- Eden Park Illumination, Inc. / Larson Electronics LLC et al. v. S. Edward NeisterAll claims unpatentablePTAB · Nov 14, 2023 · IPR2022-00381 · APJ Julia Heaney · IPR · Final written decision
Claims 1–10 and 12–18 are unpatentable as obvious; the revised contingent motion to amend is denied because proposed claims 19–25 lack written description support.
RulingsFinal written decision- Skill levelOther
“1. Principles of Law In an inter partes review, the petitioner bears the ultimate burden of persuasion to show unpatentability, which never shifts to the patent owner. Dynamic Drinkware LLC v. National Graphics, Inc., 800 F.3d 1375, 1379– 1380 (Fed. Cir. 2015). “However, when a patent owner attempts to antedate an asserted prior art reference, the patent owner takes on a temporary burden of production.” Medtronic, Inc. v. Teleflex Innovations S.À.R.L., 68 F.4th 1298, 1303 (Fed. Cir. 2023) (citing Dynamic Drinkware, 800 F.3d at 1378– 79)). “Once that burden is met, the burden shifts back to the petitioner.” Id. “[A] patent’s claims are not entitled to an earlier priority date because the patentee claims priority. . . . Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120,” including a written description in the earlier-filed application that satisfies § 112. In re NTP, Inc., 654 F.3d 1268, 1276–77 (Fed. Cir. 2011) (citations omitted)); see also Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 870–71 (Fed. Cir. 2010). “[T]he hallmark of written description is disclosure,” and “the test [for satisfaction of the written description requirement] requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The written description “must ‘clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed,’” and “reasonably” convey to those skilled in the art “that the inventor had possession of the claimed subject matter as of the filing date.” Id. (alteration in original). Stated another way, “one skilled in the art, reading the original disclosure, must immediately discern the limitation at issue in the claims.” Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). To provide sufficient written description support, “[a] ‘disclosure” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“3. Reason to Combine Petitioner contends it would have been obvious to a person of ordinary skill in the art to combine (1) Eckhardt’s method of disinfecting skin using any light source that emits light capable of sterilization or disinfection, with (2) Sosnin’s KrCl or XeBr light sources, which generate photons having a wavelength of 222 nm and 282 nm, respectively. Pet. 21– 22 (citing Ex. 1003 ¶¶ 40, 81; Ex. 1004 ¶¶ 31, 69; Ex. 1005, 1547). Petitioner contends a person of ordinary skill would have been motivated to combine the teachings of Eckhardt and Sosnin for several reasons: (1) Eckhardt’s teaching of using any light source capable of sterilization or disinfection, and specifically “narrow spectrum light (e.g., a line spectrum)” would have suggested to a person of ordinary skill in the art to incorporate other well-known germicidal UV light sources like Sosnin’s, and both references teach that their light sources kill bacteria; (2) a person of ordinary skill would have implemented Eckhardt’s high-level disclosure of using UV- C light to disinfect skin with Sosnin’s 222 nm excimer lamp because Sosnin’s lamp’s wavelength is within the range of 220 to 310 nm suggested by Eckhardt; (3) the effectiveness and relative safety of directing UV-C light of 222 nm on bare skin for disinfection was already understood by persons of ordinary skill in the art, even though there was general caution against exposing skin to excessive UV radiation. Pet. 22–24 (citing Ex. 1003 ¶¶ 40, 81–92; Ex. 1004 ¶¶ 5, 31, 69, 70; Ex. 1005, 1545–47; Ex. 1011 ¶¶ 28, 40; Ex. 1013 ¶ 8; Ex. 1015, 2:22–67; Ex. 1016, 2:23–26; Ex. 1017, 58).” slip op. at 25
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
“with our analysis of the effective filing date of original claims 12–18 that Patent Owner does not meet its burden to demonstrate the inventor’s possession in the ’626 provisional of generating photons of at least two single line wavelengths. Having considered the additional disclosures of the ’626 provisional Patent Owner points to in its RMTA (see RMTA 9), we find that none of these disclosures describe using both 222 nm and 254 nm single line wavelengths. See Ex. 1008 ¶¶ 8, 12, 27, claim 9; Ex. 2047, 6–9. For example, the recitation of “apparatus that consists of a NUV source, ESP, ozone generator, mercury lamps, and humidifier with controls as defined in claims 3–8 and any combination therein” in claim 9 of the ’626 provisional generally identifies various sources that may be used, but would not have indicated to a person of ordinary skill that the inventor had possession of generating single line wavelengths of 222 nm and 254 nm. Mr. Lawal’s testimony supports this finding. Ex. 1053 ¶¶ 1–12. Accordingly, we determine that Patent Owner does not meet its burden to demonstrate written description support for generating photons of at least two single line wavelengths, in claims 19–25 of its RMTA.19 Because Patent Owner has not satisfied the statutory and regulatory prohibition against introducing new matter in the revised proposed substitute claims, we deny the RMTA as to claims 19–25. 35 U.S.C. § 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii). Accordingly, we need not reach the patentability challenges Petitioner raises with regard to claims 19–25.” slip op. at 77
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteOther
“19 We also determine that claim 19 does not particularly point out and distinctly claim the invention sought to be patented, as required by 35 U.S.C. § 112(b), because “the microorganisms” in element [19B] lacks antecedent basis.” slip op. at 78
Patent outcomesUS 9,700,642 unpatentable§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,700,642 - PTAB · Nov 8, 2023 · IPR2023-00810 · APJ Jeffrey W Abraham · IPR · Institution
The Board instituted IPR on claims 1–30 and all asserted grounds, finding a reasonable likelihood that claims 1–30 are obvious over Baxter.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons set forth below, we determine the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (informative; precedential as to § III.C.5, first paragraph). We apply a two-part framework in deciding discretionary denial under § 325(d), first considering Becton, Dickinson factors (a), (b), and (d) to determine whether the same or substantially the same art or arguments were previously presented to the Office, and if so, evaluating Becton, Dickinson factors (c), (e), and (f) to determine whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, 7–11.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a “bachelor’s degree in electrical engineering or its equivalent and two years of experience in electrical engineering with some experience in design of power supply management systems, such as battery charging systems.” Pet. 12. Petitioner also contends that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 12 (citing Ex. 1023 ¶¶ 44–48). Patent Owner does not challenge Petitioner’s definition or offer its own. See generally, Prelim. Resp. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’971 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’971 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that the term “start control module” should be construed as “electronic switch.” Pet. 12 (citing Ex. 1023 ¶¶ 148–150). According to Petitioner, “the ‘971 Patent states that ‘the automobile start control module is the electronic switch.’” Pet. 13 (citing Ex. 1001, 2:29–30, 4:42–45, 4:26–28, 4:29–32). Patent Owner does not address claim construction in its Preliminary Response. We determine that we do not need to expressly construe any terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing 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 8
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,376,971 - PTAB · Nov 6, 2023 · IPR2023-00879 · APJ Kristina M Kalan · IPR · Institution
The Board instituted IPR on all claims 1–20 and all asserted grounds, finding a reasonable likelihood that SMA would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon considering the Petition and the evidence of record, we determine that Petitioner has shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the claims challenged in the Petition. Accordingly, we institute inter partes review of all claims and all grounds asserted in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). 37 C.F.R. § 42.100(b) (2023). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. 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 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For the purpose of this Decision, we accept Petitioner’s undisputed contention that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, or a similar discipline and at least two years of design experience with circuit design.” Pet. 22 (citing Ex. 1007 ¶ 30); see Ex. 1007 ¶ 31. The level of ordinary skill in the art is further demonstrated by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 9,584,021 - PTAB · Oct 26, 2023 · IPR2023-00804 · APJ Julia Heaney · IPR · Institution
Instituted review of claims 1, 2, and 23 on all grounds; the Gowanlock–Swivelpole obviousness challenge met the reasonable-likelihood threshold.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Gowanlock does not disclose a crown deck, as required by claims 1 and 23. Patent Owner correctly sets forth the construction of “crown deck” the parties agree to apply here (see Section II.A above), which requires a walking surface. None of the figures of Gowanlock’s rig relied upon by Petitioner, i.e., Figures 1A, 1B, and 2, depict a walking surface. The language of claim 1 also requires that a bracket “attach the mounting pole to the crown deck of the rig.” Petitioner asserts that Figure 1B depicts bracket 102, and Figure 2 depicts bracket 204. We do not agree with Petitioner that either structure 102 or 204 attaches a mounting pole to a crown deck, as claim 1 requires. According to Gowanlock, brackets 102 and 204 each connect a light fixture (101 and 203) to a light fixture attachment (103 and 202). Ex. 1003 ¶ 19. Therefore, Petitioner does not sufficiently show that Gowanlock discloses the recited bracket. Having considered the evidence and arguments presented by both parties, we determine Petitioner has not shown a reasonable likelihood of prevailing on its anticipation challenge to claims 1 and 23.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We find that Petitioner sufficiently demonstrates a rational basis for a person of ordinary skill in the art to combine the teachings of Gowanlock and Swivelpole. See Pet. 35–36; Ex. 1008 ¶¶ 84–90. Patent Owner’s argument that Petitioner’s rationale for combining the references is insufficient because it repeats “catchphrases” from KSR is not persuasive. A sufficient rationale to demonstrate obviousness under KSR does not require a showing that a person of ordinary skill in the art would know how to physically combine structures taught by the references. The fact that the references and challenged patent describe the same problems in the industry supports that the references are analogous art, but does not necessarily demonstrate hindsight in an obviousness rationale. Further, Patent Owner’s argument as to problems faced in the field such as harsh environmental conditions is unsupported attorney argument. We disagree with Patent Owner that Mr. Hamdan’s testimony as to prior art methods of attaching mounting poles to guardrails in oil fields (e.g., Ex. 1008 ¶ 87) is unsupported. We find that Mr. Hamdan’s years of experience as an engineer in the oil and gas industry designing rigs supports his testimony. Ex. 1007. Accordingly, we determine that Petitioner has shown a reasonable likelihood of prevailing on its obviousness challenge to claims 1, 2, and 23 based on a combination of Gowanlock and Swivelpole.” slip op. at 31
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“According to the Director’s Guidance Memo, we should not exercise discretion to deny institution where a petitioner submits a Sotera stipulation. Guidance Memo 3. Here, Petitioner’s stipulation is limited to “Grounds 1–4 asserted herein.” Pet. 92. Thus, we agree with Patent Owner that this stipulation is narrower than a Sotera stipulation, and we determine that it does not implicate the Guidance Memo’s prohibition against discretionary denial where a Sotera stipulation is presented. Although Petitioner’s stipulation is not a Sotera-type stipulation, it does minimize the possibility of overlapping issues between the parallel proceeding and this proceeding, which both Petitioner and Patent Owner agree are substantial. Accordingly, the considerations of the fourth Fintiv factor weigh against exercising discretionary denial.” slip op. at 48
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,976,016 - Eden Park Illumination, Inc. / Larson Electronics LLC et al. v. S. Edward NeisterAll claims unpatentablePTAB · Oct 24, 2023 · IPR2022-00682 · APJ Elizabeth M Roesel · IPR · Final written decision
Claims 1, 2, 5, and 6 are unpatentable as obvious over Brown-Skrobot and Clauβ, with Liang added for claims 5 and 6.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“bachelor’s degree in an engineering discipline, such as biological, chemical, environmental, electrical, mechanical, and/or systems engineering, or an equivalent degree such as one in physics or similar subject matter.” Pet. 9 (citing Ex. 1003 ¶ 20). “Such a person would also have had two to three years of work or research experience with UV disinfection technology and/or systems and would be familiar with the fundamentals of UV excimer lamps,” but “less education could be compensated by more experience and vice versa.” Id. Patent Owner does not dispute Petitioner’s proposed definition. See PO Resp. 8. We determine that Petitioner’s proposed definition is consistent with the prior art of record, and apply it for this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings on ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“It is a well-settled principle of claim construction that “an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in an open-ended claim containing the transitional phrase ‘comprising.’” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). “The exceptions to this rule are extremely limited: a patentee must ‘evince[] a clear intent’ to limit ‘a’ or ‘an’ to ‘one.’” Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008) (quoting KCJ, 223 F.3d at 1356)). “An exception to the general rule that ‘a’ . . . means more than one only arises where the language of the claims themselves, the specification, or the prosecution history necessitate a departure from the rule.” Id. at 1342–43; see also ABS Glob., Inc. v. Cytonome/St, LLC, No. 2022-1761, 2023 WL 6885009, at *4 (Fed. Cir. Oct. 19, 2023) (discussing and applying the general rule).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“obvious to implement the sterilization method disclosed in Brown-Skrobot by combining the monochromatic UV sources disclosed in Clauβ. Pet. 13–15; Pet. Reply 7–16. Our finding is supported by Brown-Skrobot’s teaching concerning the benefits of using two or more monochromatic UV radiation sources having different wavelengths. The different wavelengths may provide increased levels of sterility, because different microorganisms that have to be sterilized on a medical device may have greater or lesser sensitivities to uv radiation at different wavelengths; therefore, multiple monochromatic uv radiation sources can be used which produce monochromatic uv radiation at different wavelengths which when used together will successfully sterilize all the microorganisms, that might not otherwise be sterilized, or would require greater levels of energy if only one monochromatic uv radiation source is used. Ex. 1004 ¶ 42. In our view, the above-quoted passage in Brown-Skrobot provides strong evidence that a POSITA would have had a reason to combine two or more monochromatic UV radiation sources having different wavelengths. Particularly persuasive is Brown-Skrobot’s teaching that different microorganisms have different sensitivities to different wavelengths of radiation such that combining sources that emit different wavelengths will provide more effective sterilization. Id. Brown-Skrobot also teaches that combining two or more monochromatic UV radiation sources having different wavelengths may require less energy than using a single monochromatic UV radiation source to provide the same level of sterilization. Id.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“For many polymers which are commonly used for contact lens containers and contact lenses, which were described earlier, radiation at wavelengths less than 240 nm is absorbed by the polymers and may cause chain scissions within the polymers. Since the laser emits at a single wavelength or a narrow range of wavelengths, a source which produces radiation below 240 nm can be avoided which is a benefit over broad band radiation sources. Ex. 1004 ¶ 54. Patent Owner’s argument overlooks the breadth of Brown- Skrobot’s disclosure, which is not limited to contact lenses or lasers, as discussed above. Nor is Brown-Skrobot’s process limited to sterilization of polymeric materials; the medical devices that may be sterilized include those made from metals. Ex. 1004 ¶ 45; Ex. 1037 ¶ 18. The disclosure of a preferred embodiment does not, in any event, teach away from non-preferred embodiments. Mouttet, 686 F.3d at 1333–34; see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.”).” slip op. at 28
Patent outcomesUS 8,975,605 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,975,605 - Markforged Inc. v. Continuous Composites, Inc.No claims unpatentablePTAB · Sep 26, 2023 · IPR2022-00679 · APJ Sheldon M Mcgee · IPR · Final written decision
Claims 1–12, 20, and 21 were not proven unpatentable; the asserted obviousness grounds failed for insufficient motivation to combine, teaching away, or missing claim limitations.
RulingsFinal written decision- Adverse judgmentAdverse judgmentOther
“Patent Owner statutorily disclaimed claims 13–19 on July 25, 2023, rendering Petitioner’s Grounds 4, 9, and 10 moot. Ex. 2008. Thus, our Final Written Decision does not address Petitioner’s Grounds 4, 9, and 10. The Board heard oral arguments in an in-person hearing conducted on July 27, 2023. See Paper 23.” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had a master’s or bachelor’s degree in mechanical engineering, materials science, or a related degree, and either at least 3–5 years of experience (with a master’s degree), or at least 5–6 years of experience (with a bachelor’s degree), in composite materials or additive manufacturing. Pet. 13–14 (citing Ex. 1002 ¶ 36). Patent Owner states that it “does not agree that Petitioner’s proposed level of skill in the art accurately reflects the level of ordinary skill in the art as of the priority date . . . [, but r]egardless [of] the level of skill, . . . the Petition does not show the challenged claims are unpatentable.” Resp. 14–15. Patent Owner does not propose a different level of skill in the art. See id. at 15 (“Patent Owner reserves the right to propose a level of ordinary skill in the art later in this proceeding, or in other proceedings.”). On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). Although a more specific definition is not necessary, we adopt Petitioner’s proposed definition because, on this record, it is consistent with the disclosures of the asserted prior art references. Neither party, however, advances information explaining how or why the result in this case would change based on the level of ordinary skill determined by the Board.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner advances no specific construction of any claim term, but rather proposes that “claim terms should be given their plain and ordinary meaning.” Pet. 14. Patent Owner asserts that the term “anchor” should be construed according to its plain and ordinary meaning, which, according to Patent Owner, is “contact to which the path of composite material is adhered to enable pulling of the path.” Resp. 15 (citing Ex. 2006, 2, 53). Petitioner responds that “[i]n the parallel litigation, the Court has construed ‘anchor point’ and ‘anchor’ as ‘a contact point to which the path is affixed and that serves as an origin point for the formation of the path.’” Reply 3. On the complete record, we determine that no claim term needs an express construction to resolve the controversy. C. GROUND 1 – ALLEGED OBVIOUSNESS OF CLAIMS 20 AND 21 OVER LIPSKER” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“combining multiple embodiments from a single prior art reference (Resp. 31), i.e., “there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” In re Stepan, 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017). On this record, Petitioner fails to provide any such motivation to combine the embodiment in Lipsker’s Figure 2 with those of Figures 4A, 4B, 4C, and 5 to arrive at the subject matter of claim 20. Pet. 23–31. Rather, Petitioner merely points to the disparate embodiments of Figures 2, 4A, 4B, 4C, and 5 and portions of Lipsker’s disclosure pertaining to those embodiments, and asserts that Lipsker “discloses” the individual limitations recited in claim 20. See, e.g., id. at 25 (Petitioner, relying on Figure 2, asserting that “Lipsker discloses the preamble of Claim 20”), 27 (Petitioner, relying on Figure 5, asserting that “Lipsker discloses Element 20[a]”), 28 (quoting Lipsker’s descriptions of wire and adhesive dispensed separately as depicted in Figure 2, and asserting “Lipsker discloses Element 20 [c]”), 29 (pointing to Figures 4A, 4B, and 4C and asserting “Lipsker discloses Element 20[d]”). Pointing to disparate embodiments without providing a sufficient motivation to combine them is not enough to establish the obviousness of claim 20 as a whole. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (holding that a claim “composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art”).” slip op. at 14
Patent outcomesUS 10,744,708 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,744,708 - PTAB · Sep 19, 2023 · IPR2023-00695 · APJ Julia Heaney · IPR · Institution
The Board instituted inter partes review of claims 1–5 and 7–18 on the asserted obviousness ground over Eckhardt and Sosnin.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.2” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had at least a bachelor’s degree in an engineering discipline such as biological, chemical, environmental, electrical, mechanical, and/or systems engineering, or an equivalent degree such as one in physics or similar subject matter.” Pet. 16 (citing Ex. 1003 ¶ 21). Petitioner further argues that “[s]uch a person would also have two to three years of work or research experience with UV disinfection technology and/or systems and would be familiar with the fundamentals of UV excimer lamps” but, “less education could be compensated by more experience and vice versa.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 15. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’951 patent and the asserted prior art.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“Having considered the evidence and arguments presented by both parties on the present record, we find sufficient support for Petitioner’s contentions that Eckhardt and Sosnin teach or suggest all of the limitations in claim 1, and that a person of ordinary skill in the art would have combined Eckhardt’s teaching of narrow spectrum light in the range of 220 to 310 nm to disinfect skin, with Sosnin’s implementation of excimer lasers including 222 nm to kill bacteria, to arrive at the method of claim 1 with a reasonable expectation of success. Petitioner relies on Eckhardt’s teachings, as follows. Eckhardt teaches that “[a] region of tissue to be sterilized or disinfected may include unbreached skin.” Ex. 1004 ¶ 29. Eckhardt describes its Figure 1 as illustrating “a method for sterilizing or disinfecting a region of skin or tissue of a patient using sterilizing or disinfecting light” and that the light may be UV light, such as UVA, UVB, and UVC light. Id. ¶ 31. Eckhardt also teaches that the light may be generated in one or more flashes and that the energy of a single flash might be sufficient to deliver a sterilizing or disinfecting dosage. Id. ¶ 32. On the present record, we disagree with Patent Owner’s argument that Eckhardt’s bandages teach away from the use of UV light on skin. Eckhardt does not teach bandages as a way to block all UV light, but rather, uses bandages to control the intensity of UV light reaching the skin. Indeed, Eckhardt’s embodiment that Petitioner relies upon is titled “UV-Transmissive Bandage” and explains how to choose bandage materials that transmit UV-C light. See id. ¶¶ 69– 72.” slip op. at 15
- Obviousness (§103) › KSR rationalesMotivation foundReasonable expectation foundInstituted
“Having considered the evidence and arguments presented by both parties on the present record, we find sufficient support for Petitioner’s contentions that Eckhardt and Sosnin teach or suggest all of the limitations in claim 1, and that a person of ordinary skill in the art would have combined Eckhardt’s teaching of narrow spectrum light in the range of 220 to 310 nm to disinfect skin, with Sosnin’s implementation of excimer lasers including 222 nm to kill bacteria, to arrive at the method of claim 1 with a reasonable expectation of success. Petitioner relies on Eckhardt’s teachings, as follows. Eckhardt teaches that “[a] region of tissue to be sterilized or disinfected may include unbreached skin.” Ex. 1004 ¶ 29. Eckhardt describes its Figure 1 as illustrating “a method for sterilizing or disinfecting a region of skin or tissue of a patient using sterilizing or disinfecting light” and that the light may be UV light, such as UVA, UVB, and UVC light. Id. ¶ 31. Eckhardt also teaches that the light may be generated in one or more flashes and that the energy of a single flash might be sufficient to deliver a sterilizing or disinfecting dosage. Id. ¶ 32. On the present record, we disagree with Patent Owner’s argument that Eckhardt’s bandages teach away from the use of UV light on skin. Eckhardt does not teach bandages as a way to block all UV light, but rather, uses bandages to control the intensity of UV light reaching the skin. Indeed, Eckhardt’s embodiment that Petitioner relies upon is titled “UV-Transmissive Bandage” and explains how to choose bandage materials that transmit UV-C light. See id. ¶¶ 69– 72.” slip op. at 15
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,246,951 - Hope Medical Enterprises, Inc. v. Fennec Pharmaceuticals, Inc.No claims unpatentablePTAB · Sep 1, 2023 · IPR2022-00125 · APJ Julia Heaney · IPR · Final written decision
The Board granted the revised noncontingent motion to amend, canceled claims 18 and 20, and entered substitute claims 28 and 29, which were not proven obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, relying on the testimony of Dr. Rogers, contends that a person of ordinary skill in the art would have [had] a bachelor’s degree or equivalent in any of the pharmaceutical sciences with at least 5 years of experience in solid state chemistry; a master’s degree in any of the pharmaceutical sciences with at least 3 years of experience in solid state chemistry; or a Ph.D. in any of the pharmaceutical sciences with 1 year of experience in solid state chemistry. Pet. 8 (citing Ex. 1008 ¶¶ 24–28). Petitioner further states that such “[a] person could also have qualified as a [person of ordinary skill in the art] with some combination of (1) more formal education and less technical or professional experience or (2) less formal education and more technical or professional experience.” Id. Patent Owner does not dispute Petitioner’s proposed definition of a person of ordinary skill. See generally MTA, RMTA. Having considered the parties’ arguments and evidence, we adopt the level of ordinary skill in the art proposed by Petitioner, because it is consistent with the disclosures of the ’363 patent and the prior art of record. We note, however, that neither party contends that the outcome of this case would differ based on our adoption of any particular definition of a person of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In our Preliminary Guidance, we construed “for a pharmaceutical composition” to mean “in combination with pharmaceutically acceptable excipients,” based on the ’363 patent’s definition providing that “[t]he terms ‘formulation’ or ‘pharmaceutical composition’ as used herein refers to the drug in combination with pharmaceutically acceptable excipients.” Prelim. Guid. 5–6 (citing Ex. 1001, 12:26–28; Ex. 2010, 17:11–12; Ex. 2011, 26:26– 27). We also encouraged the parties to address whether “for a pharmaceutical composition,” which appears in the preamble of substitute claims 28 and 29, is limiting, as opposed to a statement of intended use or purpose. Id. at 6. Following our Preliminary Guidance, the parties submitted further arguments concerning the term “for a pharmaceutical composition.” Patent Owner argues the term requires that the claimed process provide STS that is sufficiently pure for use in a pediatric patient (see RMTA 8–11) and that the word “drug” in the ’363 patent’s definition of “pharmaceutical composition” requires that the anhydrous STS is of sufficient purity for pharmaceutical use. Reply RMTA 3. Petitioner argues that the construction set forth in our Preliminary Guidance was correct. See Sur-reply RMTA 2–3. Having considered the arguments and evidence, we do not further construe the term “for a pharmaceutical composition” in this Decision because, as discussed in our analysis of obviousness below, it is not necessary to construe the term in order to determine whether Petitioner has met its burden of demonstrating by a preponderance of the evidence that proposed substitute claims 28 and 29 are unpatentable. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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 13
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“1. Reasonable Number of Substitute Claims A motion to amend must “propose a reasonable number of substitute claims.” 35 U.S.C. § 316(d)(1)(B); see 37 C.F.R. § 42.121(a)(3) (“A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims.”). Patent Owner proposes the same number of substitute claims as the original challenged claims that are cancelled, i.e., a one-to-one substitution for a total of two substitute claims. MTA 2; RMTA. “There is a rebuttable presumption that a reasonable number of substitute claims per challenged claim is one (1) substitute claim.” Lectrosonics, Paper 15 at 4; see 37 C.F.R. § 42.121(a)(3). Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner proposes a reasonable number of substitute claims. 2. Support in the Original Disclosure Patent Owner has identified written description support in the originally filed disclosure of the ’363 patent for the new limitations added for the proposed substitute claims. See RMTA 5–8. We have reviewed Patent Owner’s assertions of support in the original disclosure for the proposed revised substitute claims and determine that sufficient support exists. Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner has met this requirement. 3. Respond to a Ground of Unpatentability “A motion to amend may be denied where . . . [t]he amendment does not respond to a ground of unpatentability involved in the trial.” 37 C.F.R. § 42.121(a)(2)(i). Patent Owner asserts that the proposed revised substitute claims are patentable over the combination of references that forms the basis of the obviousness ground on which we instituted trial. RMTA 12–13. Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner has met this requirement. 4. Scope of the Claims Patent Owner asserts that the proposed revised substitute claims do not enlarge the scope of original claims 18 and 20. RMTA 5. We have reviewed Patent Owner’s assertion that the purity amendments of proposed revised substitute claims 28 and 29 narrow the claims’ scope. Id. Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner has met this requirement.” slip op. at 17
- BurdenNot shown unpatentable
“determine the evidence relied on by Petitioner does not support Petitioner’s position that a person of ordinary skill in the art would have been motivated to combine Levenson, Sherman, Edwards, and USP. Petitioner’s contention that it would have been obvious to a person of ordinary skill in the art to combine the teachings of Levenson with Sherman is based on Dr. Rogers’s testimony that “[b]oth references disclose synthesis of sodium thiosulfate pentahydrate.” Ex. 1008 ¶ 151; see Pet. 36, 38. Dr. Rogers further testified it would have been obvious to add Edwards’s dehydrating step to the preparation of STS pentahydrate “which is obtained following the teachings of Levenson and Sherman” because “Edwards itself discloses dehydrating [STS] pentahydrate.” Id. ¶ 154. The Petition included these arguments even though they were inconsistent with Petitioner’s previous statement, during the Sherman prosecution, that Levenson taught STS heptahydrate, and therefore “does not provide any teaching with respect to [STS] pentahydrate.” Ex. 2013, 97. This prior inconsistent statement undercuts Petitioner’s rationale for combining Levenson, Sherman, and Edwards in this proceeding. Moreover, Petitioner’s rationale for combining the references in this proceeding is inconsistent with its statements about Levenson during the Sherman prosecution. Recognizing this inconsistency, Petitioner now takes the position that the Petition and Dr. Rogers’s testimony were incorrect. Paper 32; see Tr. 21:14–22:7, 59:1–2 (reemphasizing that “Petitioner maintains the statements that it made in the Sherman prosecution regarding Levenson”). Petitioner attempts to rationalize the inconsistency between its statements in the Sherman prosecution (including that “Levenson does not provide any teaching with respect to [STS] pentahydrate”) and its position in this proceeding by arguing that Dr. Rogers relies on Levenson as teaching surface activation “regardless of any particular hydrates Levenson discloses.” Tr. 22:8–9. That argument is not persuasive, because Dr. Rogers’s declaration clearly states the primary reason for his opinion that it would have been obvious to a person of ordinary skill in the art to combine the teachings of Levenson with Sherman: “[b]oth references disclose synthesis of sodium thiosulfate pentahydrate.” Ex. 1008 ¶ 151. Contrary to Petitioner’s argument, Dr. Roger’s reliance on the surface activation teachings of Levenson is because he believes that both references pertain to STS pentahydrate; the surface activation teachings are not stated as an independent reason to combine the references. Id. Petitioner provides no further explanation of how a person of ordinary skill in the art would have been motivated to combine Levenson’s teachings regarding manufacture of STS heptahydrate with Sherman’s and Edwards’s teachings regarding STS pentahydrate, or how a person of ordinary skill would have regarded the difference between STS hydrates. Dr. Rogers’s acknowledgement of stability differences among STS hydrates highlights the insufficiency of Petitioner’s showing in this regard. See Ex. 2005, 35, 39. Having changed its position at the close of trial and having effectively withdrawn Dr. Rogers’s testimony as to similarities between Levenson and” slip op. at 24
Patent outcomesUS 10,792,363 not shown unpatentableClaim constructioncites KSR · GrahamPatents in suitUS 10,792,363 - The Noco Company, Inc. v. Pilot, Inc.InstitutedPTAB · Jun 15, 2023 · IPR2023-00167 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on all challenged claims and grounds after finding a reasonable likelihood that claims 1, 2, 4–7, 12–14, and 18–22 would be unpatentable over Krieger.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition and the evidence of record, we determine the Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2022). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues a person of ordinary skill in the art at the time of the invention “would have been a person having at least a Bachelor’s Degree in a relevant engineering discipline such as electrical engineering and at least two years of relevant experience in the design and/or development of automotive electrical systems, or a Masters or more advanced degree in a relevant engineering discipline such as electrical engineering.” Pet. 5 (citing Ex. 1003 ¶ 46). In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s description of the level of ordinary skill in the art, as consistent with the ’673 patent and the asserted prior art.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“As discussed above, Petitioner’s analysis explains how Krieger teaches claim 1’s subject matter. At this stage of the proceeding, Patent Owner does not dispute or otherwise challenge Petitioner’s information and analysis. Based on the current record and for the reasons advanced by Petitioner and supported by Dr. Wood’s testimony, Petitioner establishes sufficiently for purposes of institution that Krieger teaches or suggests all of the limitations of claim 1, and thus demonstrates a reasonable likelihood of prevailing in proving claim 1 unpatentable under § 103 as obvious over Krieger.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,235,673 - Micron Technology, Inc. v. Katana Silicon Technologies LLCInstitution deniedPTAB · Jun 14, 2023 · IPR2023-00105 · APJ Minn Chung · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving any claim unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review may not be authorized unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, we conclude that the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any challenged claim of the ’013 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Although the proposals for the level of skill in the art by the parties’ declarants have differences in wording, we do not find the proposals to be materially different. For purposes of this Decision, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Thus, although we do not find the parties’ proposals for the level of skill in the art to be materially different, for purposes of this Decision, based on our review of the ’013 patent, the types of problems and solutions described in the ’013 patent, and cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“understand the claim term “a support pattern, provided on the second surface” recited in all challenged independent claims to mean a “support section that is part of a wiring pattern formed on the substrate’s second surface.” Pet. 14 (citing Ex. 1002 ¶¶ 119–121, 133–134). At this time, Patent Owner does not dispute Petitioner’s proposed construction of “a support pattern, provided on the second surface.” See generally Prelim. Resp. For purposes of this Decision, we need not construe this term because the parties do not identify any material issue that would turn on the construction. 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 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“As discussed above in Section II.C, under the heading “SUMMARY OF THE INVENTION,” the ’013 patent states that “[t]he object of the present invention is to provide a wiring substrate, a semiconductor device, and a package stack semiconductor device, all with improved reliability of connection by suppressing occurrence of inadequate electrical connection.” Ex. 1001, 3:60–64 (emphases added). The ’013 patent further states that A wiring substrate of the present invention, in order to achieve the foregoing object, includes an insulating substrate, a terminal section for wire bonding or flip-chip connection and a support pattern, provided on a surface of the other side of the surface where the terminal section is provided, and on a position corresponding to the terminal section, for improving reliability of connection of wire bonding. Therefore, this structure can suppress deformation of the insulating substrate by the support pattern, even when the terminal section is pressed in wire bonding or other connection methods. As a result, reliability of connection in wire bonding or other connection methods, can be improved than conventionally. Id. at 3:65–4:11 (emphases added). In view of these disclosures in the Specification and the express recitation “for improving wire bonding connection” in the claim, we determine that the limitation reciting “support pattern . . . for improving wire bonding connection” requires the recited “support pattern” to be capable of “improving wire bonding connection.” See GPNE Corp. v. Apple Inc., 830 F.3d 1365, 1371 (Fed. Cir. 2016) (“When a patent . . . describes the features of the ‘present invention’ as a whole, this description limits the scope of the invention.” (quoting Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007))); see also C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 864 (Fed. Cir. 2004) (“Statements that describe the invention as a whole are more likely to be found in certain sections of the specification, such as the Summary of the Invention.”).” slip op. at 43
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,731,013
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.