- PTAB · Jun 11, 2024 · IPR2024-00248 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 19–23 on all asserted grounds, finding a reasonable likelihood that claim 19 would be unpatentable as obvious over Neibauer, Cheng, and Squibbs.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. . . . If, after review of [Becton Dickinson] factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8, 10 (PTAB Feb. 13, 2020) (Institution Decision) (precedential) (footnote omitted). Consequently, we first turn to an analysis of Becton Dickinson factors (a), (b), and (d) to determine whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“obvious over Neibauer, Cheng, and Squibbs. Pet. 3, 12–48. Based on the current record, we are sufficiently persuaded that Petitioner has established a reasonable likelihood of prevailing on this asserted obviousness ground with respect to at least claim 19.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Based on the current record, it would have been obvious to a person having ordinary skill in the art to use the features of the Yahoo! club (information channels) with a mobile device, thus sending the photo “from a mobile device” and “permitting interaction between a user of the mobile device and one or more additional users,” as recited in claim 19. See Ex. 1002 ¶ 91. A person having ordinary skill in the art would have known that a person could use a conventional computer, such as a laptop computer, to run a web browser to visit pages on the internet, such as Yahoo!, including Yahoo! Clubs. Id. Because the ’039 patent describes a laptop computer as a “mobile device,” (Ex. 1001, 4:24–32), submitting a photo to a Yahoo! club from a laptop computer results in the receipt of the photo from a mobile device, as recited in claim 19.” slip op. at 23
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,032,039 - PTAB · Jun 11, 2024 · IPR2024-00247 · APJ Scott B Howard · IPR · Institution
Instituted IPR of claims 1–25 on all asserted grounds; the Board found a reasonable likelihood that claim 1 would be unpatentable as obvious over Neibauer, Miller, Cheng, and Squibbs.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“We disagree with Patent Owner that all of the references Petitioner is relying on are the same or substantially the same as references that were before the Office. In particular, there is no dispute that Miller was not considered by the Office. See Prelim. Resp. 6–13; Ex. 1001, code (56). Further, we do not agree with Patent Owner that Miller is substantially the same as Agboatwalla. Specifically, Petitioner relies on Miller for being able to select different types of communication tools for a group: Miller discloses a number of web-based forms that allow the user to (among other things) specify a name and description for the environment (Fig. 13B) identify the members of the environment (Fig. 13C, 14A-C), and select the various communication features (e.g. bulletin board, etc.) that will be available for members (Fig. 16). (Miller, 0045:12-0046:27.) With respect to the selection of communications features, Miller discloses a user interface for allowing the user to select (from a list) the environment. (Miller, Fig. 16, 0047:31-0048:9, 0042:29-32 (“The group creator selects from among these functions, preferably by way of an easy-to-use web browser interface, and these choices are stored in a database and associated with the group members.”).) These selections are then used in creating the environment or group. (Miller, 0043:3-6 (“In step 1104, the environment is created… to permit the group members to activate the functions selected for the group.”); EX1002, ¶96.) Pet. 18–19 (emphasis added).11 We have reviewed the section of Agboatwalla to which Patent Owner directs us (Ex. 2003, 2:32–50) and do not see substantially the same functionality. Although Agboatwalla describes a user being able to select what content may be viewed (see id.), Patent Owner does not direct us to, and we do not see, Miller’s teaching of selecting different types of communication pathways that may be selected for a group. Accordingly, Miller is not substantially the same as Agboatwalla. 3. Conclusion Based on our consideration of Becton Dickinson factors (a), (b), and (d), we find that the same or substantially the same art or arguments were not previously presented to the Office. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We therefore decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“f) Conclusion Regarding Claim 1 Based on the current record, there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious in view of Neibauer, Miller, Cheng, and Squibbs. 6. Analysis of Claims 2–25 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’801 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“Based on the current record, the combination of Neibauer and Miller teaches “control[ling] activation of a mobile information channel,” as recited in claim 1. As discussed above, the first user can create a Yahoo! Club by supplying the necessary information and selecting “Yes! I accept.” Neibauer is silent on whether the user can select which specific mobile information channels are associated with the Yahoo! Club. However, Miller teaches a similar collaborative web-based system in which the group’s creator can use an interface to choose specific communication pathways to allow: FIG. 16 shows one possible user interface for selecting communication tools to be made available to group members. This screen can be presented to the user creating the environment after the group has been identified and its members selected. It is contemplated that a variety of communication tools can be provided, including a bulletin board service; advertisements; white pages (e.g., a listing of members, their e-mail addresses, telephone numbers, and the like); yellow pages (e.g., a listing of promotional and contact information); document security (e.g., shared access secure document storage services); anonymous e-mail (described above with respect to the first embodiment); threaded dialogs; a group newsletter creation tool; videoconferencing; and even other user-provided applications that can be specified by name an location (e.g., URL). Ex. 1004, 47:31–48:10 (emphasis added); see also id. at 42:29–32 (“The group creator selects from among these functions, preferably by way of an easy-to-use web browser interface, and these choices are stored in a database and associated with the group members.”); Ex. 1002 ¶ 96. The combination of Miller’s teaching of selecting different methods of communication with Neibauer’s teaching of Yahoo! Clubs would allow the founder to select specific mobile information channels for the group to use. See Ex. 1002 ¶¶ 95–100. Based on the current record, a person having ordinary skill in the art would have combined those teachings in the manner described above. See Ex. 1002 ¶¶ 97–100. Specifically, a person having ordinary skill in the art would have combined Miller’s ability to select communication channels with Neibauer’s Yahoo! Club in order “to enhance the flexibility and customizability of clubs in Neibauer.” Id. ¶ 99. This would allow the founder to eliminate certain features that “may not have been particularly useful or desirable for some clubs.” Id. Additionally, a person having ordinary skill in the art would have had a reasonable expectation of success. See id. ¶ 100. Accordingly, the combination of Neibauer and Miller teaches” slip op. at 25
- Skill levelSkill level petitioner adoptedOther
“Dr. Madisetti argues that a person having ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer science, or similar field, with two years of experience in developing and implementing network-based computer systems that interact with mobile Internet or communicating using the Web using wireless mobile devices.” Pet. 5–6 (citing Ex. 1002 ¶¶ 14–18). At this stage of the proceeding, Patent Owner “applies Petitioner’s characterization of a [person having ordinary skill in the art].” Prelim. Resp. 19 (citing Ex. 2001 ¶¶ 42–44). For purposes of this Decision, we adopt Petitioner’s formulation of a person having ordinary skill in the art, which is consistent with the invention claimed in the ’801 patent.8” slip op. at 9
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,825,801 - PTAB · Jun 11, 2024 · IPR2024-00246 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on claims 1, 6–11, 13–18, and 20–27, finding a reasonable likelihood that claim 1 is obvious over Neibauer, Miller, and Cheng.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Dr. Madisetti argues that a person having ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer science, or similar field, with two years of experience in developing and implementing network-based computer systems that interact with mobile devices, such as systems for storing and retrieving information over the Internet or communicating using the Web using wireless mobile devices.” Pet. 6 (citing Ex. 1002 ¶¶ 14–18). At this stage of the proceeding, Patent Owner “applies Petitioner’s characterization of a [person having ordinary skill in the art].” Prelim. Resp. 19 (citing Ex. 2001 ¶¶ 42–44). For purposes of this Decision, we adopt Petitioner’s formulation of a person having ordinary skill in the art, which is consistent with the invention claimed in the ’336 patent.10” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not believe express claim construction is necessary at this time.” Pet. 8. Petitioner also discusses various claim construction arguments made in the district court proceeding. See id. at 28–29, 65. At this stage, Patent Owner agrees with Petitioner that “no express constructions are required,” and further agrees “that the ordinary and customary meanings of the claim terms apply.” Prelim. Resp. 19. For the purposes of this Decision, we need not expressly construe any claim terms.11 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“considered by the Office. See Prelim. Resp. 6–13; Ex. 1001, code (56). Further, we do not agree with Patent Owner that Miller is substantially the same as Agboatwalla. Specifically, Petitioner relies on Miller for being able to select different types of communication tools for a group: Miller discloses a number of web-based forms that allow the user to (among other things) specify a name and description for the environment (Fig. 13B) identify the members of the environment (Fig. 13C, 14A-C), and select the various communication features (e.g. bulletin board, etc.) that will be available for members (Fig. 16). (Miller, 0045:12-0046:27.) With respect to the selection of communications features, Miller discloses a user interface for allowing the user to select (from a list) the particular features that will be included in the collaborative environment. (Miller, Fig. 16, 0047:31-0048:9, 0042:29-32 (“The group creator selects from among these functions, preferably by way of an easy-to-use web browser interface, and these choices are stored in a database and associated with the group members.”).) These selections are then used in creating the environment or group. (Miller, 0043:3-6 (“In step 1104, the environment is created… to permit the group members to activate the functions selected for the group.”); EX1002, ¶104.) Pet. 19 (emphasis added).13 We have reviewed the section of Agboatwalla to which Patent Owner directs us (Ex. 2003, 2:32–50) and do not see substantially the same functionality. Although Agboatwalla describes a user being able to select what content may be viewed (see id.), Patent Owner does not direct us to, and we do not see, Miller’s teaching of selecting different types of communication pathways that may be selected for a group. Accordingly, Miller is not substantially the same as Agboatwalla. 13 References to Miller are to Petitioner’s pagination in the exhibit, for consistency with the Petition. Based on our consideration of Becton Dickinson factors (a), (b), and (d), we find that the same or substantially the same art or arguments were not previously presented to the Office. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We therefore decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the current record, a person having ordinary skill in the art would have combined those teachings in the manner described above. See Ex. 1002 ¶¶ 105–108. Specifically, a person having ordinary skill in the art would have combined Miller’s ability to select communication channels with Neibauer’s Yahoo! Club in order “to enhance the flexibility and customizability of clubs in Neibauer.” Id. ¶ 107. This would allow the founder to eliminate certain features that “may not have been particularly useful or desirable for some clubs.” Id. Additionally, a person having ordinary skill in the art would have had a reasonable expectation of success. See id. ¶ 108.” slip op. at 26
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,793,336 - Luminex International Co., Ltd. v. Signify Holdings B.V.Institution deniedPTAB · May 9, 2024 · IPR2024-00101 · APJ Steven M Amundson · IPR · Institution
The Board denied institution because Menard was a real party in interest served with an infringement complaint more than one year before the Petition was filed.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“Thus, the evidence shows that: (1) Petitioner and Menard are parties to an agreement; (2) under the agreement, Petitioner supplies accused products to Menard; (3) the agreement includes an indemnity provision; (4) under the agreement, Menard made multiple demands for Petitioner to “indemnify or defend as a matter of first defense”; and (5) Petitioner responded to Menard’s multiple demands by, among other things, filing the Petition challenging the claims in the ’336 patent. See Ex. 2001 ¶¶ 21, 24–26, 28–29, 32–33, 35; Ex. 2002, 5–9 (¶¶ 21, 24–26, 28–29, 32–33, 35); Ex. 2013, 5–9 (¶¶ 21, 24–26, 28–29, 32–33, 35); Ex. 3003 ¶¶ 21, 24–26, 28–29, 32–33, 35. That Petitioner responded to Menard’s multiple demands for Petitioner to “indemnify or defend as a matter of first defense” by filing the Petition shows that the Petition was filed at Menard’s “behest.” Specifically, Menard demanded defense from infringement liability, and Petitioner responded by initiating this proceeding seeking to free Menard from infringement liability for all 20 claims in the ’336 patent. See Pet. 15–89.” slip op. at 36
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“For the real-party-in-interest analysis, we initially consider “whether a petition has been filed at a nonparty’s ‘behest,’” i.e., “the heart of the inquiry.” Uniloc 2017, 989 F.3d at 1027–28; AIT, 897 F.3d at 1351; CTPG at 14. In its third-party complaints, Menard alleged that it and Petitioner “are parties to a Menards Customer Returns, Defective Goods Policy and Conditions of Order Agreement” that requires Petitioner to “indemnify, defend and hold harmless Menard from and against any claims, litigation, or suits,” including “patent infringement arising from Menard’s use, sale or offering for sale of any goods provided by” Petitioner. Ex. 2001 ¶¶ 21, 24, 26, 28; Ex. 3003 ¶¶ 21, 24, 26, 28. Menard also alleged that the Conditions of Order Agreement requires Petitioner to “indemnify or defend as a matter of first defense and payment, not as a matter of reimbursement.” Ex. 2001 ¶ 29; Ex. 3003 ¶ 29.” slip op. at 35
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
Discretionary denialPatents in suitUS 10,299,336 - PTAB · Mar 26, 2024 · IPR2023-01424 · APJ Donna M Praiss · IPR · Institution
The Board instituted IPR on claims 1–16 and 18–20, finding a reasonable likelihood of prevailing on the asserted grounds, including anticipation by Ueda and obviousness over Plante and Cho.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any argument not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at 1 Petitioner identifies itself as the real party in interest. Pet. 1. In addition, Petitioner notes that Spectrum Holdco LLC is its parent company and that Spectrum Holdco LLC and Spectrum Intermediate LLC “have a financial interest in, or could be substantially affected by the outcome of, this proceeding.” Id. 2 Patent Owner identifies itself as the real party in interest and notes that it is a wholly owned subsidiary of OraSure Technologies, Inc. Paper 4, 2. least one claim. We hereby institute an inter partes review as to claims 1–16 and 18–20 of the ’632 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We decline to exercise our discretion here. As pointed out by Petitioner, the same or substantially the same art or arguments were not previously presented with respect to the ’632 patent. Pet. 123–24. Petitioner challenges the ’632 patent on grounds that were not asserted against the ’646 patent, namely the grounds based on Ueda. Id. at 71–123. In addition, we found Petitioner’s arguments based on Plante sufficiently persuasive and determined that the challenged ’646 patent claims are unpatentable. IPR2022-01347, Paper 43 (Feb. 7, 2024). For these reasons, we do not exercise our discretion to deny institution.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(POSITA) “would have had at least a bachelor’s degree in mechanical engineering, biomedical engineering, or similar technical degree and at least 3 years of experience in the medical device industry, including experience with containers and valves used in disposable medical devices.” Pet. 8 (citing Ex. 1002 ¶¶ 51–52). Petitioner further asserts that such a person would have collaborated with a team member with training and experience in the biological aspects of the invention and education and experience relating to the collection of biological samples. Id. (citing Ex. 1002 ¶¶ 51– 52). Patent Owner does not offer an alternative definition of a person of ordinary skill in the art at this time. See generally Prelim. Resp. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that it is not necessary for us to construe “biological sample” or “annular valve” at this stage of the proceeding because neither party contends that construing either term is material to deciding whether to institute a trial on the asserted grounds in the Petition. See Nidec Motor Corp. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,536,632 - Fitesa Simpsonville, Inc. v. The Procter & Gamble CompanyInstitution deniedPTAB · Mar 20, 2024 · IPR2023-01450 · APJ Avelyn M Ross · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding the cited art previously considered or cumulative and no material Office error shown.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” For the reasons set forth below, upon considering the Petition, the Preliminary Response, the Reply, the Sur-reply, and evidence of record, we exercise our discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 9
Discretionary denialcites PhillipsPatents in suitUS 10,513,801 - Fitesa Simpsonville, Inc. v. The Procter & Gamble CompanyInstitution deniedPTAB · Mar 20, 2024 · IPR2023-01451 · APJ Avelyn M Ross · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding the prior art previously considered and no material error by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“b) Advanced Bionics Framework Part (2) Having determined that the “same or substantially the same prior art” previously was presented to the Office, we now consider whether Petitioner sufficiently demonstrates that the Office materially erred. In assessing the second part of the Advanced Bionics Framework, we consider Becton, Dickinson factors (c), (e), and (f) to determine whether material error has been shown. Advanced Bionics, Paper 6 at 10. “An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.” Id. However, “[i]f reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” Id. at 9. Petitioner bears the burden of showing that the Examiner materially erred. Id. at 8.” slip op. at 19
Discretionary denialcites PhillipsPatents in suitUS 11,326,276 - PTAB · Mar 13, 2024 · IPR2023-01206 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR on claims 1, 2, and 4–23 based on three obviousness challenges involving Fugitt and the listed papermaking references.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We agree with Patent Owner that Papermaking is cumulative to Mohan. Petitioner relies on Papermaking to teach claim 1’s recitation that “a contact surface of said thermo-roller is heated to an elevated temperature of at least 250°F.” Pet. 32–34. Mohan discloses hot hard calendering of paper and paperboard to improve smoothness, where calender rolls have “a roll surface temperature of 250–400°F. during calendering of the web.” Ex. 2002, 1:7–10, 4:46–57.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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). Institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons discussed below, the facts do not warrant exercise of discretion to deny institution, and the reasonable likelihood standard is met. We, therefore, grant institution of an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner
“Patent Owner is correct that the ’142 Patent does not mention heating a counter-roller of a hot-hard calender, and the surface temperature of the counter-roller is not discussed. Prelim. Resp. 12. But nowhere does the ’142 Patent suggest that the counter-roller should not be heated to an elevated temperature. Under the applicable legal standard, the’142 Patent’s silence about whether the counter-roller is heated is not enough to justify reading a negative limitation into the claim. “negative limitation.” Ethicon LLC v. Intuitive Surgical, Inc., 847 Fed. App’x 901, 907 (Fed. Cir. Mar. 15, 2021). “[S]uch exclusions must find support either in ‘the words of the claim’ or through an ‘express disclaimer or independent lexicography in the written description that would justify adding that negative limitation.’” Id. (citing Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366–67 (Fed. Cir. 2002)). “The standards for finding lexicography and disavowal are exacting.” GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term,’ and ‘clearly express an intent to define the term.’” Id. (citing Thorner, 669 F.3d at 1365). Similarly, disclaimer or disavowal requires that the specification or prosecution history demonstrate that the invention does not include a particular feature. Id. Here, Patent Owner does not point to any claim language, lexicography, or disclaimer in the ’142 Patent or its file history that would support defining a “hot-hard calender” as requiring that only one of the two rollers be heated to an elevated temperature.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“As we understand it, one theory of obviousness advanced by Petitioner is combining Fugitt’s teaching that “[t]he rolls of the calender may be steam heated” with Papermaking’s teaching about the surface temperature that can be obtained when using steam to heat the rolls. Pet. 32–33; temperature of Fugitt’s steam-heated rollers in order to achieve a contact surface temperature of at least 250°F, as recited in claim 1. Instead, we understand Petitioner to be relying on Papermaking to teach the temperature of the unmodified rollers of Fugitt. Under this theory, it was not necessary for Petitioner to show that the paperboard substrate properties disclosed in Fugitt would still be achieved after increasing the temperature. Nevertheless, the Petition also relies on Papermaking’s teaching of temperatures that exceed the upper limit for steam-heated rolls, e.g., “[h]igh thermo roll temperatures (in some cases over 200°C [392°F]” or oil-heated rollers having surface that “can reach over 220°C [428°F].” Pet. 33 (citing Ex. 1005, 82; Ex. 1010, 98). Patent Owner is correct that Petitioner relies on Fugitt’s disclosure of paperboard properties (smoothness and basis weight Y2 as a function of caliper thickness) obtained without modifying the roller surface temperature. Pet. 35–36; Prelim. Resp. 44. There is a factual issue as to whether a person of ordinary skill in the art would have expected to achieve the paperboard properties disclosed in Fugitt and recited in claim 1, if the roller temperature were increased above the level achievable by steamheated rolls. There is also a factual issue as to whether Patent Owner’s evidence of increased energy cost would outweigh Petitioner’s asserted benefits of increased temperature. These issues are best resolved after the parties have had to the opportunity to develop the record and cross-examine the opposing experts. See Arctic Cat Inc. v. Polaris Indus., Inc., 795 F. App’x 827, 833 (Fed. Cir. 2019) (“The Board must weigh the benefits and drawbacks of the modification against each other, to determine whether there would be a motivation to combine.”).” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,293,142 - Amperex Technology Ltd. v. Semiconductor Energy Laboratory Co., Ltd.Institution deniedPTAB · Mar 12, 2024 · IPR2023-01349 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable on 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 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . 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 set forth below, we determine the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review of any claim on any ground asserted in the Petition.” slip op. at 2
- BurdenDenied
“Given this, to show that Blangero’s disclosure of MgO or LiF in its coating teaches or suggests a rock-salt crystal structure, Petitioner needs to explain why a person of ordinary skill in the art either would have understood the compounds to have a rock-salt crystal structure when manufactured according to the disclosure of Blangero or would have chosen to use MgO or LiF in a rock-salt crystal structure rather than in another available form. On the first point, Petitioner argues that “‘the stable phase at room temperature and pressure conditions’ of MgO is ‘a rocksalt cubic structure of NaCl (space group Fm-3m).’” Pet. 28 (quoting Ex. 1030, 16; citing Ex. 1003 ¶ 142). But, as Petitioner’s declarant, Dr. Hayes, points out, Blangero does not teach forming MgO in a room-temperature process. Ex. 1003 ¶ 142 (Blangero’s “second firing step” occurs at “925 °C for 12 hours”); see Ex. 1005 ¶ 110 (teaching the firing step to which Dr. Hayes refers). Thus, the significance of rock-salt-type MgO being “the stable phase at room temperature and pressure conditions” is unclear. To the extent that Dr. Hayes explains why MgO, which “is well known to crystallize even at substantially lower temperatures,” such as “room temperature and pressure conditions,” would “do so more readily at [a higher temperature of] 925 °C,” this argument is not discussed, nor even cited, in the Petition. Ex. 1003 ¶¶ 90–94; see Pet. 28. Accordingly, any reliance on this argument by Petitioner constitutes improper incorporation by reference. 37 C.F.R. § 42.6(a)(3). Thus, Petitioner does not show sufficiently that a person of ordinary skill in the art either would have understood MgO to have a rock-salt crystal structure when manufactured according to the disclosure of Blangero or would have chosen to use MgO in a rock-salt crystal structure rather than in another available form. Similarly, with respect to LiF, neither Petitioner nor Dr. Hayes sufficiently explains the choice of rock-salt-type material over other options. Pet. 29 (arguing only that Ex. 1013 shows that “LiF has rock salt structure”); Ex. 1003 ¶ 143 (same). Thus, Petitioner does not show sufficiently that Blangero teaches or suggests a rock-salt crystal structure by virtue of its teaching that either MgO or LiF is present.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“The 2012 study on which Petitioner relies did not find “superior structural stability” over other lithium-titanium-oxygen compounds, as Petitioner argues. Instead, the study noted that the structure of “LiTiO2 prepared by high-temperature sintering TiO2 with lithium salt . . . impl[ies] LiTiO2 has superior structural stability in organic electrolyte as compared to other Li-Ti-O oxides.” Ex. 1029, 1. Thus, the structural stability was implied from the chemical structure of the material rather than found through study of the material. Moreover, the implied structural stability was only for LiTiO2 that was prepared in a particular way, by high-temperature sintering of TiO2 with lithium salt, and Petitioner does not allege that a person of ordinary skill in the art would have prepared the LiTiO2 they substituted for Blangero’s Li2TiO3 using this method. As for Petitioner’s argument that the study found that LiTiO2 outperformed Li2TiO3, we are not persuaded. The study compared particles with an LiTiO2 coating to uncoated particles, not to particles coated with Li2TiO3. Ex. 1029, 4, Figs. 4(c), 4(d). Although the study notes that particles coated with “[m]onoclinic Li2TiO3 and spinel Li4Ti5O12” exhibit “a noticeable capacity decay . . . when charged at high operating voltage and cycled above room temperature,” it concludes only that particles coated with LiTiO2 “exhibited inspiring high-voltage cycling capability as well as thermal stability than the pristine counterpart.” Id. at 1, 4. In addition, the pristine particles used in the study were made from “Li[NixCoyMnz]O2 (0≤x,y,z<1) (called as LNCM),” and the particles in Blangero do not contain either nickel or manganese in their cores. Ex. 1005 ¶¶ 9–40 (particles contain lithium, oxygen, cobalt, and metals chosen from the group consisting of aluminum, gallium, boron, magnesium, titanium, iron, copper, calcium, barium, yttrium, tin, antimony, sodium, zinc, zirconium, silicon); Ex. 1029, 1. Petitioner does not explain why a person of ordinary skill in the art would expect the study’s results to extend to Blangero’s particles made from a different material. Pet. 29–30. Because Petitioner has not shown sufficiently that Blangero teaches or suggests a second region comprising a rock-salt crystal structure or that a person of ordinary skill in the art would have had a reason to substitute rocksalt-type LiTiO2 for the materials disclosed in Blangero, Petitioner has not shown a reasonable likelihood that it would prevail on claim 1 on its Blangero-based grounds.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, “[i]ndividuals with different education and additional experience could still [have been] of ordinary skill in the art if that additional experience compensate[d] for a deficit in their education and experience.” Id. On the present record, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 19. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’660 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’660 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding 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)).” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,043,660 - Apple Inc. v. RJ Technology, LLCInstitutedPTAB · Feb 23, 2024 · IPR2023-01350 · APJ Jon B Tornquist · IPR · Institution
The Board instituted inter partes review of claims 5–14 on all four asserted obviousness grounds, finding a reasonable likelihood that Apple would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that the information presented in the Petition demonstrates a reasonable likelihood that Petitioner would prevail on at least one of the challenged claims of the ’641 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’641 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art, as of the earliest possible priority date for the ’641 patent, “would have held a Bachelor’s degree in chemistry or chemical engineering, with at least 4 years of experience in cell design, electrochemical techniques, and battery materials development.” Pet. 4. Petitioner further contends that a “Master’s Degree can substitute[] for some of the relevant experience,” and “[e]quivalent training with battery specific experience can accommodate other degreed fields.” Id. Patent Owner does not dispute Petitioner’s definition, “except noting that other majors may provide equivalent education and experience designing, testing, and building lithium-ion batteries.” Prelim. Resp. 14. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the person of ordinary skill in the art for purposes of this Decision. The parties may further address at trial whether “other majors” should be added to this definition, and whether such a modification would have any impact on the unpatentability analysis in this case.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party contends any terms of the ’641 patent require express construction. Pet. 4–5; Prelim. Resp. 13–14. And, for purposes of this decision, we agree that no claim terms require express construction. 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) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“This argument is not persuasive. Contrary to Patent Owner’s arguments, the Federal Circuit has held that “generic” reasons to combine are not inherently suspect, and may reasonably include a desire to make a device “stronger, cheaper, cleaner, faster, lighter, smaller, more durable or more efficient.” See Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 797 (Fed. Cir. 2021) (quoting DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006)). Regardless, Petitioner’s asserted reasons to combine are specific (improved safety and less deterioration after repeated charging and discharging cycles), as is the proposed combination (implementing Sakamoto’s range of ratios for the positive and negative electrode materials in Yamaki’s lithium ion battery). Pet. 9–12. Identification of specific benefits that are tied to specific elements of specific prior art references is sufficient to support an obviousness ground. See Intel, 21 F.4th at 797.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,749,641
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.