- Cisco Systems, Inc. / Juniper Networks, Inc. v. Orckit CorporationAll claims unpatentablePTAB · Oct 22, 2024 · IPR2024-00026 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1–31 are unpatentable under § 103(a) over Bruckman; the Board did not reach the additional grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“We do not agree with Patent Owner’s arguments that the ’740 Patent Specification disavows “any configurations where the user port is fixedly assigned to a specific backplane trace” from the full scope of the claim. Patent Owner’s citations to disclosures in the ’740 Patent Specification do not disparage the prior art, but merely contrast the configurations of the user ports and backplane traces disclosed in the ’740 Patent to “some known network element configurations” and “some conventional network elements.” See Ex. 1001, 1:66–2:4, 5:13–21. We find that the comparison of the disclosed configurations of user ports and backplane traces to that of the prior art in the ’740 Patent Specification does not constitute a clear disavowal of the first physical link fixedly assigned to the second physical link. See Continental Circuits LLC v. Intel Corp., 915 F.3d 788, 798 (Fed. Cir. 2019) (“[C]omparing and contrasting the present technique to that of the prior art does not ‘rise to the level of a clear disavowal’ of claim scope.”). Accordingly, we decline to construe “selecting, in a single computation based on at least one of the frame attributes, a first physical link out of the first group and a second physical link out of the second group” as requiring “the first physical link is not fixedly assigned to the second words of the claim their ordinary and customary meanings.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“As demonstrated in the analysis below, we need not construe “interface module.” 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 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “(‘POSITA’) in April 2006 would have had a working knowledge of computer networking, including such commonly used technologies as Ethernet and the internet protocol / transmission control protocol (TCP/IP) suite.” Pet. 18 (citing Ex. 1003 ¶¶ 7–9). Petitioner further asserts that “[a] POSITA would two years of professional experience in the field of communication networks, including link aggregation in communication networks.” Id. (citing Ex. 1003 ¶¶ 7–9). “For purposes of this Patent Owner Response, Patent Owner does not dispute Petitioner’s level of ordinary skill.” PO Resp. 21. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is supported by declaration testimony and is consistent with the level of skill reflected by the ’740 Patent Specification and the asserted prior art.” slip op. at 19
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“1 Juniper Networks, Inc. filed a motion for joinder and a petition in IPR20240-00034, which were granted. Accordingly, Juniper Networks, Inc has been joined as a petitioner in this proceeding.” slip op. at 1
Patent outcomesUS 7,545,740 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,545,740 - Cisco Systems, Inc. / Juniper Networks, Inc. v. Orckit CorporationAll claims unpatentablePTAB · Oct 22, 2024 · IPR2023-00401 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1–31 are unpatentable under § 103(a) over Bruckman; the Board did not reach the additional grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“We do not agree with Patent Owner’s arguments that the ’740 Patent Specification disavows “any configurations where the user port is fixedly assigned to a specific backplane trace” from the full scope of the claim. Patent Owner’s citations to disclosures in the ’740 Patent Specification do not disparage the prior art, but merely contrast the configurations of the user ports and backplane traces disclosed in the ’740 Patent to “some known network element configurations” and “some conventional network elements.” See Ex. 1001, 1:66–2:4, 5:13–21. We find that the comparison of the disclosed configurations of user ports and backplane traces to that of the prior art in the ’740 Patent Specification does not constitute a clear disavowal of the first physical link fixedly assigned to the second physical link. See Continental Circuits LLC v. Intel Corp., 915 F.3d 788, 798 (Fed. Cir. 2019) (“[C]omparing and contrasting the present technique to that of the prior art does not ‘rise to the level of a clear disavowal’ of claim scope.”). Accordingly, we decline to construe “selecting, in a single computation based on at least one of the frame attributes, a first physical link out of the first group and a second physical link out of the second group” as requiring “the first physical link is not fixedly assigned to the second words of the claim their ordinary and customary meanings.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“For the purpose of resolving the controversy before us, we need not construe the phrase “arranged in parallel.” We do not agree with either of the proposed constructions for that seek to define “arranged in parallel” in relation to “relevant endpoints,” “a common relevant endpoint,” “a second relevant endpoint,” or “between a user node and a communication network.” Claim 1 already includes a description of endpoints for the second group of second physical links arranged in parallel: “each of the one or more interface modules” and “a communication network” because claim 1 recites “coupling each of the one or more interface modules to a communication network using a second group of second physical links arranged in parallel.” Ex. 1001, 11:4–6. Independent claims 4, 5, 13, 17, 19, 20, and 28 each recite identical or similar limitations. See Ex. 1001, 11:28–15:28. Other Claim Terms and Phrases As demonstrated in the analysis below, we need not construe any other claim terms or phrases. See Realtime Data, 912 F.3d at 1375.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“C. Principles of Law A claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) if in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).6 6 The parties do not present evidence or arguments regarding secondary considerations.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We also do not agree with Patent Owner’s substantive arguments. We agree with Petitioner that, in the flow of data from the core network to the network nodes 24, 26, 28 in Bruckman, there is a selection of a trace 52 out of the group of four traces 52 in order to send data to the appropriate line card 34, link 30, and node 24, 26, 28. We have reviewed Petitioner’s analysis addressing dependent claim 11 (see Pet. 58–63) and find that this selecting a trace 52 out of the group traces 52. For these same reasons, we also do not agree with Patent Owner’s argument that “given that Bruckman discloses a system in which the trace is ‘determined’—and not selected—by the selection of a link 30, a POSITA would understand that Bruckman does not disclose the claimed selections in ‘a single computation.’” PO Resp. 53. More particularly, the analysis addressing claim 11, cited by Petitioner, provides additional explanation that Bruckman’s equipment 22 is a two-level demultiplexer structure with concentrators 50 acting as a first level demultiplexer to select one of four links 30 and switching core 40 acting as a second-level demultiplexer by distributing data frames from the input channel among four separate traces 52. See Pet. 58–59 (reproducing Ex. 1005, Fig. 2 (with Petitioner’s added annotations); citing Ex. 1003 ¶ 137; Pet. 23–27). The cited analysis further explains that Bruckman’s equipment 22 shown in Figure 2 includes a control line from controller 42 to the switching core 40 and control lines to each of the concentrators 50. See Pet. 59–60 (reproducing Ex. 1005, Fig. 2 (with Petitioner’s added annotations); citing Ex. 1003 ¶ 138). According to Petitioner, “[g]iven this well-known, two-level structure, a POSITA would have found it obvious for Bruckman’s [e]quipment 22 to be controlled in a manner consistent with well-known two-level demultiplexer control techniques.” Pet. 59 (citing Ex. 1003 ¶ 138). The cited analysis further explains that “[b]ecause each of the demultiplexing devices (switching core 40 and concentrators 50) in [Bruckman’s] Fig. 2 has one input and four outputs, a POSITA would have found it obvious to control each with a two-bit command signal.” Pet. 60 (citing Ex. 1003 ¶ 139). According to Petitioner, switching core (second-level demultiplexer) to select a trace 52. A different two-bit signal would be used to control the concentrators (first-level demultiplexers) to select a link 30, consistent with known techniques for controlling two-level demultiplexers. Such techniques . . . would have been in the background knowledge of a POSITA. Pet. 61 (citing Ex. 1003 ¶ 139; Pet. 33); see Pet. 62–63 (reproducing Ex. 1007, Fig. 5.17(a) (with Petitioner’s annotations added); citing Ex. 1003 ¶¶ 139–141).” slip op. at 34
Patent outcomesUS 7,545,740 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,545,740 - PTAB · Oct 9, 2024 · IPR2024-00728 · APJ Nathan A Engels · IPR · Institution
The Board instituted review of claims 1–19 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Taniguchi.
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 . . . 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). For the reasons below, we determine the information presented in the Petition shows a reasonable likelihood that Petitioner will prevail in showing the unpatentability of at least one claim of the ’430 patent, and we institute inter partes review.” slip op. at 2
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“The ’430 patent describes its field of endeavor as inductor design in a VCO. Ex. 1001, 1:19–22. Patent Owner does not specifically state what Patent Owner considers the field of endeavor of the ’430 patent to be, but Patent Owner highlights portions of the ’430 patent specification that describe implementations on a single semiconductor chip. Prelim. Sur-reply 2 (citing Ex. 1001, 1:59–61). Even though portions of the ’430 patent refer to semiconductor die or chip applications (e.g., Ex. 1001, 1:27–61), neither the specification nor the claims are limited to such specific applications. Also, Patent Owner acknowledges a relatively broad field of endeavor with its proposed definition of a person of ordinary skill in the art, arguing that a person of ordinary skill would have had “two years of experience working in the wireless communications industry.” See Prelim. Resp. 15–16. Thus, on the present record, we preliminarily agree with Petitioner that the ’430 patent’s field of endeavor is inductor design. See Prelim. Reply 1–2. Similarly, although parts of Taniguchi describe an RFID system, on the current record, we are persuaded by Petitioner’s arguments that a person of ordinary skill would understand Taniguchi’s teachings to be applicable to the design of inductors generally. See Prelim. Reply 4–5. Among other things, on the present record, Petitioner sufficiently shows that the electromagnetic field created by a structure is not dependent upon it being labeled an antenna or an inductor. Prelim. Reply 2–3 (citing Ex. 1003 ¶¶ 85–93), 4–5 (citing Ex. 1003 ¶¶ 69–73, 138–166, 203). Further, on this record, we disagree with Patent Owner’s arguments that Taniguchi teaches away from the claimed invention; notwithstanding the reference’s discussion of specific applications in RFID systems, the structures depicted and described in Taniguchi are similar to those described and claimed in the ’430 patent, as discussed further below. Notably, the ’430 patent attributes many of the characteristics of the EM field to the symmetrical, 8-shaped inductor having current flowing in opposite directions in each of the inductor’s loops (Ex. 1001, 4:5–32), which is structurally similar to the structures depicted in Taniguchi, e.g. Figures 3, 7, and 8.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“¶¶ 85–93), 4–5 (citing Ex. 1003 ¶¶ 69–73, 138–166, 203). Further, on this record, we disagree with Patent Owner’s arguments that Taniguchi teaches away from the claimed invention; notwithstanding the reference’s discussion of specific applications in RFID systems, the structures depicted and described in Taniguchi are similar to those described and claimed in the ’430 patent, as discussed further below. Notably, the ’430 patent attributes many of the characteristics of the EM field to the symmetrical, 8-shaped inductor having current flowing in opposite directions in each of the inductor’s loops (Ex. 1001, 4:5–32), which is structurally similar to the structures depicted in Taniguchi, e.g. Figures 3, 7, and 8. Next, we disagree with Patent Owner’s arguments that Taniguchi does not teach or suggest a first inductor having a reduced far field. See Prelim. Resp. 23–26. As cited by Petitioner (Pet. 15–16), Taniguchi states that the “remote electromagnetic-field intensity” is suppressed with its two-loop 8- shaped antenna (e.g., Ex. 1005 ¶ 94). Similarly, we are currently persuaded that Taniguchi teaches or suggests that the magnetic field emanating from the second loop tends to cancel the magnetic field emanating from the first loop as a result of the current flowing through the loops in opposite directions. See Ex. 1003 ¶¶ 116, 122, 123; Ex. 1005 ¶¶ 55–57, 73–75. At this stage, Patent Owner’s arguments to the contrary (e.g., Prelim. Resp. 26– 27) do not substantively undermine Taniguchi’s teachings regarding suppression of the “remote” electromagnetic field. See Ex. 1001, 4:5–27 (describing characteristics of the EM field emanating from a symmetrical, single-turn, 8-shaped structure).” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner contends a person of ordinary skill would have had “a master’s degree in electrical engineering, physics, or similar discipline and at least two years’ experience in designing integrated circuits or inductors or a bachelor’s degree in electrical engineering, physics, or a similar discipline and at least four years’ experience in designing integrated circuits or inductors.” Pet. 2–3. Petitioner also states that additional education might compensate for less experience and vice versa. Pet. 3 (citing Ex. 1003 ¶ 58). Patent Owner disputes Petitioner’s description of the level of ordinary skill and states that a person of ordinary skill “would have had a bachelor’s 6 US 2005/0077992 A1; published Apr. 14, 2005. Ex. 1008. 7 US 2001/0030591 A1; published Oct. 18, 2001. Ex. 1009. 8 Brooks, Douglas, “Signal Integrity Issues and Printed Circuit Board Design,” Prentice Hall Modern Semiconductor Design Series (2003). Ex. 1010. degree in electrical engineering, physics, or a similar discipline, and either a master’s degree in one of these fields of study or a minimum of two years of experience working in the wireless communications industry.” Prelim. Resp. 15–16 (citing Ex. 2002 ¶ 24). On the current record, Patent Owner’s reference to “experience working in the wireless communications industry” (Prelim. Resp. 16; Ex. 2002 ¶ 24) appears potentially overbroad, as compared to Petitioner’s reference to “experience in designing integrated circuits or inductors” (Pet. 2–3), which appears to better reflect the subject of the ’430 patent and asserted prior art. At this stage, we apply Petitioner’s articulation of the level of ordinary skill in the art, but our Decision would not change under Patent Owner’s articulation. See Ex. 2002 ¶ 25 (Dr. Prucnal stating that his opinions would not change under Petitioner’s proposed articulation).” slip op. at 7
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,151,430 - Cisco Systems, Inc. v. Orckit CorporationSome claims unpatentablePTAB · Oct 8, 2024 · IPR2023-00714 · APJ Brent M Dougal · IPR · Final written decision
Claims 1–5, 7–16, 18–22, and 24–26 are unpatentable as obvious over Vink and Patrick, with or without AAPA; claims 6, 17, and 23 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art (“POSA” or “POSITA”) would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent training, or approximately two years of experience working in the field of information technology and networking . . . . Lack of professional experience can be substituted by additional education, and vice versa. Pet. 12 (citing Ex. 1003 ¶¶ 59–60). “Patent Owner does not dispute Petitioner’s proposed level of ordinary skill.” PO Resp. 19. We are persuaded that Petitioner’s proposal is consistent with the problems and solutions addressed in the ’904 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Patent Owner argues “that ‘subscriber lines’ should be construed as ‘communication lines to users of subscription-based network services.’” Id. Petitioner does not dispute this construction directly, but rather argues that no construction is necessary. Reply 6. We determine that no terms need to be construed. 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Here however, we have found that it was known to connect LANs to external networks. See Ex. 1014, 6:23–28, Fig. 1; Ex. 1015, 1:6–9; Ex. 1016, 1:22–25; Ex. 1017, 1:7–11. We further agree with Petitioner’s uncontested point that “[t]echniques to further allow the communication system to access external networks by connecting the master to an external network were well-known in the art, as evidenced by Patrick and/or AAPA.” Pet. 24 (citing Ex. 1003 ¶¶ 74–88). The Petition focusses on combining the “communication systems” of Vink, Patrick and/or AAPA, as opposed to relying on a particular type of LAN. Thus, in contrast to Forest Lab’ys, we determine that the general or “generic” benefit of providing “access to a wider array of information,” where it was already known to provide external network access (e.g., the internet) to LANs,5 does provide a motivation to combine Vink and Patrick, with or without AAPA. See Intel Corp. v. Pact XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023) (“There is a motivation to combine when a known technique ‘has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way.’” (quoting KSR, 550 U.S. at 417)).” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Patent Owner also argues that Vink “teaches against” hierarchical addressing because “doing so would eliminate the purported advantages associated with using a non-hierarchical system.” PO Resp. 36 (citing Ex. 2005 ¶ 69 (Patent Owner’s declarant making the same statement)). Patent Owner does not further discuss the reasoning behind this statement, identify the “purported advantages,” or even identify the relevant disclosure relied on in Vink. We decline to speculate as to Patent Owner’s position in this regard. We further note that “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).” slip op. at 19
Patent outcomesUS 6,680,904 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,680,904 - BTL Industries, Inc. v. Inmode Ltd.InstitutedPTAB · Oct 2, 2024 · IPR2024-00703 · APJ Robert A Pollock · IPR · Institution
The Board instituted IPR of claims 1–58 on all petition grounds, finding a reasonable likelihood that at least one claim would have been obvious over Edwards, Ingle, and Mosher.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 314. An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Further, a decision to institute may not do so on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art in the field of the ’511 patent would have had “a medical degree plus at least two years of experience in a field such as gynecology, urogynecology, or plastic surgery involving female genital anatomy, with clinical experience in the application of radiant energy to female genital tissue.” Ex. 1009, 8–9; Ex. 1010, 8. Petitioner here proposes a similar definition, specifically, “a medical doctor . . . [with] at least three years of experience in the non-surgical treatment of uro-gynecological conditions and/or the non-surgical cosmetic treatment of female genital tissues.” Pet. 6. Absent evidence or argument to the contrary, we apply Petitioner’s proposed definition, as it appears consistent with the prior art and is supported by the presently unopposed testimony of Dr. Berenholz. See Okajima v. Bourdeau, 261 F.3d 1350, 1355, (Fed. Cir. 2001) (the level of ordinary skill in the art may be reflected in the prior art itself); Ex. 1003 ¶¶ 28–31, 58–60.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“With respect to the challenged claims, Petitioner asserts that “no claim term requires construction—all terms should receive their ordinary and customary meaning in view of the patent specification.” Pet. 7 (citing Ex. 1003 ¶ 61). Accordingly, Petitioner contends that formal constructions are unnecessary. Id. (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. 2017) (explaining that only those terms need be construed “that are in controversy, and only to the extent necessary to resolve the controversy.”)). Petitioner, nevertheless, succinctly reviews the preliminary construction of certain terms of the ’511 patent claims in the ThermiGen IPRs, and the construction by the District Court in Viveve. See Pet. 8–11. We note first that, whereas these two sets of prior constructions may differ in focus or scope, we do not view them as in conflict. And although the preliminary constructions in the ThermiGen IPRs were conducted under the then-applicable broadest-reasonable-interpretation (BRI) standard, we are not presently aware of any reason that those definitions would differ under the Phillips standard, and we provisionally apply them here for clarity. And while we recognize that the Viveve constructions are not binding on this proceeding, the district court’s definitions are instructive and generally complementary to ThermiGen IPR constructions. Accordingly, we also provisionally apply them here for clarity. Although none of these terms are presently in dispute, we find it useful to clarify the meanings we apply at this stage of the proceeding. The parties are, of course, welcome to address the construction of any claim term at trial.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Mosher, and Ingle with a reasonable expectation of success of arriving at the claimed invention because 1) “loose vaginal or vulval tissue was a known problem facing women at the time,” 2) “Edwards, Mosher, and Ingle are all directed to methods for the non-invasive treatment of female uro-genital conditions, for therapeutic and/or cosmetic reasons,” and 3) each of the cited references teaches the application of radiant energy, including RF, to heat and denature collagen, thereby tightening and remodeling the affected tissues. See generally, Pet. 22–24; Ex. 1003 ¶¶ 84–91. More specifically, Petitioner relies on Edwards as providing general teachings of a non-invasive treatment using RF energy, and looks to Mosher and Ingle for details regarding parameters, techniques, and the physiological mechanism underlying heat-mediated collagen remodeling of female genital tissue. See Pet. 23. According to Petitioner, the asserted “combination is merely applying known techniques (Mosher/Ingle’s treatment methods) to a known method ready for improvement (Edward’s treatment method) to yield the predictable result of tightening via collagen denaturation.” Id.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,961,511 - Vicor Corporation v. Delta Electronics, Inc.Institution deniedPTAB · Oct 2, 2024 · IPR2024-00706 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution on all challenged claims and grounds because Petitioner did not show a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“The Board has indicated that “one petition should be sufficient to challenge the claims of a patent in most situations.” Consolidated Trial Practice Guide 59 (Nov. 2019) (“CTPG”).6 But “the Board recognizes that there may be circumstances in which more than one petition may be necessary.” Id. Here, although there is overlap in the prior art asserted, there are clear differences in the limitations in the respective claim sets in each case, which requires different analysis. The issues related to a potentially different priority date for claims in the -715 case also support the need for two petitions. Additionally, under these circumstances, it is not apparent there has been a substantial benefit afforded to Petitioner by filing two petitions. Thus, we determine that Petitioner’s filing of two parallel petitions does not weigh in favor of exercising our discretion to deny institution in this particular case.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not challenge Petitioner’s definition of a person of ordinary skill in the art and its definition appears to be similar to that of Petitioner’s definition. Prelim. Resp. 10. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’534 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “[t]he invalidity issues raised in this Petition may be resolved without any formal claim construction.” Pet. 3. Patent Owner offers no claim construction. Prelim. Resp. 9–10. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,877,534 - Vicor Corporation v. Delta Electronics, Inc.Institution deniedPTAB · Oct 2, 2024 · IPR2024-00704 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because neither Ground 1 nor Ground 2 showed a reasonable likelihood of proving any challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“An inter partes review may not be instituted unless it is determined that “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). For the reasons below, we determine the information presented in the Petition does not show a reasonable likelihood that Petitioner will prevail in showing the unpatentability of at least one claim of the ’580 patent, and we do not institute inter partes review.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“interpretations are appropriate. Controlling law requires construing claims in an inter partes review using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b) (2021). “In determining the meaning of [a] disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc)). The Petition does not even purport to apply this controlling law with its Ground 1. In fact, Petitioner acknowledges that its Ground 1 does not apply a “proper” claim construction, describing Ground 1 in contrast to Ground 2 as follows: “Ground 1 is essentially based on what we read their infringement contentions to be, . . . Ground 2 [applies] what we view as the proper construction of the patent.” Ex. 1022, 7:17–8:16. Accordingly, based on this record, we determine Petitioner has not supported the claim interpretations on which its Ground 1 relies, and Petitioner therefore has not shown a reasonable likelihood that it would prevail in its challenge asserted as Ground 1.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“But Petitioner states that in the combination presented in Ground 2, “a skilled artisan would have set the current limit threshold based on the current-handling capability of the VTM to protect the VTM from over-current.” Pet. 49–50. “In this circumstance, the PRM would never reach an over-current condition. Rather, the PRM would operate within its normal range.” Pet. 50 (citing Ex. 1003 ¶ 144) (emphasis added). But Petitioner’s description of the proposed combination—in which “the PRM would never reach an over-current condition”—cannot be reconciled with Petitioner’s showings for the “over-current” limitations, which require, e.g., “when the resonant converter generates the over-current” (limitation [1c]). For example, for limitation [1c], Petitioner states “when the VTM exceeds its normal operating current, the PRM (with a duty cycle current limiter as taught by Hwang) would reduce its duty cycle, which would reduce its output voltage and output current, and thus reduce the input voltage and current to the VTM.” Pet. 55–56 (citing Ex. 1003 ¶ 158). But Petitioner and its declarant both state that in the combination proposed in Ground 2, “the PRM would never reach an over-current conduction.” Pet. 50; Ex. 1003 ¶ 144; see Pet. 59 (addressing similar language in limitation [1c]), 61 (addressing limitation [13c]), 63 (addressing limitation [17d]). Petitioner does not explain how those positions can be reconciled, nor does Petitioner adequately explain, much less support, a claim interpretation that would be satisfied by a proposed combination in which the resonant converter never generates an over-current. Accordingly, we determine Petitioner has not shown a reasonable likelihood that it would prevail in the challenges presented as Petitioner’s Ground 2.” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner contends a person of ordinary skill would have had “(1) at least a bachelor’s degree in electrical engineering or a related field, and (2) at least two years of industry experience in the field of power engineering.” Pet. 11 (citing Ex. 1003 ¶¶ 41–42). Patent Owner does not specifically address the level of ordinary skill. At this stage, Petitioner’s proposal appears consistent with the problems and solutions in the ’580 patent and prior art of record and is supported by expert testimony. We note, however, that the open-ended language “at least” expands the ranges of education and experience indefinitely with no upper bound. Upon this preliminary record and for the purposes of institution, we adopt Petitioner’s definition of the level of skill with the exception that we delete the words “at least.”” slip op. at 6
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,711,580 - Vicor Corporation v. Delta Electronics, Inc.Institution deniedPTAB · Oct 2, 2024 · IPR2024-00715 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution because Vicor had not shown a reasonable likelihood of prevailing on any challenged claim over the asserted grounds.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“The Board has indicated that “one petition should be sufficient to challenge the claims of a patent in most situations.” Consolidated Trial Practice Guide 59 (Nov. 2019) (“CTPG”).7 But “the Board recognizes that there may be circumstances in which more than one petition may be necessary.” Id. Here, although there is overlap in the prior art asserted, there are clear differences in the limitations in the respective claim sets in each case, which requires different analysis. The issues related to a potentially different priority date for claims in this case also support the need for two petitions.8 Additionally, under these circumstances, it is not apparent there has been a substantial benefit afforded to Petitioner by filing two petitions. Thus, we determine that Petitioner’s filing of two parallel petitions does not weigh in favor of exercising our discretion to deny institution in this particular case.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had (1) at least a bachelor’s degree in electrical engineering or a related field, and (2) at least two years of industry experience in power engineering” as of the date of the invention and that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Pet. 3–4 (citing Ex. 1003 ¶¶ 47–48). 7 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. 8 We address the merits of the priority issue below. Patent Owner does not challenge Petitioner’s definition of a person of ordinary skill in the art and its definition appears to be similar to that of Petitioner’s definition. Prelim. Resp. 9. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’534 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “[t]he invalidity issues raised in this Petition may be resolved without any formal claim construction.” Pet. 3. Patent Owner offers no claim construction. Prelim. Resp. 9. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore do not institute inter partes review.” slip op. at 2
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,877,534 - PTAB · Oct 1, 2024 · IPR2024-00705 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–6 under all five grounds, finding a reasonable likelihood of unpatentability based on Zeng-014 and Vinciarelli-218.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant Petitioner’s request and institute an inter partes review of all challenged claims.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the first electronic component’ for the first connection part is a structural feature or relationship.” Prelim. Resp. 8 (citing Ex. 2001 ¶¶ 52–54). Here, claim 1 requires a structure in which the first connection part comprises a first terminal at one end coupled to a surface of a carrier such as a circuit board, and a second terminal at the other end attached to a surface of the first component, such that the first connection part has mechanical support of the first electronic component. See Ex. 1001, 15:31–37. We are persuaded by Patent Owner’s contention that “this claim language connotes sufficient structural characteristics that preclude a product-by-process.” Prelim. Resp. 9.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“B. Principles of Law To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). There is no requirement that the prior art must use the same words to describe a claim element in order to teach or disclose that claim element. Identity of terminology is not required for a claim element to be anticipated by the prior art without resorting to obviousness. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The Federal Circuit has repeatedly warned that there has to be evidence of “glue” to make this specific combination, and not just the use of the claim as the roadmap for making the combination of prior art. See, e.g., InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1348–49 (Fed. Cir. 2014) (“Dr. Yanco’s testimony was nothing more than impermissible hindsight; she opined that all of the elements of the claims disparately existed in the prior art, but failed to provide the glue to combine these references.”). Here, Petitioner’s alleged motivations to modify the modules Vinciarelli-218 to use the “connection part by curving a piece of metal against an electronic component” of Zeng-014 (Pet. 69) reflect impermissible hindsight bias.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,819,263 - PTAB · Sep 27, 2024 · IPR2024-00650 · APJ Deborah Katz · IPR · Institution
The Board instituted IPR of claims 1–38 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Director determines 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(a). We determine whether to institute an inter partes review on behalf of the Director. See 37 C.F.R. § 42.4(a).” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“determined to be microsatellite instability high or DNA mismatch repair deficient were placed into a study arm and then treated with pembrolizumab. (See Ex. 1005, Ex. 1003 ¶¶ 60–73.) Because treatment of the patients was performed only after MSI-H status was determined, the MSI-H Study Record teaches treating the patients “in response to” determining their MSI- H status.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“have been expected, Petitioner cites to Brown as teaching that PD-1 inhibitors are inherently more effective when treating tumors comprised of cells that are easy for immune cells to recognize. (See Pet. 41 (citing Ex. 1034, 747).) Petitioner argues further that Duval teaches that MSI-H cancers have cells that are easy for immune cells to recognize. (See Pet. 41 (citing Ex. 1087, 5002).) Dr. Neugut’s testimony supports Petitioner’s argument that the cited teachings of Brown and Duval, as well as other references, would have motivated a person of ordinary skill in the art to obtain the results of the MSI-H Study Record. (See Ex. 1003 ¶¶ 124, 130, 132; see Pet. 41.) Petitioner argues further that Brown and Duval would have motivated one of ordinary skill in the art to obtain the results of the MSI-H Study Record by treating patients with common types of MSI-H cancers, including endometrial, small bowel, and gastric cancers. (See Pet. 41 (citing Ex. 1003 ¶ 130).) Petitioner argues further that the state of the art, as demonstrated by Brown and Duval, as well as other references, would have provided one of ordinary skill in the art with a reasonable expectation of success because physicians were successfully treating patients with cancers that were known to be MSI-H with PD-1 inhibitors. (See Pet. 42 (citing Ex. 1003 ¶¶ 131, 132).)” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art relevant to the ’219 patent would have been a medical doctor or a professional in a related field with at least five years of experience with treating cancer. (See Pet. 11 (citing Neugut Decl., Ex. 1003 ¶19).) Petitioner argues further that the ordinarily skilled artisan would have experience in or access to a person with knowledge of clinical studies for therapeutics and how they work and to a pathologist with comparable experience. (See id.) Dr. Neugut’s testimony supports Petitioner’s arguments regarding the level of skill that an ordinarily skilled artisan in the relevant field would have. (See Ex. 1003 ¶ 19.) Accordingly, in the analysis below, and in the absence of argument by Patent Owner to the contrary, we apply the level of skill set forth by Petitioner and refer to Dr. Neugut’s testimony of what one of ordinary skill in the art would have understood at the time the application that became the ’491 patent was filed, which does not appear to be inconsistent with the level of skill reflected in the asserted prior art.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,634,491
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.