- PTAB · Nov 12, 2021 · IPR2021-00860 · APJ Robert A Pollock · IPR · Institution
The Board instituted inter partes review of claims 1–20 on all petitioned grounds because Petitioner showed a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Birnboim, Mori, and Farrell, Petitioner provides a detailed analysis of where each claim element is found in the cited references and discusses why one of ordinary skill in the art would have been motivated to combine those elements with a reasonable expectation of success. See e.g., Pet. 34–42 (discussing motivation to combine and reasonable expectation of success with respect to claim 1). For the purpose of institution, we focus on independent claim 1.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the testimony of Dr. Taylor, Petitioner asserts that A person of ordinary skill in the art (“POSA”) would have had (1) a Ph.D. in microbiology, molecular biology, biochemistry, or related discipline; (2) at least two years of post-graduate experience in the area of nucleic acid extraction and analysis; and (3) experience with the development or use of nucleic acid extraction formulations, and the literature concerning nucleic acid extraction and analysis. Pet. 10 citing Ex. 1002, ¶¶34–35. Patent Owner presently does not dispute Petitioner’s proposed definition. Prelim. Resp. 6. For purposes of this Decision, at this stage of the proceeding, we accept Petitioner’s proposed definition of the person of ordinary skill in the art, which is not substantively opposed by Patent Owner and appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’256 patent. Cf. 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. Claim Construction” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionPlain and ordinary meaningDecided for petitioner
“According to Petitioner, we should apply the plain and ordinary meaning of “stock solution” as meaning “a formulated supply of solution for future use,” which, in the context of the instant claims, refers to “the aqueous composition before it is mixed with a sample.” Pet. 8 (citing Ex. 1029; Ex. 1002 ¶ 38). Patent Owner neither contests Petitioner’s definition of “stock solution” nor requests that we construe any other claim term, but reserves its right to do so. Prelim. Resp. 7. At this stage of the proceeding, we apply the plain and ordinary meaning of “stock” solution as Petitioner proposes. In section II.D.4, below, we note that Patent Owner implicitly relies on narrow constructions of “kills pathogens” and “without degrading nucleic acids.” As these terms may be critical to our final determination but have not been briefed by either party, we provisionally apply their plain and ordinary meaning. D. Ground 1: Obviousness in View of Birnboim, Mori, and Farrell” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner provides reasoned bases for why one of ordinary skill in the art would have combined the cited references to arrive at the claimed invention. See Pet. 34–42 (citations omitted). Summarizing its arguments, Petitioner concludes that one of ordinary skill in the art would have been motivated to prepare solutions comprising a chaotrope, a detergent, a reducing agent, a chelator, a shortchain alkanol, and a buffer (with the associated acid and base) at a pH of 5–7 with a reasonable expectation that, when combined with a biological sample, the solution would denature proteins, inactivate nucleases, and kill pathogens, all without degrading nucleic acids of the sample. Ex. 1002, ¶151. The POSA would have been motivated to use Mori’s surfactants or defoaming agents along with Farrell’s nuclease-free water in Birnboim’s stock solution and would have had a reasonable expectation of success in doing so. Ex. 1002, ¶¶137–152.” slip op. at 19
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,683,256 - PTAB · Nov 12, 2021 · IPR2021-00847 · APJ Zhenyu Yang · IPR · Institution
The Board instituted IPR on claims 1–51 on all asserted grounds, finding a reasonable likelihood that claim 1 is anticipated by Birnboim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 claims challenged in the petition.” 35 U.S.C. § 314(a). The Federal Circuit has interpreted the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Thus, based on the information presented, we institute an inter partes review of claims 1–51 of the ’443 patent on all grounds.” slip op. at 2
- BurdenInstituted
“Thus, on this record, and for purposes of this Decision, we find Petitioner has met its burden in showing that Birnboim discloses “not degrad[ing] nucleic acid of a sample” under the term’s plain and ordinary meaning.” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“As an initial matter, a reference is prior art for all that it teaches. Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989). Thus, we decline to dismiss the express teachings of Birnboim merely because they are not the main focus of its disclosure. Patent Owner equates the claim language “kill pathogens” with complete sterilization of a sample “to prevent ‘dissemination of live infectio[u]s pathogens.” Prelim. Resp. 12 (citing Ex. 1001, 2:15, 6:34–37; Ex. 2001 ¶ 7). On their face, however, the claims do not require killing every potential pathogen in a sample. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (holding similar arguments fail because “they are not based on limitations appearing in the claims”). Birnboim expressly discloses isolating nucleic acid from bacteria and viruses. Ex. 1003 ¶¶ 18, 22, 27. It does not suggest such isolation as non-destructive, and we presume that at least some pathogens are “killed” in the extraction process according to the plain and ordinary meaning of the term.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“merely by demonstrating that each of its elements was, independently, known in the prior art.” Id. at 418. In an obviousness inquiry, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. On this record, we find Petitioner has not shown sufficiently “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. In asserting that claim 48 would have been obvious over Birnboim and Mori, Petitioner relies on Mori for the defoaming agent recited in limitation (e), and Birnboim for the other limitations. See Pet. 50–51. We focus on Petitioner’s reliance on Birnboim.” slip op. at 25
§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,084,443 - PTAB · Nov 12, 2021 · IPR2021-00850 · APJ Zhenyu Yang · IPR · Institution
The Board instituted IPR on claims 1–42 and all asserted grounds after finding a reasonable likelihood that Birnboim anticipates claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 claims challenged in the petition.” 35 U.S.C. § 314(a). The Federal Circuit has interpreted the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Thus, based on the information presented, we institute an inter partes review of claims 1–42 of the ’467 patent on all grounds.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b) (2020). Under that standard, the words of a claim “are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). The parties do not propose any claim construction. See Prelim. Resp. 5. On this record and for purposes of this Decision, we see no need to construe any term expressly.7 See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (stating that claim terms need only be construed to the extent necessary to resolve the controversy).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“On this record, and at this stage of the proceeding, Petitioner has shown sufficiently Birnboim discloses each limitation of claim 1. See Pet. 14–15 (showing Birnboim discloses the preamble); 18–19 (table showing “Birnboim Example 3 discloses using each of claim 1’s recited ingredients together in an aqueous composition”), 19–20, 23, 24 (relying on Birnboim’s Examples 4–6 for confirming the amounts of the compounds used in the composition in Example 3 perform the claimed functions, and disclosing the “contacting” and “detecting” steps). We address below Patent Owner’s counterarguments, which do not undermine the adequacy of Petitioner’s showing for purposes of trial institution.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“2. Analysis “[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (internal quotation marks omitted). But “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” Id. at 418. In an obviousness inquiry, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. On this record, we find Petitioner has not shown sufficiently “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id.” slip op. at 30
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,293,467 - Google LLC v. Ecofactor Inc.Institution deniedPTAB · Nov 9, 2021 · IPR2021-00982 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution of IPR challenging claims 1–7 and 10–30, exercising § 314(a) discretion under Fintiv based on the parallel ITC investigation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“involving the ’983 patent, Patent Owner correctly notes that Fintiv expressly addresses ITC investigations, and the Board has considered ITC investigations in weighing whether or not to exercise its discretion under 35 U.S.C. § 314. Fintiv, Paper 11 at 8 (“[E]ven though the Office and the district court would not be bound by the ITC’s decision, an earlier ITC trial date may favor exercising authority to deny institution under NHK if the ITC is going to decide the same or substantially similar issues to those presented in the petition.”); Garmin Int’l, Inc. v. Koninklijke Philips N.V, IPR2020- 00754, Paper 11 (PTAB Oct. 27, 2020); Comcast Cable Commc’ns, LLC v. Rovi Guides, Inc., IPR2020-00800, Paper 10 (PTAB Oct. 22, 2020). In view of this, we consider the facts surrounding the ITC investigation for purposes of analyzing the Fintiv factors in this case. Specifically with regard to Factor 1, there is no evidence here that Petitioner has requested a stay of the ITC investigation, and we agree with Patent Owner that a stay of the ITC investigation is unlikely given the advanced stage of the investigation, including the fact that the hearing in the ITC investigation is scheduled to begin on December 13, 2021. Accordingly, we determine that this factor weighs against instituting this proceeding.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“the Fintiv factors. Because our analysis is fact driven, no single factor is determinative of whether we exercise our discretion to deny institution under § 314(a). Further, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11 at 6. Having evaluated all of the factors based on the arguments and evidence of record, in the exercise of the Director’s discretion under 35 U.S.C. § 314(a), inter partes review is not instituted. III. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 14
Discretionary denialPatents in suitUS 10,612,983 - PTAB · Oct 21, 2021 · IPR2021-00767 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–3, 7–11, and 14–18 were unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“It is the petitioner’s burden from the outset to show with particularity why a challenged claim is unpatentable. Harmonic Inc. v. Avid Tech. Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). In that regard, a petition for inter partes review must identify how the challenged claims are unpatentable, and must specify where each element of the claim is found in the relied-upon prior art. 37 C.F.R. § 42.104(b); see also 35 U.S.C. § 312(a)(3) (a petition must identify “with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for challenge to each claim”). A petition must also include “a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). Here, the Petition does not identify sufficiently where each element of claim 1 is found in GPS 1, and does not include a detailed explanation of the significance of the evidence.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art would have had either “a Bachelor’s Degree in mechanical engineering or a related discipline and at least two years of experience in the design or development of interlocking products (e.g. docking cradles and adapters for portable electronic devices),” or “five years or more of experience in the design or development of interlocking products.” Pet. 10. At this stage of the definition, nor provides a definition of its own. See Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed definition, which is undisputed on this record, except that we delete the qualifiers “at least” and “or more” to eliminate vagueness as to the amount of practical experience. The qualifier, if not deleted, expands the range indefinitely without an upper bound, and thus would preclude a meaningful indication of the 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
“We construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure.2 Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). 2 Petitioner incorrectly states that claims in an inter partes review are to be construed using the broadest reasonable construction standard, which applied to proceedings filed prior to November 13, 2018. Pet. 10–11; see also 83 Fed. Reg. 51,340, 51,341 (Oct. 11, 2018) (adopting “the same claim construction standard used by Article III federal courts and the ITC, both of which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and its progeny”). See Prelim. Resp.; Pet. 10–11. For purposes of this Decision, based on the record before us, we determine that none of the claim terms requires an explicit construction.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“Claim 1 requires that (1) the adapter comprises a contactor and male positioning interface; (2) the contactor comprises a contactor surface and a plurality of contacts exposed and arranged on the surface that are electrically coupleable to the electronic device; (3) the male positioning interface defines a rim surrounding, and in contact with, a perimeter of the contactor surface of the contactor of the adapter; and (4) the rim guides the proper mating of the contactor of the adapter to the external connector. Ex. 1001, 34:3–13. Petitioner identifies components in the images of the Flex 8 taken from GPS 1 that it purports to be an adapter comprising a contactor with contacts, but does not explain why or how those identified components meet GPS 1 from which we can identify, or discern the function of, any component of the device identified in those images. See Pet. 16–18 (Petitioner’s contentions regarding the adapter limitation of claim 1); see also Ex. 1003 (GPS 1, nowhere identifying any feature of the device by reference to the images). Additionally, Petitioner does not identify anything in the images corresponding to the recited “male positioning interface” or “rim surrounding, and in contact with, a perimeter of the contactor surface . . . to guide proper mating of the contactor of the adapter to the external connector” limitations of claim 1. It is the petitioner’s burden from the outset to show with particularity why a challenged claim is unpatentable. Harmonic Inc. v. Avid Tech. Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). In that regard, a petition for inter partes review must identify how the challenged claims are unpatentable, and must specify where each element of the claim is found in the relied-upon prior art. 37 C.F.R. § 42.104(b); see also 35 U.S.C. § 312(a)(3) (a petition must identify “with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for challenge to each claim”). A petition must also include “a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). Here, the Petition does not identify sufficiently where each element of claim 1 is found in GPS 1, and does not include a detailed explanation of the significance of the evidence. Specifically, Petitioner fails to explain with any particularity how or why the images reproduced above support its view that GPS 1 discloses “an adapter coupleable to a portable electronic device for mating with an states that “[u]nder PO’s theories of infringement, GPS 1 discloses these recitations” and provides the annotated images reproduced above. Id. Patent Owner’s infringement contentions, however, are directed to a different product (the ATMOS Temperature Controlling Cradle Kit for Samsung Galaxy TAB A 8" Product), and Petitioner does not explain how that product relates, if at all, to the Flex 8 depicted in GPS 1. Moreover, Petitioner’s citation to Patent Owner’s infringement contentions to support conclusory statements not otherwise supported in the Petition amounts to an improper incorporation by reference. 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). The Petition, therefore, falls short of adequately establishing the identity or function of any component in the images of the Flex 8 from GPS 1. Petitioner states that, although the Petition primarily focuses on GPS 1 because “webpages are most easily reproduced” therein, “the same analysis applies to each of the AP Publications.” Pet. 16. As was the case with Petitioner’s challenge based on GPS 1, the Petition fails to explain with any particularity how the products depicted in GPS 2, GPS 3, and GPS 4 support its view that GPS 2, GPS 3, and GPS 4 each discloses “an adapter coupleable to a portable electronic device for mating with an external connector” as recited in claim 1. Pet. 18–21. Petitioner provides two still images from each of GPS 2, GPS 3, and GPS 4, which appear to show the Flex 8, without annotations or further explanation. Id. The Petition, therefore, also does not identify sufficiently where each element of claim 1 is found in GPS 2, GPS 3, and GPS 4. establishes that any of the AP Publications discloses the recitations of claim 1 directed to “an adapter coupleable to a portable electronic device for mating with an external connector.” Accordingly, we determine that the Petition does not establish a reasonable likelihood that Petitioner will prevail in showing that claim 1, and claims 2, 3, and 7–9 that depend directly or indirectly therefrom, are anticipated by the AP Publications.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 10,630,334 - Google LLC v. Ecofactor, Inc.Rehearing deniedPTAB · Oct 14, 2021 · IPR2020-00968 · APJ Wesley B Derrick · IPR · Rehearing
The Board denied Google’s rehearing request and left in place its discretionary denial of inter partes review based on parallel proceedings under Fintiv.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). When rehearing a decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs where the decision is based on an erroneous interpretation of the law, on factual findings that are not supported by substantial evidence, or represents an unreasonable judgment in weighing relevant factors.” Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“Additionally, Petitioner disagrees with our assessment that Fintiv’s fourth factor weighs “slightly in favor of institution,” arguing that we “gave insufficient weight to [this] factor, which looks to the overlap between the issues.” Req. 3–4, 11–12; Dec. 13–15. Contrary to Petitioner’s assertion, we did consider sufficiently all of the evidence regarding whether the ITC proceeding would resolve all or substantially all of the patentability disputes between the parties. Specifically, in our Decision we expressly stated that “[b]ecause the ITC proceeding involves only claims 1, 2, and 5, the ITC proceeding will not directly resolve the dispute concerning the patentability of other claims challenged by Petitioner, claims 3, 4, and 6–14.” Dec. 14. Moreover, consistent with Petitioner’s arguments, we determined “[t]his weighs in favor of institution.” Id. Petitioner would have us end our evaluation of Fintiv’s fourth factor there, but doing so would require that we overlook additional information in the record relevant to the overlap of issues in the ITC and in this proceeding. This additional information includes Patent Owner’s undisputed assertions and evidence demonstrating some overlapping claims, prior art, and invalidity theories in the ITC investigation and the Petition. Dec. 14–15; Prelim. Resp. 10–12; Sur-reply 6 (noting “there is substantial overlap in issues between the Petition and the ITC case when looking at the overlap of claims”). As explained in the Decision, there is no reason to expect that the ITC proceeding would not substantially address the issues for all challenged claims in this proceeding. Dec. 14–15. Therefore, after considering all relevant evidence, we determined that “[o]n balance, based on the fact that the Petition is directed to some [Fintiv’s fourth] factor weighs slightly in favor of institution.” Dec. 15. Our consideration of all relevant facts regarding the the overlap of issues presented to the Board and the ITC undermines Petitioner’s assertion that we erred in the application of Fintiv’s fourth factor. Furthermore, with regard to Petitioner’s argument that we failed to give a single Fintiv factor sufficient weight, we note that our Fintiv analysis is fact driven and no single factor is determinative of whether we exercise our discretion to deny institution under § 314(a).” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“Instead of specifically identifying matters the Board purportedly misapprehended, Petitioner uses the Rehearing Request as an opportunity to express its disagreement with our Decision and present new arguments. A request for rehearing, however, is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or for Petitioner to present new arguments or evidence.” slip op. at 3
Discretionary denialPatents in suitUS 8,423,322 - Google LLC v. Ecofactor Inc.Rehearing deniedPTAB · Oct 14, 2021 · IPR2020-00946 · APJ Jeffrey W Abraham · IPR · Rehearing
The Board denied Google’s rehearing request, leaving institution denied under § 314(a) based on the Fintiv analysis of parallel proceedings.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). When rehearing a decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs where the decision is based on an erroneous interpretation of the law, on factual findings that are not supported by substantial evidence, or represents an unreasonable judgment in weighing relevant factors.” Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“Additionally, Petitioner disagrees with our assessment that Fintiv’s fourth factor weighs “slightly in favor of institution,” arguing that we “gave insufficient weight to [this] factor, which looks to the overlap between the issues.” Req. 3–4, 11–12; Dec. 12–14. Contrary to Petitioner’s assertion, we did consider sufficiently all of the evidence regarding whether the ITC proceeding would resolve all or substantially all of the patentability disputes between the parties. See Req. 11–12. Specifically, in our Decision we expressly stated that “[b]ecause the ITC proceeding involves only claims 1, 2, and 5 of the ’497 patent, whereas Petitioner’s challenges in this proceeding involve claims 1–12, resolution of the ITC proceeding will not directly resolve the parties’ dispute concerning patentability of claims 3, 4, and 6–12 of the ’497 patent.” Dec. 13. Moreover, consistent with Petitioner’s arguments, we determined “[t]his weighs in favor of institution.” Dec. 13.” slip op. at 5
Discretionary denialPatents in suitUS 8,131,497 - Google LLC v. Ecofactor Inc.Rehearing deniedPTAB · Oct 14, 2021 · IPR2020-00947 · APJ Jeffrey W Abraham · IPR · Rehearing
The Board denied Google’s rehearing request, leaving in place its denial of IPR because parallel proceedings, including the ITC investigation, supported discretionary denial under Fintiv.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). When rehearing a decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs where the decision is based on an erroneous interpretation of the law, on factual findings that are not supported by substantial evidence, or represents an unreasonable judgment in weighing relevant factors.” Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDecided for patent owner
“III. DISCUSSION In our Decision, in the exercise of the Director’s discretion under 35 U.S.C. § 314(a), we declined to institute an inter partes review in view of parallel proceedings, including an ITC proceeding involving the same parties and the ’497 patent. Dec. 5–16. Petitioner contends that we misapplied the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), for determining when discretionary denial of institution is warranted. Req. 1. According to Petitioner, “[t]he Board erred in several ways that collectively amount to a misapprehension of the relevant law and facts leading to an abuse of discretion.” Req. 2–3. We disagree.” slip op. at 3
Discretionary denialPatents in suitUS 8,131,497 - PTAB · Oct 6, 2021 · IPR2021-00622 · APJ Wesley B Derrick · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 4, 8–11, 14, 15, 19, and 20 were unpatentable on the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) as “requiring inter partes review petitions to identify ‘with particularity . . . the evidence that supports the grounds for the challenge to each claim’”). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Furthermore, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had (1) a Bachelor’s Degree in mechanical engineering or a related discipline and at least two years of experience in the design or development of interlocking products” or “(2) five years or more of experience in the design or development of interlocking products,” where exemplary “interlocking products” include “docking cradles and adapters for portable electronic devices.” Pet. 16 (citing Ex. 1011 ¶¶ 21–23, 60–62). Patent Owner neither contests Petitioner’s proposed definition nor proposes its own definition. See Prelim. Resp. On this record, we find Petitioner’s definition of the level of ordinary skill reasonable and, therefore, adopt it for the purposes of this Decision, except that we delete the qualifiers “at least” and “or more” to eliminate vagueness as to the amount of practical experience. The qualifiers expand the range indefinitely without an upper bound, and thus preclude a meaningful indication of the level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (holding claim construction is not necessary when it is not “directed to, or has been shown reasonably to affect, the determination of obviousness”). Petitioner contends that, “[i]n this inter partes review, no claim terms require construction.” Pet. 17. Petitioner further contends, however, that “in some instances, Petitioner relies at least in part on [Patent Owner’s] own interpretations of its claims in [Patent Owner’s] own Infringement Contentions.” Id. (citing Ex. 1021). Patent Owner does not offer any interpretation of claim terms (see Prelim. Resp.), although it does argue Petitioner erred in misstating the applicable standard of “broadest reasonable construction” (id. at 20, 21–22, 26–28; Pet. 16–17 (citing 37 C.F.R. § 42.100(b))). On this record, and for purposes of this Decision, we decline to construe any claim terms beyond the limited extent we do so below in our” slip op. at 9
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“Petitioner’s reliance on Centocor is not well founded, as it pertains to the prima facie case of acquiescence estopping the patentee where the Examiner has “issued a clear, unambiguous, and final § 112 rejection” for “new matter” and the patentee has “conceded the correctness of the rejection by filing a CIP application in response.” Centocor, 662 F. Supp. 2d at 591; see also Litton, 728 F.2d at 1438 (holding that patentee filing a continuing application as a continuation-in-part implied that it did add new matter and patentee was estopped from contrary arguments). Petitioner offers no explanation or reasoning why we should treat prior art rejections overcome by claim amendment in the same manner, let alone legal authority supporting that position. See Pet. Petitioner’s failure to identify any authority for a more expansive doctrine of acquiescence that extends to prior art rejections, as it seeks to apply here, is unsurprising. A “patentee is not required to fight tooth and nail every possible adverse thought an examiner commits to paper, nor to advance redundant arguments for patentability.” TorPharm, Inc. v. Ranbaxy Pharms., Inc., 336 F.3d 1322, 1330 (Fed. Cir. 2003). Our reviewing court further explains TorPharm as holding “that the applicant’s ‘acquiesence’ in the obviousness rejection by amending its claims did not preclude the patentee from contesting obviousness in litigation.” Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1346 (Fed. Cir. 2005) (citing TorPharm, 336 F.3d at 1331). Specifically, “[i]n TorPharm, the applicant added limitations to claims to overcome an obviousness rejection” and, “[l]ater during litigation, the defendant . . . showed that the added limitation was also in the prior art” and then argued that “the patentee could not challenge its obviousness contentions.” Id. That appears on all fours with the circumstances that Petitioner contends, contrary to TorPharm, estops Patent Owner here. Further, while “an examiner’s reasoning and findings are highly relevant to the validity inquiry[,] . . . they are not beyond challenge and they do not in every case automatically preclude the existence of a dispute of material fact.” TorPharm, 336 F.3d at 1329. In any event, Petitioner does not direct us to anything here that constitutes an admission by the applicant as to the scope of a claim or the teaching of the prior art. See Pet. 23–26. As discussed above, contrary to Petitioner’s assertions, an applicant’s decision during examination to amend claims rather than argue against the Examiner’s assertions is not itself an admission.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,706,026 - PTAB · Oct 4, 2021 · IPR2021-00623 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable under the asserted anticipation or obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see 37 C.F.R. § 42.4. For the reasons set forth below, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art would have had either “a Bachelor’s Degree in mechanical engineering or a related discipline and at least two years of experience in the design or development of interlocking products (e.g. docking cradles and adapters for portable 1 Korean Intellectual Property Office Registered Utility Model Publication No. 20-0265673, published Feb. 25, 2002 (Ex. 1003 (English translation), Ex. 1019). 2 Japanese Unexamined Patent App. Pub. No. 2014-75327, published April 24, 2014 (Ex. 1004 (English translation), Ex. 1020). 3 Korean Intellectual Property Office Registered Patent No. 10-1078214, published Nov. 1, 2011 (Ex. 1005 (English translation), Ex. 1021). development of interlocking products.” Pet. 9. At this stage of the proceeding, Patent Owner neither responds to Petitioner’s proposed definition, nor provides a definition of its own. See Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed definition, which is undisputed on this record, except that we delete the qualifiers “at least” and “or more” to eliminate vagueness as to the amount of practical experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure.4 Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“In particular, we are not persuaded that Petitioner establishes that Song discloses that the male positioning interface defines “a rim surrounding, and in contact with, a perimeter of the contactor surface of the contactor of the adapter.” As illustrated in Annotated Figures 4 and 5 in the Petition, the contactor surface of the identified “contactor” of intermediate coupling jack B extends to the edges of what Petitioner identifies as the claimed “male positioning interface.” See Pet. 17–18. Being part of the contactor itself, the “outer peripheral edge” of the contactor neither surrounds, nor is in contact with, the perimeter of the contactor surface, and therefore is not a “rim” as recited in claim 1.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 10,454,515
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.