• Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution denied
  PTAB · Mar 14, 2023 · IPR2022-01474 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–24 would have been obvious over the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 18 (citing Ex. 1002 ¶ 50); see Ex. 1005, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). For these reasons, we are not persuaded that Petitioner makes a sufficient showing that a POSITA would have been motivated to modify Brown as proposed. Accordingly, we conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that independent claim 1, and claims 2, 4–6, 9–11, 13–15, 18, 23, and 24 that depend, directly or indirectly, therefrom, would have been obvious over the combined teachings of Brown, Higuchi, and Fujita.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 18 (citing Ex. 1002 ¶ 50); see Ex. 1005, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). For these reasons, we are not persuaded that Petitioner makes a sufficient showing that a POSITA would have been motivated to modify Brown as proposed. Accordingly, we conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that independent claim 1, and claims 2, 4–6, 9–11, 13–15, 18, 23, and 24 that depend, directly or indirectly, therefrom, would have been obvious over the combined teachings of Brown, Higuchi, and Fujita.” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 18 (citing Ex. 1002 ¶ 50); see Ex. 1005, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). For these reasons, we are not persuaded that Petitioner makes a sufficient showing that a POSITA would have been motivated to modify Brown as proposed. Accordingly, we conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that independent claim 1, and claims 2, 4–6, 9–11, 13–15, 18, 23, and 24 that depend, directly or indirectly, therefrom, would have been obvious over the combined teachings of Brown, Higuchi, and Fujita.” slip op. at 13

  § 103 obviousnesscites Phillips
  Patents in suitUS 11,024,905
• Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution denied
  PTAB · Mar 14, 2023 · IPR2022-01487 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 9–16 were obvious over either asserted ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2

  • BurdenNot shown unpatentable

    “crimping or beading-over process of closing a battery casing, Petitioner offers only attorney argument for the proposition that such a process creates a battery casing that is “held together by a force-fitting connection.” Id. But “[a]ttorney argument is not evidence.” Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1359 (Fed. Cir. 2018) (quoting Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017)).” slip op. at 15

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “27–28. Patent Owner responds that no term requires construction at this stage of the proceeding. Prelim. Resp. 20. For the reasons discussed below, we are able to determine whether to institute trial without construing “insulating means,” so we do not construe this term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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))).” slip op. at 9

  Claim construction
  Patents in suitUS 9,799,913
• Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution denied
  PTAB · Mar 14, 2023 · IPR2022-01484 · APJ Brian D Range · IPR · Institution

  The Board denied institution because Petitioner did not show that the asserted combinations taught or suggested the claimed force-fitting connection holding the housing cup and top together.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “top” that “are held together by a force-fitting connection.” Ex. 3001, 1:28– 29 (claim 1), 2:51–52 (claim 23). The parties disagree about whether the references on which Petitioner relies teach or suggest this limitation. Pet. 28–32, 64–66; Prelim. Resp. 53–61. As discussed more completely below, we are able to determine whether to institute trial without deciding precisely what the ’835 patent means when it describes two parts as “held together by a force-fitting connection.” Accordingly, we need not, and do not, construe this term expressly. See Nidec, 868 F.3d at 1017 (quoting Vivid Techs., 200 F.3d at 803). Although we need not decide the precise meaning of “held together by a force-fitting connection” in order to decide whether to institute trial, we note (1) that, without some evidence to the contrary, a battery casing whose half-parts are “held together by” a particular condition must be a battery casing whose half-parts would no longer be held together if the condition were not present, and (2) that neither party has directed us to any evidence to the contrary. Accordingly, whatever a “force-fitting connection” is, a battery made in accordance with the teachings of the prior art is not a battery that is “held together by a force-fitting connection” unless that battery would cease to be held together in the absence of the “force-fitting connection.”” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable

    “Even if we accept Petitioner’s position that Kaun suggests radial forces around its seal, Petitioner has not presented sufficient evidence that such forces hold a housing cup and housing top together. With respect to the key “held together” recitation, Petitioner’s only argument or evidence in the Petition is a sole quote purportedly from Patent Owner’s expert, Dr. Peckerar:” slip op. at 19

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 9,153,835
• Beckman Coulter, Inc. v. Sirigen II LimitedInstitution denied
  PTAB · Jan 6, 2023 · IPR2022-01208 · APJ Jon B Tornquist · IPR · Institution

  The Board denied institution on all challenged claims and grounds because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner does not establish a reasonable likelihood that it would prevail with respect to at least one claim of the ’303 patent. Thus, we do not institute an inter partes review.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denialNot reached

    “1 Because we deny the Petition on the merits, we do not address the parties’ arguments related to discretionary denial.” slip op. at 2

  • Skill levelOther

    “Petitioner asserts that a person having ordinary skill in the art (POSITA) “would have at least a Ph.D. degree in chemistry, or a bachelor’s or master’s degree plus experience involving the use and design of fluorescent probes or dyes.” Pet. 17 (citing Ex. 1007 ¶¶ 14–18). Patent Owner agrees that a POSITA may have a Ph.D. degree or master’s degree in chemistry, but asserts that a POSITA would also have “some experience with fluorescence” in addition to a Ph.D. degree in chemistry and that the experience of a POSITA with a master’s degree in chemistry is alternatively “industry experience in the field of biological detection systems.” Prelim. Resp. 9–10 (citing Ex. 2001 ¶ 7). For purposes of this Decision, we need not choose between the parties’ proposed levels of one of ordinary skill in the art, which are quite similar, as neither party asserts that the anticipation or obviousness analyses in this case would turn on which definition is adopted. See, e.g., id. at 10 (noting that the arguments and conclusions reached in the Preliminary Response “would not change” if Petitioner’s definition of the ordinarily skilled artisan were applied).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “structure of Formula (Ia),” including specific MU, L1 and L2, G1 and G2, n, and a, b, c, and d (which define the mol % of each unit within the structure) constituents, wherein each R group must be a “[n]on-ionic side group capable of imparting solubility in water in excess of 10 mg/mL.” Ex. 1006, 239:29–240:56. The ’303 patent expressly defines the phrase “[n]on-ionic side groups capable of imparting solubility in water” to refer to “side groups which are not charged and allow the resulting polymer to be soluble in water or aqueous solutions with no visible particulates.” Id. at 54:31–34. In view of structure of claim 1 and the express definition provided in the ’303 patent, we agree with Patent Owner that claim 1 requires that the non-ionic side group R must be capable of imparting solubility to the claimed conjugated polymer (having constituents that satisfy the claimed variables noted above) in excess of 10 mg/mL. Prelim. Resp. 13. On this record, it is not sufficient to show that a particular R group is capable of” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,575,303
• Globalfoundries Inc. / Globalfoundries U.S. Inc. et al. v. Katana Silicon Technologies LLCInstitution denied
  PTAB · Dec 6, 2022 · IPR2022-01083 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claims on any ground asserted in the Petition.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “it is used consistently throughout. First, in describing related prior art, the ’903 patent states that “[t]he through plug is constituted of an insulating material covering a sidewall of a through hole and a low electrical resistance metal material . . . in a columnar shape that is positioned so as to be surrounded by the insulating material and that serves as a conductive member.” Ex. 1001, 1:35–40. In describing its own drawings, reference numeral 15 consistently is used to refer to the “through plug.” Id. at 2:37– 52. Figures 1A and 1B “are views schematically showing the structure of a semiconductor device (semiconductor chip) according to an embodiment of the present invention.” Id. at 5:46–48, Figs. 1A, 1B. In these figures, reference numeral 15 refers to “[a] through plug.” Id. at 6:16. This through plug “is constituted of a columnar electric conductor 15a . . . and an insulation layer 15b . . . surrounding the electric conductor 15a.” Id. at 6:21–25. Similarly, reference numeral 15 refers to the “through plug” in Figures 1C, 2A, 2B, 3, 4, 5, 6, 7A, and 7B. Id. at 6:35–40, 7:10–38, 8:10– 17, 8:32–38, 8:65–9:43. Where it is referred to in these same parts of the ’903 patent, the conductive core is discussed as merely a portion of the through plug and is referred to by the reference numeral 15a. Id. Thus, the ’903 patent consistently defines the through plug as having two portions: both a conductive core and a surrounding insulation layer. This is true whether the patent is referring to either of its disclosed embodiments or the prior art. Based on this unambiguous usage, we determine that the ’903 patent defines the term “through plug” as including both a conductive core and a surrounding insulating layer. See Phillips, 415 F.3d at 1320–21 (“the specification ‘acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication’” (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996))).” slip op. at 5

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable

    “We are not persuaded that the Petition adequately identifies how Christensen teaches or suggests a through plug as that term is used in the ’903 patent. As noted above, the ’903 patent requires a through plug to have both a conductive core and a surrounding insulating layer. It is clear on the current record that Christensen’s “conductive stud” could correspond to the conductive portion of such a through plug. Ex. 1033, 4:66–5:1 (“the stud 34 may comprise any number of conductive materials”). But Petitioner does not show sufficiently that Christensen teaches or suggests the surrounding insulating layer necessary to turn the conductive core into a through plug. First, Petitioner does not allege that Christensen teaches or suggests such a layer. Pet. 33–34. Second, Christensen discloses the use of “conductive materials” and “material[s] which promote[] adhesion to the surrounding oxide such as titanium or titanium nitride.” Ex. 1033, 4:66–5:1, 5:15–20. None of these materials are identified by Christensen as insulators. Id. Accordingly, we are not persuaded on the current record that Petitioner has shown sufficiently that Christensen alone teaches or suggests the through plug of the challenged claims. b. Christensen and Lin Petitioner also argues that the combination of Christensen and Lin teaches or suggests the through plug of the challenged claims. Pet. 34–36. Specifically, Petitioner argues that “[t]o the extent [it is determined] that Christensen alone is not sufficient because the conductive stud 34 does not extend all the way through wafer 12, Christensen in view of Lin renders obvious a ‘through plug.’” Id. at 34. According to this argument, “Lin teaches a backside process for forming ‘a conductive plug through a silicon’ wafer and an insulation layer,” and it would have been obvious to form such a plug “from the backside of the wafer 12 below [Christensen’s] conductive stud 34,” such that the combination of the two structures would form a conductive path all the way through the structure of Christensen’s Figures 8B and 9. Id. at 34–35 (emphasis omitted). As with the argument based on Christensen alone, however, this argument does not show sufficiently that the combination of Christensen and Lin teaches or suggests a through plug that has both a conductive core and a surrounding insulating layer. Lin describes its structure as a “conductive plug” and does not describe any insulation surrounding that structure. Ex. 1054, 1:60–64, 3:2– 34, 4:23–32, Fig. 7. “The conductive plugs” of Lin “typically compris[e] metal,” which Lin does not describe as an insulator. Id. at 3:21–25. Nor does Petitioner allege the presence of a conductive core surrounded by insulation either in Lin itself or in the combination of Lin and Christensen. Pet. 34–36. Accordingly, we are not persuaded on the current record that Petitioner has shown sufficiently that the combination of Christensen and Lin teaches or suggests the through plug of the challenged claims.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found

    “An invention is not obvious just ‘because all of the elements that comprise the invention were known in the prior art.’” Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1335 (Fed. Cir. 2013) (quoting Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1351 (Fed. Cir. 2010)). Instead, “a finding of obviousness at the time of invention requires a ‘plausible rational[e] as to why the prior art references would have worked together.’” Id. (quoting Power-One, 599 F.3d at 1352). This rationale requires “some articulated reasoning with some rational underpinning” to combine the known elements in the manner required in the claim at issue. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[I]t can be important to” include within this reasoning “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. Here, Petitioner offers two reasons to combine the teachings of Shim and Shirakawa. First, Petitioner argues that “Shim’s diffusion teachings would facilitate the formation of” Shirakawa’s collector layer. Pet. 65–66. On the present record, we do not find this reason sufficiently persuasive. Even though Shim does teach a way to make the n-GaAs that Shirakawa uses, Shirakawa teaches a different way to make the same material, and other prior-art references agree with Shirakawa. Ex. 1022, 1:34–40 (“silicon ions of a silicon layer formed on a GaAs substrate are diffused by means of ion-implantation method using little energy and annealing treatment”); Ex. 1005, 9:36–42 (first embodiment “collector layer” is “laminated on top of a semi-insulating GaAs substrate . . . by epitaxial growth process”), 12:47–48 (fourth embodiment made in same way as first embodiment); Ex. 1016, 8:7–19 (“a highly doped n type GaAs subcollector layer . . . [and other layers] are made to grow above a semiinsulating GaAs substrate . . . by a metal organic vapor phase epitaxial growth method”); Ex. 1025, 4:40–45 (teaching “[f]orming two flat epitaxial layers of gallium arsenide to obtain [a] collector,” including “a layer . . . of the n+ conductivity type and a layer . . . of the n -conductivity type” by “epitaxial growth . . . from the vapour phase or from the liquid phase”). The mere fact that Shim offers an alternative process does not, in the absence of a reason to adopt that alternative process, provide a reason for a person of ordinary skill in the art to make Shirakawa’s n-GaAs via Shim’s method rather than via Shirakawa’s own method. In addition, Patent Owner’s declarant, Dr. Peter Elenius, testifies that the ion implantation involved in Shim’s diffusion process would damage Shirakawa’s gallium arsenide in a way that would dissuade a person of ordinary skill in the art from using that process to produce the HBT of Shirakawa. Ex. 2001 ¶¶ 52–57. The other reason that Petitioner provides to combine the teachings of Shim and Shirakawa is that Shim’s diffusion “method us[es] little energy and annealing treatment.” Pet. 66 (quoting Ex. 1022, 1:34–40). Shim’s method is described as “diffus[ion] by means of ion-implantation method using little energy and annealing treatment,” which Shim distinguishes from earlier methods “widely used in the art,” which involved “ion-implantation . . . using high energy.” Ex. 1022, 1:12–40. Shim teaches that its lower-energy ion implantation does not suffer from the “problem” of the earlier method, “damaging of ohmic contacts of metal electrodes” due to the injection of “lots of impurity ions.” Id. at 1:17–22; see id. at 3:37–40 (“the manufacturing method of the present invention can prevent damage to be generated in ohmic contacts of source/drain electrodes due to ion-injecting of high density”). Thus, the lower energy of Shim’s process is a benefit of that process over earlier ion implantation processes, which use higher energy. Shim does not teach that its use of lower-energy ion implantation is an improvement over other processes, such as the epitaxial growth taught by Shirakawa and the other references cited by Petitioner. Thus, Petitioner does not explain sufficiently why lower energy would be a benefit of the Shim- Shirakawa combination over Shirakawa alone. Accordingly, we are not persuaded on the current record that Petitioner has shown sufficiently that a person of ordinary skill in the art would have had a reason to combine the teachings of Shirakawa and Shim to arrive at a combination that teaches or suggests the “diffusion layer patterns” of the challenged claims. slip op. at 15

  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,402,903
• FTC Solar, Inc. v. FCX Solar, LLCInstitution denied
  PTAB · Nov 28, 2022 · IPR2022-01101 · APJ Donna M Praiss · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable on any asserted ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had at least an undergraduate degree in mechanical engineering, physics, or a similar discipline, and at least three to five years of work experience designing, analyzing, or evaluating solar trackers.” Pet. 6 (citing Ex. 1003 ¶¶ 35–39). Patent Owner supplements Petitioner’s description of a POSITA to include as similar disciplines “applied aerodynamics, aerospace engineering, fluid dynamics, photovoltaic systems engineering” and asserts that a POSITA in the field of solar trackers would “enlist the expertise of a damper expert in designing the dampers to provide desired characteristics to trackers.” Prelim. Resp. 14. For the purposes of this Decision, we adopt Petitioner’s description of the level of one of ordinary skill in the art, as modified by Patent Owner; any differences between the parties’ descriptions do not affect our analysis. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). slip op. at 6

  • Prior constructionPrior construction adoptedDecided for patent owner

    “In the litigation, the District Court determined that a person having ordinary skill in the art would understand “damping ratio” to refer to “the damper providing the photovoltaic system with different damping ratios depending on the conditions.” Ex. 2005, 6:15–20. The District Court noted that intrinsic evidence supports “references to a damper having a [damping] ratio are made in the context of a damper installed in a system and are not about a damper in isolation.” Id. at 6:21–25. The District Court also noted that FTC’s7 expert, Dr. Codd, recognized that “pluck testing is the primary tool for determining a damping ratio, and that a person of ordinary skill in the art would be familiar with how to perform pluck testing.” Id. at 8:4–7. In view of the parties’ agreed-upon definition of the term “damping ratio” and the District Court’s claim construction analysis, we construe “damping ratio” to mean “a ratio determined by dividing the actual damping coefficient of a system by the critical damping coefficient of the system.”” slip op. at 7

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “parameter that is used imprecisely in the claims of the ’782 Patent to signify the damping force provided by the damper to the system.” Pet. 7 n.4 (citing Ex. 1003 ¶ 40 n.7). Thus, the Petition acknowledges a difference between the terms “damping ratio” and “damping force.” The footnote concludes “[h]ere, Petitioner has adopted Patent Owner’s interpretation of ‘damping ratio’ to signify the damping force provided by the damper to the invariant system.” Id. Petitioner cites to paragraph 40 n.7 of the Codd Declaration to support its assertion, but that paragraph parrots the language in the Petition, and Dr. Codd does not provide the underlying facts supporting his testimony.9 See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 12

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 10,903,782
• Costar Realty Information, Inc. v. Clantech, Inc.Institution denied
  PTAB · Nov 25, 2022 · IPR2022-00798 · APJ Jo-Anne M Kokoski · IPR · Institution

  Institution was denied because Petitioner did not show a reasonable likelihood that claims 1–28 would have been obvious over the asserted combinations.

  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 also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “On this record, we determine that Petitioner has not established a reasonable likelihood of demonstrating that Collins discloses “the display character is displayed using the exact same font” as required by claim 1. In particular, Petitioner does not explain how a POSITA would have understood Collins’ rendered document “with virtually the exact same appearance” (Ex. 1005, 10:6–12) to disclose a rendered document “displayed using the exact same font” as claim 1 requires. Similarly, Collins explains that its invention “enables virtually any document created with virtually any font to be accurately reproduced on another computer that does not contain the original font descriptions from which it was created.” Id. at 10:40–45 (emphasis added). Again, Petitioner does not explain how teaching the display of an accurate reproduction (i.e., a copy) of the font discloses the recited “displaying the exact same font.” If Collins’ rendered image on the second computer had the exact same font as the original fonted document, that rendered image should have the exact same appearance as the fonted document, not nearly the exact same appearance, as Collins’ use of “virtually” and “accurate reproduction” to describe the displayed characters suggests.” slip op. at 13

  • Skill levelSkill level board ownOther

    “On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). A more specific definition is not necessary for purposes of deciding whether to institute review.” slip op. at 7

  § 103 obviousnesscites Phillips
  Patents in suitUS 8,522,127
• Motif Foodworks, Inc. v. Impossible Foods Inc.Institution denied
  PTAB · Oct 26, 2022 · IPR2022-00887 · APJ Donna M Praiss · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–17 were unpatentable on any asserted ground.

  RulingsInstitution decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “replica approximates the taste, texture or color of an equivalent muscle tissue derived from an animal source.” Ex. 1001, 5:34–36; Pet. 15. The ’761 patent describes many meat products comprising a high proportion of striated skeletal muscle in which individual muscle fibers are organized in an isotropic fashion and that replicas may mimic muscle by being “formed into asymmetric fibers” that “replicate muscle fibers” using extrusion and other methods known in the art. Ex. 1001, 25:48–50, 26:44–57; Pet. 15–16. These portions of the ’761 patent support Patent Owner’s position that “muscle replica” is not actual muscle because actual muscle tissue is “not a replica” of muscle tissue. Prelim. Resp. 8. Petitioner directs us to the ’761 patent’s disclosure that “[i]n some embodiments, the muscle replica and/or meat substitute product comprising the muscle replica are partially derived from animal sources.” Ex. 1001, 25:42–45; Pet. 16. Petitioner asserts that claim 1 encompasses “replicas made with animal products” because claim 12, which depends from claim 1, recites “wherein said beef replica product contains no animal products.” Ex. 1001, 50:26–28; Pet. 16. However, as Patent Owner points out, the ’761 patent discloses components derived from an animal source such as myoglobin, an isolated and purified heme-containing protein. Ex. 1001, 37:30–47, 38:25–32; Prelim. Resp. 8. The ’761 patent describes muscle replica being “partially derived from animal sources” or “entirely derived from non-animal sources.” Ex. 1001, 25:42–48 (emphasis added). The ’761 patent lists a number of components present in animal muscle tissue that may be included in the muscle replica and specifically describes protein components that are isolated, purified proteins or artificially designed proteins to emulate physical properties of animal muscle tissue. Ex. 1001, 26:59–27:43. Therefore, based on the context of “muscle replica” as used in the ’761 patent written description, the term “muscle replica” may include components derived from animal sources; however, animal muscle tissue itself is not “muscle replica.” As such, a “replica” does not encompass the actual material that it replicates or approximates. Accordingly, we construe “muscle replica” to mean “a composition approximating the taste, texture or color of an equivalent muscle tissue derived from an animal source; the muscle replica may include components derived from an animal source, but does not include muscle tissue itself” and “replica” such that it “excludes the actual material being replicated or approximated” for purposes of the present decision.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted); see PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014) (inherency “may not be established by probabilities or possibilities.”). In addition, a prior art reference “must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim’” in order to anticipate under 35 U.S.C. § 102. NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable

    “animal-free embodiments in McMindes, Petitioner does not clearly articulate that it is relying on an embodiment of McMindes that does not contain any animal tissue in combination with hemoglobins from Ljublinksij as corresponding to the claimed muscle replica. Petitioner’s failure to clearly articulate its challenge violates our rules, and is inadequate to satisfy Petitioner’s burden on institution. See 37 C.F.R. § 42.104(b)(4) (requiring, inter alia, that “[t]he petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon”). To the extent that Petitioner is relying on a combination that includes an entirely animal-free embodiment of McMindes, Petitioner contends that “a POSITA would be motivated to incorporate Ljublinskij’s hemoglobin at a concentration between 0.1–5.0%, precisely as claimed in the ’761 patent” to attain desirable coloration of the McMindes product. Pet. 59. This argument is not persuasive, as Petitioner relies on the ’761 patent itself for the exact amount of heme protein that a person of ordinary skill in the art would have incorporated into McMindes’s animal-free product to achieve a desirable color. Pet. 59 (citing Ex. 1001, 34:50–55, 37:24–26). In this regard, we agree with Patent Owner that Petitioner’s suggested motivation to combine McMindes and Ljublinskij is guided by improper hindsight. See Prelim. Resp. 45–46. We recognize Petitioner’s assertion that “McMindes’s ‘preferred’ concentration of colorant is ‘between 0.1% to 5%.’” Pet. 59 (citing Ex. 1003 ¶ 91). This statement in McMindes, however, refers to the concentration of colorants such as caramel color and other food dyes, and McMindes provides great detail for coloring a soy protein containing food product, including the use of carmine as “an internal color” and caramel as “the external color” to achieve contrasting red and brown coloring. Ex. 1003 ¶¶ 86–91. Petitioner asserts a person of ordinary skill in the art would substitute Ljublinskij’s hemoglobin for these colorants because it purportedly provides “a more natural meat-like coloring than these ingredients,” but Petitioner does not direct us to evidence demonstrating that the use of hemoglobin achieves this result. Pet. 60. Petitioner cites to paragraph 372 of the Tarté Declaration to support its assertion, but that paragraph parrots the language in the Petition, and Dr. Tarté does not provide the underlying facts supporting his testimony. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Thus, we find Petitioner does not provide adequate support for its assertions regarding the substitution of Ljublinskij’s hemoglobin for the colorants of McMindes at all, let alone in the amounts recited in claim 1. In addition, Petitioner’s attempt to address separately “muscle replica” and “comprising 0.1%-5% of a heme-containing protein” is unavailing, as it effectively rewrites the claim language. Accordingly, Petitioner has not established a reasonable likelihood of prevailing in showing claim 1, as well as its dependent claims, would have been obvious over McMindes in combination with Ljublinskij.” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “obviousness argument does not sufficiently explain what portions of McMindes’s disclosure would have been modified by a POSITA and how those portions would have been modified to form a “muscle replica” as required by claim 1. To the extent Petitioner’s argument relies on McMindes’s hybrid product containing meat, Petitioner has not established that McMindes discloses a “muscle replica comprising 0.1%–5% of a heme-containing protein, at least one sugar compound and at least one sulfur compound” as construed herein. To the extent that Petitioner’s argument relies on substituting Sonac’s colorant for meat with McMindes’s colorants for a nonmeat containing product, Petitioner does not establish sufficiently that a person of ordinary skill in the art would have had reason to make that substitution or that using different types of colorants for such different products are interchangeable. We recognize Petitioner’s assertion that Sonac teaches that Harimix gives meat products a “natural color,” but there is insufficient evidence to support a determination that the substitution would result in “better meat-like coloring” than those used in McMindes. Pet. 63– 64 (citing Ex. 1003 ¶ 388). At best, Dr. Tarté’s testimony demonstrates Harimix provides a “meat color,” whereas carmine (used in McMindes) produces a “red/pink” color. Ex. 1003 ¶ 388. But Dr. Tarté does not explain sufficiently why one color is better than another, or address the fact that McMindes does not use only carmine as its colorant. Accordingly, Petitioner has not established a reasonable likelihood of prevailing in showing claim 1, as well as its dependent claims, would have been obvious over McMindes in combination with Sonac.” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Graham
  Patents in suitUS 10,863,761
• Globalfoundries Inc. / Globalfoundries U.S. Inc. et al. v. Katana Silicon Technologies, LLCInstitution denied
  PTAB · Oct 7, 2022 · IPR2022-00763 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “which is electrically coupled to the source/drain” that “is in contact with the source/drain at a source/drain surface.” Ex. 1001, 26:62–27:12. Claims 2– 12 and 16–18 all depend directly or indirectly from claim 1. Id. at 27:13– 28:31. Accordingly, all of the claims Petitioner challenges as obvious over combinations of prior art based on JP848 incorporate the limitations of claim 1. 37 C.F.R. § 1.75(c). Therefore, to show the obviousness of any of these claims, Petitioner must show that the asserted prior art teaches or suggests “a contact which is electrically coupled to the source/drain” that “is in contact with the source/drain at a source/drain surface.”” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “ANALYSIS A. Claim Construction Petitioner argues that no claim terms require express construction. Pet. 12. Patent Owner also does not propose express construction of any term. Prelim. Resp. 16–17. We agree with the parties that no terms in the challenged claims require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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))).” slip op. at 5

  Claim construction§ 103 obviousness
  Patents in suitUS 6,291,861
• Axalta Coating Systems, LLC v. PPG Industries Ohio, Inc.Institution denied
  PTAB · Sep 12, 2022 · IPR2022-00676 · APJ Elizabeth M Roesel · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–19 obvious over the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the information presented in the Petition and the Preliminary Response, we determine that the reasonable likelihood standard is not met. Accordingly, we deny institution of an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “would have had “at least a Bachelor’s or Master’s degree in the field of polymer chemistry, polymer coatings, materials science and/or a related field and at least two years of practical experience in the development of coating systems for consumer products.” Pet. 11. For purposes of the Preliminary Response, Patent Owner does not dispute Petitioner’s definition of a POSA. Prelim. Resp. 8. For purposes of this Decision, we apply Petitioner’s definition of a POSA, which is consistent with the scope and content of the ’505 Patent and the asserted prior art.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We do not need to resolve any claim construction disputes for purposes of this Decision.” slip op. at 7

  • Obviousness (§103) › Analogous artNon analogous artNot shown unpatentable

    “sufficiently that a POSA looking to improve a three-layer coating for automobiles as disclosed in Kasari or Hall would have looked to Kondo, which teaches laminated glass for windshields. Although Petitioner asserts that “[Kasari] and Kondo each teach multi-layer systems with a transparent colored middle layer that can be used in the automobile industry” (Pet. 20) and makes a similar assertion about Hall and Kondo (Pet. 48), such high-level similarity is not a sufficient obviousness rationale. See Securus Techs., Inc. v. Glob. Tel*Link Corp., 701 F. App’x 971, 977 (Fed. Cir. 2017) (“We agree with the Board that a broad characterization of [asserted references] as both falling within the same alleged field . . . without more, is not enough for [petitioner] to meet its burden of presenting a sufficient rationale to support an obviousness conclusion.”). Petitioner fails to show that Kondo’s interlayer for bonding two glass plates is sufficiently relevant to the intermediate coating layer of Kasari or Hall that a POSA would have applied Kondo’s teachings to the organic pigments that may be used in the intermediate coating layer. Kondo teaches a glass-bonding interlayer containing ultra-fine inorganic particles for providing colorlessness or a color tone, heat insulation, and ultraviolet ray insulation, without adversely affecting the bond strength of the interlayer or the haze, radio transmittance, transparency, and durability of the glass laminate. Ex. 1006, 2:25–31, 2:39–47, 3:2–9. In contrast, Kasari and Hall both teach an intermediate coating layer that may contain an organic or inorganic pigment. Ex. 1009, 9:50–64; Ex. 1010 ¶ 32. Petitioner does not provide a sufficient reason why a POSA would consider Kondo’s teaching about ultra-fine inorganic particles for providing colorlessness or a color tone, heat insulation, and ultraviolet ray insulation in a glass-bonding layer, when selecting organic pigments for use in the intermediate coating layer of Kasari or Hall. Petitioner also does not explain why a POSA would rely on the particle size of Kondo’s particles in isolation from Kondo’s teaching of inorganic pigments as the ultra-fine particles. See In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) (“It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art.”).” slip op. at 18

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,981,505

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.