- Arista Networks, Inc. v. Orckit CorporationInstitution deniedPTAB · Mar 25, 2025 · IPR2024-01237 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution of IPR on claims 1–31 under § 325(d), finding the same art and arguments had been presented in the Cisco IPR and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In evaluating arguments under § 325(d), we use [a] two-part framework: (1) 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, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 5
Discretionary denialPatents in suitUS 7,545,740 - PTAB · Mar 20, 2025 · IPR2024-01406 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board instituted IPR on claims 1, 3, 4, 8–13, and 15 on all asserted grounds, finding a reasonable likelihood that Takeuchi anticipates those claims.
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 . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2023). For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’202 patent. Accordingly, we institute an inter partes review of claims 1, 3, 4, 8–13, and 15 of the ’202 patent. A. Real Parties in Interest” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“or “POSITA”) would have had “a bachelor’s degree in mechanical engineering, electrical engineering, or a related field, and three to four years of experience, or a master’s degree in mechanical engineering, electrical engineering, or a related field, and one to two years of experience.” Pet. 6 (citing Ex. 1003 ¶ 13). Petitioner further contends that “[s]uch experience would include a familiarity with thermal fluid delivery devices and/or the components and underlying technology used therein, and a higher level of 1 US 5,249,586, issued Oct. 5, 1993 (Ex. 1004, “Morgan”). 2 EP 0 845 220 B1, published Jan. 26, 1998 (Ex. 1006, “Susa”). 3 US 2005/0205084 A1, published Sept. 22, 2005 (Ex. 1007, “Gupta”). 4 US 6,155,268, issued Dec. 5, 2000 (Ex. 1009, “Takeuchi”). at 6–7 (citing Ex. 1003 ¶ 13). Patent Owner states that, for purposes of the Preliminary Response, “Patent Owner maintains that Petitioners’ arguments fail even under Petitioners’ POSA definition.” Prelim. Resp. 13. On this record, we preliminarily adopt Petitioner’s undisputed proposed definition because it appears to be consistent with the cited prior art and the disclosure of the ’202 patent. 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))). B. Claim Construction” slip op. at 6
- Prior constructionPrior construction adoptedDecided for petitioner
“term “wicked into contact” that the Board adopted in a prior inter partes review proceeding that addressed the same term in an earlier, related patent. Pet. 7 (citing IPR2020-01602, Paper 32 at 8–15 (PTAB March 30, 2022)). ‘wicked into contact’ to mean: ‘wicked into contact (1) with the heater, or (2) with an area in close proximity to, and exposed [to] the heat produced by, the heater,’” and “[t]he present Petition adopts this formal construction for purposes of this IPR proceeding.” Id. (citing IPR2020-01602, Paper 32 at 15). Patent Owner also “adopts this construction for purposes of” the Preliminary Response, and argues that “Petitioner’s grounds fail even under its proposed construction of ‘wicked into contact.’” Prelim. Resp. 13. For purposes of this Decision, we adopt the Board’s prior construction of “wicked into contact,” namely, “wicked into contact (1) with the heater, or (2) with an area in close proximity to, and exposed to the heat produced by, the heater,” which is undisputed on this record. See Philip Morris Products, S.A. v. RAI Strategic Holdings, Inc., IPR2020-01602, Paper 32 at 8–15 (PTAB March 30, 2022). C. Asserted Anticipation by Morgan” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot reached
“To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). “A reference may anticipate inherently if a claim limitation that is not expressly disclosed is ‘necessarily present, or inherent, in the single anticipating reference.’” In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (quoting Verizon Servs. Corp. v. Fibernet Va., Inc., 602 F.3d 1325, 1336–37 (Fed. Cir. 2010)). Based on the current record, we are not persuaded that Petitioner sufficiently establishes that Morgan discloses “a storage compartment . . . being arranged such that the liquid aerosol-forming material can be wicked into contact with the electrical resistance heater to volatilize the liquid aerosol-forming material” as recited in claim 1.” slip op. at 12
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 11,925,202 - Mastercard Incorporated And Mastercard International Incorporated v. Ov Loop, Inc.All claims unpatentablePTAB · Mar 19, 2025 · IPR2023-01289 · APJ James A Tartal · IPR · Final written decision
Claims 1–33 are unpatentable as obvious over Collinge; the Board did not reach the anticipation grounds based on Collinge or the grounds based on Fiske.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner asserts that a person of ordinary skill in the art would have had “the equivalent of an undergraduate degree in electrical and computer engineering (or a related field) and approximately two years of work experience in the field of secure payment system,” and that “[a]dditional education in the field could be substituted for industry experience, and vice versa.” PO Resp. 4. Patent Owner does not suggest that its proposed level of ordinary skill materially differs from the level of skill proposed by Petitioner. See id. We find, on the current record, that the ’171 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’171 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. Accordingly, we adopt Petitioner’s proposed level of ordinary skill. We would have reached the same conclusions in this Decision had we adopted Patent Owner’s proposed level of ordinary skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In light of the lack of any dispute over the Second Construction, a construction we find consistent with the ordinary and customary meaning of the claim language, we need not resolve whether the claim language also encompasses Petitioner’s First Construction. Moreover, as explained below, we find Collinge renders obvious the subject matter of the limitation under either construction. See infra Section III.D.5. For the foregoing reasons, we find that an express construction of any claim term is not necessary for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 16
- Obviousness (§103) › Analogous artNot reached
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We disagree with Patent Owner’s arguments because here Petitioner is not relying on some other disclosure to fill a missing limitation absent from Collinge, but is instead relying only on Collinge and the knowledge a person of ordinary skill in the art would possess when appreciating the teachings of Collinge. Petitioner is not suggesting Collinge needed to be modified to add the use of an APDU, but, rather, that Collinge’s disclosure already contemplated it based on the well-known background of the art. Petitioner shows by a preponderance of the evidence that “the Collinge Provisionals state the disclosures therein are intended to be used in a ‘standard’ PayPass transaction,” and that a person of ordinary skill in the art would have considered “the PayPass Specification (and EMV Specifications, with which the PayPass Specification complies) when reading Collinge.” Pet. Reply 8 (citing Ex. 1009, 8, 14–15, 22–23; Ex. 1050 ¶ 22). in a “standard” PayPass transaction and that a person of ordinary skill in the art would have known, at a minimum, that it would have been obvious from Collinge that the “first set of data” (i.e., the encrypted payload in Collinge) would have been “usable” by the application of Collinge “to formulate an application protocol data unit response,” as required by limitation [1.C]. Petitioner further demonstrates how Collinge discloses that the “first set of data” was “useable by the application to formulate” an APDU response in addressing limitation [1.E–3], which specifically requires “generating a response.” See Pet. Reply 11 (explaining that “[d]etails of how [the encrypted payload] is used to formulate an APDU response are explained where that is separately claimed”); see also id. (citing Pet. 48–50 (addressing limitation [1.E-3])).” slip op. at 36
Patent outcomesUS 10,032,171 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,032,171 - Posco Co., Ltd. v. ArcelormittalInstitutedPTAB · Mar 18, 2025 · IPR2024-01377 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–25 on all petitioned grounds, finding a reasonable likelihood of success, including that GMW14400 likely qualifies as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review pursuant to 35 U.S.C. § 6(b). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–25 of the ’227 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“efficiency and integrity of the system are best served by denying or instituting review.” Fintiv at 6. Here, Fintiv factors one and five are neutral, factors two and three favor discretionary denial, factor four strongly weighs against discretionary denial, and favor six weighs against discretionary denial. The integrity of the system will benefit from institution because of the strong merits the Petition presents (factor six), and the ITC Investigation will not resolve these merits (factor four). This outweighs any potential inefficiency as indicated by factors two and three. We further note that any inefficiency in resolving the grounds the Petition presents is mitigated by the stay of the district court action (factor one). We, thus, decline to exercise discretionary denial under 35 U.S.C. § 314(a).” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“After considering the record as a whole, we determine that Petitioner has adequately demonstrated that the Office erred in a manner material to the patentability of challenged claims. As we explain in Section III(G), infra, Petitioner’s challenges to the ’227 patent appear strong based on the current record, and Patent Owner’s present arguments to the contrary are weak. Given the strength of Petitioner’s challenges on the present record, this is not a situation where we would say that “reasonable minds can disagree regarding the purported treatment of the art,” and we therefore determine that the Examiner erred by not considering the art in substantially the combination Petitioner proposes. Where Patent Owner states that “evidence that the Examiner did not consider these references in combination” is lacking (PO Sur-Reply 5), we disagree. If the Examiner considered these references in combination, the Examiner would have, given the apparent strength of Petitioner’s position on the merits on this record, issued a rejection. The lack of a rejection based on the combination proposed in the Petition provides some evidence that the Examiner did not consider these references in combination (because the lack of such a rejection raises the likelihood that the Examiner did not make such a consideration). 3. Conclusion Because Petitioner adequately made a showing of material error, we decline to exercise discretion not to institute inter partes review under 35 U.S.C. § 325(d). See Advanced Bionics, LLC, IPR2019-01469, Paper 6 at 8–9.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,326,227 - Posco Co., Ltd. v. ArcelormittalInstitutedPTAB · Mar 18, 2025 · IPR2024-01376 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 1–30 on all petitioned grounds, finding a reasonable likelihood of success, including that GMW14400 likely qualifies as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the reasons above, we determine that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail with respect to challenged claims 1–30 of the ’602 patent. At this juncture in the proceeding, we have not made a final determination with respect to the patentability of the challenged claims, or with respect to claim construction. V. ORDER For the foregoing reasons, it is ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–30 of the ’602 patent is hereby instituted with respect to all grounds of unpatentability set forth in the Petition; and” slip op. at 36
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“efficiency and integrity of the system are best served by denying or instituting review.” Fintiv at 6. Here, Fintiv factors one and five are neutral, factors two and three favor discretionary denial, factor four strongly weighs against discretionary denial, and favor six weighs against discretionary denial. The integrity of the system will benefit from institution because of the strong merits the Petition presents (factor six), and the ITC Investigation will not resolve these merits (factor four). This outweighs any potential inefficiency as indicated by factors two and three. We further note that any inefficiency in resolving the grounds the Petition presents is mitigated by the stay of the district court action (factor one). We, thus, decline to exercise discretionary denial under 35 U.S.C. § 314(a).” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“After considering the record as a whole, we determine that Petitioner has adequately demonstrated that the Office erred in a manner material to the patentability of challenged claims. As we explain in Section III(G), infra, Petitioner’s challenges to the ’602 patent appear strong based on the current record, and Patent Owner’s present arguments to the contrary are weak. Given the strength of Petitioner’s challenges on the present record, this is not a situation where we would say that “reasonable minds can disagree regarding the purported treatment of the art,” and we therefore determine that the Examiner erred by not considering the art in substantially the combination Petitioner proposes. Where Patent Owner states that “evidence that the Examiner did not consider these references in combination” is lacking (PO Sur-Reply 5), we disagree. If the Examiner considered these references in combination, the Examiner would have, given the apparent strength of Petitioner’s position on the merits on this record, issued a rejection. The lack of a rejection based on the combination proposed in the Petition provides some evidence that the Examiner did not consider these references in combination (because the lack of such a rejection raises the likelihood that the Examiner did not make such a consideration). 3. Conclusion Because Petitioner adequately made a showing of material error, we decline to exercise discretion not to institute inter partes review under 35 U.S.C. § 325(d). See Advanced Bionics, LLC, IPR2019-01469, Paper 6 at 8–9.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,961,602 - PTAB · Mar 12, 2025 · IPR2024-01239 · APJ Brent M Dougal · IPR · Institution
The Board instituted inter partes review of all challenged claims, finding a reasonable likelihood that claim 1 is unpatentable over Lefebvre and Chua.
RulingsInstitution decision- Other 314aDenied
“The primary basis for Patent Owner’s argument is the fact that the ’111 patent has been subject to previous inter partes reviews filed by other parties.2 Id. at 14–19. A related fact—not fully addressed by Patent Owner—is that Patent Owner has staggered-in-time its suits alleging infringement of the ’111 patent against different parties. Patent Owner sued Cisco Systems in July 2022, but waited a year to separately file suit against Juniper Networks and Petitioner. IPR2023-00554, Ex. 1010; IPR2024- 00037, Paper 2. Patent Owner was not obligated to sue Petitioner at the same time that it sued Cisco Systems. Similarly, Petitioner was under no obligation to request to join Cisco System’s earlier filed inter partes review. See Prelim. Resp. 16. Rather, as acknowledged by Patent Owner, Petitioner waited to file the present inter partes review until the last day allowed under statute. Id. at 15, 17. Based on the circumstances before us, we do not agree with Patent Owner that it would be appropriate to enforce a deadline on Petitioner that is earlier than the deadline outlined by statute. See id. at 16.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner also provides an extensive discussion of the reasons to combine Chua with the system of Lefebvre, such as due “to Chua’s more detailed teachings regarding actions an SDN controller takes in response to information from security-related services like DPI.” Id. at 25 (citing Ex. 1002 ¶ 102); see also, e.g., id. at 24–26 (discussing reasons to combine). Petitioner also provides a detailed discussion of how the combined teachings of Lefebvre and Chua teach the method steps of claim 1. Id. at 32–39; see also Ex. 1002 ¶¶ 115–136. We have reviewed the Petition and supporting evidence and determine that the Petition demonstrates a reasonable likelihood that Petitioner would prevail in showing that claim 1 unpatentable over the combination of Lefebvre and Chua.” slip op. at 9
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,652,111 - Ecto World, LLC / Sv3, LLC v. Rai Strategic Holdings, Inc.Institution deniedPTAB · Mar 10, 2025 · PGR2024-00049 · APJ Jo-Anne M Kokoski · PGR · Institution
The Board denied institution because Petitioner did not show the patent was eligible for PGR; the challenged claims were supported by the 2006 priority application.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, we determine that Petitioner does not demonstrate that it is more likely than not that the challenged claims lack written support in the Specification (and the ’634 application). That is, on this record, it appears that the challenged claims properly claim priority to the ’634 application and, accordingly, have an effective filing date in October 2006. 2. Conclusion: PGR Eligibility For the foregoing reasons, and based on the record before us, we determine that Petitioner has not demonstrated that it is more likely than not that the ’202 patent has, or had, at least one claim having an effective filing date on or after March 16, 2013. Accordingly, we determine that the ’202 patent is entitled to the filing date of the ’634 application (October 18, 2006), and, thus, the ’202 patent is not eligible for post-grant review.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for patent owner
“Accordingly, the ’202 patent consistently and repeatedly characterizes the invention as incorporating tobacco in some form and ties the stated benefits of the invention to the inclusion of tobacco. Moreover, the Specification is directed to smoking articles containing tobacco, all of the embodiments include tobacco, and “the present invention” is described as a smoking article, where the smoking article includes tobacco. Consequently, we determine that “smoking article” as it is used in the challenged claims is limited to devices that include tobacco. See Mosaic Brands, Inc. v. Ridge Wallet LLC, 55 F.4th 1354, 1361 (Fed. Cir. 2022) (finding claimed “lip” is limited to “extrudable plastic materials” where specification states that “the device of the present invention is constructed of extrudable plastic materials” and “emphasizes the benefits of using extrudable plastics and describes them as benefits of the invention as a whole”); Poly-Am., L.P. v. described in the specification has inwardly extended short seals and every section of the specification indicates the importance of inwardly extended short seals. These two facts provide together a proper reason to limit the claims in this way.”); Phillips v. AWH Corp., 415 F.3d 1303, 1312–1317 (Fed. Cir. 2005) (en banc) (“[T]he specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. In that instance as well, the inventor has dictated the correct claim scope, and the inventor’s intention, as expressed in the specification, is regarded as dispositive.”).” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateNot shown unpatentable
“Petitioner’s argument is dependent on accepting Petitioner’s assertion that the claims include a smoking article that does not contain tobacco, which we have not done. Instead, as set forth above, we construe “smoking article” as being limited to devices that include tobacco. See § II.B.2, supra. Based on our construction of “smoking article” and the evidence of record in this proceeding, we determine that the challenged claims are supported by the specification of the ’202 patent, which is identical to the specification of all of the continuations in the chain leading back to the October 18, 2006 that the specification of the ’202 patent and every patent in its priority chain “have identical specifications”); Prelim. Resp. 13 (noting that Petitioner does not identify other limitations in the challenged claims “allegedly lacking support in the ’202 patent family’s applications dating back to U.S. App. No. 11/550,634, filed on October 18, 2006”). Accordingly, we determine that Petitioner does not demonstrate that it is more likely than not that the challenged claims lack written support in the Specification (and the ’634 application). That is, on this record, it appears that the challenged claims properly claim priority to the ’634 application and, accordingly, have an effective filing date in October 2006.” slip op. at 17
Claim construction§ 112 disclosurecites PhillipsPatents in suitUS 11,925,202 - Ecto World, LLC / Sv3, LLC v. Rai Strategic Holdings, Inc.Institution deniedPTAB · Mar 6, 2025 · IPR2024-01280 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution of IPR challenging claims 1–30 because the asserted art was previously presented to the Office and Petitioner did not show material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a two-part framework for evaluating arguments under § 325(d): (1) 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, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). In applying this framework, we consider the Becton, Dickinson1 factors that address discretion to deny institution when a petition presents the same or substantially the same prior art or arguments previously presented to the Office, including:” slip op. at 8
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person of ordinary skill in the art (“POSA”) would have had “a bachelor’s degree in electrical engineering, mechanical engineering, chemistry, physics, or an equivalent field, as well as 3–4 years of industry experience, or a master’s degree in the above fields, and 1–2 “[s]uch a POSA would have been familiar with electrically powered smoking articles and/or the components and underlying technology used therein.” Id. (citing Ex. 1003 ¶ 63. Patent Owner states that, for purposes of the Preliminary Response, “Patent Owner maintains that Petitioners’ arguments fail even under Petitioners’ POSA definition.” Prelim. Resp. 13. On this record, we preliminarily adopt Petitioner’s undisputed proposed definition because it appears to be consistent with the cited prior art and the disclosure of the ’202 patent. 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 need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). B. Claim Construction” slip op. at 6
Discretionary denialcites PhillipsPatents in suitUS 11,925,202 - Permian Global Inc. / Manticore Fuels, LLC v. Fuel Automation Station, LLCAll claims unpatentablePTAB · Feb 26, 2025 · IPR2023-01236 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–18 are unpatentable as obvious; the Board did not reach the alternative Van Vliet, Shoap, and Hosecraft ground for claims 12–13.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Permian submits that one skilled in the art would have had either: (1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field as well as at least 2 years of academic or industry experience in the oil and gas industry, including well drilling, completion, or production, or (2) at least four years of industry experience in the oil and gas industry including well drilling, completion, or production. Pet. 16–17 (citing Ex. 1003 ¶¶ 75–78). FAS responds that it “does not dispute Petitioner’s definition of the level of ordinary skill in the art.” PO Resp. 11. Permian’s proposed definition appears consistent with the 1 US 2011/0197988 A1, published Aug. 18, 2011 (Ex. 1004, “Van Vliet”). 2 COXREELS, INC., Coxreels 1125 Series “Competitor” Hand Crank and Motorized Hose Reels, https://web.archive.org/web/20140408035634/ http://www.coxreels.com/products/hand-crank/1125-series, published Apr. 08, 2014 (Ex. 1005, “Coxreels”). 3 US 7,819,345 B2, issued Oct. 26, 2010 (Ex. 1006, “Shoap”). 4 HOSECRAFT USA, Clamps Accessories, https://web.archive.org/web/ 20130702084457/http:/www.hosecraftusa.com/accessory-category/ Hose_Clamps, published July 2, 2013 (Ex. 1007, “Hosecraft”). problems and solutions described in the challenged patent and the prior art of record. As such, we adopt the level of skill in the art as defined by Permian.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Here, the specification of the ’118 patent does not suggest that the tube and sleeve are anything but physically separate and distinct structures— [T]he tube 62 may be a flexible elastomeric tube and the sleeve 64 may be a flexible fabric sleeve. The sleeve 64 is generally loosely arranged around the tube 62, although the sleeve 64 may closely fit on the tube 62 to prevent substantial slipping of the sleeve 64 relative to the tube 62 during use and handling. * * * In this example, the [sensor communication] line 66 is routed 40 through the hose 40 between (radially) the tube 62 and the sleeve 64. The sleeve 64 thus serves to secure and protect the line 66, and the sleeve 64 may limit spill and spewing if there is a hose 40 rupture. Ex. 1001, 5:21–44. Those descriptions in the specification—(1) that the tube and sleeve are made of different materials, one being “elastomeric” and the other “fabric,” (2) that the sleeve is “arranged around” the tube, (3) that a sensor line is routed “between” the tube and sleeve, and (4) that the sleeve “limit[s]” spillage in the event a rupture in the tube—clearly support that the tube and sleeve are physically separate structures such that the sleeve serves as a protective cover for the tube. Nowhere do we discern, nor does Permian explain, where the specification indicates that the tube and sleeve might also be one and the same structure. Thus, in light of the specification, we maintain that the only reasonable construction is that the tube and sleeve, as recited in claims 5, 10, and 15, are separate and distinct structures.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with FAS. Although indisputably the schematic of Van Vliet’s fuel delivery system shows the flow passage running through manifolds 36, 38 and hoses 24, nowhere do we discern that Van Vliet definitively discloses or otherwise suggests that the flow passage runs through reels 30, as required by claim 1. Indeed, even Permian’s expert acknowledges that Van Vliet’s schematic “is a high-level representation and is not intended to depict the physical appearance or form” of the various components. Ex. 1003 ¶ 112 n.146. At best, Van Vliet discloses that “hoses 24 are preferably stored on reels 30,” but is otherwise silent insofar as any flow stream or passage running through the reels. Ex. 1004 ¶ 15 (emphasis added). Indeed, in order for the reel to be a part of the system’s fluid stream, there would need to be some disclosure or suggestion in Van Vliet that hose 24 is actually connected to the reel as opposed to being merely stored on the reel. But there is no such disclosure. To the contrary, Van Vliet explains that “each hose 24 is connected to a fuel outlet 22 by a dry connection 60 and to a cap 26 by a dry connection 62.” Id. ¶ 22 (emphases added). In other words, the flow stream through Van Vliet’s hose 24 cannot be connected to reel 30 if the ends of the hose are connected to dry connections 60 and 62, which indisputably are not part of the reel. Thus, we reject the notion that Van Vliet’s reel 30 is “part of a single fluid stream that includes manifolds 36/38, fluid outlet 22, and hose 24,” as Permian surmises from simply looking at Van Vliet’s schematic. See Pet. Reply 3–4. As such, we find that Permian fails to demonstrate that Van Vliet’s discloses or otherwise suggests a flow passage “running through a respective one of the reels” or being connected “via a respective one of the reels,” as required by claim elements 1(e) and 1(f).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We disagree that one skilled in the art would have deemed Coxreels’s teachings to be unsuitable or unacceptable for Van Vliet’s fuel delivery system. In our view, FAS’s unsuitability argument focuses improperly on the physical incorporation into Van Vliet’s system of every component and material described in Coxreels. But the test for obviousness is whether “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention,” not whether the physical features of one reference may be bodily incorporated into the structure of another reference. See Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016). Indeed, whether one reference can be incorporated in another is “basically irrelevant” since the test for obviousness asks only “whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). Here, rather than relying on every feature of Coxreels, Permian makes clear that it is relying on Coxreels’s teaching of “a reel for storing hoses that has a built-in ‘fluid path.’” Pet. 36–38 (citing Ex. 1003 ¶¶ 149–152). More specifically, according to Permian, one skilled in the art “would have recognized advantages of the flow passage in Coxreels’ reels (e.g., ‘a non-crimping, flat smooth hose wrap’) to facilitate connection to the manifolds and hoses of Van Vliet’s system.” Pet. Reply 7. Thus, FAS’s argument of physical incorporation of an ancillary feature of Coxreels’s reel is irrelevant to Permian’s reliance on incorporating Coxreels’s teaching of a built-in flow passage running through a hose reel with Van Vliet’s system that already includes flow path connections suitable for diesel fuel. Moreover, “[a] person of ordinary skill is also a person of ordinary” slip op. at 14
Patent outcomesUS 10,815,118 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 10,815,118 - Permian Global Inc. / Manticore Fuels, LLC v. Fuel Automation Station, LLCAll claims unpatentablePTAB · Feb 26, 2025 · IPR2023-01237 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–22 are unpatentable as obvious over Van Vliet and Cable because the combination teaches the claimed arrangement, and the secondary-consideration evidence does not outweigh that showing.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Permian proposes that one skilled in the art would have had either: (1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field and at least 2 years of academic or industry experience in the oil and gas industry, including well drilling, completion, or production, or (2) at least four years of industry experience in the oil and gas industry including well drilling, completion, or production. Pet. 12–13 (citing Ex. 1003 ¶ 105). FAS responds that it “does not dispute Petitioner’s definition of the level of ordinary skill in the art.” PO Resp. 11. 1 US 2011/0197988 A1, published Aug. 18, 2011 (Ex. 1004, “Van Vliet”). 2 US 3,810,487, issued May 14, 1974 (Ex. 1005, “Cable”). 3 AFD PETROLEUM LTD., AFD Onsite Refueling Systems, http://web.archive.org/web/20150922012312/https://www.afdpetroleum.com /fuel/onsite_refuelling (Sept. 22, 2015), published Sep. 22, 2015 (Ex. 1007, “AFD”). 4 COXREELS, INC., Coxreels 1125 Series “Competitor” Hand Crank and Motorized Hose Reels, https://web.archive.org/web/20140408035634/ http://www.coxreels.com/products/hand-crank/1125-series, published Apr. 08, 2014 (Ex. 1008, “Coxreels”). 5 US 2018/0057348 A1, published Mar. 1, 2018 (Ex. 1006, “Lowrie”). Permian’s proposed definition appears consistent with the problems and solutions described in the challenged patent and the prior art of record. As such, we adopt the level of skill in the art as defined by Permian.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Permian applies “the ordinary and customary meanings of the claims terms,” and, thus, maintains that “[e]xpress constructions are not required here.” Pet. 20–21. FAS likewise submits that “no constructions are necessary in order to resolve the issues at hand and that the claim terms be given their ordinary and customary meanings.” PO Resp. 8. The specification and prosecution history of the ’805 patent, as well as the asserted prior art, adequately inform us as to the plain and ordinary meaning of the claim terms. Thus, we need not construe any claim terms expressly, as we can decide patentability without further construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where construction is not material to controversy).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Though Cable and Van Vliet may have some different concerns and focuses, the mere existence of such differences does not alone negate Permian’s reason to combine Van Vliet and Cable. In fact, it is expected that different references would have different concerns and focuses. But, [w]hen a work is available in one field, design incentives and other market forces can prompt variations of it, either in the same field or in another. If a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, § 103 likely bars its patentability. Moreover, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill. A court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. KSR, 550 U.S. at 401. Here, FAS does not contend that Van Vliet and Cable are in meaningfully different fields, but merely identifies several differences in focus and application. That is not enough to defeat Permian’s reason for the asserted combination. As Permian’s expert credibly testifies, one skilled in the art would consider that “[i]ncorporating Cable’s . . . reel configuration into Van Vliet’s mobile fuel delivery system would merely involve combining prior art elements according to known methods to yield predictable results.” Ex. 1003 ¶ 140.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
“focus and application. That is not enough to defeat Permian’s reason for the asserted combination. As Permian’s expert credibly testifies, one skilled in the art would consider that “[i]ncorporating Cable’s . . . reel configuration into Van Vliet’s mobile fuel delivery system would merely involve combining prior art elements according to known methods to yield predictable results.” Ex. 1003 ¶ 140.” slip op. at 13
Patent outcomesUS 9,586,805 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 9,586,805
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.