• Berkeley Lights, Inc. v. The University Of British ColumbiaNo claims unpatentable
  PTAB · Jan 19, 2023 · IPR2021-01249 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1, 6, 11, 16, 19, 24, 26, 27, and 30 were not shown unpatentable because the asserted references did not establish selective recovery or a sufficient motivation to combine.

  RulingsFinal written decision

  • 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. 8–9 (citing Ex. 1002 ¶ 40). Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See PO Resp. 3–4 (citing Ex. 2012 ¶¶ 19–20). We find Petitioner’s uncontested articulation to be reasonable in light of the subject matter involved in the ’408 patent and its description of the relevant prior-art background. See, e.g., Ex. 1001, 1:15–2:54 (describing the field and related art as relating to the construction and use of microfluidic devices in cell culture and analysis). Thus, we adopt it for our decision.” slip op. at 9

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

    “Petitioner contends that “no terms require express construction for purposes of resolving the challenges in this proceeding.” Pet. 9; accord Pet. 12. Petitioner also notes that in the parallel district court proceedings, Patent Owner has proposed constructions for the terms chamber and retaining position that differ from Petitioner’s proposed constructions. Pet. 9–10 (citing Ex. 1013 App’x A, 1, 3 (Patent Owner’s proposed constructions); Ex. 1021, 7, 8 (Petitioner’s proposed constructions); Ex. 1002 ¶ 44). In those proceedings, Patent Owner’s proposed construction for chamber is “an enclosed space within a microfluidic device,” and its proposed construction for retaining position is “a location in the chamber at which a cell is maintained during cell culture and media exchange.” Ex. 1013, 6, 8. Although Petitioner does not contend that its arguments rely on the choice of construction for these terms, Petitioner adopts Patent Owner’s constructions for this proceeding. Pet. 11. Patent Owner does not contest these proposed constructions, or propose any other explicit constructions. See generally PO Resp. We agree with Petitioner that we do not need to construe the terms chamber and retaining position to decide the issues presented in this proceeding, and to the extent we need to interpret the meaning of any claim language, we address the interpretations below in the context of the prior art. 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 11

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “selectively recovering a cell based on the response in the monitoring step. Although Dimov discloses non-selective recovery and briefly lists a few general techniques that might be used for either mixing or recovery, Dimov does not specifically indicate which of the techniques would be useful for recovery rather than just mixing, and Dimov does not explicitly disclose that any cell recovery would be selective. Nor has Petitioner shown that Dimov inherently discloses selectively recovering any particular cell that has been cultured and monitored, because, as Dr. Gale persuasively testifies, Dimov’s removal techniques could, as far as a person of ordinary skill in the art would have known based on Dimov’s disclosure, be merely for “removing . . . unwanted particles out of the capture chamber/trench.” Ex. 2012 ¶ 64; see also id. ¶ 63 (“Dimov . . . may suggest removing cellular materials (rather than intact cells) after capture . . . .”). In other words, given Dimov’s general focus on performing experiments within the trenches and the lack of any specific disclosure about how or why to remove cells, Petitioner has not met its burden to show that Dimov’s potential cell-removal techniques would have necessarily been based on a response of a specific cell being cultured and monitored in limitation 1D. We also agree with Patent Owner that Dimov does not disclose any specifics about how to carry out a selective cell removal based on one of Dimov’s listed techniques, such as laser tweezers. See PO Resp. 8–9. Nor does Petitioner meet its burden of showing that such a technique would have been within the ordinary skill in the art at the time of the claimed invention. “In order to anticipate, a prior art disclosure must also be enabling, such that one of ordinary skill in the art could practice the invention without undue experimentation.” Novo Nordisk Pharms., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1355 (Fed. Cir. 2005) (citing SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1342 (Fed. Cir. 2005)). Given the labyrinthine outlet channels leading from Dimov’s chambers to the common waste stream and Dimov’s lack of any disclosure of a way to identify and extract cells in the outlet streams, we credit Dr. Gale’s testimony that there would have been substantial obstacles to recovering any specific cells that had been liberated from a trench in Dimov’s device. See Ex. 2012 ¶ 63. Petitioner has not shown that a person of ordinary skill in the art would have overcome those obstacles without undue experimentation.” slip op. at 23

  • Strike new argumentNew argument disregardedOther

    “18 Patent Owner contends that these arguments are untimely, and we agree at least as to certain of the arguments. See Paper 27, Nos. 6, 9, 10; see Paper 28, Nos. 6, 9, 10 (Petitioner’s responses). The new arguments introduce new theories as to how to combine Park and Kovac, including additional steps or new modifications necessary for a successful combination, which could have been presented in the Petition but were not. Nevertheless, as we discuss below, we find these arguments unpersuasive. Petitioner also contends, for the first time, that a person of ordinary skill in the art would have addressed the problem of Park’s downward-forcing circulation patterns19 by starting with flow turned off and then turning on flow “after levitation begins, including after the cell has been pushed up out of a well high enough to be clear of recirculating flow lines created once it is turned on.” Pet. Reply 19–20 (citing Ex. 1039 ¶¶ 175– 177); see also id. at 22 (citing Ex. 1039 ¶ 193).” slip op. at 64

  Patent outcomesUS 10,087,408 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,087,408
• Hanwha Solutions Corporation / Hanwha Q Cells USA, Inc. v. Rec Solar Pte. Ltd.No claims unpatentable
  PTAB · Dec 9, 2022 · IPR2021-00989 · APJ Brian D Range · IPR · Final written decision

  Claims 1–6, 11, and 13 were not shown unpatentable under either obviousness ground because Petitioner did not establish a motivation to combine Yagiura and Shimasaki.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Petitioner’s position is persuasive. We agree that documents from the Japanese Patent Office are self-authenticating official government documents. The technical issues regarding missing pages in the originally filed version of the document do not cause us to question authenticity. We also agree that Petitioner uses the documents to establish what the documents teach rather than establishing the truth of what the documents teach. In Reply, Patent Owner argues that Petitioner relies on the date printed on the document to prove up the truth of when the document was published. Mot. Excl. Reply 1–2. To the extent this is the case, an exception to hearsay applies because the document is a record of a public office. Fed. R. Evid. 803(8)(B) (a record of public office is an exception to the hearsay rule if the opponent does not show that the source of information or other circumstances “indicate a lack of trustworthiness”). Here, Patent Owner does not persuasively demonstrate a lack of trustworthiness; Patent Owner does not identify any substantively meaningful distinction in the missing pages of the originally filed document and does not identify any evidence to suggest that the missing pages were anything more than a harmless clerical error. For the reasons above, Patent Owner’s motion to exclude is denied with respect to these documents. B.” slip op. at 8

  • Skill levelSkill level board ownOther

    “Petitioner’s proposal is too broad. PO Resp. 8. For example, a person who merely installs solar panels for three years (satisfying “professional experience in solar energy”) while having some familiarity with module manufacturing would not be of ordinary skill in the design aspects of the ’060 patent as, for example, reflected by the claims at issue and the ’060 patent’s text and figures. See, e.g., Ex. 1101, Figs. 2a, 2b, 3a, 3b, 4a, 4b, 3:22–7:44. On the other hand, we also determine that Patent Owner’s proposal is too narrow. A person could, for example, have ordinary skill in the art of the ’060 patent by virtue of non-professional experience (for example, academic experience). When assessing relevant experience, research work done for a university (beyond mere classroom study) would have been just as valuable as research work done for a corporation. Also, ordinary skill in the art could be demonstrated by work that requires understanding of the ’060 patent’s field even if not “designing, developing, and/or researching” in the field itself We, thus, determine that a person of ordinary skill in the art of the ’060 patent would have been someone with a bachelor’s degree in electrical engineering, applied physics, or the like, and at least two years of (a) experience designing, developing, and/or researching in the field or (b) experience in solar energy that required an understanding of the ’060 patent’s field. Alternatively, that person would have had an advanced degree in electrical engineering, applied physics, or the like and at least one year of” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “qualifies as evidence in this matter. The Federal Circuit has held that expert testimony about the perspective of person of ordinary skill in the art (as Dr. Kimball provides here) must come from a person having at least ordinary skill in the art. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022) (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)) (holding that ITC Administrative Law Judge abused discretion by admitting expert testimony of witness who lacked the experience of a person having ordinary skill in the art); see Mot. Excl. 6–7 (arguing this point). Patent Owner, however, cites no authority that expert testimony on such matters come from a person having ordinary skill in the art at the time of the invention. Cf. Scentair Tech., LLC v. Prolitiec Inc., IPR2021-00012, Paper 22 at 61 (PTAB Apr. 22, 2022) (similarly noting a party’s lack of authority on this point). Beyond needing to come from a person of ordinary skill in the art, expert testimony is admissible if the expert has the “scientific, technical, or other specialized knowledge [that] will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702. Furthermore, “[t]here is … no requirement of a perfect match between the expert’s experience and the relevant field.” USPTO, Patent Trial and Appeal Board Consolidated Trial Practice Guide, 34 (Nov. 2019). Here, Petitioner adequately establishes that Dr. Kimball qualifies as a” slip op. at 12

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

    “The Petition argues that all claim terms should be given their plain and ordinary meaning. Pet. 18. Patent Owner does not dispute this. PO Resp. 13. We determine that no claim term requires express construction for purposes of this Final Written Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms that are in controversy, and only to the” slip op. at 15

  Patent outcomesUS 10,749,060 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,749,060
• Johnson & Johnson Surgical Vision, Inc. v. Alcon Inc.No claims unpatentable
  PTAB · Dec 5, 2022 · IPR2021-01053 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1 and 2 were not shown unpatentable: Grounds 2 and 4 lacked motivation and a reasonable expectation of success, while Grounds 1 and 3 relied on a rejected construction.

  RulingsFinal written decision

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

    “under which “the ‘curvature of the focal plane’ must ‘track the natural curvature of the lens.’” Pet. 12. Petitioner asserts that this second “construction is the basis for Grounds 2 and 4 in [the] Petition.” Id. Petitioner’s second proposed construction repeats, word-for-word, language that appears in claim 1. Compare id. (“‘curvature of the focal plane’ must ‘track the natural curvature of the lens’”), with Ex. 1001, 12:17–18 (“curvature of the focal plane” will “track the natural curvature of the lens”). That suggests to us that Petitioner, in advancing this alternative construction, agrees with Patent Owner that those words can, and should, “be given their plain and ordinary meaning.” Resp. 19. We agree with the parties’ suggestions that those words, as they appear in the full claim limitation at hand, are clear and unambiguous. The challenged claims require multiple “layers of photodisrupted bubbles,” which “form a regular array of cells in the target region” defining “cell boundaries,” and wherein those “layers are created by scanning the pulsed laser with the optics module according to a curvature of the focal plane of the optics module to track the natural curvature of the lens.” Ex. 1001, 12:13–18 (Board’s emphasis). Where the same word, “curvature,” appears in two phrases within claim 1, namely, “curvature of the focal plane” and “curvature of the lens,” we determine that the phrases relate to one another and that the word should be assigned a single, cohesive meaning. Id. Read fairly, this limitation indicates that the layers of photodisrupted bubbles that form the cell boundaries are generated by scanning a pulsed laser according to a single curvature – a curvature that characterizes both the focal plane of the optics module and the natural bend of the lens. Id. Accordingly, on this record, we determine that the “curvature of the focal plane” itself must “track the natural curvature of the lens.” Id. Other evidence of record supports that determination. Most notably, the record of examination includes this unequivocal statement: “It was Applicant’s inventive idea to design the laser surgical system such that the curvature of its focal plane tracks the curvature of the eye.” Ex. 1002, 133.7” slip op. at 17

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

    “The problem of mismatch simply “is not present in flat-field corrected systems that are imaging a flat surface because there is no mismatch. As a result, Frey and Blumenkranz do not have the blurriness problem Koschmieder describes.” Resp. 15 (citing Ex. 2030, 88:21–89:7; Ex. 2033 ¶ 104). Furthermore, the proposed modification of Frey’s system would have been expected to “cause blurring or defocusing” to occur “when used with a pulsed laser source” system, such as Frey’s, that employs a laser-shot-by-laser-shot scan pattern to generate, point-by-point, layers of photodisrupted tissue in the eye. Ex. 2033 ¶ 122. Accordingly, on this record, we find that an ordinarily skilled artisan would not “have been motivated to modify Frey with Koschmieder’s solution to address a problem of laser focus that is nonexistent in Frey.” Id.” slip op. at 38

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “opinions regarding whether there would have been a reasonable expectation of success for Petitioner’s combination” of prior art references. Sur-reply 8 (citing cases). We agree with Patent Owner that, based on the record presented, Dr. Bentley “has no experience designing laser-based systems for eye surgery” and, further, that a question arises as to whether Dr. Bentley “even understand[s] what photodisruption is” within the context of claim 1. Id. at 7–8 (and citations therein to Exs. 1004, 1046, 1047, and 2051). Although Dr. Bentley possesses excellent credentials in optics generally, this witness reports no experience with surgical optics, much less optics for laser surgery of the eye. Ex. 1046 ¶¶ 3–9; see generally Ex. 1047 (curriculum vitae). Dr. Bentley currently advises students working on optics for “microscope objectives, digital and film camera lenses, zoom lenses, fisheye lens, riflescopes,” and other devices––but none, on this record, is 6 The record also includes a declaration of Edward A. DeHoog, Ph.D. (Ex. 2001), which Patent Owner filed with the Preliminary Response but does not advance in the Response. See generally Resp. demonstrated by Petitioner as applicable to laser surgery, much less a method of laser surgery whereby layers of photodisrupted bubbles are generated within eye tissue. Ex. 1047, 1; see Ex. 2051, 45:8–21 (Dr. Bentley’s deposition transcript). Dr. Bentley’s prior experience includes, for example, working on optics related to “broadband zoom lens for cancer screening, several high-resolution broadband infrared cameras,” and “a multi-photon endoscope objective,” but includes no work, on this record, that relates to optics for laser surgery of the eye. Id. We recognize that Dr. Bentley is named on four patents and frequently lectures and publishes articles on optical imaging in general, but the list of patents and publications persuades us that Dr. Bentley possesses little, if any, experience with surgical optics. Id. ¶¶ 3, 5–9. We agree with Patent Owner, moreover, that during Dr. Bentley’s deposition, it became clear that this witness “is not an expert in laser-based systems for photodisrupted surgery” and has no experience with, or specific knowledge about, optics that perform “photodisruption” of lens tissue. Sur-reply 8 (citing Ex. 2051, 61:17–62:17, 65:12–17, 66:18–68:21, 72:4–72:20, 73:10– 73:19, 75:11–76:13, 80:9–16, 81:13–83:25, 85:13–86:3, 89:25–92:7, 94:25– 95:23, 121:3–121:12 (deposition transcript)). By contrast, Patent Owner’s witness, Dr. Dhalla, has “many years of” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the information presented, we find that the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we adopt Petitioner’s definition because, on this record, it appears consistent with the disclosures of the asserted prior art and the written description of the invention provided in the ’356 patent. Pet. 10 (Petitioner’s asserted definition of the ordinarily skilled artisan). Neither party, however, advances information explaining how or why the result in this case would change based on the definition selected by the Board.” slip op. at 12

  Patent outcomesUS 9,427,356 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,427,356
• FTC Solar, Inc. v. FCX Solar, LLCInstitution denied
  PTAB · Nov 28, 2022 · IPR2022-01101 · APJ Donna M Praiss · IPR · Institution

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

  RulingsInstitution decision

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

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

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

  • Prior constructionPrior construction adoptedDecided for patent owner

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

  • Expert testimonyPetitioner expert discountedDecided for patent owner

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

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 10,903,782
• Motif Foodworks, Inc. v. Impossible Foods Inc.Institution denied
  PTAB · Oct 26, 2022 · IPR2022-00887 · APJ Donna M Praiss · IPR · Institution

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

  RulingsInstitution decision

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

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

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

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

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

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

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

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

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

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

  RulingsInstitution decision

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

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

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

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

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

    “ANALYSIS A. Claim Construction Petitioner argues that no claim terms require express construction. Pet. 12. Patent Owner also does not propose express construction of any term. Prelim. Resp. 16–17. We agree with the parties that no terms in the challenged claims require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 5

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

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

  RulingsInstitution decision

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

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

  • Skill levelSkill level petitioner adoptedOther

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

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

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

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

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

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,981,505
• Fonterra Co-Operative Group Limited / Fonterra USA Inc. v. Arla Foods AmbaInstitution denied
  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 Graham
  Patents in suitUS 10,709,146
• Fonterra Co-Operative Group Limited / Fonterra (USA) Inc. v. Arla Foods AmbaInstitution denied
  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 obviousness
  Patents in suitUS 10,729,150
• Tennant Company v. Oxygenator Water Technologies, Inc.No claims unpatentable
  PTAB · Aug 17, 2022 · IPR2021-00625 · APJ Kristina M Kalan · IPR · Final written decision

  The Board found that Tennant did not prove claims 13, 14, and 17–27 unpatentable because the asserted references did not establish the claimed microbubbles and nanobubbles, and the obviousness combinations were inadequately supported.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner states, for “purposes of this proceeding, PO does not challenge Petitioner’s proposed level of ordinary skill.” PO Resp. 53 n.6. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Accordingly, we adopt Petitioner’s definition, because it is consistent with the cited prior art. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [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 12

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

    “Because patentee has acted as its own lexicographer, and because Petitioner agrees that the definition provided in the specification is the preferred construction, we adopt the construction of “nanobubble” provided in the specification. Cont’l Cirs. LLC v. Intel Corp., 915 F.3d 788, 796 (Fed. Cir. 2019) (citing Phillips, 415 F.3d at 1316) (“When the patentee acts as its own lexicographer, that definition governs.”). Namely, we construe “nanobubble” as “a bubble with a diameter less than that necessary to break the surface tension of water.” Ex. 1101, 4:12–13. We decline to add any additional language to our construction, as proposed by Petitioner, because the additional quoted sentence in the specification appears to describe an effect of nanobubbles on the appearance of water when nanobubbles are present, rather than define the nanobubbles themselves. On this record, we determine that no other claim terms require express construction.” slip op. at 14

  • BurdenDecided for patent owner

    “We disagree that our Institution Decision established a prima facie case that Petitioner met its burden at the Final Written Decision stage. An affirmative decision on institution is a determination that Petitioner has shown, on the record at that stage in the proceeding, that Petitioner has a reasonable likelihood of prevailing on its arguments as to at least one challenged claim. Dec. 40; 35 U.S.C. § 314(a). To prevail in an instituted inter partes review, however, 35 U.S.C. § 316(e) requires Petitioner to meet “the burden of proving a proposition of unpatentability by a preponderance of the evidence.” See TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (“[T]here is a significant difference between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at institution, and actually proving invalidity by a preponderance of the evidence at trial . . . . The Board’s findings in its Final Written Decision were thus not inconsistent with those in its Institution Decision; they were made under a qualitatively different standard.”). To state that our Institution Decision established a prima facie case that Petitioner was correct would be erroneous, as such a position conflates different burdens required of Petitioner and, in doing so, would have us improperly give Petitioner an advantage in the actual trial culminating in a final written decision. Fan Duel, 966 F.3d at 1341–42.” slip op. at 25

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “On this complete record, we find that Petitioner’s testing does not sufficiently demonstrate that Wikey inherently discloses nanobubbles. Pet. 22–29. Petitioner apparently had the ability to test for the express disclosure of nanobubbles in its Wikey-based apparatus, but did not do so. Sur-Reply 2–3. Patent Owner points out that nanobubbles, which Petitioner’s expert indicated were on the order of 0.1 microns, are detectable using available technology that Petitioner knew of and had used in the past. Id. However, Petitioner’s expert acknowledged that he did not do any testing that would determine whether nanobubbles were formed. Id. at 7 (citing Ex. 2172, 70:1–4). Petitioner’s reliance on milkiness and supersaturation to demonstrate the presence of nanobubbles is also unsupported. Petitioner argues that milky appearance equals supersaturation (Reply 9 (citing Ex. 1101, 9:38– 50)), and also that milky appearance equals nanobubbles (id. (citing Ex. 1101, 4:14–15)); the inference Petitioner apparently wants us to draw is that supersaturation equals nanobubbles. Patent Owner, however, persuasively argues that dissolved oxygen content over 100% does not prove the water is milky. PO Resp. 25–26; Sur-Reply 6–7; see also Tr. 13:24–26 (Petitioner’s counsel agreeing that “you can have supersaturation without milkiness”). Patent Owner also demonstrates that supersaturation does not necessarily mean that nanobubbles are present. PO Resp. 26; Sur-Reply 7; Ex. 2172, 76:9–14, 77:23–78:21. Thus, Petitioner’s argument based on supersaturation equaling nanobubbles because milkiness equals both breaks down because milkiness does not necessarily equal either. Accordingly, we determine that Petitioner’s arguments and testing fail to show that Wikey inherently discloses nanobubbles.” slip op. at 28

  Patent outcomesUS RE45,415 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham

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.