• Njoy, LLC / Njoy Holdings, Inc. v. Juul Labs, Inc.Institution denied
  PTAB · Jun 12, 2024 · IPR2024-00267 · APJ Avelyn M Ross · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving obviousness over either asserted combination.

  RulingsInstitution decision

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

    “III. CONCLUSION For the foregoing reasons, we determine that Petitioner does not demonstrate a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition. Accordingly, we deny the Petition and do not institute an inter partes review of the ’722 patent. IV. ORDER It is ORDERED that the Petition is denied as to all challenged claims of the ’722 patent and no trial is instituted.” slip op. at 41

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner argues that a person of ordinary skill in the art “at the time of the invention would have had a B.S. in mechanical engineering, electrical engineering, or an equivalent degree, and either at least two years of experience designing electro-mechanical consumer products or an advanced degree in mechanical engineering, electrical engineering, or an equivalent field.” Prelim. Resp. 12 (citing Ex. 2001 ¶¶ 12–22). Patent Owner also states that “no issue relevant to this Preliminary Response turns on the level of ordinary skill in the art.” Id. at 13 (citing Ex. 2001 ¶ 21). In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’722 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’722 patent and the prior art. However, our decision would not change if we applied Patent Owner’s definition.” slip op. at 12

  • BurdenNot shown unpatentable

    “equalizer absorbs liquid and the heat equalizer is coupled to the electric wire (Ex. 1024, 2:57–60, 5:2–3, 8:43–45), we question whether the absorption of liquid by the heat equalizer discloses the delivery of the liquid to the heating wire, i.e., the heating element. Pan clearly describes the relationship between the heat equalizer and the heating wire as follows: This electric current preferably flows through the electric heat wire inside the atomizer tube, which then heats up the heat equalizer with absorbed liquid from the liquid-container. The heated equalizer converts the liquid into a form of vapor mist, which is finally drawn into the mouth of the user. Ex. 1024, 2:57–62 (emphasis added). We acknowledge Petitioner’s position, and Dr. Janet’s testimony, that Pan discloses that “[t]he heat equalizer 269 absorbs liquid from the liquid container and is twined with the heating wire 265 to allow the heating wire to vaporize the liquid.” Pet. 42 (citing Ex. 1024, 2:57–60, 8:43–45); Ex. 1005 ¶¶ 136–137. However, column 2 of Pan states that the heating wire heats the heat equalizer that contains the absorbed liquid. Ex. 1024, 2:57–60. In short, nowhere does Pan teach that heat equalizer 269 delivers the vaporizable material to heating wire 265 for vaporization. Thus, Petitioner has not demonstrated that Pan teaches or suggests “wicking element . . . configured to deliver the vaporizable liquid to the heating element.” Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood that claim 1 would have been obvious over the combination of Pan and Levin.” slip op. at 22

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

    “On this record, we agree with Patent Owner that Petitioner’s assertions fail to account for disruptions to the air intake, and that Petitioner’s allegations of reasonable expectation of success are deficient. Pan’s cigarette cap 13 has small holes for airflow (see Ex. 1024, 5:9–11, 5:30–32), but Petitioner’s proposed combination requires incorporating Levin’s charging port into the cigarette cap (see Pet. 24–25, 35–36). Petitioner, however, does not explain how this modification would be accomplished. Petitioner simply asserts that “[m]icro-USB receptacles were standardized, well-known in the art, and specifically disclosed in prior art evapor devices” and that “Levin’s micro-USB charger contacts are installed at its end cap; Pan likewise has an end cap 13.” Pet. 24 (citing Ex. 1005 ¶ 105; Ex. 1026, 6:26–32; Ex. 1042, 5:57–60; Ex. 1003, 23:58–60). Petitioner reasons that a person of ordinary skill in the art “would have expected Levin’s micro-USB charger contacts to work equally well at Pan’s end cap.” Id. Dr. Janet offers little more. See Ex. 1005 ¶ 105. Petitioner and Dr. Janet imply that including Levin’s micro-USB port is “plug and play” or a matter of simple substitution. Pet. 24; Ex. 1005 ¶ 105. But, Patent Owner explains that modifying Pan’s device to include Levin’s micro-USB port “would also entail adding the associated internal circuitry necessary to support the externally-visible micro-USB connector.” Prelim. Resp. 27 (citing Ex. 2001 ¶ 105). For example, Levin states that “the device includes a port 31 to recharge the power source 30, such as a micro-USB charging port located on a printed circuit board behind a distal lens tip or endcap.” Ex. 1003, 14:10–13 (describing Figures 14A–14C). Petitioner does not sufficiently address how a person of ordinary skill in the art would have modified Pan’s device to account for the changes necessary to incorporate Levin’s micro-USB port. Furthermore, Petitioner does not account for the disruption of air flow in the Pan device that would occur if the micro-USB port of Levin were positioned at a distal end from the insertion end. See generally Pet. As Pan describes, the holes for air flow through the device are located in the end cap Petitioner proposes to replace. Specifically, Pan states that “[t]he user inhales through the air-puffing hole at an end of the electronic cigarette to create an air inflow, which triggers the atomization process” and that the electronic cigarette includes “cigarette cap 13 with small holes for air inflow.” Ex. 1024, code (57), 5:10–11. According to Dr. Collins, “blocking or otherwise restricting this airflow will impact the performance and functionality of Pan’s device, and adding Levin’s micro-USB connector will naturally affect the airflow” because “air inflow is critical to the operation of Pan’s device.” Ex. 2001 ¶ 107 (emphasis added). Dr. Collins further testifies that a person of ordinary skill in the art would have known that things like changes in pressure inside the device, friction force, the volume and speed of the airflow, and how hard it is to draw air could all affect how well the device works. Therefore, the micro- USB port from Levin could not just be transplanted at the end of Pan’s device without affecting the air inlet holes and the overall way air flows through the device. Id. Patent Owner, through the testimony of Dr. Collins, further states None of the changes are straightforward. Instead, these modifications would require completely redesigning the device from scratch, including changing the electrical connections of the battery and the airflow connections to the sensor. . . . Having the correct airflow, connections, and fit are crucial. The draw resistance—how hard you have to pull to inhale the vapor—is a key factor and hard to get right. Among other things, the draw resistance affects how much effort the user needs to inhale; how much vapor is produced; the size of the visible vapor cloud exhaled; the “throat hit” sensation; and the particle size of the inhaled aerosol. All of these factors have to be carefully balanced to provide a satisfying user experience. But the proposed changes to Pan’s device would disrupt all of these interrelated factors. . . . As a result, a person of ordinary skill in the art would understand that the changes are challenging. So they would not expect to be able to make the suggested changes successfully. Id. ¶ 112. Petitioner’s conclusory assertions that because Pan has an end cap and Levin’s micro-USB charger contacts are in an end cap, “Levin’s micro- USB charger receptacle would work equally well when placed at Pan’s end cap” (Pet. 24; Ex. 1005 ¶ 105), are insufficient to account for the disruption of air flow in the Pan device.” slip op. at 24

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,134,722
• Njoy, LLC / Njoy Holdings, Inc. v. Juul Labs, Inc.Instituted
  PTAB · Jun 12, 2024 · IPR2024-00231 · APJ Avelyn M Ross · IPR · Institution

  The Board instituted IPR on claims 14–16, 18, 27–29, 31, and 32 on all asserted grounds, finding a reasonable likelihood of success on the Worm–Levitz obviousness challenge.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.”” slip op. at 2

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

    “To anticipate a claim, a 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.’” Net MoneyIN, 545 F.3d at 1369. The prior art reference “must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” Id. at 1371 (citation omitted). “[D]ifferences between the prior art reference and the claimed invention, however slight, invoke the question of obviousness, not anticipation.” Id. Although the various embodiments of Worm contain similar features, we are not persuaded that Petitioner sufficiently demonstrates that the various embodiments disclose a single vaporizer device that anticipates the challenged claims. As Patent Owner notes, “for limitations [14.A] and [14.B], Petitioners rely on the embodiment of Figure 2 (Pet. 28–29), whereas for limitation [14.C], which requires a pressure sensor, Petitioners rely on Figure 5” (id. at 32), and “for limitations [14.D], [14.E], and [14.F], Petitioners rely on the different embodiment of Figure 7” (id. at 34–45). Worm’s description of the figures suggests each of Figures 2, 5, and 7 relate to different embodiments of Worm. See Ex. 1004 ¶¶ 14 (“FIG. 2 is a sectional view through an electronic smoking article comprising a cartridge and a control body according to an example embodiment of the present disclosure”), 17 (“FIG. 5 is a detailed view of the proximal end of the control body illustrated in FIG. 3 that also illustrates a sealing member” (emphasis added)), 20 (FIG. 7 is a partial sectional view of an electronic smoking article according a further example embodiment of the present disclosure showing a control body connected to a cartridge via the control body coupler and the cartridge base” (emphasis added)). Based on Worm’s descriptions, it appears that Figure 2 relates to one embodiment, Figures 3–5 relate to another embodiment, and Figure 7 relates to yet another embodiment. See id. ¶¶ 13–20, 53, 59. In addition, Petitioner does not argue that a single embodiment of Worm discloses all limitations of challenged claim 14. See generally Pet. Nor does Petitioner direct our attention to any disclosure in Worm that show how Figures 2, 5, and 7 interrelate as a single embodiment or present any argument that a person skilled in the art “would ‘at once envisage’ the claimed arrangement or combination.” Id.; Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015). Thus, Petitioner fails to show that the cited material in Worm discloses the limitations of claim 14 arranged in the same way as claimed without resorting to the need to pick and choose from disparate disclosures. Net MoneyIN, 545 F.3d 1371 (“[I]t is not enough that the prior art reference . . . includes multiple, distinct teachings that the prior art might somehow combine to achieve the claimed invention.”).” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “that outside air enters between the battery and cartridge connection. Id. at 56 (citing Ex. 1003 ¶¶ 168–169; Ex. 1007, 4:41–43). Petitioner contends that air inlets are a design choice and having the channel between the battery and the cartridge would enable the smoker to clean the channel simply by removing the cartridge. Id. at 57–60 (citing Ex. 1003 ¶¶ 170–173; Ex. 1004 ¶ 72; Ex. 1007, 1:64–2:1, 4:15–18, 4:41–43, Figs. 3a, 3b; Ex. 1009, 4:45–48, Fig. 3; Ex. 1011, 4:9–12, Fig. 5A; Ex. 1012 ¶ 28, Fig. 6; Ex. 1013 ¶ 97, Fig. 16). Petitioner contends that a person of ordinary skill in the art would have had a reasonable expectation of success in combining Worm and Levitz because both disclose two-piece e-cigarettes and an ordinary artisan would have understood that placing the air inlet on the periphery of the device would not disrupt its operation and the channel would be along either a male-female or female-male connection. Id. at 60–62 (citing Ex. 1003 ¶¶ 174–178; Ex. 1004 ¶ 76; Ex. 1010 ¶ 48). Patent Owner argues that neither Worm nor Levitz discloses or renders obvious the air flow and air inlet claim limitations, and that combining Worm and Levitz would be redundant. Prelim. Resp. 20–22 (citing Ex. 2001 ¶¶ 68–72). In reply to Petitioner’s assertion that air inlets are a design choice and that an additional air inlet would alleviate backflow, Patent Owner argues that having additional air inlets is not a design choice because “the size, shape, and location of air inlets affect draw resistance, which impacts, among other things, vapor production, the size of the visible vapor cloud, and nicotine delivery to a user.” Id. at 22. Patent Owner also argues that a person of ordinary skill in the art would not be motivated to include the additional air inlet because Worm already addresses backflow with the existing inlet 789. Id. at 22–24 (citing Ex. 1004 ¶ 76; Ex. 2001 ¶¶ 73–77). Based on the information presented in the Petition, we are persuaded that Petitioner demonstrates a reasonable likelihood of prevailing at trial in showing that claims 14 and 27 of the ’123 patent are unpatentable as obvious based on Worm and Levitz. Because Worm discloses a non-airtight gap and Levitz discloses airflow from the periphery of the device between the battery and the cartridge, we are persuaded, for the purposes of institution, that an ordinary artisan would have had reason to modify Worm in view of Levitz to render obvious limitations [14.E], [14.F], [27.G], and [27.H] for the reasons asserted by Petitioner. At this stage, Patent Owner’s arguments to the contrary are unavailing because they are directed to Worm’s airflow and backflow rather than Petitioner’s proposed combination of Worm and Levitz.” slip op. at 31

  • Skill levelSkill level petitioner adoptedOther

    “have at least a B.S. degree in Mechanical Engineering, Electrical Engineering, Industrial Design, Product Design, or similar field, with at least two years of industry experience in one of these fields” and that a person of ordinary skill in the art “would have been familiar with electrically powered vaporizing articles, their components or the underlying technologies.” Pet. 7. Patent Owner argues that a person of ordinary skill in the art “at the time of the ’123 patent would have had a B.S. in mechanical engineering, electrical engineering, or an equivalent degree, and either at least two years of experience designing electro-mechanical consumer products or an advanced degree in mechanical engineering, electrical engineering, or an equivalent field.” Prelim. Resp. 4 (citing Ex. 2001 ¶ 19). Patent Owner also states that “Patent Owner’s arguments herein apply regardless of which definition of a [person of ordinary skill in the art] is adopted.” Id. (citing Ex. 2001 ¶¶ 20–21). In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’123 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’123 patent and the prior art. We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,130,123
• Juul Labs, Inc. v. Njoy, LLCInstituted
  PTAB · May 24, 2024 · IPR2024-00161 · APJ Kristina M Kalan · IPR · Institution

  Inter partes review was instituted for claims 1–27 on all asserted grounds, based on a reasonable likelihood that JUUL would prevail on its obviousness challenges.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting inter partes review is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” For the reasons set forth below, upon considering the parties’ papers and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to at least one challenged claim. Accordingly, we grant the Petition and institute inter partes review.” slip op. at 2

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

    “the aperture is “in the housing.” Rather, the claims recite a “housing includes/having a first end” and a “housing includes/having a first aperture on the first end.” Thus, the plain and ordinary understanding of the claim language “housing includes/having a first aperture on the first end” does not require that the aperture be “in the housing.”” slip op. at 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted

    “demonstrate a reasonable likelihood of prevailing on its Xia-based obviousness arguments. With reference to our claim construction of the “first aperture on the first end” of the housing, supra, we agree that Petitioner has demonstrated, on this record, Xia’s (1) “housing includes/having a first aperture on the first end” and (2) “housing includes/having a first aperture on the first end,” more particularly, that Xia’s first aperture is sufficiently located on the first end of Xia’s housing. Pet. 10–13, 32–35. Notwithstanding Patent Owner’s arguments to the contrary, namely, that Petitioner’s “first aperture” “is not in Xia’s stainless steel shell,” nor “is that aperture at the first end of the housing” (Prelim. Resp. 25–26), the record before us supports Petitioner’s position and claim construction at this stage in the proceeding. We have concerns as to whether Petitioner sufficiently shows a reason to modify Xia in view of Wang/Fang, including showing why a POSITA would have extended Xia’s passageway to the very end of the housing (as in limitations 1[b2] and 1[c]), and whether Mr. Sturges provides sufficient support for his contentions. See generally Pet.; see also 37 C.F.R. § 42.22(a)(2) (stating that the petition must contain a full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence); see, e.g., Ex. 1007 ¶ 90 (stating that a POSITA would have been motivated to modify Xia’s cartridge “to be a simpler design, which is easier and cheaper to manufacture”). However, we are sufficiently persuaded on this record that Petitioner has met its burden of demonstrating a reasonable likelihood of prevailing on its contentions of obviousness of claim 1. Because we institute inter partes review on at least one claim, we institute on all claims. SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018) (“The agency cannot curate the claims at issue but must decide them all.”).” slip op. at 29

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied

    “We decline to deny the Petition for this reason. Although the text in the shorthand column does bring the total number of words to over the 14,000-word limit, the column does not contain any substantive argument. Rather, the column merely provides a shorthand notation of how Petitioner refers to the claim elements within the Petition’s headings. Because the table and the Petition also refer to claim element numbers (i.e., claim element 1[a1]), the shorthand notations were not necessary to Petitioner’s arguments or to understand the Petition’s headings. As such, it is not necessary to consider the shorthand column to render this decision. Moreover, we determine that shorthand column was added to aid the Board’s review of the Petition and for this additional reason, the additional text in the shorthand column does not warrant denial of the Petition.” slip op. at 37

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,334,881
• Njoy, LLC / Njoy Holdings, Inc. v. Juul Labs, Inc.Institution denied
  PTAB · May 24, 2024 · IPR2024-00223 · APJ Avelyn M Ross · IPR · Institution

  The Board denied institution on the merits because Petitioner did not show a reasonable likelihood that claims 1–4, 6, 7, 15, 16, 18–25, 28, and 30 were unpatentable.

  RulingsInstitution decision

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

    “Accordingly, Petitioner has not established that there is a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition based on Verleur and the knowledge of a person of ordinary skill in the art. E. Challenge based on Verleur, Knowledge of a Person of Ordinary Skill in the Art, and Plojoux Petitioner also contends Verleur, the knowledge of a person of ordinary skill in the art, and Plojoux would have rendered claims 2, 4, 21, and 23 obvious. Pet. 70–78. Petitioner does not present any arguments or evidence with respect to claims 2, 4, 21, and 23 that would remedy the defects noted above with respect to independent claims 1 and 20. Thus, Petitioner fails to demonstrate that the subject matter of claims 2, 4, 21, and 23 would have been obvious over the combined disclosures of Verleur, the knowledge of a person of ordinary skill in the art, and Plojoux.” slip op. at 22

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art would have at least a B.S. degree in Mechanical Engineering, Electrical Engineering, Industrial Design, Product Design, or similar field, with at least two years of industry experience in one of these fields, and such [person of ordinary skill in the art] would have been familiar with electrically powered vaporizing articles, their components, or the underlying technologies. Pet. 5. Patent Owner contends that a person of ordinary skill in the art “would have had a B.S. in mechanical engineering, electrical engineering, or an equivalent degree, and either at least two years of experience designing electro-mechanical consumer products or an advanced degree in mechanical engineering, electrical engineering, or an equivalent field.” Prelim. Resp. 4 (citing Ex. 2001 ¶ 19). Patent Owner also states that “Patent Owner’s arguments herein apply regardless of which definition of a [person of ordinary skill in the art] is adopted.” Id. (citing Ex. 2001 ¶¶ 20–21). On this record, we determine that Petitioner’s proposed definition is consistent with the prior art of record, and apply it for this Decision. 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 7

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

    “Petitioner “contend[s] the term ‘mouthpiece’ means a ‘separate component from the storage compartment to be used by a mouth.’” Pet. 6. Petitioner additionally contends the construction of the term “is not material to the grounds in the Petition.” Id. Patent Owner contends that the term “mouthpiece” “means ‘portion to be used by a mouth.’” Prelim. Resp. 5. Patent Owner additionally “agrees with Petitioners that, at least in this preliminary stage, it is not necessary for the Board to resolve this construction.” Id. 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 8

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

    “Petitioner’s position is unpersuasive. It is not evident from the record that the skilled artisan would have understood that a window equates to a hole or “air inlet passage” as claimed. Indeed, the record suggests otherwise. For example, Verleur explains that: The shell may include a window provided at the cartomizer receiving segment so that a portion of the chamber is visible from outside the shell. [Ex. 1005 ¶ 27]. One or more windows 130 may be provided in outer shell 106 (see FIG. 1). Windows 130 may be made of a translucent material, such as glass or substantially clear plastic, in order to view internal components of battery portion 100. [Id. ¶ 37] For instance, in one embodiment, window 130 may be provided on or proximate to cartomizer receiving segment 104 and, more particularly, cartomizer chamber 108 so as to permit a user of electronic cigarette 10 to view the cartomizer 200 when it is inserted into cartomizer chamber 108. [Id.]. At least a portion of body 208 may be composed of translucent or substantially translucent material, such as glass or plastic, so that a user may see fluid 300A held within. The portion of body 208 composed of translucent material may be alignable with window 130 . . . . [Id. ¶ 38]. Petitioner itself acknowledges that window 130 of Verleur “may be made of a translucent material, such as glass or substantially clear plastic” and that the purpose of window 130 is “to view internal components of battery portion 100.” Pet. 29 (quoting Ex. 1005 ¶ 37). Thus, Verleur provides that window 130 may be translucent to allow a user to view internal components, and Verleur makes no mention that window 130 is a hole or slit that allows air to enter. Ex. 1005 ¶¶ 37–38. Neither Petitioner nor its declarant Dr. Singhose adequately explains why the ordinarily skilled artisan would have understood window 130 to be an air inlet passage that allows air to enter gap “formed by an exterior surface of the cartridge and . . . an internal surface of the receptacle.” In contrast, Patent Owner, through the testimony of Dr. Collins, persuasively explains that the skilled artisan would have understood that Verleur’s window 130 is not an air inlet passage. Ex. 2001 ¶¶ 48–49; Prelim. Resp. 11–13. Dr. Collins explains that “[w]indow 130 is a window . . . ‘to view internal components of battery portion 100,’ such as ‘to permit a user . . . to view the cartomizer 200 when it is inserted into cartomizer chamber 108.’” Ex. 2001 ¶¶ 46–47 (third alteration in original). Dr. Collins further testifies that “Verleur knew how to describe an air inlet on the outside of the shell, since one is described in a different embodiment.” Id. ¶ 45. Alternatively, Petitioner contends that “to the extent window 130 is not a slit, but instead comprises glass or plastic, a hole would nonetheless be needed elsewhere in the shell to permit air into the gap between the cartomizer 200/200A and the outer shell 106.” Pet. 34. Petitioner points to Verleur paragraph 39, which describes holes or ducts in the outer shell. Id. However, where Verleur describes the existence of holes or ducts for air flow, the air flow is described as flowing though the cartomizer body itself and not through the gap or channel formed where the cartomizer is inserted into the shell chamber. Ex. 1005 ¶ 39 (stating that “[i]nhalation tube 222 may also be in fluid communication with one or more holes or ducts provided, for instance, in sides of outer shell 106 in order to permit air flow through cartomizer body 208” (emphasis added)). This is consistent with Dr. Collins’s testimony that “[s]uch a mechanism would allow air to flow directly into the cartomizer through aligned holes.” Ex. 2001 ¶ 66 (emphasis added). In addition, Petitioner fails to demonstrate that an air inlet passage” slip op. at 17

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,709,173
• Juul Labs, Inc. v. Njoy, LLCInstituted
  PTAB · May 24, 2024 · IPR2024-00160 · APJ Kimberly Mcgraw · IPR · Institution

  The Board instituted review of claims 1–48 on all asserted §103 grounds, finding a reasonable likelihood that JUUL would prevail on at least one challenged claim.

  RulingsInstitution decision

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

    “We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we determine the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of all challenged claims of the ’864 patent on all grounds asserted in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “The Director has the discretion to deny a petition that presents the same or substantially the same prior art or arguments as previously presented to the Office. The Board uses the following two-part framework in determining whether to exercise discretion under § 325(d) to deny institution. (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8 (PTAB Feb. 13, 2020) (precedential). In applying the two-part framework, we consider the following non-exclusive factors:” slip op. at 10

  • Skill levelSkill level board ownOther

    “time it was made, we consider the level of ordinary skill in the pertinent art at the time of invention. Graham, 383 U.S. at 17. Petitioner does not provide its own definition of the level of ordinary skill in the art. Instead, Petitioner asserts: In previous litigation involving the ’881 patent – the parent patent to the ’864 patent (Fuma International LLC v. R.J. Reynolds Vapor Company, Case No. 1:19-cv-260 (M.D.N.C. 2019)) with an identical specification – Patent Owner’s predecessor-in-interest asserted that a person of ordinary skill in the art (“POSITA”) at the time of the purported invention would have had a mechanical or electrical engineering degree, industrial design degree, or a similar technical degree, or equivalent work experience, and 5 to 10 years of experience in electromechanical devices. Ex. 1007, ¶¶14-17. Pet. 11–12; see also Ex. 1007 ¶ 16 (Mr. Sturges testifying that he meets “that qualification” without affirmatively providing a definition for a POSITA). Patent Owner “does not challenge the definition of a POSITA set forth in the Petition.” Prelim. Resp. 9. In light of the record before us, and for purposes of this Decision, we adopt the level of ordinary skill in the art set forth in the above block-quote of the Petition as this definition appears to comport with the qualifications a person would have needed to understand and implement the teachings of the ’864 patent and the prior art.” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “b) Analysis We start with the claim language itself. The claims do not recite that the aperture is “in the housing.” Rather, the claims recites a “housing having a first end” and a “housing having a first aperture proximate the first end.” The plain and ordinary meaning of “proximate” is near or close to, not on. Thus, the plain and ordinary understanding of the claim language “housing having a first aperture proximate the first end” of the housing is that the first aperture is near, though not necessarily on, the first end of the housing.” slip op. at 19

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,497,864
• Asustek Computer Inc. / Asus Global Pte. Ltd. et al. v. Litl LLCInstitution denied
  PTAB · May 23, 2024 · IPR2024-00532 · APJ David Cotta · IPR · Institution

  The Board denied institution on claims 1–10 and 23 because Petitioner did not show a reasonable likelihood that a skilled artisan would replace Lane’s hinge with Misawa’s single-pivot hinge.

  RulingsInstitution decision

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

    “defines a single longitudinal axis running along an interface between the display component and the base” where “the display component and the base are rotatable about the single longitudinal axis.” Ex. 1001, 17:15–21 (the “single axis limitation”). In each of its seven grounds, Petitioner asserts that this claim limitation would have been obvious because “a POSA would have been motivated and able to adapt the portable computer 10 of Lane to use a single-pivot hinge like the hinge 20 taught in Misawa.” Pet. 29; see also id. at 32 (“In the portable computer 10 of Lane modified to implement a singlepivot hinge like the hinge 20 of Misawa, the hinge would define a ‘single longitudinal axis.’”). Our decision turns on whether Petitioner has carried its burden to establish a reasonable likelihood of prevailing on its assertion that the POSA would have been motivated to use a single-pivot hinge, like that disclosed in Misawa, in Lane’s computer, as proposed in the Petition. For the reasons discussed below, we find that Petitioner has not carried its burden. slip op. at 11

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

    “Having determined that Petitioner’s proposed modification provides a modest benefit, we now consider whether such modification has any drawbacks. Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1332 (Fed. Cir. 2019) (explaining that, in an obviousness inquiry, “[t]he benefits, both lost and gained, should be weighed against one another.”) (citing Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000)). Here, by Petitioner’s own admission, modifying Lane’s hinge in the manner Petitioner proposes comes at the expense of the hinge’s ability to rotate through a full 360°, which allows Lane’s computer to function as a tablet. Pet. 17 (explaining that Misawa’s single axis hinge “can open beyond the stated 300° (but less than 360°)”), 29 (explaining that a dual-pivot hinge is “unnecessary except to allow the display component to rotate far enough to fold flat against the bottom of the base to deploy the portable computer in tablet mode”); Ex. 1004 ¶¶ 110 (testimony of Dr. Wolfe echoing statement in the Petition that Misawa’s hinge cannot rotate through the full 360°), 114 (testimony of Dr. Wolf explaining that “the use of a dualpivot hinge would make it easier to design a portable computer having a display that can rotate far enough to fold flat against the bottom of the base to deploy the portable computer in a tablet mode”); Ex. 1017, 3:5–14 (Lane, teaching that allowing 360° of rotation allows a laptop computer to function as a “pen-based computing tablet”).” slip op. at 19

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “motivated to replace Lane’s hinge with a single axis hinge because a single axis hinge is less expensive and more reliable than Lane’s biaxial decouplable hinge. Pet 29; Ex. 1004 ¶¶ 113, 114, 131 (testimony of Dr. Wolfe to the same effect). Patent Owner argues this proffered motivation is supported only by the conclusory testimony of Dr. Wolfe. Prelim. Resp. 21. Patent Owner also argues that neither Petitioner nor Dr. Wolfe attempts to explain or quantify just how much of a benefit using a simpler hinge provides. Id. We agree that Dr. Wolfe’s testimony on this point is somewhat conclusory. See, e.g., Ex. 1004 ¶¶ 113, 114, 131 (citing only limited supporting evidence). Nonetheless, we give Dr. Wolfe’s testimony some weight because it is consistent with the notion that a simpler device with fewer moving parts is likely to be somewhat less expensive and more reliable than a more complicated device. See Ex. 1016 ¶ 9 (prior art reference cited by Dr. Wolfe (Misawa), teaching that the mechanism of a hinge having a biaxial structure is “likely to be biaxial decouplable hinge with Misawa’s single axial hinge would provide a modest benefit.” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art at the time of the ’688 Patent (“POSA”) would have had a bachelor’s degree (or equivalent) in electrical engineering, computer engineering, computer science, or a comparable subject, and two to three years of experience in the design and architecture of laptop computers and other portable electronic devices. Alternatively, a POSA would have had an advanced degree (or equivalent) in electrical engineering, computer engineering, computer science, or a comparable subject and one year of post-graduate research or work experience in the design and architecture of laptop computers and other portable electronic devices. A POSA would have been familiar with the structural hardware aspects of laptop computers and other portable electronic devices, as well as designs of user interfaces employed and displayed by computer operating POSA could have acquired similar skills and knowledge by other means. Pet. 7 (citing Ex. 1004 ¶ 15). Patent Owner does not dispute Petitioner’s identification of the person of ordinary skill in the art. See generally Prelim. Resp. As Petitioner’s description of the person of ordinary skill is consistent with the subject matter of the ’688 patent and with the prior art of record, we apply it for purposes of this decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 9

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,289,688
• Structural Wrap, LLC v. System Stormseal Pty Ltd, Stormseal USA, LLCInstituted
  PTAB · May 9, 2024 · IPR2024-00084 · APJ Donna M Praiss · IPR · Institution

  The Board instituted IPR on claims 1–3 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been shown obvious.

  RulingsInstitution decision

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

    “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 demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’484 patent, and we institute inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Guidance Memo explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB. . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. Here, in an email to Patent Owner, Petitioner “stipulates that if the PTAB institutes IPR, Structural Wrap will not pursue in [the Florida Litigation] the same grounds asserted in the petition, or any grounds that could have reasonably been raised in the petition.” Ex. 1022, 1.” slip op. at 12

  • Adverse judgmentDecided for petitioner

    “Patent Owner’s argument is not persuasive because the cited discussion in the prosecution history does not relate to the challenged claims in this proceeding. Pages 25–26 of Exhibit 2008 correspond to the Declaration of Christopher Mouriz (“Mouriz Declaration”). The Mouriz Declaration relates to claim language that “recites attaching the construction material to a specific component of a roof, namely, the vertical, outward facing [fascias] of the eaves of the roof.” Ex. 2008, 25 ¶ 7. The Mouriz Declaration explains that “the roof component to which a waterproofing membrane is attached is not recognized as a particular parameter that can be experimented with, in order to increase or optimize the waterproofing process in a structural waterproofing system.” Id. at 26 ¶ 8. Thus, the claim language discussed in the Mouriz Declaration relates to attaching construction material specifically to “vertical, outward facing facias of the eaves of the roof.” Id. at 25 ¶ 7. There is no discussion of wrapping battens. Pages 40–41 of Exhibit 2008 correspond to a Response to Office Action wherein the applicant distinguishes the ’554 application claims over prior art references cited by the Examiner, namely, Lennox and Wiki. Ex. 2008, 40–41. The applicant argues that “neither Lennox nor Wiki discloses attaching the construction material that was rolled in the end of the strip to the vertical, outward-facing fascia of the eaves of the roof, as claimed by Applicant.” Ex. 2008, 41 (emphasis original). Again, the claim limitation at issue, which Patent Owner directs us to, relates to the location for attaching construction material, namely, vertical outward-facing fascia. We see no similar limitation in the challenged claims. We also note that Petitioner does not rely on Lennox and Wiki in this proceeding. Accordingly, we are not persuaded that Petitioner should be estopped from arguing that the challenged claims of the ’484 patent are obvious based on arguments presented to the Office concerning claims and references that are not involved in this proceeding.” slip op. at 10

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

    “We determine we need not explicitly construe any claim term at this stage of the proceeding. See Realtime Data, 912 F.3d at 1375. We encourage the parties to further discuss an express construction for “sheet” during trial if they choose.” slip op. at 7

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 11,168,484
• Lam Research Corp. v. Inpria Corp.Instituted
  PTAB · Apr 24, 2024 · IPR2024-00033 · APJ Grace Karaffa Obermann · IPR · Institution

  The Board instituted IPR of claims 1–12 on all asserted grounds, finding a reasonable likelihood that the ’888 Publication anticipates the claims.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). We may institute review, however, only upon a determination that “there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a). Applying that standard, for reasons set forth below, we institute an inter partes review.” slip op. at 2

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “The test for written description support “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The Specification must clearly allow persons of ordinary skill in the art to recognize that the inventors invented what is claimed, and “reasonably” convey to those skilled in the art that the inventors “had possession of the claimed subject matter as of the filing date.” Id. The “level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id.” slip op. at 9

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “The test for written description support “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The Specification must clearly allow persons of ordinary skill in the art to recognize that the inventors invented what is claimed, and “reasonably” convey to those skilled in the art that the inventors “had possession of the claimed subject matter as of the filing date.” Id. The “level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id.” slip op. at 9

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner

    “Even if we accept that the Examiner previously considered the effective filing date of claims 1–12, we determine that Petitioner identifies a material error by the Examiner. Id. We agree with Petitioner that “the Examiner never questioned the priority claim made by” the applicant during prosecution. Pet. 63. Further, the Examiner did not issue any rejection concerning whether the application that led to the ’564 patent supports the challenged claims. Id.; see id. at 63 n.20 (citing Ex. 1007, 489). Against that backdrop, we find Petitioner shows sufficiently that the Examiner materially erred by accepting the applicant’s priority date claim, as shown by our analysis above, and, as a result, materially erred by failing to appreciate the prior art status of the ’888 Publication, which Petitioner has demonstrated by a reasonable likelihood, on this record, anticipates the challenged claims. Id. at 63. Accordingly, we do not exercise our discretion to deny review under Section 325(d) with respect to the ground that asserts anticipation by the ’888 Publication.10” slip op. at 16

  Claim construction§ 102 anticipation§ 112 disclosureDiscretionary denialcites Phillips
  Patents in suitUS 9,823,564
• Sma Solar Technology America, LLC v. Tigo Energy, Inc.Rehearing denied
  PTAB · Apr 2, 2024 · IPR2023-01175 · APJ Kristina M Kalan · IPR · Rehearing

  The Board denied SMA’s rehearing request, leaving institution denied for claims 1–20 because the request showed no overlooked matter, misapplication of law, or abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW Rule 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, a reply, or a sur-reply. 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence. Moreover, “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2

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

    “patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference.”). Our Institution Decision analyzed Petitioner’s arguments and evidence, and determined that Petitioner provided no persuasive argument that a person of ordinary skill in the art would have understood that Mieth’s load 20 is a micro-controller—i.e., that the claimed micro-controller reads onto Mieth’s load 20. Inst. Dec. 11–12 (citing Ex. 1014, 1180, Fig. 5; Ex. 1007 ¶¶ 102–103). The Request, as did the Petition, misapplies the anticipation analysis by arguing that a micro-controller is a load, rather than persuasively arguing that Mieth’s load is the claimed micro-controller. Id. at 10–12; Req. 8. None of Petitioner’s evidence or arguments explain why a person of ordinary skill in the art would have understood that load 20 disclosed in Mieth is a micro-controller. As such, Petitioner has not shown any material error in our decision that Petitioner did not demonstrate a reasonable likelihood of anticipation by Mieth.” slip op. at 6

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

    “reads on the micro-controller recited in the claims of the ’848 patent” (Req. 6), the test for anticipation is not whether the prior art reads on the claims, but rather whether the claims read on the prior art. See Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999) (“Anticipation of a patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference.”). Our Institution Decision analyzed Petitioner’s arguments and evidence, and determined that Petitioner provided no persuasive argument that a person of ordinary skill in the art would have understood that Mieth’s load 20 is a micro-controller—i.e., that the claimed micro-controller reads onto Mieth’s load 20. Inst. Dec. 11–12 (citing Ex. 1014, 1180, Fig. 5; Ex. 1007 ¶¶ 102–103). The Request, as did the Petition, misapplies the anticipation analysis by arguing that a micro-controller is a load, rather than persuasively arguing that Mieth’s load is the claimed micro-controller. Id. at 10–12; Req. 8. None of Petitioner’s evidence or arguments explain why a person of ordinary skill in the art would have understood that load 20 disclosed in Mieth is a micro-controller. As such, Petitioner has not shown any material error in our decision that Petitioner did not demonstrate a reasonable likelihood of anticipation by Mieth. slip op. at 5

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

    “D. Petitioner’s Section 103 Argument Petitioner argues throughout the Request that Mieth also discloses the “micro-controller” limitation under 35 U.SC. § 103. See Req. 7, 9–11, 13– 15. As explained above, however, the Request does not identify any matters that the Board misapprehended or overlooked. We addressed Petitioner’s obviousness arguments in our Institution Decision, and determined that those arguments failed to demonstrate a reasonable likelihood that Petitioner would prevail on its arguments that Mieth and Balogh, or Mieth, Balogh, and Liu, teach or suggest the claimed “micro-controller” limitation. Inst. Dec. 13–15.” slip op. at 8

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 9,966,848
• Advanced Lighting Concepts LLC v. Mate LLCInstitution denied
  PTAB · Feb 13, 2024 · IPR2023-01266 · APJ Kimberly J Mcgraw · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

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

    “The standard for institution is set forth in 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a)(“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we do not institute inter partes review of the challenged claims of the ’601 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner’s declarant, Joseph McAlexander, testifies that a person having ordinary skill in the art (“POSITA”) to which the ’601 patent pertains, would have “at least a bachelor’s degree in electrical engineering, computer science, or a related field and significant experience with power regulation devices, like LED drivers and dimmers.” Ex. 1002 ¶ 31. Patent Owner, having waived its Preliminary Response, does not contest Petitioner’s articulation of the level of skill in the art. Paper 7. We regard Petitioner’s definition as consistent with the prior art before us and the skill reflected in the Specification of the ’601 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art may reflect an appropriate level of skill). Thus, for the purpose of this Decision, we apply Mr. McAlexander’s definition.” slip op. at 15

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

    “Petitioner states that “[e]ach claim term challenged by this Petition should be construed in accordance with its ordinary and customary meaning for purposes of resolving the issues raised in this Petition,” but does not otherwise explicitly articulate any particular claim construction. Pet. 14. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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 16

  • BurdenNot shown unpatentable

    “Thus, Petitioner’s mapping of the LED driver recited in claim elements 1(b), 1(c), and 1(e) to Peng’s phase controlled dimmer 101 is inconsistent with its mapping of the claimed components included in the LED driver of claim element 1(a) to components located external to Peng’s phase controlled dimmer 101. Because of Petitioner’s inconsistent mapping of Peng to the claimed LED driver, Petitioner fails to show that Peng discloses an LED driver that meets all of the limitations set forth in claim 1. See Net MoneyIN, 545 F.3d at 1369 (stating for a prior art reference to anticipate a claim, it “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’”). Additionally, Petitioner’s failure to articulate, inter alia, which components in Peng correspond to either the LED driver or the power circuit recited in claim element 1(a) violates our rules requiring that the “petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon” (37 C.F.R. § 42.104(b)(5) (emphasis added)) and that the “petition must include a full statement of the reasons for relief requested, including a detailed explanation of the significance of the evidence including material fact” (37 C.F.R. § 42.22(a)(2) (emphasis added)). See also 37 C.F.R. § 42.104(b)(4) (stating the Board may “give no weight to the evidence where a party as failed to state its relevance”). As such, Petitioner does not show a reasonable likelihood that it will prevail in showing that claim 1 is anticipated by Peng.” slip op. at 23

  Claim constructioncites Phillips · KSR · Graham
  Patents in suitUS 8,957,601

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.