- PTAB · Aug 31, 2022 · IPR2022-00661 · APJ Donna M Praiss · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted anticipation and 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 claim on any asserted ground.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“Because the “total amount of protein . . . on a dry weight basis” required by claim 1 and taught by the asserted prior art is disputed in the parties’ papers, we construe this claim term in order to determine whether or not to institute trial. As Petitioner indicates, the ’146 patent states “the term ‘total protein’ pertains to the total amount of true protein of a composition or product and disregards non-protein nitrogen (NPN).” Ex. 1001, 3:53–56; Pet. 11. The ’146 patent also specifies “the term ‘dry weight’ of a composition or product relates to the weight of the composition or product when it has been dried to a water content of 3% (w/w) water.” Ex. 1001, 11:26–29; Pet. 11. These portions of the ’146 patent support Petitioner’s proposed construction of “total amount of protein . . . on a dry weight basis” as the total weight of true protein disregarding non-protein nitrogen when the composition in question has been dried to 3% (w/w) water. Pet. 11. Accordingly, we adopt Petitioner’s construction for purposes of the present decision.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot 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.”). The proper inquiry for inherent anticipation is whether the claimed limitations “necessarily result” from practicing V Powder. See, e.g., Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 960–61 (Fed. Cir. 2014) (affirming judgment that claims were not inherently anticipated where the prior art only showed that the limitation might occur, not that it inevitably occurred). Even if a theoretical value is appropriate to establish the claimed limitations “necessarily result” from practicing V Powder, Petitioner has not established that V Powder discloses a protein amount on a dry weight basis as construed herein. Petitioner argues that “[t]he V Powder Publication taught that ‘substantially denatured whey protein . . . is dried to a moisture content of less than 5%’” and that, “[t]hus, the protein content of Powder F was reported ‘on a dry weight basis.’” Pet. 28–29 (quoting Ex. 1004, 24:1– 2). V Powder does indeed teach that, “[i]n certain embodiments the heat treated, substantially denatured whey protein, for example the WPC or WPI, is dried to a moisture content of less than 5%.” Ex. 1004, 24:1–2. Petitioner, however, has not shown sufficiently that a dried to a moisture content of less than 5% necessarily discloses the required dried to a moisture content of 3%. Thus, Petitioner has not established a reasonable likelihood of prevailing in showing V Powder anticipates claims 1–4, 6–9, and 22. slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Although the ’146 patent defines “dry weight basis” as requiring drying “to a water content of 3% (w/w) water,” V Powder teaches only drying “to a moisture content of less than 5%.” Ex. 1001, 11:26–29; Ex. 1004, 24:1–2. Petitioner does not explain why the obviousness of a claim requiring a specific water content of 3% is supported by a reference teaching a much broader range of water contents between 0% and 5%. Pet. 28–29. Nor is it clear to us why such an obviousness argument should prevail. It is true that “a prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). But the specific water content of the challenged claims (precisely “a water content of 3% (w/w) water”) is not a “somewhat narrower claimed range” that is encompassed by the broader range of V Powder. Id. It is not a range at all; rather, it is a single, discrete point. This distinguishes the present situation from that in Peterson, in which the claims at issue recited ranges formed from single values that were modified in each case by the term “about.” Id. at 1327 (reciting, e.g., “about 14 percent chromium,” “about 9.5 percent cobalt,” and “about 3.8 percent tungsten”). Instead, this case presents a situation more analogous to that in In re Baird, in which the prior art taught a wide range of chemical compounds and the claims at issue recited a single compound within that range. 16 F.3d 380, 382 (Fed. Cir. 1994) (“the generic diphenol formula disclosed in [the reference] . . . encompasses more than 100 million different diphenols, only one of which is [the claimed] bisphenol A”). The teaching of a genus by a prior-art reference does not necessarily establish the obviousness of all possible species or subgenera that are encompassed by that genus. In re Baird, 16 F.3d at 382. Here, the challenged claims require a specific water content unmodified by “about” or any similar term. Ex. 1001, 13:18–21. There are numerous discrete points within the continuous range of 0% to 5% water content taught by V Powder. Under these facts, in the absence of some explanation from Petitioner as to why the conclusion would be warranted, we cannot conclude that the disclosure in V Powder supports the obviousness of the challenged claims. The present record provides no such explanation. Accordingly, we are not persuaded that Petitioner has shown sufficiently that the prior art teaches or suggests the “dry weight basis” limitation present in all the challenged claims. Thus, Petitioner has not shown sufficiently that the combination of V” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 10,709,146 - PTAB · Aug 31, 2022 · IPR2022-00662 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show that the prior art taught or suggested the dry-weight limitation incorporated into claims 1–20.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“drying “to a water content of 3% (w/w) water,” the V Powder Publication teaches only drying “to a moisture content of less than 5%.” Id.; Ex. 1004, 24:1–2. Petitioner does not explain why the obviousness of a claim requiring a specific water content of 3% is supported by a reference teaching a much broader range of water contents between 0% and 5%. Pet. 31–32. Nor is it clear to us why such an obviousness argument should prevail. It is true that “a prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). But the specific water content of the challenged claims (precisely “a water content of 3% (w/w) water”) is not a “somewhat narrower claimed range” that is encompassed by the broader range of the V Powder Publication. Id. It is not a range at all; rather, it is a single, discrete point. This distinguishes the present situation from that in Peterson, in which the claims at issue recited ranges formed from single values that were modified in each case by the term “about.” Id. at 1327 (reciting, e.g., “about 14 percent chromium,” “about 9.5 percent cobalt,” and “about 3.8 percent tungsten”). Instead, this case presents a situation more analogous to that in In re Baird, in which the prior art taught a wide range of chemical compounds and the claims at issue recited a single compound within that range. 16 F.3d 380, 382 (Fed. Cir. 1994) (“[T]he generic diphenol formula disclosed in [the reference] . . . encompasses more than 100 million different diphenols, only one of which is [the claimed] bisphenol A.”). The teaching of a genus by a prior-art reference does not necessarily establish the obviousness of all possible species or subgenera that are encompassed by that genus. Baird, 16 F.3d at 382. Here, the challenged claims require a specific water content unmodified by “about” or any similar term. Ex. 1001, 13:18–21. There are an enormous, and potentially an infinite, number of such discrete points within the continuous range of 0% to 5% water content taught by the V Powder Publication. Under these facts, in the absence of some explanation from Petitioner as to why the conclusion would be warranted, we cannot conclude that the disclosure in the V Powder Publication supports the obviousness of the challenged claims. The present record provides no such explanation. Accordingly, we are not persuaded that Petitioner has shown sufficiently that the prior art teaches or suggests the “dry weight basis” limitation present in all the challenged claims.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“drying “to a water content of 3% (w/w) water,” the V Powder Publication teaches only drying “to a moisture content of less than 5%.” Id.; Ex. 1004, 24:1–2. Petitioner does not explain why the obviousness of a claim requiring a specific water content of 3% is supported by a reference teaching a much broader range of water contents between 0% and 5%. Pet. 31–32. Nor is it clear to us why such an obviousness argument should prevail. It is true that “a prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). But the specific water content of the challenged claims (precisely “a water content of 3% (w/w) water”) is not a “somewhat narrower claimed range” that is encompassed by the broader range of the V Powder Publication. Id. It is not a range at all; rather, it is a single, discrete point. This distinguishes the present situation from that in Peterson, in which the claims at issue recited ranges formed from single values that were modified in each case by the term “about.” Id. at 1327 (reciting, e.g., “about 14 percent chromium,” “about 9.5 percent cobalt,” and “about 3.8 percent tungsten”). Instead, this case presents a situation more analogous to that in In re Baird, in which the prior art taught a wide range of chemical compounds and the claims at issue recited a single compound within that range. 16 F.3d 380, 382 (Fed. Cir. 1994) (“[T]he generic diphenol formula disclosed in [the reference] . . . encompasses more than 100 million different diphenols, only one of which is [the claimed] bisphenol A.”). The teaching of a genus by a prior-art reference does not necessarily establish the obviousness of all possible species or subgenera that are encompassed by that genus. Baird, 16 F.3d at 382. Here, the challenged claims require a specific water content unmodified by “about” or any similar term. Ex. 1001, 13:18–21. There are an enormous, and potentially an infinite, number of such discrete points within the continuous range of 0% to 5% water content taught by the V Powder Publication. Under these facts, in the absence of some explanation from Petitioner as to why the conclusion would be warranted, we cannot conclude that the disclosure in the V Powder Publication supports the obviousness of the challenged claims. The present record provides no such explanation. Accordingly, we are not persuaded that Petitioner has shown sufficiently that the prior art teaches or suggests the “dry weight basis” limitation present in all the challenged claims.” slip op. at 10
§ 103 obviousnessPatents in suitUS 10,729,150 - Hirsch Glass Corp., D/B/A Spectrum Quartz v. Cambria Company LLCInstitution deniedPTAB · Aug 8, 2022 · IPR2022-00583 · APJ Kristina M Kalan · IPR · Institution
The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on its obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’626 patent, and we do not institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree with Patent Owner that Petitioner’s rationale for combining Benito Lopez and Bigi is insufficient and fails to provide the necessary factual support. In making a determination of obviousness, it is not enough that each claimed limitation be found in one or more prior art references. In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir. 2000) (explaining that obviousness “cannot be predicated on the mere identification . . . of individual components of claimed limitations”). Instead, Petitioner must also show that the skilled artisan would have had a reason to combine each of the prior art references to achieve the claimed subject matter and a reasonable expectation of success in making the combination. PAR Pharm., Inc. v. TWi Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). A generic reason to combine references fails to “explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.” ActiveVideo, 694 F.3d at 1328; see also Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 381 F.3d 1371, 1377 (2004) (explaining that “[r]ecognition of a need does not render obvious the achievement that meets that need” because “[t]here is an important distinction between the general motivation to cure an uncured disease . . . and the motivation to create a particular cure.”).” slip op. at 18
- BurdenNot shown unpatentable
“According to 35 U.S.C. § 312(a)(3), a petition for inter partes review must identify, “in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” According to 37 C.F.R. § 42.104(b)(4), a petition for inter partes review must identify how “the construed claim is unpatentable under the statutory grounds” on which the petitioner challenges the claims, and “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” Rule 42.104(b)(5) adds that the Petition must identify “specific portions of the evidence that support the challenge.” Similarly, Rule 42.22(a)(2) states that each petition must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” The Patent Trial Practice Guide suggests that “parties should avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 39, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (Nov. 14, 2019). Here, Petitioner’s approach of arguing that every limitation in claim 1 can be satisfied by both Benito Lopez and/or Bigi, or possibly the combination of the two, fails to identify with sufficient specificity the portions of Benito Lopez or Bigi or the combination that Petitioner relies on to meet each limitation of claim 1. Although arguing in the alternative is generally permissible, in this case, both the Petition and Mr. Tassone fail to explain in adequate detail which, why or how the identified elements of Benito Lopez or Bigi, or their prospective combination, meet the limitations of claim 1. In each subsection discussing limitations [1.a.]–[1.g.], Petitioner” slip op. at 20
- Expert testimonyPetitioner expert discountedOther
“Petitioner also relies on the testimony of Mr. Tassone, but Mr. Tassone’s testimony similarly falls short. See Ex. 1032 ¶¶ 140–143. Mr. Tassone’s testimony is entitled to little weight because it fails to explain how the alleged market pressures or commercial need would motivate one of ordinary skill in the art to make the proposed combination, and it is not otherwise apparent that it does. 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.”); see also Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); cf. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”).” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,300,626 - Hirsch Glass Corp., D/B/A/ Spectrum Quartz v. Cambria Company LLCInstitution deniedPTAB · Aug 8, 2022 · IPR2022-00589 · APJ Avelyn M Ross · IPR · Institution
The Board denied institution for claims 1–4 and 6–35 because the petition did not show a sufficient reason to combine the cited prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’942 patent has an effective filing date after the effective date of the applicable AIA amendments, we refer to the AIA version of § 103. 2 Benito Lopez et al., US 2015/0360507 A1, published December 17, 2015 (Ex. 1005, “Benito Lopez”). 3 Liu, CN 1718403 A, published January 11, 2006 (Ex. 1006). Petitioner provides a certified English-language translation of Liu (Ex. 1007). Any reference to Liu hereinafter will be to the English-language translation. 4 Toncelli, US 2004/0032044 A1, published February 19, 2004 (Ex. 1011, “Toncelli ’044”). never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). Furthermore, a petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have an educational background, such as a Bachelor of Science degree, in chemistry, chemical engineering and/or material science or a related field, as well as some understanding of mechanics or manufacturing” and “would have at least two to four years of practical experience in manufacturing or designing composite materials, such as engineered stone or ceramic tiles” but that “[a]dditional practical or work experience can result in a lower level of education being necessary, and vice versa.” Pet. 8–9 (citing Ex. 1004 ¶ 46). Patent Owner does not, at this time, dispute Petitioner’s proposed definition. See Prelim. Resp., passim. On this record, we determine that Petitioner’s proposed definition is consistent with the prior art of record, and apply it for this Decision, with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings on 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 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “no terms require express construction because the patent claims encompass the below prior-art mappings under any reasonable construction consistent with the Phillips standard.” Pet. 9. Patent Owner does not, at this time, seek construction of any terms. See Prelim. Resp. 28. For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In making a determination of obviousness, it is not enough that each claimed limitation be found in one or more prior art references. In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir. 2000) (explaining that obviousness “cannot be predicated on the mere identification . . . of individual components of claimed limitations”). Instead, Petitioner must also show that the skilled artisan would have had a reason to combine each of the prior art references to achieve the claimed subject matter and a reasonable expectation of success in making the combination. PAR Pharm., Inc. v. TWi Pharm. Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). A generic reason to combine references fails to “explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.” ActiveVideo, 694 F.3d at 1328; see also Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 381 F.3d 1371, 1377 (2004) (explaining that “[r]ecognition of a need does not render obvious the achievement that meets that need” because “[t]here is an important distinction between the general motivation to cure an uncured disease . . . and the motivation to create a particular cure.”). Here, Petitioner combines Benito Lopez’s method—involving dispensing a particulate mineral mixture into a horizontally-oriented mold— with Liu’s method—dispensing into a vertically-oriented mold. Pet. 15. Petitioner reasons that the person of ordinary skill in the art would have been motivated to combine the teachings of these references as part of the “pervasive motivation to improve engineered stone and ceramic tile to look as close as possible to their natural stone counterparts.” Id. at 18 (citing Ex. 1004 ¶¶ 69, 74–80, 470–471), 20 (citing Ex. 1004 ¶¶ 479–481). According to Petitioner, a person of ordinary skill in the art “would have been motivated to try alternative known methods for manufacturing engineered stone slabs that could better emulate natural stone at competitive costs.” Id. at 18–19 (citing Ex. 1004 ¶ 470). Petitioner’s proffered reason to modify Benito Lopez with Liu, however, merely addresses a generalized desire in the industry to improve the aesthetic quality of engineered stone slabs and does not provide a reason to adopt Liu’s vertically-oriented dispensing method. Cardiac Pacemakers, 381 F.3d at 1377. Petitioner fails to direct our attention to any record evidence that the specific dispensing method described in Liu improves the overall aesthetics of the engineered slab beyond that described in Benito Lopez. Rather, the record evidence shows that each of Benito Lopez and Liu product artificial stone products that mimic the veining patterns of natural stone. Pet. 10, 12–14; Prelim. Resp. 33 (explaining that the “Petition recognizes that Benito Lopez already achieves this goal”); see also Ex. 1007 ¶¶ 3 (Liu describing the goal to create “unburned imitation natural stone textured ceramic tiles”), 5 (“the present invention . . . produce[s] imitation natural stone textured ceramic tiles with color richness and good simulation effects”), 6, 12–13; Ex. 1005 ¶¶ 4 (Benito Lopez stating that it achieves “an aesthetic look similar to natural stone . . . surpassing the existing technical limitation”), 26 (providing a method that produces slabs “with a similar design to that of natural stone, created by a tri-dimensional stratus”). The mere fact that Benito Lopez and Liu share a common goal of producing products that mimic natural stone fails to identify what would have prompted the skilled artisan to arrive at the combination in the first place. This is especially true where Petitioner seeks to add—not substitute—a process step, thereby introducing added complexity into Benito Lopez’s method. Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1329, 1332 (Fed. Cir. 2019) (affirming the Board’s decision that a person of ordinary skill in the art would not have reason to make a modification that “introduce[s] additional complexity and inefficiencies” into a process). As Patent Owner aptly points out, “the Petition contains no analysis of the costs required to add machinery that rotates the mold from a vertical to horizontal orientation” and fails to “account for the additional time required for this step.” Prelim. Resp. 40. Petitioner also relies on the testimony of Mr. Tassone, but Mr. Tassone’s testimony similarly falls short. See Ex. 1004 ¶¶ 69, 74–80, 470–471, 479–481. Mr. Tassone’s testimony is entitled to little weight because it fails to explain how the alleged market pressures or commercial need would motivate one of ordinary skill in the art to make the specific proposed modification, and it is not otherwise apparent that it does. 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.”); see also Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); cf. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”). As a result, Petitioner’s reason to combine is generic and untethered from the modification being made, and, therefore, is insufficient to support a determination of obviousness.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,993,942 - PTAB · Jul 15, 2022 · PGR2021-00030 · APJ Sheridan K Snedden · PGR · Rehearing
Patent Owner’s rehearing request was granted, and institution was denied for all challenged claims based on changed circumstances in the parallel district court proceeding under Fintiv.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Having considered the parties’ positions and evidence of record, summarized above, we agree with Patent Owner that a rehearing of our prior institution decision is appropriate due to the changed circumstances of: (1) the statutory disclaimer of claims 6–8 of the ’039 patent, (2) Patent Owner’s request for adverse judgment of related proceeding PGR2021-00042, and (3) the additional investment in the parallel proceeding by the district court and the parties, including the completion of a jury trial that resulted in a jury verdict not finding invalidity of the challenged claims. We further agree with Patent Owner that “[c]ontinuing with this proceeding would result in duplicative efforts and potentially conflicting results between the district court and the Board.” Reh’g Req. 9. It is the combination of these changed circumstances, rather than any one of them individually, that compels the result we reach.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“In considering the parties’ positions and the evidence of record, we note that we have been instructed not to exercise discretion to deny a petition when “the information presented at the institution stage presents a compelling unpatentability challenge.” Guidance Memo 4–5. We previously described “Petitioner’s argument that the claims lack enablement” as presenting “strong merits.” Paper 17, 3. Despite that determination, we believe the record as it stands currently does not “present[] a compelling unpatentability challenge” on the lack-of-enablement issue. Guidance Memo 4–5. The district court already has substantially completed its review of the enablement issue, and a jury has determined that the claims do not lack enablement. Given this new information, we cannot conclude that Petitioner’s enablement case is compelling.” slip op. at 6
- Adverse judgmentOther
Discretionary denialPatents in suitUS 10,808,039 - Berkeley Lights, Inc. v. The University Of British ColumbiaInstitution deniedPTAB · Feb 1, 2022 · IPR2021-01386 · APJ Kristina M Kalan · IPR · Institution
The Board denied institution because Petitioner did not show Park disclosed the claimed medium exchange or adequately explain how the asserted obviousness combinations would meet that limitation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“On the present record, we agree with Patent Owner that Petitioner has not sufficiently shown that Park’s flushing step introduces a sufficient volume of fluid into the individual microfluidic chambers to “exchange the cell culture medium” are recited in limitation 1D. Even if the flushing step did result in exchanging the culture medium, Petitioner has not adequately explained if, or how, this brief exchange would suffice “to create a plurality of individual clonal cell populations.”7 7 We make no determination as to whether this phrase is limiting, and Petitioner does not clearly indicate its position on this matter in the Petition. See Pet. 22–25.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Dr. Meinhart’s testimony, Petitioner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering, chemical engineering, biomedical engineering, molecular biology, (bio)chemistry, or an equivalent degree relevant to microfluidic biological cell analysis, and three to five years of experience with the construction of and application of microfluidic devices to cell culture and analysis.” Pet. 7–8 (citing Ex. 1002 ¶ 41). Patent Owner “does not necessarily agree with the proposed level of skill,” but “applies Petitioner’s proposed level of skill only for purposes of this Preliminary Response.” Prelim. Resp. 4–5. Because Petitioner’s proposed level of ordinary skill in the art is supported by testimonial evidence and appears reasonable at this stage in light of the subject matter of the ’270 patent, we adopt it for this decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Regardless of whether Patent Owner is correct that the Petition is deficient under § 42.104(b)(3), our decision not to institute does not depend on the construction of “chamber” or “inlet.” Thus, we do not need to construe either term explicitly for our decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs, 200 F.3d at 803)).” slip op. at 7
- BurdenNot shown unpatentable
“On the present record, we agree with Patent Owner that Petitioner has not sufficiently shown that Park’s flushing step introduces a sufficient volume of fluid into the individual microfluidic chambers to “exchange the cell culture medium” are recited in limitation 1D. Even if the flushing step did result in exchanging the culture medium, Petitioner has not adequately explained if, or how, this brief exchange would suffice “to create a plurality of individual clonal cell populations.”7 7 We make no determination as to whether this phrase is limiting, and Petitioner does not clearly indicate its position on this matter in the Petition. See Pet. 22–25.” slip op. at 11
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 10,738,270 - Phillips 66 v. Magēmā Technology, LLCInstitution deniedPTAB · Jan 21, 2022 · IPR2021-01173 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Weiss-based grounds teach or suggest the claimed residual marine fuel oil.
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
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“D. Discretionary Denial Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution under Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Paper 15 (PTAB May 13, 2020) (precedential). Prelim. Resp. 12–31. Petitioner disagrees. Pet. 6–12. Because we deny institution based on the merits of Petitioner’s unpatentability arguments, we need not decide whether to exercise discretion to deny institution.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine we need not expressly construe any terms of the challenged claims at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 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 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“feedstock HMFO and the product HMFO of the challenged claims, as Petitioner argues it does, Petitioner must show that Weiss ’974 teaches or suggests four facts: (1) the pre-hydrotreatment HSFO is a residual petroleum 10 Petitioner defines “HSFO” as being a “high-sulfur HMFO” and “LSFO” as being a “low-sulfur HMFO.” Pet. 1. product, (2) the pre-hydrotreatment HSFO is ISO-8217-compliant, (3) the post-hydrotreatment LSFO is a residual petroleum product, and (4) the posthydrotreatment LSFO is ISO-8217-compliant. Petitioner does not show all four of these facts sufficiently to demonstrate a reasonable likelihood of prevailing in showing that the challenged claims are anticipated by Weiss ’974 or obvious over the combination of Weiss ’974 and Weiss ’515.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,584,287 - Phillips 66 v. Magēmā Technology, LLCInstitution deniedPTAB · Jan 21, 2022 · IPR2021-01168 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–9 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“suggests four facts: (1) the pre-hydrotreatment HSFO is a residual petroleum product, (2) the pre-hydrotreatment HSFO is ISO-8217-compliant, (3) the post-hydrotreatment LSFO is a residual petroleum product, and (4) the posthydrotreatment LSFO is ISO-8217-compliant. Petitioner does not show all four of these facts sufficiently to demonstrate a reasonable likelihood of prevailing in showing that the challenged claims are anticipated by Weiss ’974.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine we need not expressly construe any terms of the challenged claims at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 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 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“E. Discretionary Denial Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (PTAB May 13, 2020) (precedential). Prelim. Resp. 11–32. Petitioner disagrees. Pet. 6–12. Because we deny institution based on the merits of Petitioner’s unpatentability arguments, we need not decide whether to exercise discretion to deny institution.” slip op. at 16
Claim constructionDiscretionary denialPatents in suitUS 10,308,884 - Berkeley Lights, Inc. v. The University Of British ColumbiaInstitution deniedPTAB · Jan 21, 2022 · IPR2021-01250 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“§ 42.4(a), we may only institute an inter partes review 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(a); see also 37 C.F.R. § 42.108(c) (2020). Applying that standard, we do not institute an inter partes review, for the reasons explained below.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Dr. Meinhart’s testimony, Petitioner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering, chemical engineering, biomedical engineering, molecular biology, (bio)chemistry, or an equivalent degree relevant to microfluidic biological cell analysis, and three to five years of experience with the construction of and application of microfluidic devices to cell culture and analysis.” Pet. 9 (citing Ex. 1002 ¶ 38). Patent Owner does not dispute this proposed level of ordinary skill in its Preliminary Response. See Prelim. Resp. 5–6. Because it is supported by testimonial evidence and appears reasonable at this stage in light of the subject matter of the ’936 patent, we adopt Petitioner’s proposed level of ordinary skill in the art for this decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Regardless of whether Patent Owner is correct that the Petition is deficient under § 42.104(b)(3), our decision not to institute does not depend on the construction of “chamber” or whether claim 6 invokes § 112 para. 6. Thus, we do not need to construe either term explicitly for our decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable
“Petitioner has the ultimate burden of persuasion on the question of whether a claim is entitled to the priority date of an earlier application. See Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015). “[A] patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995). In particular, “[t]o be entitled to a parent’s effective filing date, a continuation must comply with the written description requirement of 35 U.S.C. § 112, ¶ 1.” In re Owens, 710 F.3d 1362, 1366 (Fed. Cir. 2013) (citations omitted). The test for the written description requirement “is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). A prior application need not contain precisely the same words as are found in the asserted claims. See Eiselstein v. Frank, 52 F.3d 1035, 1038 (Fed. Cir. 1995); Purdue Pharma LP v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (“In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.”). On the other hand, “[e]ntitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997). A key factor in this written description analysis, which Petitioner did not clearly address in its Petition, is the meaning of “measuring a cell product” in limitation 1D. The ’936 patent discloses that “[t]he measuring the cell product [step] may be selected from one or more of: lineage staining; cell-surface protein staining; antibody staining; enzymatic assay; RT-PCR analysis; PCR analysis; sequencing; functional assay; and bead capture assay to characterize the cells.” Ex. 1001, 6:47–51. This appears to be definitional, such that the meaning of “measuring a cell product secreted by the individual clonal cell populations, or subset thereof,” as in limitation 1D, would include using any one of these listed techniques to analyze cell secretion products. This passage is also consistent with the other claims in the ’936 patent, such as claim 18, which depends from claim 1 and further states that the “measuring the cell product” step “comprises flowing a fluid comprising an immunostaining agent, an enzymatic reagent, a dye or a functionalized bead into the individual chambers.” Id. at 48:29–32; see also id. at 48:33–48 (similar limitations in claims 19–23). As Patent Owner persuasively shows on the present record, the ’213 application discloses many of these analytical techniques, including staining, functional assay, and bead capture. See Prelim. Resp. 15–17. We also find persuasive Dr. Pelanda’s testimony that a person of ordinary skill in the art would have understood that the references in the ’213 application to these analytical techniques relate to analysis of secreted cell products, and that a particular focus of the ’213 application was to use the microfluidic device for analyzing autocrine signaling, which involves detecting or analyzing cell secretions. See Ex. 2008 ¶¶ 22–32. For the above reasons, on the present record, Petitioner has not shown sufficiently that the ’213 application lacks disclosure such that Lecault is prior art to the challenged patent. Accordingly, we determine that Petitioner has not shown that there is a reasonable likelihood that it would prevail on its first and third grounds with respect to any of the challenged claims.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,421,936 - Johnson & Johnson Surgical Vision, Inc. v. Alcon Inc.Institution deniedPTAB · Nov 23, 2021 · IPR2021-01003 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that the challenged claims were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the parties’ contentions and the evidence of record, we conclude that Petitioner has not established a reasonable likelihood of prevailing in demonstrating the unpatentability of at least one challenged claim of the ’236 patent. Accordingly, we deny Petitioner’s request and do not institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Preliminary Response, we determine that the Petition fails to meet the reasonable likelihood threshold of institution.9 As stated above, we find that the Petition lacks evidence that Ustun teaches a FIFO buffer, or any other buffer for that matter, that holds and outputs scanning data, or that it would have been obvious to implement a DMA controlled FIFO buffer as asserted because the Petition does not present a reasonable rationale, with rational underpinnings, supporting the combination of teachings. We also determine that the Petition fails to show how the limitations further recited in claims 34 and 18 are taught by the prior art. IV. CONCLUSION As stated in the paragraph above, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that the challenged claims are unpatentable as asserted. Accordingly, we deny the Petition. 9 Patent Owner presents additional arguments concerning discretionary denial under 35 U.S.C. § 325(d). Because we determine that the Petition is deficient on the merits, we need not address that issue.” slip op. at 23
- Skill levelOther
“minimum standard at having a Bachelor’s degree in electrical engineering, computer science, or a related field, and three to four years of industry experience. Pet. 8. Patent Owner agrees that a degree in electrical engineering is necessary and adds that a person of ordinary skill in the art must understand the electronic components at issue. Prelim. Resp. 17. Patent Owner further remarks that Petitioner’s declarant, Dr. Huber, lacks the qualifications to meet the proffered level of ordinary skill in the art because Dr. Huber lacks the proposed bachelor’s degree. Id. Patent Owner further remarks that Dr. Kia, on the other hand, satisfies the proffered level of ordinary skill in the art because Dr. Kia has a Ph.D. in electrical engineering and has the requisite work experience. Id. 7 Manish Kankaria, Design and construction of a fast spectrometer for Fourier domain optical coherence tomography, Doctoral Thesis, University of Texas at Arlington, May 2006, filed as Exhibit 1011 (“Kankaria”). level of ordinary skill in the art or whether any of the declarants satisfies such a level. Neither party argues that the obviousness determination hinges on the level of ordinary skill. Accordingly, we do not find it necessary to define the level of skill with specificity save to note that the level of ordinary skill is evidenced by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (stating that the absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown).” slip op. at 8
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“would have implemented a DMA-controlled FIFO in Ustun because it would significantly improve data speeds. Pet. 17. But as Patent Owner points out, Ustun’s design specifically addresses the speed of the data transfer as “sufficient.” PO Resp. 38 (citing Ustun at 5). Dr. Kia explains that Ustun intentionally chose to make the transfer “low speed” because it was more than sufficient. Kia Decl. ¶ 94. In contrast, Dr. Huber states that a DMA FIFO configuration was particularly appropriate for transferring large amounts of data, “such as the scanning data for OCT in Ustun.” Huber Decl. ¶ 64. This explanation is insufficient because Ustun does not describe the size of its transferred data, such that a person of ordinary skill in the art would recognize that higher speeds would be desirable. The lack of detail in Dr. Huber’s testimony, in comparison with the detailed explanations provided by Dr. Kia, supported by Ustun’s disclosures, leads us to the conclusion that Petitioner’s proffered rationale of data speed improvement is untenable on the present record. Nevertheless, even if Ustun’s data transfer speed were a reason to try a DMA-controlled FIFO configuration, Dr. Kia explains that Ustun’s speed would not actually increase because the speed constraint in Ustun is frame rate. Id. ¶ 95. In other words, speeding up the transfer of the initialization data would not change the speed at which the “real-time” images are obtained and displayed. We credit Dr. Kia’s testimony on this issue over the testimony of Dr. Huber, which does not provide any details of the asserted implementation. Compare Huber Decl. ¶ 64 (stating in one conclusory sentence that a person of ordinary skill in the art would have known that DMA FIFO was particularly appropriate for transferring large amounts of data, such as the scanning data for OCT in Ustun) with Kia Decl. ¶¶ 94−95 (providing explanation of Ustun’s operation and the alleged speed constraints in Ustun which would not be improved by implementing a DMA-controlled FIFO buffer). Thus, Patent Owner has shown persuasively the impact of Petitioner’s reliance on a generic rationale of improving speed that is divorced from the realities of the application sought to improve. See ActiveVideo Networks Inc. v. Verizon Comm., Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (finding that expert testimony of motivation to combine “to build something better,” be “more efficient, cheaper, or” something that “had more features” was generic and insufficient). Accordingly, we are not persuaded that Petitioner’s proffered rationale of improving data speeds is sufficient to implement a DMA-controlled FIFO buffer instead of the standard BlockRAM.” slip op. at 17
§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,398,236
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.