- Opticis Co., Ltd. v. Inneos LLCAll claims unpatentablePTAB · Jan 29, 2025 · IPR2023-01256 · APJ Terry J Owens · IPR · Final written decision
Claims 1, 2, 6, 7, and 9 are unpatentable as obvious over Kurita and Lemoff, with the Board declining to reach the remaining grounds.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“We accept the level of ordinary skill in the art stated by Petitioner and agreed with by Patent Owner with the exception of the open-ended language appears consistent with the ’416 patent and the prior art of record.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“describe elements that are not affirmatively recited in the claims, and in view of the “bedrock principle of patent law that the claims of a patent define the invention,” we conclude that none of the unrecited limitations identified by Patent Owner are required by the claims. See Thorner v. Sony Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (explaining that the standard for disavowal is “exacting,” and the use of “the present invention” is not necessarily sufficient to meet this standard).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“art would not have modified Kurita in view of Lemoff because Lemoff positions the signal emitters near the fiber to emulate WDM without the need for an external optical multiplexer or a similar device and discourages using optical wavelength multiplexers for short distances because the complexity of the design is often cost prohibitive (PO Resp. 47–48), Lemoff does not appear to limit the usefulness of the fiber connector to any particular optical signal transmission distance. Petitioner relies upon Lemoff for a suggestion to combine Lemoff’s fiber connector configuration teachings with Kurita’s multiplexer teachings to enable fibers to be plugged Fig. 2) (Pet 29, 31; Reply 17–18). Regarding Patent Owner’s argument that one of ordinary skill in the art would not have combined Lemoff’s receptacle and ferrule with discrete components in Kurita because the fiber would need to be manually fixed and aligned with or without a ferrule and, therefore, would serve no purpose (PO Resp. 48), Lemoff’s fiber connector appears to fix and align the fiber adequately for wavelength division multiplexing without manual fixation or alignment being required (Ex. 1006, 5:65–6:2, Fig. 2; Reply 18). The challenged claims do not require any greater degree of fixing and alignment than that provided by Lemoff’s fiber connector. Regarding Patent Owner argument that Lemoff’s device is not physically combinable with Kurita’s WDM multiplexer due to Lemoff’s device’s small size (PO Resp. 47–48; Reply 17–18), “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art” (In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Accordingly, we are not persuaded by Patent Owner’s argument.” slip op. at 26
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“stopped single optical fiber because fixing it in place does not passively align it with the optical components (PO Resp. at 35–37) is not persuasive because fixing Kurita’s fiber (40) in place in accord with Lemoff’s teaching regarding the ferrule (255) inserted until being stopped by the receptacle (260) (Ex. 1006, 5:50–6:15, Fig. 2) would align Kurita’s optical array (20), and lens (30)) (Ex. 1004 Fig. 3) passively in the same manner that Lemoff’s ferrule (255), after being inserted until stopped by the receptacle (260), passively aligns the optical fiber (250) with the optical components (optical imaging element 220 and light emitters within emission apertures 120) (Ex. 1006, 5:50–6:15, Fig. 2; Reply 15–16). Regarding Patent Owner’s argument that the light from each of Kurita’s lasers (11) depicted in Figure 3 cannot pass through a separate focusing lens (30) pie shaped sector because the lasers (11) and collimating lenses (21) are arranged linearly rather than being arranged about a circular axis (PO Resp. at 37–42), we do not agree. Claim 1 requires “focusing means having n separate radial sectors on its surface, and each of said n collimated beams passes through a separate one of said n sectors of said focusing means” (Ex. 1001, 5:34–37), claim 2 requires “four lasers and four collimating lenses are each formed in a two-dimensional, two by two array [centered on the focal axis of lens 30], wherein said focusing means is a single focusing lens, and wherein each radial sector is a pie-shaped quadrant” (id. at 5:41–44), and claim 7 requires “focusing means having four separate quadrants on its surface, and each of said four collimated beams passes through a separate one of said quadrants of said focusing means” (id. at 6:35–38). Kurita meets those claim requirements. Kurita’s two by two array (10A) of lasers (11), collimating lens (21) array (20), and focusing lens (30) are shown in Kurita’s Figure 3 (cropped) as follows: The image is a portion of Kurita’s Figure 3 showing Kurita’s laser array, collimating lens array, and focusing lens (30). Relative to a point at the center of the laser array (10A) or the collimating lens array (20), each laser (11) and each collimating lens (21) is in a separate quadrant that can be a quadrant of a circle (pie-shape) on lens 30 (Reply 12– 13, Ex. 1003 ¶¶ 85–91).” slip op. at 23
Patent outcomesUS 7,198,416 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,198,416 - PTAB · Jan 24, 2025 · IPR2024-00276 · APJ Michael J Fitzpatrick · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on all challenged claims, 1–3, 6, 12, 14, 16, 18, and 19, after their disclaimer, and terminated the IPR.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Request For Adverse Judgment. Paper 21 (“Mot.”). In the Joint Motion, the parties “jointly move to terminate the present inter partes review proceeding in light of the disclaimer filed by Patent Owner disclaiming all challenged claims.” Mot. 1 (citing 37 C.F.R. § 42.73; Ex. 2001). The cited exhibit is a disclaimer, filed October 24, 2024, under 37 C.F.R. § 1.321(a), of claims 1–3, 6, 12, 14, 16, 18, and 19 of the ’194 patent, which constitute all of the claims challenged in the inter partes review. Ex. 2001. In view of the disclaimer, “Patent Owner requests entry of adverse judgment as to [the challenged and now disclaimed] claims.” Mot. 1. We grant the Motion. Accordingly, it is: ORDERED that adverse judgment is entered against Patent Owner as” slip op. at 2
NonePatents in suitUS 9,415,194 - PTAB · Jan 24, 2025 · IPR2024-00275 · APJ Michael J Fitzpatrick · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on all challenged, disclaimed claims and terminated the inter partes review.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“C.F.R. § 1.321(a), of claims 9, 14, 16, 18, 20, 22–24, 44, and 46 of the ’597 patent, which constitute all of the claims challenged in the inter partes review. Ex. 2001. In view of the disclaimer, “Patent Owner requests entry of adverse judgment as to [the challenged and now disclaimed] claims.” Mot. 1. We grant the Motion. Accordingly, it is: ORDERED that adverse judgment is entered against Patent Owner as to claims 9, 14, 16, 18, 20, 22–24, 44, and 46 of U.S. Patent No. 9,072,597 B2; and FURTHER ORDERED that the inter partes review is terminated.” slip op. at 2
NonePatents in suitUS 9,072,597 - Samsung Electronics Co., Ltd. / Apple Inc. v. RJ Technology LLCSome claims unpatentablePTAB · Jan 17, 2025 · IPR2024-00597 · APJ Jon B Tornquist · IPR · Final written decision
Claims 2–4 and 6–18 are unpatentable as obvious over Abe and Guyomard, with claims 9–10 also obvious over Iwaizono; claims 1 and 5 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years of experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. (citing Ex. 1002 ¶¶ 50–51). Patent Owner “does not dispute Petitioner’s level of ordinary skill.” PO Resp. 17. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the disclosures of the ’641 patent and the prior art of record.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We also agree with Patent Owner that the charge cut-off voltage is not necessarily the applied voltage during charging. PO Resp. 20. Rather, depending on the charging protocol used and when in the charging cycle the voltage is applied, the applied voltage could be higher than the battery voltage. Ex. 2013; Ex. 2006 ¶ 91. For example, as discussed in more detail below with respect to the Uemura grounds, when fast charging using constant current is used and the charging rate is not slow, the applied voltage will be higher than the battery voltage when the constant current charging phase is stopped. Ex. 2006 ¶ 91; Ex. 2013. Likewise, during constant current/constant voltage charging, the applied voltage approximates the battery voltage only when the battery is nearly completely charged. Ex. 2013; Ex. 2006 ¶ 91. Thus, the applied voltage may be, but is not necessarily, the charge cut-off voltage. In view of the foregoing, we construe “charge cut-off voltage” in claims 1 and 5 as “the maximum value to which the battery is configured to be charged.” PO Resp. 18; Ex. 2008, 217:6–11; Pet. Reply 5. Contrary to Patent Owner’s arguments, however, we do not understand the phrase “configured to be charged” to necessarily represent a single voltage for the battery that is determined based on the structure and chemistry of the battery. Pet. Reply 4–5. Rather, the charge cut-off voltage is a selected potential, or voltage, of the battery or cell at the end of charging that is controlled by a circuit or device, such as a charger or control circuit within the battery. Ex. 1001, 9:50–55; Ex. 1048, 2, 7–8; Ex. 1008, 3:9–13. And, for the reasons discussed herein, the charge cut-off voltage may be, but is not necessarily, the same as the applied voltage during charging. PO Resp. 20.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“charge cut-off voltage “greater than 4.2 V but less than 5.8 V” and calculating a specific or theoretic capacity “with a charge cut-off voltage limited to 4.2” (claim 1) or “with a charge cut-off voltage set at 4.2 V” (claim 5). Ex. 1001, 16:56–61, 17:6–11. Although the parties dispute the precise scope of these claim terms, the parties agree that the first use of “charge cut-off voltage” in claims 1 and 5 refers to the potential of the battery as a whole (between the cathode and the anode), and not a half-cell voltage using lithium metal as a counter electrode.10 Tr. 17:1–3 (agreeing 10 With respect to the phrase “as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V,” the parties in fact appear to be in that the first use of “charge cut-off voltage” in claim 5 refers to a full-cell voltage); Sur-reply 5; PO Resp. 22. We need not further construe the claims to resolve the disputes between the parties. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 16
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Given Mr. Juzkow’s unambiguous testimony that Uemura uses constant current charging that would stop when the applied voltage reached 11 The chart is reproduced from SAFT, Charging your lithium-ion batteries: 5 expert tips for a longer lifespan, (https://www.saft.com/energizing-iot/charging-your-lithium-ion-batteries-5-expert-tips-longerlifespan#:~: text=When%20the%20battery%20provides%20current,This%20restore s%20the%20battery's%20capacity). 4.3 V, as well as Dr. Yao’s persuasive testimony that Uemura’s constant charging rate is not slow, we credit the testimony of Dr. Yao that one of ordinary skill in the art would have understood that the internal voltage to which the battery of Uemura was charged is less than 4.3 V. Ex. 2006 ¶ 119. In particular, Dr. Yao persuasively testifies that one of ordinary skill in the art would have believed that the charge cut-off voltage was no more than 4.2 V, and most likely equal to “about 4 V.” Id. ¶¶ 119–122.” slip op. at 21
Patent outcomesUS 7,749,641 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,749,641 - Samsung Electronics Co., Ltd. / Apple Inc. v. RJ Technology LLCSome claims unpatentablePTAB · Jan 17, 2025 · IPR2023-01183 · APJ Jon B Tornquist · IPR · Final written decision
Claims 2–4 and 6–18 are unpatentable as obvious over Abe and Guyomard, with claims 9 and 10 also obvious over Iwaizono; claims 1 and 5 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years of experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. (citing Ex. 1002 ¶¶ 50–51). Patent Owner “does not dispute Petitioner’s level of ordinary skill.” PO Resp. 17. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the disclosures of the ’641 patent and the prior art of record.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“constructions. First, we agree with Petitioner that the ’641 patent indicates that the charge cut-off voltage selected for a particular battery need not be a fixed property of the battery or something that is set by the design and chemistry of the battery. Consistent with this conclusion, the ’641 patent discloses that a “charging device controls the charge cut-off voltage of the single lithium-ion cell within a range from 4.3 V to 5.8 V.” Ex. 1001, 9:50– 55. This strongly suggests that the charge cut-off voltage is controlled by the charger and is not necessarily an inherent property of the battery. Patent Owner contends that this is merely an unclaimed embodiment, but the relevant disclosure states that the charging device for the “present invention” may be any type of device “with the proviso that said charging device controls the charge cut-off voltage.” Id. at 9:50–53.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“charge cut-off voltage “greater than 4.2 V but less than 5.8 V” and calculating a specific or theoretic capacity “with a charge cut-off voltage limited to 4.2” (claim 1) or “with a charge cut-off voltage set at 4.2 V” (claim 5). Ex. 1001, 16:56–61, 17:6–11. Although the parties dispute the precise scope of these claim terms, the parties agree that the first use of “charge cut-off voltage” in claims 1 and 5 refers to the potential of the battery as a whole (between the cathode and the anode), and not a half-cell voltage using lithium metal as a counter electrode.10 Tr. 17:1–3 (agreeing 10 With respect to the phrase “as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V,” the parties in fact appear to be in that the first use of “charge cut-off voltage” in claim 5 refers to a full-cell voltage); Sur-reply 5; PO Resp. 22. We need not further construe the claims to resolve the disputes between the parties. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 16
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Given Mr. Juzkow’s unambiguous testimony that Uemura uses constant current charging that would stop when the applied voltage reached 11 The chart is reproduced from SAFT, Charging your lithium-ion batteries: 5 expert tips for a longer lifespan, (https://www.saft.com/energizing-iot/charging-your-lithium-ion-batteries-5-expert-tips-longerlifespan#:~: text=When%20the%20battery%20provides%20current,This%20restore s%20the%20battery's%20capacity). 4.3 V, as well as Dr. Yao’s persuasive testimony that Uemura’s constant charging rate is not slow, we credit the testimony of Dr. Yao that one of ordinary skill in the art would have understood that the internal voltage to which the battery of Uemura was charged is less than 4.3 V. Ex. 2006 ¶ 119. In particular, Dr. Yao persuasively testifies that one of ordinary skill in the art would have believed that the charge cut-off voltage was no more than 4.2 V, and most likely equal to “about 4 V.” Id. ¶¶ 119–122. Petitioner argues that because the battery of Uemura is charged “to” a maximum voltage of 4.3 V, Uemura discloses the claimed charge cut-off voltage under either Petitioner’s or Patent Owner’s construction of the term. Pet. Reply 11–12 (citing Ex. 1009 ¶ 81; Ex. 1044 ¶¶ 56–59). This argument is not persuasive because Mr. Juzkow unambiguously testified that charging in Uemura stopped when the applied voltage reached 4.3 V, and Uemura discloses that the battery was charged “at” a voltage ranging from 4.3 V to 2.0 V, not “to” such a voltage. Ex. 1009 ¶ 81; Ex. 2008, 113:2–13; Ex. 2006 ¶ 119 n.64; Sur-reply 9. In view of the foregoing, we determine that Petitioner has not demonstrated by a preponderance of the evidence that Uemura anticipates independent claims 1 and 5 of the ’641 patent.” slip op. at 21
Patent outcomesUS 7,749,641 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,749,641 - Samsung Electronics Co., Ltd v. Mojo Mobility Inc.All claims unpatentablePTAB · Jan 2, 2025 · IPR2023-01090 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 8, 13, and 15–18 are unpatentable under § 103 over the Fells-based combinations set out in the grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“at least a master’s degree in electrical engineering, or a similar discipline, and two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems.” Pet. 4 (citing Ex. 1002 ¶¶ 20–21). Petitioner further asserts that “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner has not proposed a level of ordinary skill in the art. Because nothing in the record persuades us that our preliminary finding in the Institution Decision (Dec. 13) adopting Petitioner’s proposal was incorrect, we maintain our adoption of Petitioner’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
“charger surface, to inductively transfer power to the receiver [of the first mobile device],” as recited in limitation 1(k). Pet. 5 (bolding omitted). Petitioner contends this term should be construed as a means-plus-function term, and that the underlined portion identified above identifies the function. Id. at 5–6. Petitioner contends that the corresponding structure is described in the Specification and in dependent claims 24 and 25. Id. at 6 (citing Ex. 1001, 14:35–38 (“[T]he charger and or receiver can include means to provide more precise alignment between the charger and receiver coils and antennas. These can include visual, physical, or magnetic means to assist the user in alignment of parts.”); 25:56–63 (claim 24: “the means for position includes one or more magnets to position the receiver in the power transfer position”, claim 25: “means for positioning includes one or more members of a group consistent of visual, physical, or magnetic means to assist in the positioning the receiver in the power transfer position.”)). Patent Owner does not contest Petitioner’s position on this term. See PO Resp. Our Decision does not require an express construction of any particular claim terms. 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 15
- BurdenFwd all claims unpatentableUnpatentable
“Final Written Decision under 35 U.S.C. § 318(a) as to the patentability of the claims on which we instituted trial. Petitioner has the burden of proving unpatentability of a claim by a preponderance of the evidence. 35 U.S.C. § 316(e). As stated above, Patent Owner does not contest Petitioner’s contentions. We have reviewed Petitioner’s contentions and conclude that they show, by a preponderance of the evidence, that claims 8, 13, and 15–18 of the ’349 patent are unpatentable.” slip op. at 3
- Expert testimonyOther
“[T]he compelling merits standard is a higher standard than the standard for institution set by statute.” Commscope at 3 (referring to 35 U.S.C. § 314(a)). “[W]hen determining whether there is a compelling unpatentability challenge, the Board evaluates whether the Petition presents challenges in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. (emphasis added). This is the standard I previously applied to Petitioner’s Ground 1 challenge to claim 17. Inst. Dec. (Fitzpatrick, J., concurring at 2). During trial, all of Petitioner’s challenges went unrebutted, including Petitioner’s Ground 1 challenge to claim 17. See PO Resp. 1 (Patent Owner “elects to not proffer additional argument on the papers or through any hearings that may occur in this proceeding.”). Thus, because I previously determined Petitioner’s Ground 1 challenge to claim 17 presented compelling merits and because Patent Owner did not rebut that challenge during trial, I conclude that Petitioner has necessarily met its burden of proving claim 17 unpatentable by a preponderance of the evidence. slip op. at 46
Patent outcomesUS 11,292,349 unpatentableClaim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,292,349 - Samsung Electronics Co., Ltd v. Mojo Mobility Inc.All claims unpatentablePTAB · Jan 2, 2025 · IPR2023-01089 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 1, 4, 5, 7, 10–12, and 26 are unpatentable as obvious over the Fells-based grounds; the Board adopted the unrebutted petition analyses.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts a person of ordinary skill in the art “would have had at least a master’s degree in electrical engineering, or a similar discipline, and two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems.” Pet. 3–4 (citing Ex. 1002 ¶¶ 20–21). Petitioner further asserts that “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner has not proposed a level of ordinary skill in the art. See PO Resp. Because nothing in the record persuades us that our preliminary finding in the Institution Decision (Dec. 12) adopting Petitioner’s proposal was incorrect, we maintain our adoption of Petitioner’s proposed 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
“Patent Owner does not contest Petitioner’s position on this term. See PO Resp. Our decision does not require an express construction of any particular claim terms. 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
- Expert testimonyPetitioner expert creditedOther
“obvious over Fells. Pet. 7–76. Patent Owner does not dispute Petitioner’s contentions. See PO Resp. Having considered the arguments and evidence before us, we find that Petitioner has shown, by a preponderance of the evidence, that claims 1, 5, 7, 10–12, and 26 would have been obvious over Fells. We agree with and adopt Petitioner’s contentions as our own.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“A patent claim “is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. An obviousness determination requires finding “both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367– 68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418. Further, an assertion of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418; In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (a finding of a motivation to combine “must be supported by a ‘reasoned explanation’”).” slip op. at 12
Patent outcomesUS 11,292,349 unpatentableClaim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,292,349 - PTAB · Dec 16, 2024 · IPR2024-01014 · APJ Zhenyu Yang · IPR · Institution
The Board instituted inter partes review of claims 1–8 on all asserted grounds, finding a reasonable likelihood that Barbour would render the challenged claims unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Anticipation by or Obviousness over Barbour Petitioner asserts that Barbour anticipates and/or renders obvious all challenged claims. Pet. 6, 41–67. Patent Owner does not dispute these assertions. Barbour is the published 2004 application and shares the same disclosure as the ’378 patent. Based on this record, we find Petitioner’s arguments on anticipation and/or obviousness persuasive. Thus, we determine Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of the challenged claims. We institute inter partes review of all challenged claims on all of the grounds in the Petition.” slip op. at 21
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledDecided for petitioner
“4. Summary In sum, based on the current record, and for purposes of this Decision, Petitioner has shown sufficiently that the disclosure of the 2004 application, by itself, fails to enable POSAs to practice the challenged claims without undue experimentation. In addition, Patent Owner has not shown that TC1507 was “known and readily available to the public” as of the filing date of the 2004 application. Therefore, the 2004 application does not enable the challenged claims, and the challenged claims are not entitled to the 2004 priority date. The earliest possible priority date for the challenged claims is, thus, July 6, 2007, which is the filing date of the 2007 application.” slip op. at 18
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“4. Summary In sum, based on the current record, and for purposes of this Decision, Petitioner has shown sufficiently that the disclosure of the 2004 application, by itself, fails to enable POSAs to practice the challenged claims without undue experimentation. In addition, Patent Owner has not shown that TC1507 was “known and readily available to the public” as of the filing date of the 2004 application. Therefore, the 2004 application does not enable the challenged claims, and the challenged claims are not entitled to the 2004 priority date. The earliest possible priority date for the challenged claims is, thus, July 6, 2007, which is the filing date of the 2007 application.” slip op. at 18
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner
“Thus, the critical issue is not, as Patent Owner asserts, whether “the same application can be simultaneously enabling and not enabling.” Id. at 32. It is whether TC1507 was “known and readily available” to the public at the relevant time. As explained above, for the priority determination, the relevant time is April 30, 2004, the filing date of the 2004 application. Patent Owner has not produced or pointed to any evidence to show TC1507 corn “readily available” to the public without restrictions as of the filing date of the 2004 application. On the other hand, for prior-art status determination, the relevant time is February 16, 2006, the publication date of Barbour. Petitioner has presented sufficient evidence, which Patent Owner does not challenge, to show that, by 2006, corn harvested from TC1507 plants was “commercially available following the 2003, 2004, and 2005 growing seasons” and “[s]uch corn was sold as a commodity—without any contractual restrictions” Pet. 52 (citing Ex. 1007 ¶ 134). As a result, based on the current record, we find Petitioner has established sufficiently that, as of its publication date in February 2006, Barbour is prior art that would have enabled practice of the subject matter encompassed by the challenged claims.” slip op. at 20
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 8,901,378 - PTAB · Dec 16, 2024 · IPR2024-01012 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on claims 1–16 and all asserted grounds, finding a reasonable likelihood of unpatentability and declining Fintiv discretionary denial.
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). Upon consideration of the Petition in view of the record at this stage, 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. We also determine that the arguments and evidence of record do not support discretionary denial of the Petition under 35 U.S.C. § 314(a). Accordingly, we grant institution of an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“parties on the present record, we are persuaded Petitioner sufficiently shows the combination of Bosnyak-392 and Son teaches or suggests all of the limitations of claim 1, and sufficiently explains how a person of ordinary skill in the art would have used Bosnyak-392’s teaching of using exfoliated, open-ended carbon nanotube fibers having two different aspect ratios in a composition with improved electrical and mechanical properties, with Son’s implementation of a specific bimodal distribution of aspect ratios, to arrive at the composition of claim 1 with a reasonable expectation of success. We do not find persuasive Patent Owner’s arguments that Bosnyak- 392 teaches away from using nanotubes with a lower aspect ratio, or that Bosnyak-392 has an objective of maintaining longer nanotubes. See Prelim. Resp. 5–9. Patent Owner’s arguments appear to be based on a mischaracterization of Bosnyak-392, which read as a whole, discusses methods for exfoliating carbon nanotubes and physical properties of exfoliated nanotubes, such as length and diameter, that are not apparent when the nanotubes are aggregated. E.g., Ex. 1005 ¶ 37. Although Bosnyak-392 recognizes that nanotube exfoliating techniques tend to reduce nanotube length (see Ex. 1003 ¶ 28), it does not discourage the use of shorter nanotubes. Rather, it recognizes that using short and long nanotubes together can produce a composite with improved electrical and mechanical properties. See id. (citing Ex. 1005 ¶ 73). See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (a reference does not teach away from a claimed invention unless it “criticizes, discredits, or otherwise discourages” the claimed solution).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We do not find persuasive Patent Owner’s arguments that Bosnyak- 392 teaches away from using nanotubes with a lower aspect ratio, or that Bosnyak-392 has an objective of maintaining longer nanotubes. See Prelim. Resp. 5–9. Patent Owner’s arguments appear to be based on a mischaracterization of Bosnyak-392, which read as a whole, discusses methods for exfoliating carbon nanotubes and physical properties of exfoliated nanotubes, such as length and diameter, that are not apparent when the nanotubes are aggregated. E.g., Ex. 1005 ¶ 37. Although Bosnyak-392 recognizes that nanotube exfoliating techniques tend to reduce nanotube length (see Ex. 1003 ¶ 28), it does not discourage the use of shorter nanotubes. Rather, it recognizes that using short and long nanotubes together can produce a composite with improved electrical and mechanical properties. See id. (citing Ex. 1005 ¶ 73). See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (a reference does not teach away from a claimed invention unless it “criticizes, discredits, or otherwise discourages” the claimed solution).” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Having considered both sides’ arguments as to Fintiv factors 2 and 3, we determine that the considerations of these factors weigh against exercising discretionary denial. Neither party directs us to any substantive order issued by the district court in the parallel litigation, which indicates the court has not yet considered claim construction or potential invalidity of the ’282 patent. The Markman hearing will not occur until June 2025, and the expert discovery cutoff is not until August 2025. Ex. 2002. Thus, although the parties have begun discovery as to invalidity issues, much further work remains in the parallel district court litigation. We also take into account Petitioner’s prompt filing of the Petition, as weighing against exercising discretionary denial. See Fintiv 11 (“If the evidence shows that the petitioner filed the petition expeditiously, such as promptly after becoming aware of the claims being asserted, this fact has weighed against exercising the authority to deny institution . . . .”).” slip op. at 34
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,608,282 - PTAB · Dec 16, 2024 · IPR2024-01005 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on claims 1–23 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been shown unpatentable.
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. We also determine that the arguments and evidence of record do not support discretionary denial under 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“under the sixth Fintiv factor only after a determination that the first five Fintiv factors favor discretionary denial. CommScope, 4–5. Here, we do not find the first five factors cumulatively weigh in favor of discretionary denial. Therefore, we determine that the circumstances here do not warrant an analysis of whether the Petition presents compelling merits, and the considerations of the sixth Fintiv factor weigh against exercising discretionary denial. F. Conclusion Having considered the parties’ arguments in view of the Fintiv factors, and taking into account Petitioner’s stipulation, we determine that the circumstances here do not warrant exercising discretion under § 314(a) to deny institution. IV.” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Thus, although both parties indicate that no claim construction is necessary at this stage of the proceeding, it is apparent that they disagree as to the meaning of “discrete carbon nanotubes.” While Petitioner appears to construe “discrete carbon nanotubes” as “nanotubes that are generally individually distinct” (Pet. 13), Patent Owner argues a more restricted construction requiring that “discrete carbon nanotubes” not be reacted with other components. Prelim. Resp. 3. The evidence relating to claim 10 In quotations from the Preliminary Response throughout this Decision, we have retained bolding and underlining added to the text by Patent Owner. construction that Patent Owner offers on the current record, however, does not address its proposed restriction. See id. at 9, n. 4, citing Ex. 1001, 3:9, 5:39–40 (“The ’649 Patent describes the ‘discrete carbon nanotubes’ as, for example, ‘individually dispersed’, ‘individualized carbon nanotubes’, ‘dispersed as individual nanotubes’, and ‘essentially discrete individual fibers, not entangled as a mass.’”). As discussed in Section II.D.2 below, we determine based on the record at this stage of the proceeding that Petitioner demonstrates sufficiently for purposes of institution that Sun discloses or suggests “discrete carbon nanotubes.” Therefore, we do not explicitly construe any claim terms in this Decision. 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))). If either party intends to argue a claim construction at trial, however, including what is the ordinary meaning of a term, they should do so in a clearly designated section of their briefing. See Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 21, 2019) (“CTPG”), 46, 49 (available at https://www.uspto.gov/TrialPracticeGuideConsolidated); O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (“A determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ meaning does not resolve the parties’ dispute.”). Claim construction arguments should not be relegated to patentability arguments on the facts.” slip op. at 7
- 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] Master’s degree in materials science, chemistry, chemical engineering, a field relevant to polymer science and engineering, or the equivalent, and at least three years of experience in nanomaterials, electrochemistry, batteries, or polymer related activities.” Pet. 5 (citing Ex. 1003 ¶ 19). Petitioner further argues that “[a]dditional work experience can compensate for less formal education, and vice versa.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 4. 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 ’649 patent and the asserted prior art.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,636,649
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.