- Applied Materials, Inc. / Intel Corporation et al. v. Demaray LLCNo claims unpatentablePTAB · Jun 29, 2022 · IPR2021-01031 · APJ Kimberly Mcgraw · IPR · Final written decision
Claims 1–21 were not shown unpatentable because Petitioner did not establish that the prior art taught or suggested the claimed narrow band-rejection filter or a sufficient reason to add one.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“In our Decision on Institution, we adopted Petitioner’s proposal regarding the level of one of ordinary skill in the art, except that we deleted the qualifier “at least” to eliminate vagueness as to the appropriate amount of relevant experience. Inst. Dec. 10 (noting that the qualifier expands the range without an upper bound, i.e., encompassing an unlimited amount of years of experience, and thus, does not meaningfully indicate the level of ordinary skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner assert that construction of any claim term is required to resolve any issues in dispute. See Pet. 11 (citing Ex. 1002 ¶ 54); PO Resp. 10–11.” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“patent. Petitioner, who bears the burden to show Hirose is prior art, asserts that Hirose qualifies as prior art under pre-AIA 35 U.S.C. § 102(e) because Hirose’s filing date of July 18, 2001 is before the March 16, 2002 effective filing date of the ’657 patent. See Pet. 5. Patent Owner responds that Hirose does not qualify as prior art to the ’657 patent because the inventors of the ’657 patent conceived and reduced to practice the ’657 invention on or before Hirose’s filing date of July 18, 2001, likely as early as June 13, 2001. PO Resp. 12. To support this position, Patent Owner provides argument and evidence relating to the conception of the subject matter recited in claims 1–8 and 10–21. Id. at 15– 39. An inventor may antedate a § 102(e) reference by showing that the invention was conceived before the effective date of the reference, followed by reasonably continuous diligence until the constructive reduction to practice. Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356, 1362 (Fed. Cir. 2001). Evidence of such conception and reduction to practice must be provided on a claim-by-claim basis.” slip op. at 18
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We agree with Dr. Glew’s testimony that Hong, like Barber, does not suggest that a filter is required to protect a DC power source applied to a target from an RF power source applied to substrate. Ex. 2009 ¶ 152. We further agree that, rather than supporting Petitioner’s position, Hong supports Patent Owner’s position that at the time of the invention, one of ordinary skill in the art would not have thought that RF coupling into a remote pulsed DC power source was a concern or that it would have been desirable to place a filter between the DC power source and the substrate. Id. ¶ 153.” slip op. at 39
Patent outcomesUS 7,381,657 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,381,657 - Applied Materials, Inc. / Intel Corporation et al. v. Demaray LLCNo claims unpatentablePTAB · Jun 29, 2022 · IPR2021-01091 · APJ Kimberly Mcgraw · IPR · Final written decision
Claims 1–21 were not shown unpatentable because the petitioner failed to establish the claimed narrow band-rejection filter or a sufficient reason to add one to Barber’s system.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Decision on Institution, we adopted Petitioner’s proposal regarding the level of one of ordinary skill in the art, except that we deleted the qualifier “at least” to eliminate vagueness as to the appropriate amount of relevant experience. Inst. Dec. 10 (noting that the qualifier expands the range without an upper bound, i.e., encompassing an unlimited amount of years of experience, and thus, does not meaningfully indicate the level of ordinary skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner assert that construction of any claim term is required to resolve any issues in dispute. See Pet. 11 (citing Ex. 1002 ¶ 54); PO Resp. 10–11. In our Decision on Institution we invited the parties to address whether the claim term “providing an RF bias that corresponds to the narrow band rejection filter to the substrate” requires that (1) the frequency of the RF bias be the same as the frequency at which the filter operates or whether (2) the frequency of the RF bias could be a shift from the frequency at which the filter operates. Inst. Dec. 37–38. Patent Owner states the term should be construed according to its plain and ordinary meaning, which the parties in the copending litigation allegedly agreed requires the claimed filter “to have a rejection band set at a frequency of the RF bias power supply.” PO Resp. 10 (citing Ex. 2021; Ex. 2022, 7–10). Petitioner “disputes PO’s suggestion of ‘agree[ment] (EX 2022, 10)” but argues that Patent Owner’s “positions are not dispositive because they do not distinguish the prior art.” Reply 1. On the full record now before us, we agree that express construction of this term is not necessary as resolution of the present dispute does not turn on whether the frequency of the RF bias is the same as, or a shift from, the frequency at which the filter operates. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing 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 creditedPetitioner expert discountedDecided for patent owner
“narrow band-rejection filter (aka notch filter).” Pet. 22–23. Petitioner’s expert, Dr. Subramanian, testified that the difference between a narrow band-rejection filter and a band-rejection filter depends on the relationship between the bandwidth and the center frequency. See, e.g., Ex. 2030, 95:15– 21 (explaining that the bandwidth is “much, much, much smaller than the center frequency”). There is inadequate evidence that the bandwidth of Hirose’s filter is sufficiently narrow to constitute a narrow band-rejection filter. Rather, the evidence of record shows that Hirose’s filter is a band-rejection filter, not a narrow band-rejection filter.” slip op. at 29
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Not reached
“Petitioner met its burden of production to demonstrate that Hirose, which has a filing date prior to the filing date of the ’657 patent, was prior art by asserting Hirose was prior art under § 102(e). See Dynamic Drinkware, 800 F.3d at 1379. Hirose’s earlier filing date shifts the burden of production to Patent Owner to produce evidence supporting a date of invention before Hirose’s filing date. See id. With its Response, Patent Owner presents evidence it contends shows a date of conception of claims 1–8 and 10–21 prior to July 18, 2001, followed by reasonably continuous diligence. For the purposes of this decision, we need not determine whether Hirose qualifies as prior art, because, as explained below, even if Hirose qualifies as prior art, Petitioner has not sufficiently shown that all of the asserted claims would have been obvious over the grounds asserting Hirose.” slip op. at 18
Patent outcomesUS 7,381,657 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,381,657 - Applied Materials, Inc. / Intel Corporation et al. v. Demaray LLCNo claims unpatentablePTAB · Jun 29, 2022 · IPR2021-00104 · APJ Kimberly Mcgraw · IPR · Final written decision
Claims 1–21 were not shown unpatentable because Petitioner did not establish the asserted obviousness grounds, including the required narrow band-rejection filter and motivation to modify Barber.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“In our Decision on Institution, we adopted Petitioner’s proposal regarding the level of one of ordinary skill in the art, except that we deleted the qualifier “at least” to eliminate vagueness as to the appropriate amount of relevant experience. Inst. Dec. 10 (noting that the qualifier expands the range without an upper bound, i.e., encompassing an unlimited amount of years of experience, and thus, does not meaningfully indicate the level of ordinary skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“whether the claim term “providing an RF bias that corresponds to the narrow band rejection filter to the substrate” requires that (1) the frequency of the RF bias be the same as the frequency at which the filter operates or whether (2) the frequency of the RF bias could be a shift from the frequency at which the filter operates. Inst. Dec. 37–38. Patent Owner states the term should be construed according to its plain and ordinary meaning, which the parties in the copending litigation allegedly agreed requires the claimed filter “to have a rejection band set at a frequency of the RF bias power supply.” PO Resp. 10 (citing Ex. 2021; Ex. 2022, 7–10). Petitioner “disputes PO’s suggestion of ‘agree[ment] (EX 2022, 10)” but argues that Patent Owner’s “positions are not dispositive because they do not distinguish the prior art.” Reply 1. On the full record now before us, we agree that express construction of this term is not necessary as resolution of the present dispute does not turn on whether the frequency of the RF bias is the same as, or a shift from, the frequency at which the filter operates. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Not reached
“patent. Petitioner, who bears the burden to show Hirose is prior art, asserts that Hirose qualifies as prior art under pre-AIA 35 U.S.C. § 102(e) because Hirose’s filing date of July 18, 2001 is before the March 16, 2002 effective filing date of the ’657 patent. See Pet. 5. Patent Owner responds that Hirose does not qualify as prior art to the ’657 patent because the inventors of the ’657 patent conceived and reduced to practice the ’657 invention on or before Hirose’s filing date of July 18, 2001, likely as early as June 13, 2001. PO Resp. 12. To support this position, Patent Owner provides argument and evidence relating to the conception of the subject matter recited in claims 1–8 and 10–21. Id. at 15– 39. An inventor may antedate a § 102(e) reference by showing that the invention was conceived before the effective date of the reference, followed by reasonably continuous diligence until the constructive reduction to practice. Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356, 1362 (Fed. Cir. 2001). Evidence of such conception and reduction to practice must be provided on a claim-by-claim basis.” slip op. at 18
- BurdenFwd all claims patentableNot shown unpatentable
“It is Petitioner’s burden to demonstrate that the cited art teaches each limitation of the challenged claims and to show by a preponderance of the evidence that the claims are unpatentable. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). This burden never shifts to Patent Owner. See Dynamic Drinkware, 800 F.3d 1378. Here, Petitioner does not sufficiently demonstrate that Hirose teaches or suggests a narrow band-rejection filter as recited in claim elements 2[c] and 2[d]. See Pet. 21–22.” slip op. at 33
Patent outcomesUS 7,381,657 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,381,657 - Applied Materials, Inc. / Intel Corporation et al. v. Demaray LLCNo claims unpatentablePTAB · Jun 29, 2022 · IPR2021-01030 · APJ Kristina M Kalan · IPR · Final written decision
Petitioner did not prove claims 1–13 unpatentable because the grounds failed to establish the claimed filter limitations or a reason to combine Barber and Hirose.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 9 (citing Ex. 1001, 1:10–14, 2:45–47; Ex. 1002 ¶¶ 18–19). In our Institution Decision, we adopted Petitioner’s proposal regarding the level of one of ordinary skill in the art, except that we deleted the qualifier “at least” to eliminate vagueness as to the appropriate amount of relevant experience. Inst. Dec. 10.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“An inventor may antedate a § 102(e) reference by showing that the invention was conceived before the effective date of the reference, followed by reasonably continuous diligence until the constructive reduction to practice. Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356, 1362 (Fed. Cir. 2001).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Just the knowledge, however, that a filter can be used to protect or isolate one power supply from another in various types of plasma systems is not sufficient to show that one of ordinary skill in the art would have been motivated to use a filter in Barber’s system to protect Barber’s pulsed DC power source from its RF power supply. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”). In an inter partes review, “the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363. In support of its challenge, Petitioner and Petitioner’s expert may rely on general knowledge, supported by evidence, to argue that a challenged claim would be obvious in light of the general knowledge of a skilled artisan. Koninklijke Philips v. Google, 948 F.3d 1330, 1337 (Fed. Cir. 2020) (stating that although the prior art that can be considered in inter partes review is limited to patents and printed publications, “it does not follow that we ignore the skilled artisan’s knowledge when determining whether it would have been obvious to modify the prior art”). Although the Petition on its face relies on Barber and Hirose to meet the limitations of claim 1[f] (Pet. 24–36), Petitioner’s arguments rely not only on Barber and Hirose, but on numerous additional references, ostensibly to demonstrate the general knowledge of a skilled artisan. Id. For example, Petitioner cites to a number of references (i.e., Licata (Ex. 1010), Joo (Ex. 1014), Celestino (Ex. 1016), Quon (Ex. 1017), Johnson (Ex. 1018), Hong (Ex. 1019), Ohmi (Ex. 1020), and Keller (Ex. 1021)) that use different types of filters in various plasma systems for the “known use and benefits of filters in plasma systems for blocking interference/current of one power supply from another.” Pet. 32–33. Petitioner asserts that a POSITA would have understood that choosing to reject a narrow band of frequencies depending on the bandwidth of Barber’s RF supply, was a known way to achieve “the benefits” of Hirose. Id. at 31–32 (citing Ex. 1023 (Miller), 7:51–61; Ex. 1057 (Sill), 7:23–34; Ex. 1058 (Zennamo), 1:63–2:1). Petitioner also relies on a number of manuals (i.e. Exs. 1025, 1026, 1062, 1067, 1024, 1065, 1066) that illustrate “design concepts/guidance associated with use of such supplies in a plasma system with an RF power source.” Id. at 34–35. Even considering all the references in the Petition and the declaration, Petitioner does not adequately explain how the filters and principles in these relied-upon references and manuals would lead one of ordinary skill in the art to use a filter, let alone a narrow-band rejection filter, in Barber’s system.” slip op. at 36
Patent outcomesUS 7,544,276 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,544,276 - Applied Materials, Inc. / Intel Corporation et al. v. Demaray LLCNo claims unpatentablePTAB · Jun 29, 2022 · IPR2021-01090 · APJ Kristina M Kalan · IPR · Final written decision
The Board held claims 1–13 not unpatentable because Petitioner failed to show the asserted combinations disclosed or motivated use of the claimed narrow band-rejection filter.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 9 (citing Ex. 1001, 1:10–14, 2:45–47; Ex. 1002 ¶¶ 18–19). In our Institution Decision, we adopted Petitioner’s proposal regarding the level of one of ordinary skill in the art, except that we deleted the qualifier “at least” to eliminate vagueness as to the appropriate amount of relevant experience. Inst. Dec. 10. 14 Because we determine Petitioner has not sufficiently shown the challenged claims would have been obvious, we do not reach Patent Owner’s asserted objective evidence of non-obviousness. PO Resp. 70–72. Patent Owner does not appear to dispute this definition. See generally PO Resp. 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 retain our modified adoption of Petitioner’s definition. 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 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the full record now before us, we determine it is not necessary to construe any claim term expressly, because resolution of the present dispute does not turn on whether the frequency of the RF bias power supply is the same as, or offset from, the frequency at which the filter operates. Vivid Techs., 200 F.3d at 803; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in an inter partes review).” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artNot reached
“Petitioner met its burden of production to demonstrate that Hirose, which has a filing date prior to the filing date of the ’276 patent, was prior art by asserting Hirose was prior art under § 102(e). See Dynamic Drinkware, 800 F.3d at 1379. Hirose’s earlier filing date shifts the burden of production to Patent Owner to produce evidence supporting a date of invention before Hirose’s filing date. See id. With its Response, Patent Owner presented evidence it contends shows a date of conception prior to July 18, 2001, followed by reasonably continuous diligence. PO Resp. 11– 41. For the purposes of this decision, we do not determine whether Hirose qualifies as prior art to claims 1–13, because, as explained below, even if Hirose qualifies as prior art, Petitioner has not sufficiently shown that any of the asserted claims would have been obvious over the grounds asserting Hirose.” slip op. at 17
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“frequency response and that a POSITA would have understood that Hirose’s filter is “tuned to reject a narrow band of frequency,” which operates “like a narrow band-rejection filter (aka notch filter).” Pet. 28–29. Petitioner’s argument that Hirose discloses or suggests a narrow band-rejection filter is contained in this short portion of the Petition and relies on an inference that a V-shaped curve necessarily signifies a narrow band-rejection filter. Any such inference that a V-shaped curve is sufficient to characterize a filter as a narrow band-rejection filter, however, is belied by Dr. Subramanian’s own testimony. Indeed, Dr. Subramanian explains that the shape of a curve alone, including the shape of the curves of Figures 2–9(G) and (H) of Gibilisco, is not sufficient on its own to determine whether a filter corresponding to that curve is a narrow band-rejection filter or a broad bandrejection filter. See, e.g., Ex. 2030, 69:13–18 (stating, just looking Figure 2– 9(H), he could not tell if the figure corresponds to a narrow band-rejection filter because “I don’t have enough information”). Dr. Subramanian further testified that additional information beyond the mere shape of the curve is required to determine if the curve represents a narrow band-rejection filter; for example, Dr. Subramanian states that it was Gibilisco’s characterization of Figure 2–9(G) as having a sharp band rejection response that led him to conclude it was a narrow band-rejection filter. See Ex. 2030, 68:20–69:4 (Dr. Subramanian testifying that he would not “characterize the figure depicted in G as a narrow band” based just on the figures, but “on all the information that’s given,” which includes “this reference specifically [stating] at G, ‘sharp band rejection response’”); see also id. at 60:24–61:23, 62:7–63:11. Significantly, Petitioner does not point to statements in Hirose itself” slip op. at 32
Patent outcomesUS 7,544,276 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,544,276 - Applied Materials, Inc. / Intel Corporation et al. v. Demaray LLCNo claims unpatentablePTAB · Jun 29, 2022 · IPR2021-00103 · APJ Kristina M Kalan · IPR · Final written decision
Claims 1–13 were not shown unpatentable because Petitioner failed to establish the claimed filter limitations and a reason to combine Barber and Hirose.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Pet. 9 (citing Ex. 1001, 1:10–14, 2:45–47; Ex. 1002 ¶¶ 18–19). In our Institution Decision, we adopted Petitioner’s proposal regarding the level of one of ordinary skill in the art, except that we deleted the qualifier “at least” to eliminate vagueness as to the appropriate amount of relevant experience. Inst. Dec. 10.” slip op. at 9
- BurdenFwd mixedNot shown unpatentable
“4. Conclusion On this record, we find that Petitioner has not sufficiently shown by a preponderance of the evidence that a person of ordinary skill in the art would have combined Barber and Hirose in a manner that discloses all of the limitations of independent claims 1 or 6, as set forth above, or all of the limitations of the challenged dependent claims 2, 3, 7, and 8, which carry forward the same limitations as independent claims 1 and 6.” slip op. at 47
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“frequency response and that a POSITA would have understood that Hirose’s filter is “tuned to reject a narrow band of frequency,” which operates “like a narrow band-rejection filter (aka notch filter).” Pet. 28–29. Petitioner’s argument that Hirose discloses or suggests a narrow band-rejection filter is contained in this short portion of the Petition and relies on an inference that a V-shaped curve necessarily signifies a narrow band-rejection filter. Any such inference that a V-shaped curve is sufficient to characterize a filter as a narrow band-rejection filter, however, is belied by Dr. Subramanian’s own testimony. Indeed, Dr. Subramanian explains that the shape of a curve alone, including the shape of the curves of Figures 2–9(G) and (H) of Gibilisco, is not sufficient on its own to determine whether a filter corresponding to that curve is a narrow band-rejection filter or a broad bandrejection filter. See, e.g., Ex. 2030, 69:13–18 (stating, just looking Figure 2– 9(H), he could not tell if the figure corresponds to a narrow band-rejection filter because “I don’t have enough information”). Dr. Subramanian further testified that additional information beyond the mere shape of the curve is required to determine if the curve represents a narrow band-rejection filter; for example, Dr. Subramanian states that it was Gibilisco’s characterization of Figure 2–9(G) as having a sharp band rejection response that led him to conclude it was a narrow band-rejection filter. See Ex. 2030, 68:20–69:4 (Dr. Subramanian testifying that he would not “characterize the figure depicted in G as a narrow band” based just on the figures, but “on all the information that’s given,” which includes “this reference specifically [stating] at G, ‘sharp band rejection response’”); see also id. at 60:24–61:23, 62:7–63:11.” slip op. at 32
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“On the full record now before us, we determine it is not necessary to construe any claim term expressly, because resolution of the present dispute does not turn on whether the frequency of the RF bias power supply is the same as, or offset from, the frequency at which the filter operates. Vivid Techs., 200 F.3d at 803; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in an inter partes review).” slip op. at 11
Patent outcomesUS 7,544,276 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,544,276 - PTAB · Apr 26, 2022 · IPR2022-00006 · APJ Christopher L Crumbley · IPR · Institution
The Board instituted IPR on claims 1–5 over all asserted grounds, finding a reasonable likelihood of success on at least one claim and declining §325(d) denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the parties’ arguments and the evidence of record, we determine that, for the reasons discussed herein, FFP has established a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. KGSI has not persuaded us that we should exercise our discretion under 35 U.S.C. § 325(d) to deny institution. We thus institute an inter partes review on all challenged claims on all asserted grounds. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); see also Patent Trial and Appeal Board Consolidated Trial Practice Guide 64 (Nov. 2019)2 (“TPG”) (“The Board will not institute on fewer than all claims or all challenges in a petition.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“§ 325(d), the Board applies a two-part framework: (1) first, we determine whether the same or substantially the same art previously was presented to the Office, or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, we examine whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, 8.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Our preliminary construction at this stage of the proceeding is that claim 1 does contain a nested product-by-process limitation, which defines the claimed curing agent as containing a plant-based nitrite derived using a particular process involving heat treatment prior to introduction of the nitrite-producing organism. We are not persuaded on the current record, however, that this process imparts any structural or functional differences to the recited curing agent product, as opposed to curing agents produced by other means. KGSI contends that “the variations inherent in the biological processes for producing plant-derived nitrite, in addition to selecting the plant material and organism, result in qualitative differences in the curing agent that, when applied to meat, affect taste, smell, texture, and color, while also impacting the safety of the product.” Prelim. Resp. 23 (citing Ex. 2001 ¶¶ 127–131). But Dr. Milkowski does not provide any evidence of these “qualitative differences” beyond citations to FFP’s marketing materials. Ex. 2001 ¶ 129 n.23. On this preliminary record, therefore, we construe the product-by-process element of claim 1 to not be limited by the process steps recited.10” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Upon review, we are persuaded that FFP has set forth a sufficient rationale why a person of ordinary skill in the art would have modified Voorde’s process to use Hara’s sterilization step. We do not, on this record, believe the two disclosures to be incompatible or that application of Hara would render Voorde’s process inoperable. While recognize that Voorde warns against heating to 90°C as disclosed in Hara’s sterilization process, we note that the heating of Hara is at a different point in the curing process than Voorde’s heating. Specifically, Hara discloses heating prior to storage of the plant-derived solution, to sterilize it, whereas Voorde’s heating step is during treatment, to encourage the nitrate conversion process. We do not understand combining these two heating steps into one process to be incompatible. We do not understand Voorde’s disclosure to exclude processes in which the nitrite-generating microbes are added via starter culture, rather than naturally occurring in the plant material. Voorde does not express any preference for naturally-occurring microbes, or suggest that results are superior to processes in which a starter culture is added. Nor are we persuaded that a person of ordinary skill in the art, having used Hara’s sterilization step, would have been unaware that the sterilization would have reduced the microbial load of the plant material and that addition of a starter culture—which Voorde expressly suggests—would be beneficial.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,071,304 - A123 Systems, LLC v. Long Hua Technology Co., Ltd.Institution deniedPTAB · Apr 15, 2022 · IPR2022-00026 · APJ Kristina M Kalan · IPR · Institution
The Board denied institution because the Patent Owner recorded a compliant statutory disclaimer of all challenged claims 1–19.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“[§] 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e) (2019). A disclaimer under 35 U.S.C. § 253(a) is “considered as part of the original patent” as of the date on which it is “recorded” in the U.S. Patent and Trademark Office (“Office”). 35 U.S.C. § 253(a). For a disclaimer to be “recorded” in the Office, the document filed by the patent owner must:” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, we decline to institute inter partes review.” slip op. at 2
Discretionary denialPatents in suitUS 8,034,480 - PTAB · Mar 15, 2022 · IPR2021-01517 · APJ Russell E Cass · IPR · Institution
The Board instituted inter partes review of claims 1–20 on all four asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Patent Owner has not persuaded us that we should exercise our discretion to deny institution of trial. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Board has held that the advanced state of a parallel district court action is a factor that may weigh in favor of denying a petition under § 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential) (“NHK”); Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 58 & n.2, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice Guide”). We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB March 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6. We consider each of these factors below.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed petitioner constructionDecided for petitioner
“(1) “An actuating means for moving said mechanical linkage between said first position and said second position” (claim 2): Petitioner contends that this is a means-plus-function limitation, and that the claimed “actuating means” should be construed as “an actuator, latches, springs, or magnets, and their equivalents” that correspond to the function of “moving said mechanical linkage between said first position and said second position.” Pet. 6 (citing Ex. 1003 ¶¶ 69–71). (2) “A means for moving said actuator arm between a first position . . . and a second position . . .” (claim 7): Petitioner contends that this limitation is a means-plus-function limitation, and that the claimed “means” should be construed as “an actuator, latches, springs, or magnets, and their equivalents” that correspond to the function of “moving said actuator arm between a first position . . . and a second position . . .” connecting the respective contactors as claimed. Pet. 7 (citing Ex. 1003 ¶¶ 72–74) (alterations in original). (3) “Means for passing power from said power supply to said substation when said actuator arm is in said first position” (claim 10): Petitioner contends that this limitation is a means-plus-function limitation, and that the claimed “means” should be construed as “the line between the power supply and the actuator arm, the actuator arm, and the line between the substation and the first contactor of the first vacuum bottle” that correspond to the function of “passing power from said power supply to said substation when said actuator arm is in said first position.” Pet. 7–8 (citing Ex. 1003 ¶¶ 75–77).” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention “would have had at least a BS in Electrical Engineering (or similar engineering discipline) and at least two years work experience in the field of power electronics, power generation and transmission, or a related field.” Pet. 6 (citing Ex. 1003 ¶ 18). Patent Owner does not propose a level of ordinary skill in the art at this stage of the proceeding. See generally Prelim. Resp. 2 At this stage of the proceeding, Patent Owner has not presented objective evidence of non-obviousness. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art because we find it to be supported by the ’489 patent and the asserted prior art.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,724,489 - Beckman Coulter, Inc. v. Sysmex Corporation And Sysmex America, Inc.All claims unpatentablePTAB · Feb 18, 2022 · IPR2020-01503 · APJ Jo-Anne M Kokoski · IPR · Final written decision
Claims 7–15 are unpatentable as obvious over Nagai and Jagtiani; the priority applications lack written-description support for the claimed electrical detection and cell-counting combination.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Institution Decision, we determined that Petitioner’s definition was consistent with the disclosure of the ’351 patent and the scope and content of the asserted prior art to the extent that Petitioner’s definition requires familiarity with the design and operation of automated hematology analyzers available in the market. Dec. 8 (citing Ex. 1001, 1:45–61, 15:52– 58). We also determined that Petitioner’s proposal was more reasonable than Patent Owner’s with respect to the duration of a POSA’s practical experience, whether such practical experience is in addition to or possibly as experience could be merely using hardware and/or software for an analyzer, as opposed to developing such hardware and/or software. Id. at 8–9. Neither party contends that the differences in proposals affect the outcome of this proceeding, and we find that they do not. Nonetheless, on the full record now before us, we find that our identification of the level of ordinary skill in the art in the Institution Decision, modified to state that a higher level of experience can compensate for less technical education, is supported by the ’351 patent, the prior art of record, and the opinions of Mr. Roche and Dr. Robinson (which, as discussed above, recognize that additional work experience can compensate for technical education). Thus, we find that a POSA would have had at least a Bachelor’s or Master’s degree in biologic science, biomedical engineering, and/or electrical engineering or a related field and at least five years of experience in developing hardware and/or software for hematology analyzers, and would have been familiar with the design and operation of hematology analyzers available in the market. We also find that less technical education may be compensated by a higher level of experience, or vice versa.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for petitioner
“a controller programmed to,” “optical detector,” “electrical detector,” and “mono-nucleated cells and poly-nucleated cells” as recited in claim 7, and “total count of nucleated cells” as recited in claims 8 and 13. Pet. 22–29. Patent Owner responds that “[t]he District Court issued an opinion regarding claim construction on April 6, 2021,” and, “[f]or purposes of this proceeding, Patent Owner applies the District Court’s constructions.” PO Resp. 13. Patent Owner also specifically addresses the terms “controller programmed to” and “electrical detector.” Id. at 13–14. Petitioner replies that its proposed claim constructions are consistent with the District Court’s constructions. Pet. Reply 4–5. At the oral hearing, the parties confirmed that they do not dispute the District Court’s claim constructions. See Tr. 16 (Petitioner’s counsel stating that “Petitioner would request that this Board adopt these same [District Court] constructions in this IPR”), 34 (Patent Owner’s counsel agreeing that “neither side has objected to the court’s claim construction”). Based on the parties’ apparent agreement, and considering the record before us and the Report and Recommendation from the District Court (Ex. 2065), we agree with and adopt the District Court’s claim constructions. See 37 C.F.R. § 42.100(b) (“Any prior claim construction determination concerning the claim in a civil action . . . that is timely made of record in the inter partes review proceeding will be considered.”). Accordingly, we construe the terms “controller programmed to,” “electrical detector,” and “optical detector” as set forth below. slip op. at 12
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“that Petitioner has established that the priority applications do not provide adequate written description support for the challenged claims. More specifically, we find that the priority applications do not reasonably convey to a POSA that the inventors were in possession of a sample analyzer that both (1) uses an electrical detector to electrically sense cells in a body fluid measurement sample, and (2) from the analysis of the cells sensed by the electrical detector, counts the number of mono-nucleated cells and poly-nucleated cells in the body fluid measurement sample as required by claim 7.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Based on our review of the record, we determine that Petitioner has established that a POSA would have had reason to combine the teachings of Nagai and Jagtiani to achieve the claimed subject matter. Nagai describes an electrical detector (RBC/PLT detection unit 42) that “is capable of measuring the number of red blood cells and platelets by a sheath flow-DC detection method.” Ex. 1044, 6:58–63, Fig. 5. Nagai also describes WBC detection unit 41 that produces a DIFF scattergram that, in the body fluid measuring mode, is analyzed in order to classify the white blood cells into two subclasses, namely, mono-nucleated cells and poly-nucleated cells. Id. at 5:56–58, 12:27–36. Nagai teaches that WBC detection unit 41 is “configured as an optical detection unit” that performs white blood cell classification in the body fluid measurement mode using a combination of electrical resistance and absorbed light. Id. at 5:56–58, 15:52–16:6. Jagtiani teaches a channel sensor that can detect impedance to differentiate between different types of cells in a biological sample, including differentiating between red blood cells, white blood cells, and platelets. Ex. 1045 ¶¶ 21, 25; see also id. ¶ 187 (“The channel sensor is based on impedance sensing using the Coulter principle.”). Jagtiani teaches the sensor can be configured to differentiate between and count the number of eosinophils, basophils, neutrophils, monocytes, and lymphocytes in the biological sample. Id. ¶ 25; see also id. ¶ 121 (“In some embodiments, the cell count can include a white blood differential, and can include a count of basophils, a count of eosinophils, a count of lymphocytes, a count of neutrophils, and/or a count of monocytes.”). Jagtiani further teaches that “[s]uch biological samples can include, for example, blood, serum, saliva, sweat, tears, urine, or any other biological sample or derivative suspended in a fluid.” Id. ¶ 119. In light of these teachings in Nagai and Jagtiani, we credit Mr. Roche’s testimony that Jagtiani demonstrates a known technique of detecting poly-nucleated and mono-nucleated white blood cells using an electrical detector. A POSA at the time of the invention would have been led to modify Nagai with the teaching of Jagtiani in the manner claimed to allow the body fluid measurement of Nagai to differentiate poly-nucleated and mono-nucleated blood cells (instead of measuring red blood cells alone). Such a motivation is found, for example, in Petitioner’s DxH system, which discloses use of an electrical detector in both a blood measuring mode and a fluid measuring mode. Ex. 1042 ¶¶ 30, 31. In the DxH system, use of an electrical detector in both the blood measuring mode and body fluid measuring mode allows identification of total number of cells in measured body fluid.” slip op. at 29
Patent outcomesUS 10,401,351 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSRPatents in suitUS 10,401,351
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.