- TCT Mobile (US), Inc. / TCT Mobile (US) Holdings, Inc. et al. v. Fundamental Innovation Systems International LLCInstitution deniedPTAB · Aug 30, 2021 · IPR2021-00598 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–24 would have been obvious over Morita and the knowledge of a person of ordinary skill.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“current that exceeds the USB limits, Petitioner’s assertion that it would be obvious for the videophone to detect an SE1 signal provided by Morita’s adapter is unpersuasive. Rather, we are persuaded by Patent Owner’s arguments that the proposed combination of Morita and the implementation of an SE1 signal as the “abnormal condition” would render Morita inoperable for its intended purpose. Prelim. Resp. 5161. Morita is configured to maintain USB communication between the mobile device and the hub, and with the external peripherals. Morita ¶¶ 18, 19, 22. According to Petitioner, however, the SE1 signal renders normal USB communication impossible. Pet. 24; Baker Decl. ¶¶ 8182. Thus, it is unreasonable to alter Morita’s configuration to include a signal that would render inoperable the very USB communications Morita is designed to maintain. Patent Owner correctly argues that a redesign of Morita that changes the principles under which Morita was designed to operate is evidence of non-obviousness. Prelim. Resp. 5253 (citing In re Ratti, 270 F.2d 810, 813 (CCPA 1959)).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayMotivation not foundNot shown unpatentable
“current that exceeds the USB limits, Petitioner’s assertion that it would be obvious for the videophone to detect an SE1 signal provided by Morita’s adapter is unpersuasive. Rather, we are persuaded by Patent Owner’s arguments that the proposed combination of Morita and the implementation of an SE1 signal as the “abnormal condition” would render Morita inoperable for its intended purpose. Prelim. Resp. 5161. Morita is configured to maintain USB communication between the mobile device and the hub, and with the external peripherals. Morita ¶¶ 18, 19, 22. According to Petitioner, however, the SE1 signal renders normal USB communication impossible. Pet. 24; Baker Decl. ¶¶ 8182. Thus, it is unreasonable to alter Morita’s configuration to include a signal that would render inoperable the very USB communications Morita is designed to maintain. Patent Owner correctly argues that a redesign of Morita that changes the principles under which Morita was designed to operate is evidence of non-obviousness. Prelim. Resp. 5253 (citing In re Ratti, 270 F.2d 810, 813 (CCPA 1959)).” slip op. at 13
- Expert testimonyPatent owner expert creditedDecided for patent owner
“support the premise that the adapter would need a signal to indicate the so-called “charge-only” mode. Rather, Patent Owner persuasively shows that Morita has no need for such a signal. For instance, Morita’s USB port 21 (connected to the videophone) derives its power from power supply connection 22 and charges that mobile device whether there is a PC host or not. See Prelim. Resp. 3839 (citing Morita ¶¶ 14, 16; Ex. 2009 ¶¶ 8991, 119). And Morita’s adapter is configured as a self-powered hub and USB port 21 would be a high-powered hub port. Id. at 3941 (citing Ex. 1009, 134, 136, Fig. 7-33, 171; Ex. 2009 ¶¶ 9091, 119). Thus, Morita already provides high-rate charging of the videophone, without having to signal how much power or current the videophone may draw in any of Morita’s modes of operation. As Dr. Kenneth Fernald (Patent Owner’s declarant) opines, and we agree, because the ports of Morita’s adapter operate as high-power hub ports in the first and second modes of operation, there is no situation in Morita “where USB port 21 would not be able to meet the current demanded by a high-power function, and need a signal to indicate to the mobile device that it is connected to a high-power hub port or not connected to a lower-power hub port.” Ex. 2009 ¶ 119 (“Fernald Decl.”). We credit this testimony. It is consistent with Morita’s disclosure and the USB Specification as noted by Dr. Fernald. Id.” slip op. at 11
- Skill levelOther
“have either a bachelor’s degree in electrical engineering, computer science, or a related field, plus 3-5 years of experience in design of systems with Universal Serial Bus (‘USB’) or equivalent buses that follow the USB 2.0 and earlier specifications, or a master’s degree in electrical engineering, computer science, or a related field, plus 1-2 years of experience in design of systems with USB or equivalent buses that follow the USB 2.0 and earlier specifications at the time of the ’766 patent’s priority date.” Pet. 1415 (citing Becker Decl. ¶ 68). Patent Owner states that “[f]or purposes of this preliminary response only, Patent Owner applies the skill level proposed by Petitioner.” Prelim. Resp. 20. At this juncture, we do not find it necessary to define the level of skill, especially when neither party raises a dispute on the issue.” slip op. at 7
§ 103 obviousnesscites GrahamPatents in suitUS 8,232,766 - Pharmacosmos A/S v. American Regent, Inc.Institution deniedPTAB · Aug 14, 2020 · PGR2020-00009 · APJ Jamie T Wisz · PGR · Institution
The Board denied institution of PGR challenging claims 1–22, finding substantially the same art and arguments had been presented to the Office and no material error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In evaluating matters under § 325(d), the Board uses the following two-part framework: (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“instituted “unless . . . the information presented in the petition . . . if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” But even when a petitioner demonstrates a reasonable likelihood of prevailing with respect to one or more claims, institution of review remains discretionary. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). In exercising that discretion, we are guided by the statutory requirement, in promulgating regulations for post-grant review, to consider the effect of any regulations on “the efficient administration of the Office [and] the ability of the Office to timely complete proceedings,” 35 U.S.C. § 326(b), as well as the requirement to construe our rules to “secure the just, speedy, and inexpensive resolution of every proceeding,” 37 C.F.R. § 42.1(b). Office guidance, issued June 5, 2018, also explains that the Board “will evaluate the challenges and determine whether § 325(d) is sufficiently” slip op. at 28
Discretionary denialPatents in suitUS 10,478,450 - Google LLC v. Uniloc 2017 LLCInstitution deniedPTAB · Jul 13, 2020 · IPR2020-00170 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–14 and 17–20 obvious over Hull and Barber.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. In an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. Further, “[t]o satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the alleged invention of the ’201 patent would have had “a bachelor’s degree in electrical engineering, computer science, or computer engineering and had two years of relevant experience, or a graduate degree with a focus, in the field of image processing.” Pet. 18 (citing Ex. 1003 ¶¶ 52–53). Patent Owner does not offer a proposal regarding the level of ordinary skill in the art. Prelim. Resp. 24. On the present record, we determine that Petitioner’s proposed level of ordinary skill in the art is consistent with the ’201 patent and asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes a construction for any claim term. Petitioner contends that no claim terms require express construction for purposes of applying the prior art. Pet. 19. Patent Owner argues that, at this stage of the proceeding, the Board should adopt the ordinary and customary meaning of the claim terms. Prelim. Resp. 25. For purposes of this decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“distortion, we determine that a person of ordinary skill in the art would have considered the invariant nature of Hull’s descriptors to be a significant feature of the disclosed system. The Petition refers to this feature only once, asserting that “Hull primarily utilizes text descriptors that are invariant through rotation and scaling,” but that Hull “does not require or limit itself to descriptors that are invariant to translation, rotation and scaling distortions.” Pet. 40 (citing Ex. 1005, 9:46–49, 6:63–7:1 (stating that Hull’s descriptors are “preferably invariant of translation, rotation, scaling, format, font and subdivision”), claim 2 (requiring invariance in a dependent claim)). In asserting that invariance is not required, however, the Petition fails to address Hull’s other passages suggesting invariance is an essential feature of Hull’s descriptors.” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,253,201 - Nof Corporation v. Nektar TherapeuticsInstitution deniedPTAB · Feb 10, 2020 · IPR2019-01396 · APJ Zhenyu Yang · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–18 would have been obvious over any asserted prior-art ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition. Accordingly, we deny institution of an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner has not directed us to disclosures in Bentley or Merrill of using the dendritic “star” molecules for the biologic applications discussed in the Petition. Nor has Petitioner persuasively explained why one of ordinary skill in the art would have attached the specific dendritic “star” molecule of Bentley to a biologically active molecule using the disclosed aldehyde hydrate moiety, as opposed to using active groups on the polymer arms for this purpose. Thus, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to claim 1 over Bentley. Because Petitioner’s arguments with respect to dependent claims 2–18 do not cure the deficiencies identified above, Petitioner has also not demonstrated a reasonable likelihood of prevailing with respect to those claims either.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“Petitioner fails to explain why an ordinary artisan would have selected and modified the variables in formula (1) to arrive at the claimed structure, including the variables m, AO(m), Y, R1, R2, R3. Id. at 44–46. We agree. In formula (14) of JP-542, each of the potential variables identified in formula (1) are predetermined. Ex. 1017 ¶ 52. Petitioner does not explain sufficiently why one of ordinary skill in the art, seeking to increase the molecular weight of different conjugated PEG compounds, would have maintained (AO)m, R1, R2, and R3 as shown in figure (14) and only modified the variable “n.” And to the extent these other variables would have been modified, Petitioner does not explain sufficiently why one of ordinary skill in the art would have selected these variables in a manner that would result in a conjugate that satisfies all of the structural limitations of claim 1. Accordingly, Petitioner’s proposed modification appears to be based on a hindsight desire to arrive at the claimed invention, and not on what one of ordinary skill in the art would have been motivated to do based on the prior art and the general knowledge in the art at the time of the invention. As a result, we determine that Petitioner has not demonstrated a reasonable likelihood that claim 1 would have been obvious over JP-542. Because Petitioner’s arguments with respect to dependent claims 2–18 do not cure the deficiencies identified above, Petitioner has also not demonstrated a reasonable likelihood of prevailing with respect to those claims either.” slip op. at 15
- PTAB / AIA Trials › Real party in interest / privityNot reached
“1 As authorized, the Reply and the Sur-reply are limited to the issue of real party in interest. We do not reach that issue in this Decision, as we decline to institute for other reasons.” slip op. at 2
§ 103 obviousnesscites PhillipsPatents in suitUS 8,809,453 - BMW Of North America, LLC v. Carrum Technologies, LLCInstitution deniedPTAB · Nov 5, 2019 · IPR2019-00928 · APJ Lynne H Browne · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim, relying on Winner’s existing methods for detecting turns.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless 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.”” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“6. Analysis We agree with Patent Owner. As Winner discloses methods for identifying when a vehicle has entered a curve (measuring transverse acceleration and using the forward facing radar), it is not evident why one of ordinary skill in the art would have looked to Fukada to obtain additional Petitioner is relying on alleged AAPA7 to provide reasoning in support of the proposed combination, we note that identification of a problem “is not an admission that this problem was known or appreciated by others.” Endo Pharm. Inc. v. Actavis LLC, 922 F.3d 1365, 1376 (Fed. Cir. 2019) (quoting Innogenics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008))). Thus, we are not persuaded by Petitioner’s argument.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In view of our analysis discussed below, we do not discern a need to construe explicitly any claim term of the ’416 patent, because construing these terms is not necessary for us to assess the asserted grounds of unpatentability. See 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.”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“A person of ordinary skill in the art (“POSITA”) at the time the ’416 patent was filed would have a bachelor’s degree in electrical engineering, computer engineering, or a related engineering discipline and two to three years of industry experience in the field of automotive control systems or automotive engineering, or equivalent experience, education, or both.” Pet. 9 (citing Ex. 1004 ¶ 22). Petitioner asserts further that “[t]he person would also have knowledge or familiarity with in-vehicle computing.” Id. Patent Owner “does not dispute Petitioner’s definition of a POSA.” Prelim. Resp. 2 (citing Pet. 9). Accordingly, for the purposes of this Decision, we 6 We note that at this time no objective evidence of nonobviousness has been presented by Patent Owner. consistent with the evidence at this stage of the proceeding, including the ’416 patent and the asserted prior art.” slip op. at 7
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,925,416 - Heineken N.V. v. Anheuser-Busch Inbev S.A.Institution deniedPTAB · Mar 7, 2019 · IPR2018-01663 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because Heineken did not show a reasonable likelihood that claims 1–7 would have been obvious over any asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’453 patent. Thus, we do not institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Contrary to Petitioner’s arguments, we are directed to no disclosure in Butterworth of using negative pressure to dispense liquids from a container. As noted by Patent Owner, the vacuum of Butterworth is applied only after the contents of the container have been removed. Prelim. Resp. 41 (citing Ex. 1005, 11:24–12:19); Ex. 1005, 11:29–33 (“However, after use of such a container the inner layer of the container, since it is not bonded to the outer layer, can be removed by, for example, applying a vacuum to the inner part of the container and allowing air to flow through the vents into the interface between the two parts.”) (emphasis added), 15:36–16:2 (“This allows the liner formed by the inner shell 1 to be collapsed by applying a vacuum to the neck of the bottle. The resulting bottle may be re-lined before being re-used.”). Thus, it is not evident from Petitioner’s arguments why one of ordinary skill in the art would have sought to apply the positive pressure systems of Beyens and/or Schmidt, which apply positive pressure to the interior of a container in order to dispense beverages, to the system of Butterworth, which applies a vacuum to collapse the liner of a container once it is empty. In view of the foregoing, Petitioner has not demonstrated a reasonable likelihood that claim 1 of the ’453 patent would have been obvious over the combined disclosures of Butterworth, Beyens, and/or Schmidt. Petitioner also does not present any arguments or evidence with respect to dependent claims 2–7 that would remedy the defects noted above with respect to claim 1. Thus, Petitioner has not demonstrated a reasonable likelihood that the subject matter of claims 1–7 would have been obvious over the combined disclosures of Butterworth, Beyens, and/or Schmidt.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Brady discloses introducing back pressure to void 18 between the inner and outer layers of the preform during the blow molding step so that the inner container 14 may be formed to a different shape than the outer container 16. Thus, the inner container 14 need not conform to the outer container 16 during the blow molding process. In this way, for example, a double-walled container 22 may be formed wherein the outer container 16 has a flat circular base 24 while the inner container 14 has a convex hemispherical base 26. Ex. 1008, 2:30–40. During this process, void 18 is maintained, and later may be filled with carbon dioxide or any other gas. Id. at 2:30–46. Petitioner does not adequately explain why Brady’s discussion of successfully preventing the inner and outer layers from conforming to each other during the blow molding process would teach or suggest conforming the inner and outer layers during the blow molding process. Indeed, both Petitioner and Brady rely on void 18 being maintained during the blow molding process in order to allow carbon dioxide or a colored liquid to be injected between the inner and outer layers of the container. Pet. 48 (citing Ex. 1008, 2:30–33 (providing back pressure to space or void 18 “so that the inner container 14 may be formed to a different shape than the outer container 16”), 2:41–43 (“Carbon dioxide or any other gas may be inserted into the void 18 between the inner and outer containers 14 and 16, respectively.”), 3:5–9 (“As will be readily apparent to one ordinarily skilled in the art, the carbon dioxide inserted into the void 18 may be at atmospheric pressure, or may be at an elevated pressure.”)). Thus, we are not persuaded that Brady teaches or suggests a container having inner and outer layers that conform, as asserted by Petitioner.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundNot shown unpatentableNot shown unpatentable
“Beyens discloses that PET containers have the disadvantage “that PET is not completely impervious to oxygen, so that beverages such as beer which deteriorate rapidly on exposure to oxygen, can only be stored for short periods.” Ex. 1006, 1:16–24. Beyens therefore expressly avoids the use of PET for its inner container, requiring instead an inner bag that is made from a flexible air-tight or gas-tight material. Compare id. at 2:45–48 (“This invention consists in a container . . . comprising an outer container [and] an inner bag of flexible air-tight or gas-tight material.”), 2:50–53 (“The inner bag 20 is formed of a material which is impervious to air or carbon dioxide and which is suitable for contact with the beverage to be contained.”) with id. at 1:21–22 (“PET is not completely impervious to oxygen . . . .”). Given that Beyens expressly avoids using PET for its inner container, Petitioner has not explained why a person of ordinary skill in the art would have nevertheless considered the PET layers of Richter or Keisuke “suitable” for use as the inner layer of Beyens.” slip op. at 19
Claim construction§ 103 obviousnessPatents in suitUS 9,944,453 - LG Electronics, Inc. / LG Electronics U.S.A. Inc. et al. v. Fundamental Innovation Systems International LLCInstitution deniedPTAB · Jun 28, 2018 · IPR2018-00460 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution on all challenged claims because the same challenge had already been denied in the ZTE/Samsung IPR, and dismissed LG’s joinder motion as moot.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“grounds, arguments, and supporting evidence as the petition in the ZTE/Samsung IPR. Pet. 2 (“This petition is substantially identical to IPR2018-00110.”); Mot. 1 (“[Petitioner’s] Petition is substantively identical to the petition in the ZTE/Samsung IPR—challenging the same claims of the ’550 Patent on the same grounds while relying on the same prior art, arguments, and evidence.”). On May 8, 2018, we denied institution in the ZTE/Samsung IPR. ZTE/Samsung IPR, Paper 12, 13. In view of the identity of the challenge between the present Petition and that filed in the ZTE/Samsung IPR, and for the reasons set forth in the decision denying institution in the ZTE/Samsung IPR, which we hereby incorporate by reference, we likewise do not institute inter partes review in this proceeding. See id. at 7–13.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“III. DISMISSING MOTION FOR JOINDER As noted above, Petitioner seeks to join, as a Petitioner, in the ZTE/Samsung IPR. Mot. 1. Because the ZTE/Samsung petition was denied, however, Petitioner’s Motion for Joinder is moot. See 35 U.S.C. § 315(c).” slip op. at 3
NonePatents in suitUS 8,624,550 - Composite Materials Technology, Inc. v. Greatbatch, Ltd.Institution deniedPTAB · Dec 4, 2017 · IPR2017-01441 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–18 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Contrary to Petitioner’s arguments, the fact that two references relate to the same general subject matter is not, by itself, sufficient to explain why one of ordinary skill in the art would have sought to modify one reference in view of the other; it demonstrates at most that the two references are in the same field of endeavor. See In re GPAC Inc., 57 F.3d 1573, 1577–78 (Fed. Cir. 1995). Nor is an alleged admission that Fife and Stephenson are prior art to the ’075 patent sufficient to explain why these two references would be combined in a manner necessary to arrive at the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 389, 418–19 (2007) (“[I]nventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.”). In support of the Petition, Mr. Frost generally reiterates Petitioner’s arguments, stating: “[a] person of ordinary skill in the art would be motivated to combine the teachings of Fife and Stephenson since both Fife and Stephenson relate to methods for producing tantalum electrolytic capacitors, and both Fife and Stephenson constitute admitted prior art mentioned specifically in the ’075 Patent.” Ex. 1002 ¶ 32. Mr. Frost does not explain, however, why either of these factors would have prompted one of ordinary skill in the art to use Stephenson’s higher formation voltages in Fife. Thus, this testimony is entitled to little, if any, weight. See ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (expert testimony regarding motivation to combine is insufficient if it is “generic and bears no relation to any specific combination of prior art elements” and “fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does”); see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (explaining that “[l]ack of factual support for expert opinion going to factual determinations” may “render the testimony of little probative value”). As Petitioner provides insufficient rationale to explain why one of ordinary skill in the art would have combined the disclosures of Fife and Stephenson in a manner necessary to achieve the claimed invention, it has not demonstrated a reasonable likelihood that the subject matter of claim 1 would have been obvious over those references. And, because challenged claims 2–11 and 13–18 each depend from claim 1, and because the deficiencies in Petitioner’s arguments and evidence regarding claim 1 are not remedied by Petitioner’s arguments and evidence regarding claims 2–11 and 13–18, Petitioner has likewise not demonstrated a reasonable likelihood that the subject matter of those claims would have been obvious over Fife and Stephenson.6” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“In support of the Petition, Mr. Frost generally reiterates Petitioner’s arguments, stating: “[a] person of ordinary skill in the art would be motivated to combine the teachings of Fife and Stephenson since both Fife and Stephenson relate to methods for producing tantalum electrolytic capacitors, and both Fife and Stephenson constitute admitted prior art mentioned specifically in the ’075 Patent.” Ex. 1002 ¶ 32. Mr. Frost does not explain, however, why either of these factors would have prompted one of ordinary skill in the art to use Stephenson’s higher formation voltages in Fife. Thus, this testimony is entitled to little, if any, weight. See ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (expert testimony regarding motivation to combine is insufficient if it is “generic and bears no relation to any specific combination of prior art elements” and “fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does”); see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (explaining that “[l]ack of factual support for expert opinion going to factual determinations” may “render the testimony of little probative value”).” slip op. at 8
§ 103 obviousnessPatents in suitUS 9,312,075 - PTAB · Oct 6, 2017 · IPR2017-01353 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4, 6, 8, 11–13, 15, and 18 were unpatentable over either asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and Preliminary Response we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“As discussed above, however, Petitioner has not established sufficiently that Satterthwaite discloses adding STMP or any other salt of a condensed phosphate directly to the disclosed mixture of water, gypsum, and mineral wool. This deficiency undermines Petitioner’s argument that a person of ordinary skill in the art would look to Hjelmeland to determine how much STMP to add to Satterthwaite’s composition. Rather, in view of our determination regarding the disclosure of Satterthwaite, the more appropriate inquiry is whether, in view of Hjelmeland, a person of ordinary water mixture of Satterthwaite in the first place. Petitioner, however, does not explain adequately why one of ordinary skill in the art, having already utilized STMP to crosslink the starch, would have then sought to add STMP or any other condensed phosphate to Satterthwaite’s mixture in view of Hjelmeland’s disclosure. KSR Int’l Co. v. Teleflex Inc., 904 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). As a result, Petitioner has failed to identify a reason why a person of ordinary skill in the art would have combined the disclosed elements in the art in the same fashion as recited in the claims of the ’904 patent. Id. (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”).” slip op. at 19
§ 103 obviousnesscites PhillipsPatents in suitUS 8,500,904 - PTAB · Oct 6, 2017 · IPR2017-01351 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, and 4–7 were unpatentable over either asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“well as the testimony of Mr. Harlos and Dr. Bruce, we conclude that Petitioner has not demonstrated a reasonable likelihood that claims 1, 2, and 4–7 are unpatentable over the recited prior art references. Accordingly, we do not institute inter partes review with respect to any of the asserted grounds. IV. ORDER It is hereby ORDERED that inter partes review is not instituted.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Because the reaction of STMP and potato starch in Graux occurs before the starch is added to the gypsum and water mixture, and because the reaction converts the starch and STMP into di-starch orthophosphate and tetrasodium pyrophosphate, i.e., STMP is consumed during Graux’s reaction process, we are not persuaded that Graux expressly teaches or suggests a set gypsum that is “formed from”12 calcined gypsum, water, and sodium trimetaphosphate, as required by claim 1.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Furthermore, we are not persuaded by Petitioner’s argument that one of ordinary skill in the art would have looked to Hjelmeland to determine the amount of STMP to use in Graux. Pet. 21 (asserting that an ordinary artisan would have found it obvious to use the amount of condensed phosphate specified by Hjelmeland in the plaster composition of Graux). Although, as noted by Petitioner, Graux and Hjelmeland both disclose the use of a condensed phosphate, the references use this material in different ways. In particular, Graux uses the condensed phosphate (STMP) to crosslink a potato starch, whereas Hjelmeland discloses adding the condensed phosphate to a gypsum suspension to act as a retarding agent. Ex. 1006, 5:39–50; Ex. 1008, 3:60–4:16. Petitioner does not explain why the concentration of STMP used to retard the setting of a gypsum suspension is in any way related to the amount of STMP required to effectively crosslink a starch. Nor does Petitioner explain adequately why one of ordinary skill in the art, having already utilized STMP to crosslink its starch, would have then sought to add STMP to Graux’s mixture in view of Hjelmeland’s genus disclosure. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). Thus, Petitioner has failed to sufficiently identify a reason why a person of ordinary skill in the art would have combined the disclosed elements in the same fashion as recited in the claims of the ’980 patent. Id. (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). Based on the foregoing, Petitioner has not demonstrated that Graux, ASTM C473-95, Hjelmeland, Sucech, and Summerfield teach or suggest every limitation of independent claim 1. As dependent claims 2 and 4–7 depend directly from claim 1, we are likewise not persuaded that the combination of Graux, ASTM C473-95, Hjelmeland, Sucech, and Summerfield teaches or suggests the subject matter of these claims.” slip op. at 13
§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,758,980
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.