supported by any testimony from one of ordinary skill in the art, and, on this record, amount to mere attorney argument. See id. For example, even if Patent Owner’s calculations are arithmetically correct, Patent Owner does not explain or provide evidence that a skilled artisan would gauge the accuracy of GPS for law enforcement based on Patent Owner’s asserted calculations and “baseline” assumptions. See id. at 28–29. While expert testimony is not required at any stage of these proceedings, Patent Owner’s arguments here fail to undermine Petitioner’s arguments and evidence, which include currently unrebutted testimony from one of ordinary skill in the art. See, e.g., Pet. 7–11 (citing Ex. 1003 ¶¶ 25–33).” slip op. at 14
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,194,039
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.