- 3M Company v. Bay Materials, LLCInstitutedPTAB · Jan 18, 2023 · IPR2022-01215 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted inter partes review of claims 1–4, 7, 11–14, 18, and 31 on all asserted grounds, finding at least one claim sufficiently shown anticipated by Yu.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Petition includes detailed arguments that map the limitations of the challenged claims to specific disclosures in Yu (Sample 1). Id. at 50–62. The Petition also maps adequately the limitations of the challenged claims to specific disclosures in Stewart (Example 2). Id. at 62–66. For example, Petitioner shows sufficiently that Yu (Example 1) coextrudes “a multilayered polymeric film,” that is, a “sheet,” arranged in the hard-soft-hard-soft-hard, five-layer configuration required by claim 11. Pet. 50–51; Ex. 1002 ¶¶ 124, 126–128; Ex. 1012 ¶¶ 63, 78, 92. Petitioner also shows sufficiently that the hard layers in that configuration of Yu (Example 1) are “hard” and the hard layers are “hard” within the meaning of claim 11. Pet. 53; Ex. 1002 ¶ 131; Ex. 1012 ¶ 78. In other words, Petitioner shows sufficiently, on this record, that Yu (Example 1) anticipates claim 11. Based on the information presented, we find that Petitioner shows sufficiently, for purposes of trial institution, that at least one challenged claim of the ’263 patent is anticipated by Yu (Sample 1).” slip op. at 12
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“That prior art disclosure of elastomeric materials for use as the outer layers in an unclaimed and disfavored soft-hard-soft layer configuration does not convey, with reasonable clarity, that the inventors had possession of the claimed subject matter, in which the elastomeric material forms the inner layer of a polymeric sheet in a hard-soft-hard layer configuration. See id. ¶¶ 7, 33–35, 109–110. Even if the hardness limitation of the challenged claims would have been obvious from the relied-upon disclosure of the ’176 application (Ex. 2001 ¶ 109), that circumstance is insufficient to establish written description support. “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (quotations omitted); see Pet. 21 (quoting that precedent). Accordingly, we agree with Petitioner that the invention that Patent Owner seeks to protect in the ’263 patent does not appear to be “part of the invention” described in the ’176 application. Pet. 40; see Ex. 2001 ¶ 109 (describing elastomeric materials, having the specified hardness, only in the context of an unclaimed prior art soft-hard-soft embodiment). On this record, we preliminarily agree with Petitioner that the earliest effective filing date to which the ’263 patent appears to be entitled is December 18, 2019, namely, the filing date of the ’256 application, from which the ’263 patent issued. Ex. 1001, codes (21), (22). Patent Owner may contest this issue in a timely response to the Petition.” slip op. at 9
- Skill levelNot reached
“The parties disagree about whether the ordinarily skilled artisan would have had specific “experience with dental appliances or access to individuals with such experience.” Prelim. Resp. 17; see Pet. 14–15 n.1 (disagreeing with that proposition). Neither party explains why a resolution of that Stat. 284 (September 16, 2011), includes revisions to Section 102(a) that became effective on March 16, 2013. For reasons explained in this Decision, on this record it appears Petitioner is correct that the challenged claims are entitled to an effective filing date no earlier than December 18, 2019 and, therefore, the AIA provisions apply in this proceeding. See Pet. 22, 39–40; Ex. 1001, code (60). 2 WO 20010/043419 A1, published Apr. 22, 2010, with English Translation (Ex. 1015). 3 We take notice that the first and second grounds identified in the Petition assert anticipation based on the same prior art disclosure. 4 US Pub. 2004/0224283 A1, published Nov. 11, 2004 (Ex. 1008). dispute is necessary to this Decision to institute review. See, e.g., Prelim. Resp. 17 n.2 (“even under Petitioner’s proposed definition, the Petition fails to show a reasonable likelihood that any claim is unpatentable”); Pet. 14–15 & n.1 (arguing about the issue without explaining how a resolution of the dispute would change the outcome of the decision on institution). If either party believes that the difference in level of skill would have a material effect on the analysis of the patentability of the challenged claims, that issue should be specifically addressed in briefing during the trial. We will resolve that dispute only to the extent necessary in any final written decision. Based on the information presented, we find that the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“We construe terms in controversy only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). “Petitioner discusses the terms “layer A,” “layer B,” “layer C,” “layer C,” “layer B',” inner layer B,” “inner layer B',” and “inner layer D.” Pet. 15–20. Patent Owner discusses the terms “layer” and “inner.” Prelim. Resp. 19–22. Taking account of the information presented, we determine that no claim term requires express construction for purposes of deciding whether to institute review. Compare Pet. 15–20 (addressing issues of claim construction, without demonstrating that an express construction is necessary to resolve whether to institute review), with Prelim. Resp. 19–22 (same).” slip op. at 7
Claim construction§ 112 disclosurecites Phillips · GrahamPatents in suitUS 10,870,263 - 3M Company v. Bay Materials, LLCInstitutedPTAB · Jan 18, 2023 · IPR2022-01214 · APJ Grace Karaffa Obermann · IPR · Institution
Instituted IPR of claims 1–4, 7–11, and 13 on all asserted obviousness grounds, including grounds without Sun despite concerns about their sufficiency.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“6. Conclusions on the Sufficiency of Petitioner’s Information Petitioner shows sufficiently that the subject matter of at least one challenged claim would have been obvious based on the ground that asserts Sun. See Pet. 6 (Ground 3). We have concerns about the sufficiency of Petitioner’s showing with respect to the grounds that do not assert Sun. See id. (Grounds 1 and 2). We institute an inter partes review of all challenged claims based on all grounds asserted in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019)8 (“The Board will not institute on fewer than all claims or all challenges in a petition.”).” slip op. at 20
- Skill levelSkill level board ownOther
“The parties disagree about whether the ordinarily skilled artisan would have had specific “experience with dental appliances or access to individuals with such experience.” Prelim. Resp. 9; see Pet. 10–11 n.1 (disagreeing with that proposition). Neither party explains why a resolution of that dispute is necessary to this Decision to institute review. See, e.g., Prelim. Resp. 9 n.2 (“even under Petitioner’s proposed definition, the Petition fails to show a reasonable likelihood that any claim is unpatentable”); Pet. 14–15 & n.1 (arguing about the issue without explaining how a resolution of the dispute would change the outcome of the decision on institution). If either party believes that the difference in level of skill would have a material effect on 5 US Pub. 2004/0224283 A1, published Nov. 11, 2004 (Ex. 1008). the analysis of the patentability of the challenged claims, that issue should be specifically addressed in briefing during the trial. We will resolve that dispute only to the extent necessary in any final written decision. Based on the information presented, we find that the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe terms in controversy only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner discusses certain terms at issue in the District Court action, such as “layer A,” “layer B,” “layer C,” “inner layer B,” and “flexural modulus” ranges, without proposing any express constructions. Pet. 12–15. Patent Owner does not provide arguments directed specifically to proposed claim constructions. See generally Prelim. Resp. Taking account of the information presented, we determine that no claim term requires express construction for purposes of deciding whether to institute review. Compare Pet. 12–15 (addressing issues of claim construction, without demonstrating that an express construction is necessary to resolve whether to institute review), with Prelim. Resp. 12–39 (addressing the merits of Petitioner’s challenges, without asserting an express claim construction).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We preliminarily find that Hinz would have alerted the ordinarily skilled artisan that the choice of “layer thicknesses” in a multilayer dental structure “ensure[s] very good mechanical properties.” Ex. 1002 ¶ 100; Ex. 1015, 4:116–119. Where Sun teaches that the flexural modulus of dental structures would have been recognized as one such mechanical property (id. ¶ 160; Ex. 1018 ¶ 12), we further accept, at this preliminary stage, that an ordinarily skilled artisan would have understood how variations “in the relative thicknesses of the respective layers” desirably impact the flexural modulus (id. ¶ 105). Furthermore, in view of Sun’s disclosure of advantages associated with dental structures having a preferred flexural modulus, and the fact that those exact same advantages expressly were of interest to Hinz, we are not persuaded by Patent Owner’s argument, on this record, that it makes a difference that Sun discusses two-layer structures, whereas Hinz discusses three-layer structures. Pet. 65–66 (citing Ex. 1002 ¶¶ 158–160; Ex. 1015, 3:74–76; Ex. 1018 ¶ 4); see Sur-reply 5 (Patent Owner, identifying distinctions without a difference in Sun). In other words, Sun’s teachings appear, on this record, to apply generally to multilayer dental structures, including the multilayer structures of Hinz. For the above reasons, although the issue is a close one, we find that Petitioner shows sufficiently for purposes of trial institution that the ordinarily skilled artisan would have had a reason, and possessed the technical acumen, to select combinations of layer thickness values, from among the ranges disclosed in Hinz, to attain a multilayer dental structure having a desirable flexural modulus, as suggested by Sun. Patent Owner may address that preliminary finding in a timely response to the Petition.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,946,630 - PTAB · Jan 6, 2023 · IPR2022-01204 · APJ Donna M Praiss · IPR · Institution
Instituted IPR on claims 1–10, 12, 13, and 15–20 because the petition showed a reasonable likelihood of prevailing on asserted anticipation and obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–10, 12, 13, and 15–20 of the ’285 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“district court trial dates are set to occur before the issuance of the Board’s final written decision. The facts and reasoning of Fintiv are, at a minimum, only applicable to cases in which a trial date has been set by the district court in a copending litigation. But here, as will be discussed below, the parties agree that no trial date has been set, and the District Court has stayed the litigation. Prelim. Reply 8; Prelim. Sur-Reply 6 (“There has never been a trial date). Furthermore, that stay will continue until our final determination should we decide to institute trial. Without a trial date, we see no need to engage in a full analysis of the Fintiv factors, as there is no basis for Patent Owner’s argument for discretionary denial. Nevertheless, we address the Fintiv factors below13 and explain our reasons for not exercising discretion to deny institution based on § 314(a).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“While we recognize that the plain language and grammar of the claims supports Petitioner’s proposed construction, we have also considered the District Court’s adopted construction and Patent Owner’s arguments which find support in the written description of the ’285 patent. In the end, however, we need not resolve this dispute at this time. Because the Petition provides sufficient evidence that the prior art references disclose the claimed functional groups, biomolecules, or organic dyes under either construction, it is not necessary for us to construe this claim term at this stage of the proceeding.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“including Petitioner’s Reply Brief (Paper 10, “Reply Br.”) and Patent Owner’s Sur-Reply Brief (Paper 11, “Sur-Reply Br.”), we agree with Petitioner that Patent Owner’s proposed definition reads into the claim a numeric threshold for solubility from an embodiment that is nowhere apparent from the claim itself. Reply Br. 1–2. “[I]nterpreting what is meant by a word in a claim is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348 (Fed. Cir. 2002) (internal quotation marks and citations omitted; emphasis in original). Although courts must read a patent’s claims in light of the specification, see, e.g., Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998), that obligation does not authorize “reading a limitation from the written description into the claims,” which is characterized as “one of the cardinal sins of patent law,” SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc., 242 F.3d 1337, 1340 (Fed. Cir. 2001). Confining the scope of “capable of imparting solubility” to an unexpressed minimum solubility taken from one of the Specification’s embodiments crosses that line. See, e.g., E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1432–34 (Fed. Cir. 1988) (Claims to a co-polymer improperly interpreted to include two properties). In view of the foregoing, we construe the phrase “a non-ionic side group capable of imparting solubility in water” to not require any particular numeric threshold of solubility. No further construction of the claim is necessary to resolve the dispute between the parties with respect to institution of trial.. See Nidec Motor Corp. 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 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,365,285 - PTAB · Jan 6, 2023 · IPR2022-01206 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–10, 12–14, and 17–19, finding a reasonable likelihood of prevailing on the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–10, 12–14, and 17–19 of the ’648 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The express language of claim 1 requires no solubility threshold, and dependent claim 10 of related U.S. Patent No. 10,288,620 B2 demonstrates that, where a solubility threshold was intended by the inventors of these patents, they knew how to expressly set forth that threshold in the claims. Compare Ex. 1004, 222:47–49 (“capable of imparting solubility in water”), with Ex. 1005, 218:12–14 (“The method according to claim 1, wherein each R is a non-ionic side group capable of imparting solubility in water in excess of 10 mg/mL.”). Thus, the claim language does not support applying a particular solubility threshold in claim 1. As noted by Patent Owner, the written description of the ’648 patent explains that “each R is independently a non-ionic side group capable of imparting solubility in water in excess of 10 mg/mL.” Ex. 1004, 2:21–22; Prelim. Resp. 17. This solubility threshold, however, is not in claim 1. Also, the ’648 patent states that this solubility applies only to some embodiments. See, e.g., Ex. 1004, 53:9–12, 55:6–20. We decline to import such a limitation from the written description into claim 1 absent reason for doing so. See SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc., 242 F.3d 1337, 1340 (Fed. Cir. 2001) (explaining that “reading a limitation from the written description into the claims” is “one of the cardinal sins of patent law”); see also Thorner v. Sony Comp. Ent’m Am., LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (“It is likewise not enough that the only embodiments, or all of the embodiments, contain a particular limitation. We do not read limitations from the specification into claims; we do not redefine words.”). After considering the parties’ arguments and evidence presented, we agree with Petitioner that Patent Owner’s proposed definition reads into the claim a numeric threshold for solubility from an embodiment that is nowhere apparent from the claim itself. “[I]nterpreting what is meant by a word in a claim is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348 (Fed. Cir. 2002) (internal quotation marks and citations omitted; emphasis in original). Although we must read a patent’s claims in light of the specification, see, e.g., Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998), that obligation does not authorize “reading a limitation from the written description into the claims.” SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc., 242 F.3d 1337, 1340 (Fed. Cir. 2001). Confining the scope of “non-ionic side group capable of imparting solubility in water” to an unexpressed minimum solubility taken from only “some” embodiments encompassed by the ’648 patent crosses that line. See, e.g., E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1432–34 (Fed. Cir. 1988) (Claims to a co-polymer improperly interpreted to include two properties). In view of the foregoing, we construe the phrase “a non-ionic side group capable of imparting solubility in water” to not require any particular numeric threshold of solubility. No further construction of the claim is necessary to resolve the dispute between the parties with respect to institution of trial.15” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“in situations where a district court trial date is set to occur before the issuance of the Board’s final written decision. The facts and reasoning of Fintiv are, at a minimum, only applicable to cases in which the district court has actually set a trial date in a copending litigation. But here, as will be discussed below, the parties agree that no trial date has been set, and the District Court has stayed the litigation. Prelim. Reply 8; Prelim. Sur-Reply 6 (“There has never been a trial date). Furthermore, that stay will continue until our final determination should we decide to institute trial. Without a trial date, we see no need to engage in a full analysis of the Fintiv factors,17 as there is no basis for Patent Owner’s argument for discretionary denial.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We are not persuaded by Patent Owner’s argument. Xue expressly discloses that its glycopolymers utilizing poly(ethylene glycol)-tethered spacers (Polymers B and C) “are highly water-soluble due to their long, flexible, hydrophilic spacers.” Ex. 1010, Abstr., 2289–90. As claim 1 does not require any particular solubility threshold, on this record, Petitioner sufficiently demonstrates that Xue expressly discloses the solubility limitation of independent claim 1.” slip op. at 33
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,302,648 - PTAB · Jan 6, 2023 · IPR2022-01205 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 1–10, 18, and 20 based on the asserted § 102 and § 103 grounds.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“Here, Patent Owner filed a statutory disclaimer of claims 11–17 of the ’417 patent. Prelim. Resp. 1–2; Ex. 2019. Based on our review of Exhibit 2019, we determine that a disclaimer of claims 11–17 of the ’417 patent under 35 U.S.C. § 253(a) has been filed with the Office as of October 5, 2022. Based on the information in the public record, we find that the disclaimer complies with the above-listed requirements of 37 C.F.R. § 1.321(a). Because claims 11–17 have been disclaimed under 35 U.S.C. § 253(a), in compliance with 37 C.F.R. § 1.321(a), we do not reach challenges to claims 11–17. As a result, the remaining challenged claims are claims 1–10, 18, and 20 (“the challenged claims”).” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“in situations where a district court trial date is set to occur before the issuance of the Board’s final written decision. The facts and reasoning of Fintiv are, at a minimum, only applicable to cases in which the district court has actually set a trial date in a copending litigation. But here, as will be discussed below, the parties agree that no trial date has been set, and the 14 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. District Court has stayed the litigation. Prelim. Reply 8; Prelim. Sur-Reply 6 (“There has never been a trial date). Furthermore, that stay will continue until our final determination should we decide to institute trial. Without a trial date, we see no need to engage in a full analysis of the Fintiv factors,15 as there is no basis for Patent Owner’s argument for discretionary denial.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the reasons above, we determine that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail with respect to challenged claims 1–10, 18, and 20 of the ’417 patent. At this juncture in the proceeding, we have not made a final determination with respect to the patentability of the challenged claims, or with respect to claim construction. V. ORDER For the foregoing reasons, it is ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–10, 18, and 20 of the ’417 patent is hereby instituted with respect to the ground of unpatentability set forth in the Petition; and FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial will commence on the entry date of this Decision.” slip op. at 44
- Skill levelOther
“would have at least a Ph.D. degree in chemistry, or a bachelor’s or master’s degree plus experience involving the use and design of fluorescent probes or dyes.” Pet. 18 (citing Ex. 1007 ¶¶ 14–18). Patent Owner agrees that a POSITA may have a Ph.D. degree or master’s degree in chemistry, but asserts that a POSITA would also have “some experience with fluorescence” in addition to a Ph.D. degree in chemistry and that the experience of a POSITA with a master’s degree in chemistry is alternatively “industry experience in the field of biological detection systems.” Prelim. Resp. 5–6 (citing Ex. 2001 ¶ 7). For purposes of this Decision, we need not resolve these differences between the parties’ definitions, because any differences do not affect our analysis.13 If either party believes that adopting its preferred definition of the level of ordinary skill would have a material effect on the outcome of this proceeding, the party should address this issue during the instituted trial. slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,955,417 - PTAB · Jan 6, 2023 · IPR2022-01207 · APJ Jon B Tornquist · IPR · Institution
Instituted IPR of claims 1–14, 18, and 19 on all asserted grounds after finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. Thus, we hereby institute an inter partes review as to claims 1–14, 18, and 19 of the ’620 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“be lifted for each patent for which the petition is denied. As noted above, there are six related petitions at the Board involving the patents before the court. The district court stayed the litigation “pending resolution of the IPR proceedings that have been instituted on the patents at issue in this case.” Ex. 2006, 2. Regarding the length of the stay, the district court explicitly ordered the parties not to use continuance of the fact discovery to October 28, 2022 “as grounds for . . . opposing institution of any post-grant proceeding.” Ex. 2007, 2. Regarding when the stay will be lifted, the order merely gives Patent Owner the opportunity to “seek to lift the stay as to any patents that are not instituted for review.” Ex. 2006, 2 (emphasis added). But we decline to speculate whether the district court would grant such a motion directed only to one of the six patents. Among the reasons warranting a stay of the litigation, the district court found “IPR has the potential to streamline issues for trial” and “the resources the parties will need to expend for experts could be significantly impacted by the outcome of any instituted IPR proceedings.” Id. Thus, the litigation is stayed pending the outcome of the six related proceedings, not merely the outcome of this institution decision, and the district court stayed the litigation for the explicit purpose of gaining efficiency and avoiding duplication of efforts by letting this inter partes review proceed to its conclusion first.14 See Prelim. Reply. 4–5. While Patent Owner may seek to lift the stay as to any patent for which institution is denied, the grant of any such request is uncertain. Accordingly, this factor strongly weighs against discretionary denial of institution.” slip op. at 15
- Skill levelOther
“Petitioner asserts that a person of ordinary skill in the art (POSITA) “would have at least a Ph.D. degree in chemistry, or a bachelor’s or master’s degree plus experience involving the use and design of fluorescent probes or dyes.” Pet. 17 (citing Ex. 1007 ¶¶ 14–18). Patent Owner agrees that a POSITA may have a Ph.D. degree or master’s degree in chemistry, but asserts that a POSITA would also have “some experience with fluorescence” in addition to a degree in chemistry and that the experience of a POSITA with a master’s degree in chemistry is alternatively “industry experience in the field of biological detection systems.” Prelim. Resp. 10 (citing Ex. 2001 ¶ 7). For purposes of this Decision, we need not choose between the parties’ proposed levels of one of ordinary skill in the art, which are quite similar, as neither party asserts that the anticipation or obviousness analyses in this case would turn on which definition is adopted. See Prelim. Resp. 10 (Patent Owner stating that its arguments and conclusions “would not change” if Petitioner’s definition were applied).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for patent owner
“The express language of claim 1 requires no solubility threshold, and dependent claim 10 demonstrates that where a solubility threshold was intended by the inventors of the ’620 patent they knew how to expressly set forth that threshold in the claims. Compare Ex. 1005, 213:26–27 (“capable of imparting solubility in water”), with id. at 218:12–14 (“The method according to claim 1, wherein each R is a non-ionic side group capable of imparting solubility in water in excess of 10 mg/mL.”). Thus, the claim language does not support applying a particular solubility threshold in claim 1. As noted by Patent Owner, the written description of the ’620 patent explains that “[i]n some embodiments, each R is independently a non-ionic side group capable of imparting solubility in water in excess of 10 mg/mL.” Id. at 54:2–10; Prelim. Resp. 12–13. This solubility threshold, however, is not in claim 1, and we decline to import such a limitation from the written description into claim 1 absent compelling reasons for doing so. See SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc., 242 F.3d 1337, 1340 (Fed. Cir. 2001) (explaining that “reading a limitation from the written description into the claims” is “one of the cardinal sins of patent law”); see also Thorner v. Sony Comp. Entm’t Am., LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (“It is likewise not enough that the only embodiments, or all of the embodiments, contain a particular limitation. We do not read limitations from the specification into claims; we do not redefine words.”). In view of the foregoing, we construe the term “non-ionic side group capable of imparting solubility in water” to not include any particular numeric solubility threshold.13” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,288,620 - PTAB · Jan 6, 2023 · IPR2022-01203 · APJ Christopher L Crumbley · IPR · Institution
The Board instituted IPR on claims 1–10, 12–14, and 17–19 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. Patent Owner has not persuaded us that we should exercise our discretion to deny institution. We hereby institute an inter partes review as to claims 1–10, 12–14, and 17–19 of the ’989 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“in situations where a district court trial date is set to occur before the issuance of the Board’s final written decision. The facts and reasoning of Fintiv are, at a minimum, only applicable to cases in which the district court has actually set a trial date in a copending litigation. But here, as will be discussed below, the parties agree that no trial date has been set, and the District Court has stayed the litigation. Prelim. Reply 8; Prelim. Sur-Reply 6 (“There has never been a trial date.”). Furthermore, that stay will continue until our final determination should we decide to institute trial. Without a trial date, we see no need to engage in a full analysis of the Fintiv factors,14 as there is no basis for Patent Owner’s argument for discretionary denial.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“numerical solubility limit into the claims, noting that the ’989 patent expressly defines “non-ionic side groups capable of imparting solubility in water” as simply “side groups which are not charged and allow the resulting polymer to be soluble in water or aqueous solution with no visible particulates.” Prelim. Reply 1 (citing Ex. 1001, 54:9–13). Petitioner notes that this definition contains no numerical limit, and that it is followed by a statement that in some embodiments, the R group is capable of imparting solubility in excess of 10 mg/mL. Id. at 2 (citing Ex. 1001, 54:13–16). Petitioner contends that reading a limitation from “some embodiments” into the claims would be “one of the cardinal sins of patent law.” Id. (citing Phillips, 415 F.3d at 1320; Polaris Innovations Ltd. v. Brent, 48 F.4th 1365, 1375–76 (Fed. Cir. 2022)). Petitioner also directs our attention to related patents that expressly claim a solubility in excess of 10 mg/mL, arguing that when Patent Owner sought to claim such polymers, it knew how to do so. Id. (citing Ex. 1005, 218:11–12; Ex. 1006, 239:43–45, 252:51–52, 254:39–40, 262:56–57, 269:31–35).” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“proposed claim construction on solubility above, which we declined to do on the present record. For this reason, we find them unpersuasive. In addition, we note that Xue expressly discloses that its glycopolymers utilizing PEG-tethered spacers (Polymers B and C) “are highly water-soluble due to their long, flexible, hydrophilic spacers.” Ex. 1010, Abstract, 2289–90. Petitioner sufficiently sets forth why a person of ordinary skill in the art would have considered the PEG side chains of Xue to impart solubility in water, which is all we have construed the claims to require.” slip op. at 35
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,458,989 - PTAB · Sep 14, 2022 · IPR2022-00673 · APJ Richard H Marschall · IPR · Institution
The Board instituted IPR on claims 1–18 under § 103 based on WO684 and NO366, finding a reasonable likelihood of success and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“prior situations, how the New Hampshire District Court would rule should a stay be requested in the New Hampshire litigation. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“A judge determines whether to grant a stay based on the facts of each specific case as presented in the briefs by the parties. We decline to infer, based on actions taken in different cases with different facts, how the District Court would rule should a stay be requested by the parties in the parallel case here.”). We view this factor as neutral because neither of the parties in the New Hampshire litigation has requested a stay thus far. See id. at 12 (determining that Factor 1 is neutral when neither party has requested a stay and the issue has not been ruled on by the district court).” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We agree with Patent Owner that both WO684 and NO366 were at least considered by the Examiner, even if the Examiner never discussed the references or relied on them in any manner. See Ex. 1001, code (56) (listing both WO684 and NO366 among the references cited). Under these circumstances, we find the first part of the Advanced Bionics satisfied because the prior art before the Examiner and the prior art relied on in the Petition include the same prior art references.” slip op. at 16
- Skill levelOther
“person having ordinary skill in the art “has a Master’s degree in Mechanical Engineering or Robotics and at least three to four years of experience working as an engineer in the field of AS/RS [Automated Storage and Retrieval Systems].” Pet. 26 (citing Ex. 1003 ¶ 62). Petitioner argues in the alternative that one of ordinary skill in the art “has at least a Bachelor’s degree in Mechanical Engineering, and at least four to five years of experience working as an engineer in the field of AS/RS.” Id. (citing Ex. 1003 ¶ 63). Patent Owner argues that “the level of ordinary skill in the art is ‘at least a bachelor’s degree in mechanical engineering, and at least two to three years’ experience working in the field of the design of robotic vehicles for material handling system[s].” Prelim. Resp. 29 (citing Ex. 2001 ¶ 50). Patent Owner contends that the parties agreed that this level of skill applies to WO684 in a related ITC proceeding, and should be adopted here. Id. at 29–30 (citing Ex. 2007, 19–20). We note that the parties’ respective proposals overlap considerably, with Petitioner’s alternative proposal nearly identical to Patent Owner’s proposal. We need not resolve which proposal most closely aligns with the level of ordinary skill in the art here, however, because even if we adopt Patent Owner’s proposal we would come to the same ultimate conclusion that Petitioner satisfies its burden of showing a reasonable likelihood of establishing the unpatentability of any of the challenged claims.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any constructions for any claim terms, and “Patent Owner also believes no claim term requires construction and submits that the Petition is defective under any reasonable claim construction.” Prelim. Resp. 30. Based on our review of the current record, we need not formally construe any claim terms to determine whether to institute an inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,961,051 - PTAB · Jun 9, 2022 · IPR2022-00100 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 8–10 and 15–18 on all asserted grounds, finding a reasonable likelihood that the challenged claims would have been obvious.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“Typically, “one petition should be sufficient to challenge the claims of a patent,” but “there may be circumstances in which more than one petition may be necessary.” CTPG 59. We agree that the claims challenged by these two petitions differ significantly. For example, as Petitioner notes:” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a). A claim is unpatentable as obvious if “the differences between the subject matter sought to be patented 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 said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). We resolve the question of obviousness based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the prior art and the claims; (3) the level of skill in the art; and (4) when in evidence, objective indicia of nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 7
- 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 asserts that [a] person of ordinary skill in the art [“POSITA”] . . . would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and two or more years of experience with LED devices and/or related circuit design, or a related field. . . . More education can supplement practical experience and vice versa. Pet. 5–6 (citing Ex. 1002 ¶¶ 20–21). Patent Owner does not dispute Petitioner’s proposed level of skill in the art at this stage. Prelim. Resp. 12. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’583 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 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In inter partes review, we construe claims 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). The parties do not propose any constructions. Pet. 7; Prelim. Resp. 12. Based on our review of the preliminary record, we determine that no terms require construction at this stage. 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.”) (internal quotation omitted).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,750,583 - PTAB · Jun 7, 2022 · IPR2022-00052 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR on all asserted grounds for claims 2–5, 7, 11–13, 21, and 23, finding a reasonable likelihood that Petitioner would show them unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to the remaining challenged claims— claims 2–5, 7, 11–13, 21, and 23 of the ’251 patent. Accordingly, we institute an inter partes review with respect to these claims on all grounds asserted in the Petition. See SAS Inst. Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018).” slip op. at 2
- Parallel petitionsDecided for petitioner
“Typically, “one petition should be sufficient to challenge the claims of a patent,” but “there may be circumstances in which more than one petition may be necessary.” CTPG 59. For example, more than one petition may be necessary “when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. Given the priority date dispute addressed only in the -00051 Petition, and in light of Patent Owner’s decision not to challenge Petitioner’s filing of parallel petitions, we decline to exercise our discretion to deny either petition. See CTPG 61 (“The Board will consider the parties’ submissions in determining whether to exercise its discretion to institute inter partes review under 35 U.S.C. § 314(a).”).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under that standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have had to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Neither party asserts that any claim terms of the ’251 patent require construction. Pet. 6–7; Prelim. Resp. 13. And, upon review of the parties’ arguments and supporting evidence, we find that no terms require construction for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“In view of the foregoing, and after reviewing the parties’ arguments and supporting evidence, we determine that Petitioner demonstrates a reasonable likelihood that Birrell and Schultz teach or suggest “at least one LED circuit having a plurality of LEDs . . . wherein the at least one LED circuit is mounted on a reflective substrate,” as recited in claim 1 of the ’251 patent. Petitioner also provides a sufficient rationale, supported by record evidence, explaining why one of ordinary skill in the art would have combined Birrell and Schultz. b) Reasonable Expectation of Success Patent Owner contends the Petition does not support institution because incorporating Schultz’s flexible, multilayer optical film in Birrell would present substantial challenges “for reconciling the build characteristics of the multi-layer rigid frame construction of Birrell with the flexible construction of Schultz.” Prelim. Resp. 22. And, given the differences in construction between the two lighting devices, Patent Owner contends the combination of Schultz’s reflective surface materials with Birrell’s circuit board 58 is not a “predictable use of known lighting design techniques and components according to their established functions,” as asserted by Petitioner. Id. at 21–22. Contrary to Patent Owner’s argument, Petitioner does not contend that one of ordinary skill in the art would have used Schultz’s specific reflective material in Birrell. Rather, Petitioner argues that the use of reflective substrates to provide mechanical support for an array of LEDs was well known in the art and, given Schultz’s disclosure of the benefits of such a reflective coating, one of ordinary skill in the art would have sought to apply a reflective coating in Birrell. Pet. 13–16. In addition, Dr. Baker, citing to multiple disclosures in the prior art, testifies that one of ordinary skill in the art would have reasonably expected success in implementing a reflective substrate in Birrell. Ex. 1002 ¶¶ 82–85. Patent Owner’s bare attorney argument is not sufficient to call this testimony into question at this stage of the proceeding. c) Conclusion with Respect to Claim 1 For the reasons set forth above, Petitioner demonstrates sufficiently” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,492,251
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.