• Inductev, Inc. v. Witricity CorporationAll claims unpatentable
  PTAB · May 20, 2025 · IPR2024-00105 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–13 and 16 are unpatentable as obvious under § 103(a) over the stated Fells-based grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person of ordinary skill in the art “would have had . . . a bachelor’s degree in electrical engineering, microelectronics, or equivalent, and . . . two to three years of industry or research experience,” and “a higher level of education or skill might make up for less experience, and vice-versa.” Pet. 6 (citing Ex. 1003 ¶¶ 39–44). Patent Owner “does not disagree with Petitioner’s definition of the level of ordinary skill in the art,” but “does not believe that resolution of the Petition depends on the precise definition of the level of ordinary skill.” PO Resp. 12. Petitioner’s proposed articulation is supported by testimonial evidence and appears consistent with the types of problems and solutions in the ’184 patent. See Ex. 1001, 1:15–2:53. As it is uncontested, we adopt it for this decision.” slip op. at 5

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

    “The parties agree that the terms of the contested claims should be given their ordinary and customary meaning, but neither party argues that we should construe any claim terms explicitly. Pet. 6 (citing Ex. 1003 ¶¶ 62– 63); PO Resp. 12. We agree with the parties that, for this decision, we do not need to construe any of the terms explicitly. 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))). However, the meaning of certain terms are contested, including most notably “magnetic field sensor,” and we discuss those terms below in the context of the prior art.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached

    “Petitioner argues that, to the extent the preamble is limiting, Fells discloses the recited wireless energy transfer system, and that the system includes facilities to detect FOD. Pet. 8–9 (citing Ex. 1005 ¶ 191, Fig. 2; Ex. 1003 ¶¶ 66–71, 96–101). Patent Owner does not specifically contest Petitioner’s arguments. See PO Resp. We agree with Petitioner’s argument that Fells discloses the preamble; thus, we need not decide whether the preamble is limiting. See Ex. 1005 ¶ 191, Fig. 2.” slip op. at 11

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

    “We disagree with Patent Owner’s argument that the ordinary and customary meaning of “magnetic field sensor” refers to a device that measures only external magnetic fields. There is nothing in the claim language to suggest such a limitation: the plain language simply refers to a “magnetic field sensor,” without regard to how the sensor works or where it senses magnetic fields from. Ex. 1001, 12:16. In fact, the claim does not explicitly require sensing anything at all using the magnetic field sensor, merely reciting a “foreign object debris detection system” comprising the sensor and that the “foreign object debris detection system is configured to verify” the presence of FOD. The very general nature of how the magnetic field sensor is recited, without any explicit recitation of how its output may be used, undermines Patent Owner’s overly restrictive interpretation. Although the ’184 patent specification includes examples of measuring external magnetic fields to detect FOD, Patent Owner has not pointed to anything in the specification indicating an intent to restrict the term “magnetic field sensor” to only those sensors that measure external magnetic fields. Nor is there intrinsic evidence that an “eddy-current sensor” would not also be a magnetic field sensor, given that it senses magnetic fields. Indeed, as Petitioner persuasively argues, an eddy-current sensor still measures external magnetic fields—albeit magnetic fields generated within FOD through interaction with a powered sensor. Pet. 6–7; Ex. 1037 ¶¶ 14– 16, 25–29.” slip op. at 17

  Patent outcomesUS 10,027,184 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,027,184
• Inergy Technology, Inc. v. Force Mos Technology Co., Ltd.Some claims unpatentable
  PTAB · May 16, 2025 · IPR2024-00094 · APJ Mary C Hoffman · IPR · Final written decision

  Claims 1 and 3–5 are unpatentable over Kobayashi and Hshieh; claims 2 and 6 were not shown unpatentable over the asserted combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art (“POSITA”), “at the filing date of the ’409 [p]atent[,] would have a master’s degree in electrical engineering, and at least two years of relevant work experience in the field of integrated circuit design and manufacturing.” Pet. 13 (citing Ex. 1003 ¶ 52). Patent Owner does not dispute Petitioner’s proffered level of ordinary skill in the art. PO Resp. 9 (citing Ex. 2021 ¶ 55). We adopt Petitioner’s proffered level of ordinary skill in the art, which is supported by unopposed declaration testimony and consistent with the ’409 patent and prior art of record. See, e.g., Ex. 1001, 1:6–3:8 (describing the invention and related art in terms of integrated circuit design and fabrication). Neither party, moreover, indicates the overall result would change based on a different definition.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Based on the arguments and evidence, we disagree with Petitioner’s proposed construction requiring the corners to be rounded via a particular process, because doing so would improperly import a process of manufacture from the Specification into apparatus claims. See Cont’l Circuits LLC v. Intel Corp., 915 F.3d 788, 799 (Fed. Cir. 2019) (explaining that, generally, a novel product that meets the criteria of patentability is not limited to the process by which it was made, however, process steps can be treated as part of a product claim if the patentee has made clear that the process steps are an essential part of the claimed invention). Here, the portions of the Specification relied on by Petitioner (Ex. 1001, 2:10–20, 4:53–64) disclose a process for manufacturing but do not make clear that the process is an essential part of the claimed invention. We also disagree with Petitioner’s assessment of the prosecution history, i.e., that the claims were amended to distinguish the claimed rounded corners from Pfirsch’s rounded corners, which, presumably, are formed as an incidental result of lithography. On the contrary, the Examiner found (and Patent Owner acknowledged) that Pfirsch has rounded corners. Ex. 1002, 276, 295, 302. As Patent Owner correctly points out, the claims were amended during prosecution to include a “circular” contact to distinguish over Pfirsch’s square contact. See id. Petitioner does not otherwise point to evidence that Patent Owner clearly and unmistakably limited the claim scope to rounded corners formed by a particular process.” slip op. at 12

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

    “is ‘known’ is not sufficient for a motivation to combine.” PO Resp. 47. However, the motivation-to-combine analysis is a flexible one, and the “known-technique” rationale is adequate to show a motivation to combine. For example, “if a 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, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417; see also Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (quoting Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 799–800 (Fed. Cir. 2021) (“If there’s a known technique to address a known problem using ‘prior art elements according to their established functions,’ then there is a motivation to combine.”). Here, as discussed above, the record shows that top view rounding was a known technique to eliminate corners, and that corners were a known problem (e.g., corners tend to reach undesirable higher peak electric field leading to premature breakdown voltage). See, e.g., Ex. 1003 ¶¶ 37, 39, 42– 44, 55–57, 122, 133, 135–141; Ex. 1005, 7:57–8:4; Ex. 1006, 1:18–21, 2:19–39, 5:3–17, Figs. 6A–8B; Ex. 1011, 1:29–41; Ex. 1012; PO Resp. 13, 46 (citing Ex. 1011, 1:34–40); Ex. 2021 ¶ 87. Furthermore, there is no dispute that modifying Kobayashi to eliminate corners via top view rounding was anything more than a “minor and commonplace modification” of cell shape within the skill of an ordinary artisan, or that top view rounding would change Kobayashi’s established function. Pet. 60; Ex. 2021 ¶ 86.” slip op. at 30

  • Obviousness (§103) › KSR rationalesMotivation foundUnpatentable

    “We agree that Kobayashi’ s Figure 5A solely cannot be relied upon as disclosing the claimed diameter. See Hockerson-Halbertstadt, Inc. v. Avia Group Int'l, 222 F.3d 951, 956 (Fed. Cir. 2000) (patent drawings not designated as being drawn to scale cannot be relied upon to define precise proportions of elements if the specification is completely silent on the issue). However, we do not agree that Petitioner failed to show Kobayashi suggests the recited diameter. We disagree with Patent Owner’s assertion that Dr. Liu’s “vague, purported ‘design considerations’” are “unsupported.” PO Resp. 43. Although Kobayashi is silent on the width/diameter of the trench contact in Figure 5A, Kobayashi discloses trenched gates having dimensions below 0.5 μm, which demonstrates that it was known in the art, and required no more than an exercise of ordinary skill in the art, to create trenched features of widths well below 1 μm. Kobayashi also discloses that the width of each trench, and the distance between the adjacent trenches (which includes the trench contact), must be selected to optimum sizes . . . [and] these sizes . . . have some degrees of freedom.” Ex. 1005, 7:42–48. This demonstrates a POSITA would seek to optimize trench contact width or diameter. Dr. Liu’s testimony regarding design considerations suggests the desirability of a reduced diameter trench contact, e.g., to minimize the width of the trench contact for purposes of easier filling, to minimize the total width of the unit cell, and to minimize manufacturing time by reducing etch back time. See Ex. 1003 ¶¶ 111–114. As Patent Owner acknowledges, “there is always a motivation to speed up the fabrication process or shrink feature sizes of semiconductors.” PO Resp. 43 (citing 2021 ¶ 131). However, contrary to Patent Owner’s arguments, these are not generic motivations “untethered” from Kobayashi. Id. Indeed, Kobayashi directly addresses the fabrication process (including new techniques to obtain trench widths under 0.5 μm) and the need to optimize the size of trench gates and the space in between (which includes the trench contact). Ex. 1005, 7:43–54, 7:19–9:53. Patent Owner also argues that Petitioner presents no evidence that modifying Kobayashi to have a diameter smaller than 1 μm is predictable. PO Resp. 44. We disagree. As discussed above, Petitioner points to Kobayashi’s teachings that the sizes are to be optimized and that the trench gate width is smaller than 0.5 μm, which suggests making other trench features of that width was within ordinary skill. Ex. 1003 ¶ 112. Furthermore, Kobayashi’s silence as to the dimensions of the trench contact suggests that the trench contact diameter dimension is likely in the ballpark of the other explicitly disclosed trenched feature dimensions and is a matter of routine optimization. In addition, Patent Owner advances no persuasive evidence that the claimed diameter produces unexpected results or is otherwise critical. Patent Owner also argues that reducing trench contact diameter has downsides (i.e., reduced ease of filling for metal plugs and reduced current carrying capacity) not addressed by Petitioner; however, Petitioner is not required to address those tradeoffs in its Petition, and we do not see how those tradeoffs would prevent the proposed combination. PO Resp. 44; see Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.”); Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). Here, Dr. Liu listed numerous benefits of having a reduced diameter, which weigh against the potential downsides raised by Patent Owner. Ex. 1003 ¶¶ 111–114. Moreover, we do not see how the downsides/tradeoffs prevent modifying Kobayashi in the manner suggested when the same tradeoffs appear to be applicable to the ’409 patent. Having considered Patent Owner’s arguments, and taking into” slip op. at 43

  Patent outcomesUS 7,812,409 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,812,409
• Inergy Technology, Inc. v. Force Mos Technology Co., Ltd.No claims unpatentable
  PTAB · May 16, 2025 · IPR2024-00093 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1–9 were not proven unpatentable because the asserted references did not establish the claimed epitaxial layer or the required coverage of the trench sidewalls.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner defines a person of ordinary skill in the art as having “a Master’s degree in electrical engineering, and at least two years of relevant work experience in the field of integrated circuit design and manufacturing.” Pet. 13 (citing Ex. 1003 ¶¶ 32–37, 57). Patent Owner does not dispute Petitioner’s definition. PO Resp. 6. We adopt Petitioner’s proposed definition of the level of ordinary skill in the art because it is supported by unopposed declaration testimony and appears to be consistent with the disclosures of the ’634 patent and the asserted prior art references. See Ex. 1001, 1:6–2:33 (describing the invention and related art in terms of integrated circuit design and fabrication); see also Ex. 1006 ¶¶ 1–6 (Hirler); Ex. 1008 ¶¶ 1–37 (Kobayashi); Ex. 1009 ¶¶ 2–29 (Shiraishi). Neither party, moreover, indicates the overall result would change based on a different definition.” slip op. at 7

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

    “Petitioner argues that “the sidewalls of said trenches in said base layer are covered” should be construed to mean that “the entire sidewalls of” those trenches are covered. Pet. 18–19. We refer to this as “the sidewall limitation.” Petitioner shows persuasively that the disclosure and file history of the ’634 patent support its position on the sidewall limitation. Id. Patent Owner, for its part, observes that, after the filing of the Petition. two District Courts adopted the construction proposed by Petitioner.” PO Resp. 21 (citing Ex. 2010, 6–9; Ex. 2011, 23). Patent Owner also agrees to apply Petitioner’s construction for purposes of this proceeding. Id. We agree with Patent Owner that an express construction of the sidewall limitation is necessary to this Decision, id., and adopt Petitioner’s undisputed definition because it is supported by the record. No other claim term requires express construction for purposes of this Decision.” slip op. at 8

  • BurdenNot shown unpatentable

    “On this record, Petitioner fails to demonstrate that any claim is unpatentable under any ground asserted in the Petition. IV. CONCLUSION For the above reasons, we determine that Petitioner fails to establish by a preponderance of the evidence that claims 1–9 of the ’634 patent are unpatentable.” slip op. at 34

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Alternatively, even if we set aside that timing issue, Dr. Liu’s bare opinion, advanced for the first time during cross-examination, that an epitaxial layer is “obvious” from Hirler’s disclosure is inadequate to support the challenges. Id. at 24–25. We accord little weight to Dr. Liu’s opinion because it is conclusory. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). In any event, Petitioner does not meet, on this record, the “high standard” required to establish an inherent disclosure of an epitaxial layer in Hirler. PO Resp. 24.6 Dr. Liu opined for the first time during cross-examination “that it would have been impossible to create Hirler’s more lightly doped n- drift zone layer on top of its more heavily doped n+ substrate layer other than via epitaxy.” Id. at 25 (citing Ex. 2014, 164:16– 165:20). But Patent Owner effectively refutes that proposition with evidence that such a layer “could be created by counter-doping,” even if, as Dr. Liu contends, counter-doping may have been less ideal due to “disadvantageous mobility.” Id. (citing Ex. 2012 ¶ 133; Ex. 2014, 166:15–167:8).” slip op. at 11

  Patent outcomesUS 7,629,634 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,629,634
• Inductev, Inc. v. Witricity CorporationSome claims unpatentable
  PTAB · May 16, 2025 · IPR2024-00140 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1, 7–10, 12–16, 18, and 19 are unpatentable over the stated grounds; claims 4–6 were not shown unpatentable because the proposed multi-coil alignment lacked prior-art support.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person of ordinary skill in the art “would have had . . . a bachelor’s degree in electrical engineering, microelectronics, or equivalent and . . . two to three years of industry or research experience in the field of wireless energy transfer,” and that “a higher level of education or skill might make up for less experience, and vice-versa.” Pet. 6 (citing Ex. 1003 ¶¶ 39–44). Patent Owner does not contest this. See PO Resp. Petitioner’s proposed articulation is supported by testimonial evidence and appears to be consistent with the types of problems and solutions in the ’654 patent. See Ex. 1001, 1:15–28. We adopt it for this decision.” slip op. at 7

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

    “We agree with Petitioner that the evidence does not suggest (and Patent Owner does not explicitly argue) that the terms “transmitting antenna” and “receiving” antenna depart from the ordinary and customary meanings of those terms. Pet. 1–2. However, for the reasons discussed below, the outcome of our decision would be the same whether we adopted Petitioner’s or Patent Owner’s proposed construction. Thus, we need not adopt either party’s proposed construction for this decision. 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 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for patent owner

    “spaced configuration are not confined to ferrite cores 32 and 3, and that at least a component of the flux lines will escape the cores. See Ex. 1032 ¶¶ 48–52; Ex. 1038 ¶ 54 Fig. 2. Indeed, the evidence suggests (and Dr. Horenstein acknowledges in his first declaration) that at least a component of flux will escape the core of even a traditional transformer. See Ex. 1032 ¶¶ 45–47; Ex. 1044, 6; Ex. 2001 ¶ 27. In his second declaration, Dr. Horenstein provides contrary testimony that in Odachi’s open configuration during alignment, cores 32 and 3 “act to confine or guide the magnetic flux lines, rather than radiate them into free space,” and “the flux lines would [not] leave the gap area and enter into the space distal to the magnetic circuit.” Ex. 2010 ¶ 69. But in view of Dr. Horenstein’s contrary position in his first declaration, and the lack of supporting evidence in his second, we do not find it credible. 37 C.F.R. § 42.65(a) (2022) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Apple Inc. v. MPH Techs. Oy, 28 F.4th 254 (Fed. Cir. 2022).” slip op. at 24

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “(4) Analysis We are persuaded by Petitioner’s argument that during the alignment process in Odachi corresponding to claim 13, there is a “spaced distance between the primary inductive coupler [230] and the secondary inductive receptacle 2” which is “reduced gradually and electromagnetic induction occurs between the coupler to the receptacle when the former coupler comes close to the latter receptacle.” Ex. 1005, 6:1–6. Thus, prior to any contact or precise alignment between the two cores, “an electromotive force is induced in the secondary coil 4 and this induced force is increased with the decrease in the spaced distance.” Id. at 6:6–8. At least in that spaced configuration, the evidence of record suggests that primary coil 31 produces a near-field component of flux into free space (the air space between the coils where there is no intervening core material) that is intercepted by secondary coil 4 to effect resonant inductive coupling, and that secondary coil 4 intercepts and receives the near-field component of flux in free space that is generated by primary coil 31 to effect resonant inductive coupling. See Ex. 1032 ¶¶ 48–52, 55. Thus, we find that Odachi discloses a “transmitting antenna” (coil 31) and a “receiving antenna” (coil 4) under Patent Owner’s proposed construction. We would reach the same finding under Petitioner’s proposed broader construction because the evidence suggests that Odachi’s coils 31 and 4 would have been considered “antennas” under the parties’ uncontested definition of that term, which is “a device that radiates and/or receives radio waves.” See id. ¶¶ 43–47, 53–54; Ex. 1032 ¶ 15 (Dr. Allen agreeing with this definition of “antenna”); Ex. 2001 ¶ 25 (Dr. Horenstein agreeing with this definition of “antenna”)). In addition, Petitioner persuasively shows that the free space between Odachi’s coils in the spaced configuration includes the “near-field region,” which includes the induction field around primary coil 31. See Ex. 2006, 498; Ex. 1045, 5:4–7; Ex. 1032 ¶¶ 53–54). Dr. Horenstein’s testimony does not contradict this. Although he points out that there are separate terms for inductive, near, and far fields, he also acknowledges that “[t]he region of space closer to the antenna than the far field is the near-field region.” Ex. 2010 ¶ 37 (citing Ex. 2006, 275).8” slip op. at 22

  Patent outcomesUS 8,466,654 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,466,654
• Trove Brands, LLC v. Camelbak Products, LLCInstitution denied
  PTAB · May 7, 2025 · IPR2024-01501 · APJ Linda E Horner · IPR · Institution

  The Board denied institution because Trove did not show a reasonable likelihood of proving claims 1, 2, 5, 6, 8, 9, 15, 16, or 21 obvious over the asserted prior art.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition and the preliminary response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we deny the Petition and do not institute an inter partes review of claims 1, 2, 5, 6, 8, 9, 15, 16, and 21 of the ’028 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner argues that a POSITA would have “a bachelor’s degree in mechanical engineering or the equivalent coursework and approximately one year of experience with liquid-containing devices, with more work experience substituting for less education and vice versa.” Prelim. Resp. 23 (citing Ex. 2001 ¶¶ 56–65). Patent Owner also states that it “discerns no material difference between the definitions provided by the parties for purposes the Board’s decision on whether to institute this proceeding.” Id. We agree that there appears to be no material difference in the parties’ definitions of the level of ordinary skill in the art. For the purposes of this Decision, we apply Petitioner’s definition of the level of ordinary skill in the art. We determine that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’028 patent, based on our review of the limited record. Moreover, the prior art itself may be sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not” slip op. at 11

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “as a means-plus-function limitation under 35 U.S.C. § 112, sixth paragraph, because “mechanism” is a nonce word for performing the claimed function without reciting structure for performing that function, and a POSITA would not have understood the term to have “a sufficiently definite meaning as the name for a structure that performs the claimed function.” Pet. 16–17 (citing Ex. 1003 ¶ 39). For claim 1, Petitioner identifies two distinct structures described in the ’028 patent that correspond to the claimed “user release mechanism” for performing the claimed functions. Id. at 34. Specifically, Petitioner asserts that the ’028 patent describes a first embodiment in which the corresponding structure includes sliding member 238, and its component parts. Id. at 34– 35 (citing Ex. 1001, 12:50–13:25, 13:29–33). In the second embodiment, the corresponding structure includes user engagement portion 260 on rigid collar 170. Id. at 35–36 (citing Ex. 1001, 13:40–54). Petitioner does not separately address the structure corresponding to the “user release mechanism” as recited in claim 21. Id. at 53‒54 (relying on the same arguments presented for unpatentability of claim 1). court issued a claim construction order in the parallel litigation construing the term “user release mechanism” as a means-plus-function limitation under § 112, sixth paragraph. Prelim. Resp. 23 (citing Ex. 2002, 12–15). The district court ruled that the corresponding structure for claim 1 includes “[s]liding member 238, including its component parts,” or “[u]ser engagement portion 260.” Ex. 2002, 15. For claim 21, the district court ruled that the corresponding structure includes “[s]liding member 238, including its component parts” or “[u]ser engagement pad 240, planar portion 242, tabs 244, collar engagement portion 254, depression 256.” Id. at 17. Patent Owner indicates that, “[f]or purposes of this proceeding only,” it does not dispute that the claimed user release mechanisms are means-plusfunction limitations, and it does not dispute the corresponding structure identified by Petitioner, even though the district court did not specifically identify engagement portion 260 as corresponding structure for claim 21. Prelim. Resp. 25 (citing Ex. 2002, 15–19). Although Patent Owner does not dispute Petitioner’s proposed interpretation of the “user release mechanism,” because claim interpretation is a matter of law and the dispositive issue in this Decision turns on the interpretation of this claim limitation, we address it in this Decision. We agree with the parties that the “user release mechanism” elements recited in claims 1 and 21 are means-plus-function limitations governed by § 112, sixth paragraph. See 35 U.S.C. § 112 ¶ 6 (“An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”). “means,” it uses the nonce word “mechanism” without reciting structure for performing the functions recited in the claims. See Williamson v. CitrixOnline, LLC, 792 F.3d 1339, 1350 (Fed. Cir. 2015) (“Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word “means” because they ‘typically do not connote sufficiently definite structure’ and therefore may invoke § 112, para. 6.”).” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “[U]nder § 112, ¶ 6 equivalence, functional identity is required” and “[s]tructural equivalence under § 112, ¶ 6 is met only if the differences are insubstantial, that is, if the assertedly equivalent structure performs the claimed function in substantially the same way to achieve substantially the same result as the corresponding structure described in the specification.” (citing Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1308 (Fed. Cir. 1998)). Here, Petitioner states that Kiyota’s lock release buttons 40 “perform the claimed function in the same way to achieve the same result” as the ’028 patent’s sliding member 238, and its component parts (Pet. 37) without providing sufficient supporting explanation or evidence. Petitioner explains only that the two structures operate in “substantially the same way” by a user pressing an element that that slides towards the mouthpiece assembly to disengage the catch structures. Id. at 37–38 (citing Ex. 1003 ¶ 89). The Petition does not discuss any of the differences between Kiyota’s structure and the ’028 patent’s structure or provide an explanation of why these differences are insubstantial. Indeed, as Patent Owner persuasively explains, there are notable differences in the “way” the two structures perform the claimed function and the “result” they achieve. See Prelim. Resp. 39–40 (discussing the ’028 patent’s one-finger operation and indirect catch disengagement, versus Kiyota’s two-finger operation and direct catch disengagement). Moreover, the analysis in Dr. Vallee’s declaration substantially parallels the discussion in the Petition and does not provide any additional explanation or evidence to show that the differences between the “way” the two structures operate or the “result” they achieve are insubstantial. Compare Ex. 1003 ¶¶ 85–91, with Pet. 34–38. For these reasons, Petitioner fails to show sufficiently that Kiyota discloses an equivalent structure to the structure described in the ’028 patent corresponding to the “user release mechanism” recited in claim 1. Accordingly, Petitioner has not met its burden to show a reasonable likelihood that claim 1 is unpatentable as obvious over Kiyota. slip op. at 23

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,782,028
• Catalyst Orthoscience Inc. v. Shoulder Innovations, Inc.Institution denied
  PTAB · Apr 24, 2025 · PGR2025-00001 · APJ James A Tartal · PGR · Institution

  The Board denied institution of post-grant review of claims 1–22, exercising its discretion under § 324(a) based on the Fintiv factors.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “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. Fintiv 5−6. We consider these 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.” Id. at 6. In” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “parties, we do not find the merits to be particularly strong on the current record. For example, limitation [1-4] recites, in part, “a locking nut having . . . an external thread on an outside surface of the locking nut.” Ex. 1001, 9:46–47. In alleging obviousness based in part on Orphanos, Petitioner equates the claimed “locking nut” to Orphanos’s collet 230 in a first embodiment of Orphanos, or Orphanos’s collet portion 1052 in a second embodiment of Orphanos. Pet. 37–38. Petitioner acknowledges that the collet and collet portion do not have external threads, but rather are designed to have a snap-fit engagement with the inner sidewall of the baseplate’s central throughbore. Id. at 38. Petitioner argues that modifying the collet and collet portion to have external threads would have been obvious to the skilled artisan in view of Orphanos’s teachings and the knowledge of a person having ordinary skill in the art. Pet. 38–42 (arguing, inter alia, that it would have been “a substitution of a known part for a known problem” and “obvious as a matter of design choice”). Petitioner does not allege that replacing the snap-fit coupling with external threads would either: (1) result in any advantages; or (2) preserve any of Orphanos’s stated benefits of its snap-fit arrangement. See Pet. 34–37. That Petitioner describes no advantages to making its proposed modification potentially undermines Petitioner’s case that the skilled artisan would have done so. Cf. Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”).” slip op. at 16

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANot reached

    “Petitioner’s arguments regarding the central post and locking nut include an implicit claim construction argument that these components need not be separate structures. Pet. 74, 76–81. Patent Owner, on the other hand, would have us interpret the claim to require that they be separate structures. Patent Owner raises credible evidence to support its theory. Specifically, Patent Owner directs us to the language of claim 1, which separately recites “a central screw” and “a locking nut.” Prelim. Resp. 51; see Ex. 1001, 9:44–53. Patent Owner further contends, in view of the claim language, that the claimed central post and locking nut are separate and distinct components. According to Patent Owner, however, Lefebvre’s main head and anchor rod portions are parts of a single monolithic anchoring screw. Prelim. Resp. 53–58. Where a claim lists elements separately, there is a rebuttable presumption that these elements have separate and distinct physical structures. See Google LLC v. EcoFactor, Inc., 92 F.4th 1049, 1058 (Fed. Cir. 2024) (citing Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1231–1232 (Fed. Cir. 2011)). The presumption may be rebutted by the intrinsic record. Id. At this stage, however, Petitioner does not address that claim 1 appears to separately recite a central post and a locking nut, and does not direct us to any portion of the intrinsic record that might rebut the presumption that these elements are, therefore, separate and distinct structures. See Pet. 73–77. Petitioner also argues that the claim terms “baseplate central channel” and “central channel . . . configured to interface with the baseplate” are indefinite. Pet. 95–102. Patent Owner argues that the plain and ordinary meaning of the terms is clear and that Petitioner “had no problem” arguing how the asserted art purportedly rendered the claims obvious. Prelim. Resp. 69–77.” slip op. at 17

  • Disclosure Requirements (§112) › Definiteness (Nautilus)Not reached

    “Petitioner also argues that the claim terms “baseplate central channel” and “central channel . . . configured to interface with the baseplate” are indefinite. Pet. 95–102. Patent Owner argues that the plain and ordinary meaning of the terms is clear and that Petitioner “had no problem” arguing how the asserted art purportedly rendered the claims obvious. Prelim. Resp. 69–77. In sum, even if Petitioner’s contentions show it is more likely than not that at least one of the claims challenged in the Petition is unpatentable, we find Patent Owner’s arguments identify credible weaknesses in Petitioner’s contentions. Accordingly, we find that that the sixth Fintiv factor is neutral and does not weigh against discretionary denial.” slip op. at 18

  Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denial
  Patents in suitUS 12,023,254
• Integrated Dna Technologies, Inc. v. Tecan Genomics, Inc.Instituted
  PTAB · Apr 21, 2025 · IPR2024-01504 · APJ James A Worth · IPR · Institution

  The Board instituted IPR on claims 1–4, 6, 7, 9, and 10 on all petitioned grounds, finding a reasonable likelihood that claim 1 is obvious over Iafrate and Kivioja.

  RulingsInstitution decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “On this preliminary record, we agree with Patent Owner that Petitioner’s asserted level of ordinary skill in the art is higher than warranted when Petitioner argues that a person of ordinary skill “further would have had specific experience with implementing and designing library preparation methods.” Pet. 21–22. However, we disagree with Patent Owner that a POSA only need to “have had experience with DNA sequencing methods” (Prelim. Resp. 8) because an artisan with experience with only pre-NGS sequencing methods would not qualify as a person of ordinary skill. Instead, for purposes of this Decision, we find a person of ordinary skill would have had a Ph.D. in the field of chemistry, molecular biology, or biochemistry. Alternatively, a POSA would have had a B.S. or M.S. degree with three to five years of experience working in any of those fields. The person of ordinary skill would have had experience with NGS sequencing methods and a working knowledge of how those methods functioned. This definition of a person of ordinary skill is consistent with the skill level reflected in the disclosures of the ’357 patent and prior art. We further note that neither aspect of the dispute over the skill level affects our decision to institute review.” slip op. at 9

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

    “1. “indexing site” Petitioner argues that the ’357 patent defines “indexing site” as a sample index, specifically, “a nucleic acid sequence that acts as an index for multiple polynucleotide samples, thus allowing for the samples to be pooled together into a single sequencing run, which is known as multiplexing.” Pet. 23 (citing Ex. 1004, 4:40–44). Patent Owner does not disagree other than to argue that no claim requires construction. The ’357 patent states: An indexing site is a nucleic acid sequence that acts as an index for multiple polynucleotide samples, thus allowing for the samples to be pooled together into a single sequencing run, which is known as multiplexing. provide a definition for “indexing site,” and we construe the term in accordance therewith.” slip op. at 10

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

    “3. “identifying sequence reads with identical identifier and target sequences as duplicates” Although the parties do not request construction of this limitation, we note that the parties may wish to address the construction of this limitation after institution. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claims are construed only to the extent necessary the term “duplicates” means that the sequences are identical. We observe that the ’357 patent states: “A duplicate sequencing read can be a sequencing read with the same identifier site and target sequence as another sequencing read in the population of sequencing reads.” Ex. 1004, 4:12–15. The claim does not use the exact wording as the Specification.4” slip op. at 11

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

    “4. “comprising” The parties may address the meaning of the transitional phrase “comprising” and whether the prior art meets the claim if the prior art discloses a method of identifying as duplicates those sequence reads with identical labels and target fragments and, in addition also identifies other sequence reads as duplicates, including sequence reads with some mutations resulting from PCR or SBS error. See Ex. 1079 ¶ 117. On this preliminary record, we construe “comprising” as an open-ended transition that is not limited to the listed steps. See Vivid Techs., Inc., 200 F.3d at 811.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 11,098,357
• Integrated Dna Technologies, Inc. v. Tecan Genomics, Inc.Instituted
  PTAB · Apr 21, 2025 · IPR2024-01502 · APJ James A Worth · IPR · Institution

  Instituted IPR of claims 1–3, 5–11, and 14–17 on all petitioned grounds; the Board found a reasonable likelihood that at least claim 1 was obvious over Iafrate and Kivioja.

  RulingsInstitution decision

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

    “On the record at this stage of the proceeding, we determine that Petitioner has made an adequate showing on claim 1’s preamble language.9 Kivioja discloses that “with the UMI method one can reproducibly detect the number of molecules after different numbers of PCR cycles without normalization.” Ex. 1012, 2–3. Dr. Sims opines that a person of ordinary skill would have understood that Kivioja’s method teaches a method of detecting and removing duplicate sequencing reads, i.e., that Kivioja’s method of counting unique sequences necessarily identifies duplicate reads. See Ex. 1079 ¶ 260. 8 We recognize that the burden remains with Petitioner to prove unpatentability of the challenged claims. See 35 U.S.C. § 316(e). 9 We do not need to decide for purpose of institution whether the preamble is limiting.” slip op. at 20

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “On this preliminary record, we agree with Patent Owner that Petitioner’s asserted level of ordinary skill in the art is higher than warranted when Petitioner argues that a person of ordinary skill “further would have had specific experience with implementing and designing library preparation methods.” Pet. 23. However, we disagree with Patent Owner that a POSA only need to “have had experience with DNA sequencing methods” (Prelim. Resp. 8) because an artisan with experience with only pre-NGS sequencing methods would not qualify as a person of ordinary skill. skill would have had a Ph.D. in the field of chemistry, molecular biology, or biochemistry. Alternatively, a POSA would have had a B.S. or M.S. degree with three to five years of experience working in any of those fields. The person of ordinary skill would have had experience with NGS sequencing methods and a working knowledge of how those methods functioned. This definition of a person of ordinary skill is consistent with the skill level reflected in the disclosures of the ’399 patent and prior art. We further note that neither aspect of the dispute over the skill level affects our decision to institute review.” slip op. at 9

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

    “1. “indexing site” Petitioner argues that the ’399 patent defines “indexing site” as a sample index, specifically, “a nucleic acid sequence that acts as an index for multiple polynucleotide samples, thus allowing for the samples to be pooled together into a single sequencing run, which is known as multiplexing.” Pet. 24 (citing Ex. 1003, 4:34–38). Patent Owner does not disagree other than to argue that no claim term requires construction. The ’399 patent states: An indexing site is a nucleic acid sequence that acts as an index for multiple polynucleotide samples, thus allowing for the samples to be pooled together into a single sequencing run, which is known as multiplexing. Ex. 1003, 4:34–38. We understand this passage of the ’399 patent to provide a definition for “indexing site,” and we construe the term in accordance therewith. 2. “indexing primer binding site” Petitioner argues that the ’399 patent defines “indexing primer binding site” as the binding site for a primer used to read the indexing site/sample index, specifically, “a nucleotide sequence for binding a primer for an indexing site.” Pet. 24 (citing Ex. 1003, 4:33–34). Patent Owner does not disagree other than to argue that no claim term requires construction. The ’399 patent states: “An indexing primer binding site is a nucleotide sequence for binding a primer for an indexing site.” Ex. 1003, definition for “indexing primer binding site,” and we construe the term in accordance therewith. 3. “identifier site” Petitioner argues that the ’399 patent defines “identifier site” as a molecular tag attached to fragments prior to amplification, specifically, “a nucleic acid sequence that comprises random bases and is used to identify duplicate sequencing reads.” Pet. 25 (citing Ex. 1003, 4:43-45). Petitioner argues that an “identifier site” “can be designed as a set of sequences, or it can be semi-random, or it can be completely random.” Id. (citing Ex. 1003, 4:49–51). Petitioner argues that an “identifier site” can also “be a fixed length, or it can be a variable length.” Id. (citing Ex. 1003, 4:51–54). Patent Owner does not disagree other than to argue that no claim term requires construction. The ’399 patent states: “An identifier site is a nucleic acid sequence that comprises random bases and is used to identify duplicate sequencing reads.” Ex. 1003, 4:43–45. We understand this passage of the ’399 patent to provide a definition for “identifier site,” and we construe the term in accordance therewith. 4. “target sequence primer binding site” Petitioner argues that the ’399 patent defines “target sequence primer binding site” as a binding site for a primer used to read the fragment sequence, specifically, a “nucleotide sequence for binding a primer for a target sequence.” Pet. 25 (citing Ex. 1003, 4:62–65). Petitioner also argues that the ’399 patent expressly discloses that this site can be a standard Illumina sequence compatible with an Illumina primer for an SBS reaction to read the DNA fragment. Id. (citing Ex. 1003, 16:48–51 & SEQ ID No. 3). requires construction. The ’399 patent states: “A target sequence primer binding site nucleotide sequence for binding a primer for a target sequence.” Ex. 1003, 4:62–63. The ’399 patent appears to have a typographical error at this juncture in the Specification because the quoted text is missing a verb (e.g., “is”) and is therefore an incomplete sentence. Based on the context of the surrounding parts of the Specification, we infer that the ’399 patent intended to define “target sequence primer binding site” as a “nucleotide sequence for binding a primer for a target sequence.”” slip op. at 11

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

    “5. “identifying a duplicate sequencing read as the sequencing read comprising the same identifier site and nucleic acid fragment as another sequencing read in the population of sequencing reads” Although the parties do not request construction of this limitation, we note that the parties may wish to address the construction of this limitation after institution. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claims are construed only to the extent necessary to resolve a dispute). For example, the parties may wish to address whether the “same identifier and nucleic acid fragment” means that the sequences are identical. We observe that the ’399 patent states: “A duplicate sequencing read can be a sequencing read with the same identifier site and target sequence as another sequencing read in the population of sequencing reads.” Ex. 1003, 4:8–11. The claim does not use the exact wording as the Specification.5” slip op. at 13

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 9,546,399
• Apple Inc. v. Haptic, Inc.Institution denied
  PTAB · Apr 4, 2025 · IPR2024-01476 · APJ Andreas Baltatzis · IPR · Institution

  The Board denied institution of review of claims 3, 6, 7, 12, and 13, exercising § 314(a) discretion under Fintiv after balancing the parallel litigation factors.

  RulingsInstitution decision

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

    “prejudice to renewal if the PTAB institutes IPR review.” Ex. 2023, 6. A stay denial without prejudice to renew if a PTAB trial is instituted “usually weigh[s] against exercising authority to deny institution.” Fintiv, Paper 11 at 7. But “proximity of the court’s trial date and investment of time are relevant to how much weight to give to the court’s willingness to reconsider a stay.” Id. Although the District Court denied a stay pending the Board’s decision, the court also identified the proximity of the trial date and litigation investment as significant factors in its initial denial of the requested stay. See Ex. 2023, 6. Thus the evidence is inconclusive as to whether or not the District Court would stay the case if we granted institution at this time. Absent a clear indication from the District Court, we decline to predict whether a stay would be granted.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundOther

    “a sensor in a fixed position relative to a sensing surface to provide a fixed reference point for accurate detection of vibratory signals”), 171 (“the sensor is held in a particular position within the housing and relative to the surface that the housing is mounted to”). Stewart teaches the opposite: a sensor that is vibrated inside a housing to measure rotational movement. Ex. 1006, 5:54–56, 6:5–10, 6:20–31; Ex. 2001 ¶¶ 100, 133, 138. Thus, Stewart’s sensor is flexibly suspended with brackets inside the housing to allow movement and minimize transmission of vibrations from the surface to the sensor. Ex. 1006, 5:7–24, 7:61–64; Ex. 2001 ¶ 102. Petitioner combines Murakoshi with Stewart’s brackets and case mounts to fix the sensor to prevent it from moving within the housing and thus enable the sensor to detect vibrations from outside the housing. See Pet. 24, 33–36. But Stewart’s teachings undermine the very reason proffered by Petitioner, because Stewart’s sensor is movably suspended within the housing so that it does not detect vibrations from outside the housing. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) (“An inference of nonobviousness is especially strong where the prior art’s teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements.”).” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successReasonable expectation not foundOther

    “Likewise, we find a significant weakness in Petitioner’s argument for a reasonable expectation of success in the combination. “The reasonable expectation of success requirement refers to the likelihood of success in combining references to meet the limitations of the claimed invention.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). Claim 1 requires “said sensor being in a fixed position portion” that “set[s] a rigid position of said sensor relative to said mounting surface” (limitation 1e). As discussed above, neither Murakoshi nor Stewart appear to teach a sensor in a fixed position relative to said engagement means or a rigid position relative to said mounting portion. Accordingly, even if Murakoshi’s and Stewart’s teachings were to be combined, the combined teachings would not appear to meet the limitations of the claimed invention.” slip op. at 14

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 9,996,738
• Apple Inc. v. Haptic, Inc.Institution denied
  PTAB · Apr 4, 2025 · IPR2024-01475 · APJ Andreas Baltatzis · IPR · Institution

  The Board denied institution of IPR challenging claims 1, 2, 4, 5, and 8–11, exercising its discretion under § 314(a) based on the Fintiv factors.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “litigation, the Board assesses all relevant circumstances, including the merits, to balance considerations such as system efficiency, fairness, and patent quality. See Fintiv, Paper 11; NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 19–20 (PTAB Sept. 12, 2018) (precedential). We consider six factors as part of this balanced assessment when determining whether to use our discretion to deny institution: 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. Fintiv, Paper 11 at 5–6. 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.” slip op. at 8

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

    “vibrations on a surface and using the vibrations to generate a control signal for a device. Ex. 1004 ¶¶ 21, 25, 29, 30, 36. To measure vibrations on a surface, Murakoshi’s sensor must be fixed within the housing and held in position relative to the surface. See Ex. 1003 ¶¶ 142 (“it is necessary to hold a sensor in a fixed position relative to a sensing surface to provide a fixed reference point for accurate detection of vibratory signals”), 174 (“the sensor is held in a particular position within the housing and relative to the surface that the housing is mounted to”). Stewart teaches the opposite: a sensor that is vibrated inside a housing to measure rotational movement. Ex. 1006, 5:54–56, 6:5–10, 6:20–31; Ex. 2001 ¶¶ 100, 133, 138. Thus, Stewart’s sensor is flexibly suspended with brackets inside the housing to allow movement and minimize transmission of vibrations from the surface to the sensor. Ex. 1006, 5:7–24, 7:61–64; Ex. 2001 ¶ 102. Petitioner combines Murakoshi with Stewart’s brackets and case mounts to fix the sensor to prevent it from moving within the housing and thus enable the sensor to detect vibrations from outside the housing. See Pet. 23, 31–35. But Stewart’s teachings undermine the very reason proffered by Petitioner, because Stewart’s sensor is movably suspended within the DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) (“An inference of nonobviousness is especially strong where the prior art’s teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements.”).” slip op. at 14

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

    “We find Petitioner’s argument based on the combination of Li and iFixit to be a closer call than the argument based on Murakoshi and Stewart. However, because we exercise our discretion to deny the Petition in view of the parallel litigation, we need not determine whether Petitioner meets the standard for institution based on the combination of Li and iFixit.” slip op. at 17

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 9,996,738

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.