- PTAB · Jun 13, 2024 · IPR2024-00269 · APJ Robert J Silverman · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 5, 7, 8, 10, 12, 17, and 18 based on both § 103 grounds, finding a reasonable likelihood of success.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Provisur proposes, and Weber does not dispute, that a person of ordinary skill in the art of the ’823 patent, at the time relevant for the analysis herein, would have possessed the following background and qualifications: (1) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working as an engineer (or similar role) on food processing and/or packaging systems (or in a similar field); or (2) at least seven years of experience working as an engineer (or similar role) on food processing and/or packaging systems (or in a similar field). Pet. 13–14. Provisur’s proposed definition appears to be consistent with the problems and solutions addressed in the ’823 patent and the prior art of 3 US 2016/0023370 A1, pub. Jan. 28, 2016 (Ex. 1004, “Müller”). 4 US 2019/0329438 A1, pub. Oct. 31, 2019 (Ex. 1005, “GEA438”). 5 US 2009/0159631 A1, pub. June 25, 2009 (Ex. 1006, “DePoi”). record. Therefore, for the purposes of this Decision, we adopt Provisur’s characterization of the level of ordinary skill in the art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Weber’s Preliminary Response does not manifest any claim construction dispute that would bear upon this Decision. Therefore, we need not expressly construe any claim terms at this preliminary stage. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“[I]n evaluating the factors,” set forth in Fintiv, “the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv 6 (emphasis added). In view of the following discussion of these factors, under the circumstances as they appear from the present record, the efficiency and integrity concerns, referenced in Fintiv, are best served by not exercising our discretion to deny the Petition without considering the merits. slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, and solely for the purposes of this Decision, we determine that Grounds 1 and 2 of the Petition (as identified below) satisfy this standard.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,331,823 - PTAB · Jun 13, 2024 · IPR2024-00258 · APJ Carl M Defranco · IPR · Institution
The Board instituted IPR on claims 2, 3, 9, 10, 12, 13, and 16–20, finding a reasonable likelihood that claims 2, 17, and 19 are obvious over Müller and Waffner.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Aside from operability, Weber does not further dispute Provisur’s showing as to how the asserted combination of Müller and Waffner renders obvious the subject matter of independent claims 2, 17, and 19. See Prelim. Resp. 14–24. After analyzing Provisur’s showing, including Provisur’s mapping of the claim elements to Müller and/or Waffner and its reasoning for why one of ordinary skill in the art would have been led to combine their respective teachings (as discussed above), we find that Provisur demonstrates a reasonable likelihood that at least independent claims 2, 17, and 19 are unpatentable as obvious over the combined teachings of Müller and Waffner. See Pet. 28–38 (claim 2), 38–42 (reason to combine), 47–52 (claim 17), 53 (claim 19). Thus, Provisur meets the threshold for institution. At this stage, Weber offers no response to Provisur’s challenge of dependent claims 3, 9, 10, 12, 13, 16, 18, and 20, except presumably to rely on its argument against Provisur’s challenge of their respective base claims 2, 17, and 19. See Prelim. Resp. 14–24. Because Provisur provides an obviousness challenge that satisfies the “reasonable likelihood” threshold with respect to at least the independent claims, we do not address the dependent claims in the absence of any rebuttal from Weber. Further analysis is best left for trial after full development of the record.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“C. Discretionary Denial Under 35 U.S.C. § 314(a) Weber requests that we exercise our discretion under 35 U.S.C. § 314(a) to deny institution due to the advanced state of the parallel Missouri action. See Prelim. Resp. 3–13. Although Provisur argues that discretionary denial is not warranted (Pet. 73–77), it nonetheless submits a Sotera style stipulation (Ex. 1029) in an effort to resolve the issue.8 In light of Provisur’s Sotera stipulation, we will not discretionarily deny institution under § 314(a). See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022), at 3, 7.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“the art reasonably would have understood the advantage of incorporating Waffner’s air-permeable contact surface and vacuum chamber into Müller’s downstream buffer 12, as opposed to its upstream buffer 8, given that both prior art references emphasize the importance of controlling the infeed speed and tension of the interleaver material adjacent the cutting region where rapid acceleration and braking of the interleaver material may result in tearing and wrinkling. See Ex. 1004 ¶¶ 26, 48; Ex. 1006, 2:58–3:4, 6:50–56; see also Ex. 1003 ¶¶ 200–210 (addressing the teachings of Müller and Waffner in view of the existing knowledge in the art). Indeed, Provisur’s expert confirms that “[l]ike many interleaver devices known in the art, Müller discloses creating a buffer loop of web material upstream of the rollers that insert the web material into the cutting area,” and that “[i]t was known in the food slicing and interleaving industry that the tension of interleaver material fed to the cutting region from a loose loop must be controlled.” Ex. 1003 ¶¶ 199, 220. And, like Waffner, Müller describes buffer 12 in terms of being a “loop” buffer for controlling the infeed speed of the interleaver material into the cutting region. See Ex. 1004 ¶ 48 (“Provided downstream of the first buffer 8 is a further buffer 12, a loop here, which . . . preferably buffers only as much interleaver material as is needed for the ejection of an interleaver.”). In contrast, Müller’s buffer 8 is used only “in the event of a[n] emergency stop” for buffering “overrun of the reel.” Id. ¶ 33. Thus, based on the current record, we reject the notion that Provisur’s proposed modification of Müller’s buffer 12, which continuously controls the length of the loop near the cutting region, would have any effect on Müller’s buffer 8, which merely stops unraveling near the reel. Aside from operability, Weber does not further dispute Provisur’s showing as to how the asserted combination of Müller and Waffner renders obvious the subject matter of independent claims 2, 17, and 19. See Prelim. Resp. 14–24. After analyzing Provisur’s showing, including Provisur’s mapping of the claim elements to Müller and/or Waffner and its reasoning for why one of ordinary skill in the art would have been led to combine their respective teachings (as discussed above), we find that Provisur demonstrates a reasonable likelihood that at least independent claims 2, 17, and 19 are unpatentable as obvious over the combined teachings of Müller and Waffner. See Pet. 28–38 (claim 2), 38–42 (reason to combine), 47–52 (claim 17), 53 (claim 19). Thus, Provisur meets the threshold for institution.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Provisur asserts that the claim terms should be construed “according to their plain and ordinary meanings as understood by [one of ordinary skill in the art] in view of the specification and prosecution history” and that “[n]o terms require an explicit construction to resolve the unpatentability controversy between the parties here.” Pet. 18. Weber appears to agree, stating in the parallel Missouri action that “most of [Weber’s] patent claims are plain and ordinary . . . [t]hey’re not difficult or complex claims or claim terms.” Ex. 1028, 5. There being no dispute, we need not expressly construe any claim terms at this stage of the proceeding, because we can decide the threshold question of institution without further construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where the construction is not material to the dispute).” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,647,013 - PTAB · May 31, 2024 · IPR2024-00235 · APJ Carl M Defranco · IPR · Institution
The Board instituted IPR on claims 1–6, 8, 10, and 14–16 based on a reasonable likelihood that claims 1 and 14 are anticipated by Young and obvious over Young and Norrie.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Provisur proposes that one of ordinary skill in the art typically would have had: (1) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working as an engineer (or similar role) on food processing and/or packaging systems (or in a similar field); or (2) at least seven years of experience working as an engineer (or similar role) on food processing and/or packaging systems (or in a similar field). Pet. 12. Weber does not contest Provisur’s framing of the level of ordinary skill in the art. Because Provisur’s proposed definition is consistent with the level of skill described in the ’321 patent and the prior art of record, we adopt it here for purposes of institution.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Provisur asserts that the claim terms should be construed “according to their plain and ordinary meanings as understood by [one of ordinary skill in the art] in view of the specification and prosecution history” and that “[n]o terms require an explicit construction to resolve the unpatentability 4 US 5,514,032, issued May 7, 1996 (Ex. 1004, “Young”). 5 US 4,979,269, issued Dec. 25, 1990 (Ex. 1005, “Norrie”). 6 US 6,929,540 B2, issued Aug. 16, 2005 (Ex. 1006, “Johnson”). 7 US 6,198,834 B1, issued Mar. 6, 2001 (Ex. 1007, “Belk”). controversy between the parties here.” Pet. 13. Weber appears to agree, its counsel stating in the parallel Missouri action that “most of [Weber’s] patent claims are plain and ordinary . . . [t]hey’re not difficult or complex claims or claim terms.” Ex. 1028, 5. There being no dispute, we need not expressly construe any claim terms at this stage, because we can decide the threshold question of institution without further construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where the construction is not material to the dispute).” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Weber requests that we deny institution under 35 U.S.C. § 314(a) due to the advanced state of the parallel Missouri action. See Prelim. Resp. 6– 17. Provisur disputes that discretionary denial is warranted (Pet. 73–77), but nonetheless submits a Sotera stipulation (Ex. 1029) in an effort to resolve the issue.8 In light of Provisur’s Sotera stipulation, we will not discretionarily deny institution under § 314(a). See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022), at 3, 7.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We disagree with Weber’s position, at least on the current record. Instead, we find that Provisur presents sufficient evidence that Young anticipates all elements of independent claims 1 and 14, including the disputed limitation requiring “automatic determination of the thickness of the fat cover.” In particular, Young’s imaging system 190 includes multiple cameras, including top plan camera 196, end view camera 197, and fat line camera 198, as well as controller 172 and real-time image processor 194. Ex. 1004, 17:34–59, 18:46–56, Figs. 2, 13. As described by Young, top plan camera 196 is primarily used to obtain “physical dimensions and characteristics” of the meat product, end view camera 197 is primarily used to determine the “height” of meat product and “to create a clear delineation along the top edge of the end” of the meat product, whereas fat line camera 198 is primarily used to determine the fat/lean separation line of the meat product. See id. at 17:59–18:39. Those disclosures by Young clearly contemplate determining specific dimensions of the meat product, and not simply identifying the fat/lean separation line, as Weber suggests. See Prelim. Resp. 19. To determine the “thickness” of the fat cover, Young’s imaging system has image processing routine 240, which “generates a fat/lean separation line and an edge line . . . representing the outer surface of the pork side proximate the fat/lean line” and uses those lines to calculate “the height, width, and length of the [meat product].” Ex. 1004, 23:12–25, 24:10–22. As part of routine 240, controller 172 uses that information to set the cutting profile of knife assembly 100 “so that the assembly follows a fixed distance from the separation line to provide the optimum fat cover for the loin.” Id. at 18:35–39 (emphasis added). Notably, according to Young, the “fixed distance” represents the “desired” thickness of fat that remains on the meat, after cutting, and “sufficiently keeps the loin from drying out, but doesn’t make the loin look too fat.” Id. at 20:60–66; see also id. at 10:39–42 (“Through control of the knife blade along several axes, assembly 100 preferably produces an optimum separation between loin and belly, with a desired fat covering left on the loin.” (emphasis added)). Young’s disclosure that image processing routine 240 determines a “fixed distance” from the loin/fat separation line at which to cut the meat product undoubtedly corresponds to the claimed “determination of the thickness of the fat cover . . . in a contactless manner.” See Ex. 1003 ¶¶ 104–112. Indeed, Young discloses specific dimensions for the desired optimum fat cover to remain on the meat—“a fixed distance (preferably 0.1 inch) from the fat/lean separation line 6.” Ex. 1004, 20:55–63.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 8,529,321 - PTAB · Apr 26, 2024 · IPR2024-00474 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR of claims 1 and 2 on all four asserted §103 grounds, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We find that, on the current record, Petitioner has sufficiently mapped the limitations/steps of the claims to the disclosures of Lievestro and Schneider, identified a reason with rational underpinnings why the ordinarily skilled artisan would have combined the teachings of the references, and identified that there would have been a reasonable expectation of success. Based on the evidence presented at this stage of the proceeding, Petitioner has shown under Ground 1 that there is reasonable likelihood that at least one of the ’301 patent’s claims would have been obvious over Lievestro and Schneider.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage of the proceeding, we accept and use Petitioner’s proposed and unopposed definition of the ordinarily skilled artisan. It appears that Petitioner’s proposed definition comports with the level of skill in the art reflected in the prior art of record and the ’301 patent, itself. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). C.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We find that, on the current record, Petitioner has sufficiently mapped the limitations/steps of the claims to the disclosures of Lievestro and Schneider, identified a reason with rational underpinnings why the ordinarily skilled artisan would have combined the teachings of the references, and identified that there would have been a reasonable expectation of success. Based on the evidence presented at this stage of the proceeding, Petitioner has shown under Ground 1 that there is reasonable likelihood that at least one of the ’301 patent’s claims would have been obvious over Lievestro and Schneider.” slip op. at 26
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“At this stage of the proceeding we find this term is readily understandable on its face and do not find it necessary to expressly interpret this claim language.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,842,301 - Dexcom, Inc. v. Abbott Diabetes Care Inc.Institution deniedPTAB · Apr 16, 2024 · IPR2023-01397 · APJ John G New · IPR · Institution
The Board denied institution on all grounds because Dexcom did not show a reasonable likelihood that claims 1–4, 8, 9, and 11–27 were unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We do not find Petitioner’s argument persuasive. Figure 29 is a “cross-sectional view,… of the insertion device” disclosed by Raymond. Ex. 1110 ¶ 55. Another view of base 122 is depicted in Raymond’s Figure 18, a detail of which is reproduced below: Detail of Figure 18 of Raymond showing base 122 As depicted in Figure 18, base 122 of Raymond’s device comprises a circular disk, with an annular ring on the proximal side. This view is consistent with the cross-sectional view of base 122 in Raymond’s Figure 29, reproduced below: Detail of Raymond’s Figure 29 depicting a cross-sectional view of base 122 The annular ring of base 122, as depicted in Raymond’s Figures 18 and 29 thus comprises, at most, a single recess encircling base 122 beneath the annular ring at the periphery of the base. As such, it neither teaches nor suggests “a plurality of recesses disposed on a periphery of the on-body electronics unit housing, wherein the plurality of recesses comprises a first recess in a spaced relation to a second recess,” as required by challenged claim 1 of the ’335 patent. Petitioner’s argument that Figures 20 and 30 of Raymond depict” slip op. at 29
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Detail of Raymond’s Figure 29 depicting a cross-sectional view of base 122 The annular ring of base 122, as depicted in Raymond’s Figures 18 and 29 thus comprises, at most, a single recess encircling base 122 beneath the annular ring at the periphery of the base. As such, it neither teaches nor suggests “a plurality of recesses disposed on a periphery of the on-body electronics unit housing, wherein the plurality of recesses comprises a first recess in a spaced relation to a second recess,” as required by challenged claim 1 of the ’335 patent. Petitioner’s argument that Figures 20 and 30 of Raymond depict plural recesses in Raymond’s base 122 is based upon a false premise. See Pet. 37–38. The depiction of base 122 in these Figures is entirely consistent with the depiction of base 122 in Raymond’s Figure 18 as having an annular ring with a single recess situated beneath its rim. With respect to Petitioner’s argument that it would have been an obvious design choice to implement two spaced-apart plural recesses on the housing (see Pet. 38), neither Petitioner nor its Declarant, Dr. Fletcher, adduces any evidence beyond that conclusory statement. Id. at 38 (citing Ex. 1103 ¶ 70; Ex. 1110, Figs. 18, 25–27); Ex. 1003, 77. Petitioner makes no persuasive argument as to why a skilled artisan would substitute multiple recesses for a single annular ring, which seemingly serves the purpose of allowing base 122 to be held in position by base-retaining arms 1226. To the contrary, substituting multiple recesses in base 122 to engage retaining arms 1226, and ensuring that each retaining arm 1226 suitably engages each recess, would seem only to add needless complexity to the design, without producing a substantial benefit or improvement.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Turner’s rotation-resisting recesses 77 are not located on the periphery of its body 20. Instead, they are disclosed as being located upon the upper surface of body 20, between its central axis and its edge, and are configured to receive rotation-resisting protrusions 71 of insertion device 70. This placement of rotation-resisting recesses 77 is depicted in Figure 9 of Turner, which is reproduced again below: Figure 9 of Turner is a perspective, exploded view of its fluid delivery system including body 20 and rotation-restricting recesses 77 We therefore find that Turner does not teach or suggest the limitation of challenged claim 1 (and all claims by their dependency) reciting “an on body electronics unit housing comprising a plurality of recesses disposed on a periphery of the on body electronics unit housing.” We further conclude that Petitioner provides no persuasive reason why a person of ordinary skill in the art would have been motivated to alter the location of Turner’s rotation-resisting recesses 77 from the upper surface to the circumferential periphery of body 20, because Turner and the ’335 patent teach that their respective recesses serve different functions. Turner teaches that:” slip op. at 47
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Because we deny institution of inter partes review on the merits, we need not reach the parties’ arguments with respect to whether we should exercise our discretion and deny institution of inter partes review under Section 325(d). As we conclude in Sections IV.B.2.d and IV.C.2.c above, Petitioner has failed to meet its burden of showing a reasonable likelihood of demonstrating at trial that the challenged claims are unpatentable over the combination of Thomas and Raymond, or of Thomas, Raymond, and Turner. That remains true even if, arguendo, the Examiner materially erred in concluding that Thomas is not prior art to the ’335 patent, an issue upon 13 Thomas et al. (US 2010/0198034 A1, August 5, 2010) (“Thomas ’034”), Ex. 2101. 14 The publication date of the Thomas reference that is a basis of Grounds 1 and 2 in this inter partes review is August 12, 2010, one week after the publication of Thomas ’034. which we express no view. We consequently deny as moot Patent Owner’s request that we exercise our discretion under Section 325(d).” slip op. at 51
§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,266,335 - PTAB · Apr 15, 2024 · IPR2023-01409 · APJ Cynthia M Hardman · IPR · Institution
The Board instituted IPR on claims 1–30 and all eight asserted obviousness grounds, finding a reasonable likelihood that Stafford and Cote render at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“that if “the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive.” Advanced Bionics, IPR2019-01469, Paper 6 at 10. Although Petitioner did not specifically state that the Examiner erred in not rejecting the claims over the prior art asserted here, under the second part of the Advanced Bionics framework, based on our analysis of the current record as a whole, we find that Petitioner has “ma[d]e a showing of material error,” in fact, the Petition is premised on it. Advanced Bionics, IPR2019-01469, Paper 6 at 8–9. In particular, Petitioner shows that the Office erred by overlooking something persuasive, namely, the teachings of at least Stafford and Cote, as highlighted in Petitioner’s unpatentability grounds. See Pet. 5 (arguing that each of Cote and Brenneman “provides express teachings on inserters for on-body units that were not considered by the Examiner”), 20–84 (Ground 1). In the Reasons for Allowance, the Examiner stated that “[w]hile Brister (US 2006/0016700) teaches the bulk of the claimed limitations, it fails to teach a housing . . . and an inserter with a sharp” that extends through the housing as claimed. Ex. 1002, 977. Petitioner, however, sufficiently demonstrates for purposes of institution that Stafford and Cote disclose these limitations. See Pet. 33–84 (explaining why Stafford and Cote teach or suggest the limitations of the challenged claims); see also infra Section III.E (determining that, on the current record, Petitioner establishes a reasonable likelihood that the claims challenged in Ground 1 are unpatentable as obvious over Stafford and Cote). Based on the circumstances elucidated by the current record, we find that Petitioner adequately shows that the Examiner “misapprehend[ed] or overlook[ed] specific teachings” of at least Stafford and Cote that “impact patentability of the challenged claims.” Advanced Bionics, IPR2019-01469, Paper 6 at 8 n.9. That is, Petitioner shows that the Examiner materially erred by not applying at least Stafford and Cote in the manner Petitioner argues and as supported by Dr. Fletcher.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After considering the arguments and cited evidence of record, we find that for purposes of institution, Petitioner has demonstrated a reasonable likelihood that Stafford and Cote would have rendered claim 1 obvious. We have reviewed the arguments and evidence of record for claims 2–6, 9–14, 16–24, 27, 29, and 30 in Ground 1, and similarly find that for purposes of institution, Petitioner has demonstrated a reasonable likelihood that Stafford and Cote would have rendered these claims obvious. See Pet. 20–84; Ex. 1003 (Fletcher Decl.) ¶¶ 44–155. On this basis, we institute inter partes review of all challenged claims on all grounds in the Petition. See SAS Institute Inc., 138 S. Ct. at 1358; 37 C.F.R. § 42.108(a).” slip op. at 30
- Skill levelSkill level petitioner adoptedOther
“understanding of a person of ordinary skill in the art at the time the invention was made.11 See Graham, 383 U.S. at 17–18. Petitioner contends that a person of ordinary skill in the art would have had: a bachelor’s degree in bioengineering, mechanical engineering, electrical engineering, or a related subject, and one or more years of experience researching, developing, and/or designing insertable medical devices, including, e.g., systems for implanting wearable medical devices such as cannulas, infusion sets, and analyte sensors, or equivalent experience. Less work experience may be compensated by a higher level of education, such as a master’s degree, and vice versa. Pet. 10–11 (citing Ex. 1003 (Fletcher Decl.) ¶ 28). Patent Owner does not presently dispute Petitioner’s proposal or offer an alternative definition. See generally Prelim. Resp. 10 The record does not presently include any objective indicia of obviousness or nonobviousness. See generally Pet.; Prelim. Resp. 11 For purposes of this Decision, we apply a priority date of February 3, 2009. See supra 8 n.2. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes that any claim term requires an express construction. See Pet. 19; see generally Prelim. Resp. We find it unnecessary to construe any claim term to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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))). Any final written decision entered in this case may include express claim constructions, or may include discussion of claim scope that differs from that provided in our analysis below. Any final claim constructions will be based on the full trial record.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,202,591 - PTAB · Feb 5, 2024 · IPR2023-01251 · APJ Cynthia M Hardman · IPR · Institution
The Board instituted IPR on all asserted grounds challenging claims 1–12, 14–28, and 30, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the foregoing reasons, we determine that the information presented establishes a reasonable likelihood that Petitioner would prevail in showing that at least one of the challenged claims of the ’056 patent is unpatentable. At this preliminary stage, we have not made a final determination regarding the patentability of any challenged claim or any underlying factual and legal issues. See TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (noting that “there is a significant difference between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at institution, and actually proving invalidity by a preponderance of the evidence at trial”). Any final decision in this proceeding will be based on the full trial record.” slip op. at 48
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 13 (citing Ex. 1008 (Gross Decl.) ¶ 51). Patent Owner indicates that it does not dispute this portion of Petitioner’s proposal. See Prelim. Resp. 24. Petitioner also posits that “[t]he POSITA may be part of an interdisciplinary team with others having relevant experience and/or with clinicians involved in diagnosis, treatment, and patient management relevant to the use of medical devices for monitoring physiological signals” and “would have been aware of commercially available glucose monitoring systems (e.g., the Medtronic Paradigm® REAL-Time) through scientific journals and magazines,” “would have known the importance of data reliability to glucose monitoring, including anticipating that errors (e.g., communication or calibration failures) would result in missing or inaccurate glucose data,” and would have accounted for missing data using technical concepts known at the time, including programming glucose monitoring systems to detect failures that result in data being unavailable for display (e.g., due to a calibration error or loss of communication), preserving this data in memory, regenerating it once the system recovered, and displaying regenerated data. Pet. 13–14 (citing Ex. 1008 (Gross Decl.) ¶¶ 52, 54–61). Patent Owner does not specifically comment on or dispute this portion of Petitioner’s proposal. See generally Prelim. Resp. Because Petitioner’s full proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes that any claim term requires an express construction. See Pet. 14; Prelim. Resp. 24. We find it unnecessary to construe any claim term to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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))). Any final written decision entered in this case may include express claim constructions, or may include discussion of claim scope that differs from that provided in our analysis below. Any final claim constructions will be based on the full trial record.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We determine that Petitioner’s proffered reason to combine is sufficient for purposes of institution. Petitioner does not merely rely on the fact that Patel-2008, Mastrototaro, Shahmirian, and Causey are from same field of study or address the same problem. Instead, Petitioner points to Patel-2008’s express discussion of the utility of Mastrototaro, Shahmirian, and Causey’s teachings, together with the fact that all of the references apparently discuss different components of the same system (i.e., the Medtronic MiniMed continuous glucose monitoring system). See, e.g., Pet. 83–84; Ex. 1008 (Gross Decl.) ¶¶ 55, 70–71. On this record, we find for purposes of institution that Dr. Gross sufficiently establishes that “POSITAs would have been motivated to combine the sensor and transmitter of Mastrototaro, the communications of Shahmirian, and the monitor control programs of Causey to effectuate a diabetes management system with the monitoring, communication, and display functionalities disclosed in Patel-2008,” and “to convey as much accurate glucose information to a user as possible without providing inaccurate information.” Ex. 1008 (Gross Decl.) ¶¶ 190–93. Patent Owner’s argument that “nothing in Patel-2008 teaches or suggests incorporating these disparate teachings into a single system” (Prelim. Resp. 47–48) is unavailing. First, as noted above, Patel-2008 expressly teaches using in its system components described in Mastrototaro, Shahmirian, and Causey. Second, even if Patent Owner were correct that Patel-2008 lacks a teaching or suggestion to incorporate Mastrototaro, Shahmirian, and Causey’s teachings into Patel-2008’s system, Patel-2008 itself need not express a reason to combine. Rather, “[a]ny motivation to combine references, whether articulated in the references themselves or supported by evidence of the knowledge of a skilled artisan, is sufficient to combine those references to arrive at the claimed [invention].” Outdry Techs. Corp. v. Geox S.p.A., 859 F.3d 1364, 1370–71 (Fed. Cir. 2017). As noted above, we find that Petitioner’s rationales are sufficiently supported by Dr. Gross and the cited references for purposes of institution.” slip op. at 43
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 11,298,056 - 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 · Jan 31, 2024 · IPR2024-00298 · APJ Ryan H Flax · IPR · Institution
Instituted IPR on claims 1–30 of the ’572 patent on all asserted grounds and granted Biocon’s motion to join IPR2023-00884.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We explained in our Institution Decision in IPR’884 why we conclude that Samsung demonstrated a reasonable likelihood of prevailing at trial in showing that the challenged claims are unpatentable. See generally IPR’884 DI. The present Petition advances identical arguments, challenging the same claims over the same combinations of prior art. We consequently adopt the same reasoning here as in our IPR’884 Institution Decision, and conclude that Petitioner is likely to prevail in demonstrating the unpatentability of the same challenged claims. Id. We incorporate our previous analysis regarding the asserted grounds of unpatentability and conclude that Petitioner demonstrates a reasonable likelihood of prevailing at trial with respect to at least one claim of the ’572 patent challenged in the Petition for the same reasons as in IPR’884. See id. Therefore, we determine that the Petition warrants institution of inter partes review on all claims and all grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”); see also SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. We determine whether to grant joinder on a case-by-case basis, taking into account the particular facts of each case, substantive and procedural issues, and other considerations. When exercising that discretion, we are mindful that patent trial regulations, including the rules for joinder, must be construed to secure the just, speedy, and inexpensive resolution of every proceeding. See 35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b). As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should: (1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; and (3) explain what impact (if any) joinder would have on the trial schedule for the existing review. See Kyocera Corp. v. Softview, LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); see also, USPTO, America Invents Act (AIA) Frequently Asked Questions,” available at: uspto.gov/patents/laws/americainvents-act-aia/america-invents-act-aia-frequently-asked#type-inter-partesreview_3244 (last visited February 2, 2022). B.” slip op. at 10
NonePatents in suitUS 11,253,572 - PTAB · Jan 30, 2024 · IPR2024-00260 · APJ Ryan H Flax · IPR · Institution
Instituted review of claims 1–30 on all asserted grounds and granted Celltrion’s motion to join IPR2023-00884.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We explained in our Institution Decision in IPR’884 why we conclude that Samsung demonstrated a reasonable likelihood of prevailing at trial in showing that the challenged claims are unpatentable. See generally IPR’884 DI. The present Petition advances identical arguments, challenging the same claims over the same combinations of prior art. We consequently adopt the same reasoning here as in our IPR’884 Institution Decision, and conclude that Petitioner is similarly likely to prevail in demonstrating the unpatentability of the same challenged claims. Id. We incorporate our previous analysis regarding the asserted grounds of unpatentability and conclude that Petitioner demonstrates a reasonable likelihood of prevailing at trial with respect to at least one claim of the ’572 patent challenged in the Petition for the same reasons as in IPR’884. See id. Based on the record before us, we determine that the Petition warrants institution of inter partes review on all claims and all grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”); see also SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Petitioner certifies and we agree that the Petition is substantively identical to that of IPR’884, where we found Samsung had met its burden to show a reasonable likelihood it would prevail at trial in establishing at least one challenged claim unpatentable under the asserted grounds. Mot. 5; see generally IPR’884 DI. Petitioner also certifies, and we agree, that it relies on the same evidence here as in IPR’884. Mot. 5. Patent Owner waives its right to file a preliminary response in this proceeding, for the sake of efficiency. See Paper 7, 2. Petitioner also certifies that it will be a “silent understudy” to Samsung in IPR’884 if the proceedings are joined, thus, there will be no impact to the schedule of that instituted trial. Mot. 5–6. Moreover, Petitioner asserts that, structured in this way, the joined proceeding will simplify briefing and discovery (i.e., they will be singular, rather than occurring in two proceedings). Id. at 6–7.” slip op. at 12
NonePatents in suitUS 11,253,572
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.