- PTAB · Jan 6, 2023 · IPR2022-01204 · APJ Donna M Praiss · IPR · Institution
Instituted IPR on claims 1–10, 12, 13, and 15–20 because the petition showed a reasonable likelihood of prevailing on asserted anticipation and obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–10, 12, 13, and 15–20 of the ’285 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“district court trial dates are set to occur before the issuance of the Board’s final written decision. The facts and reasoning of Fintiv are, at a minimum, only applicable to cases in which a trial date has been set by the district court in a copending litigation. But here, as will be discussed below, the parties agree that no trial date has been set, and the District Court has stayed the litigation. Prelim. Reply 8; Prelim. Sur-Reply 6 (“There has never been a trial date). Furthermore, that stay will continue until our final determination should we decide to institute trial. Without a trial date, we see no need to engage in a full analysis of the Fintiv factors, as there is no basis for Patent Owner’s argument for discretionary denial. Nevertheless, we address the Fintiv factors below13 and explain our reasons for not exercising discretion to deny institution based on § 314(a).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“While we recognize that the plain language and grammar of the claims supports Petitioner’s proposed construction, we have also considered the District Court’s adopted construction and Patent Owner’s arguments which find support in the written description of the ’285 patent. In the end, however, we need not resolve this dispute at this time. Because the Petition provides sufficient evidence that the prior art references disclose the claimed functional groups, biomolecules, or organic dyes under either construction, it is not necessary for us to construe this claim term at this stage of the proceeding.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“including Petitioner’s Reply Brief (Paper 10, “Reply Br.”) and Patent Owner’s Sur-Reply Brief (Paper 11, “Sur-Reply Br.”), we agree with Petitioner that Patent Owner’s proposed definition reads into the claim a numeric threshold for solubility from an embodiment that is nowhere apparent from the claim itself. Reply Br. 1–2. “[I]nterpreting what is meant by a word in a claim is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348 (Fed. Cir. 2002) (internal quotation marks and citations omitted; emphasis in original). Although courts must read a patent’s claims in light of the specification, see, e.g., Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998), that obligation does not authorize “reading a limitation from the written description into the claims,” which is characterized as “one of the cardinal sins of patent law,” SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc., 242 F.3d 1337, 1340 (Fed. Cir. 2001). Confining the scope of “capable of imparting solubility” to an unexpressed minimum solubility taken from one of the Specification’s embodiments crosses that line. See, e.g., E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1432–34 (Fed. Cir. 1988) (Claims to a co-polymer improperly interpreted to include two properties). In view of the foregoing, we construe the phrase “a non-ionic side group capable of imparting solubility in water” to not require any particular numeric threshold of solubility. No further construction of the claim is necessary to resolve the dispute between the parties with respect to institution of trial.. See Nidec Motor Corp. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,365,285 - PTAB · Jan 6, 2023 · IPR2022-01206 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–10, 12–14, and 17–19, finding a reasonable likelihood of prevailing on the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–10, 12–14, and 17–19 of the ’648 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The express language of claim 1 requires no solubility threshold, and dependent claim 10 of related U.S. Patent No. 10,288,620 B2 demonstrates that, where a solubility threshold was intended by the inventors of these patents, they knew how to expressly set forth that threshold in the claims. Compare Ex. 1004, 222:47–49 (“capable of imparting solubility in water”), with Ex. 1005, 218:12–14 (“The method according to claim 1, wherein each R is a non-ionic side group capable of imparting solubility in water in excess of 10 mg/mL.”). Thus, the claim language does not support applying a particular solubility threshold in claim 1. As noted by Patent Owner, the written description of the ’648 patent explains that “each R is independently a non-ionic side group capable of imparting solubility in water in excess of 10 mg/mL.” Ex. 1004, 2:21–22; Prelim. Resp. 17. This solubility threshold, however, is not in claim 1. Also, the ’648 patent states that this solubility applies only to some embodiments. See, e.g., Ex. 1004, 53:9–12, 55:6–20. We decline to import such a limitation from the written description into claim 1 absent reason for doing so. See SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc., 242 F.3d 1337, 1340 (Fed. Cir. 2001) (explaining that “reading a limitation from the written description into the claims” is “one of the cardinal sins of patent law”); see also Thorner v. Sony Comp. Ent’m Am., LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (“It is likewise not enough that the only embodiments, or all of the embodiments, contain a particular limitation. We do not read limitations from the specification into claims; we do not redefine words.”). After considering the parties’ arguments and evidence presented, we agree with Petitioner that Patent Owner’s proposed definition reads into the claim a numeric threshold for solubility from an embodiment that is nowhere apparent from the claim itself. “[I]nterpreting what is meant by a word in a claim is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348 (Fed. Cir. 2002) (internal quotation marks and citations omitted; emphasis in original). Although we must read a patent’s claims in light of the specification, see, e.g., Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998), that obligation does not authorize “reading a limitation from the written description into the claims.” SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc., 242 F.3d 1337, 1340 (Fed. Cir. 2001). Confining the scope of “non-ionic side group capable of imparting solubility in water” to an unexpressed minimum solubility taken from only “some” embodiments encompassed by the ’648 patent crosses that line. See, e.g., E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1432–34 (Fed. Cir. 1988) (Claims to a co-polymer improperly interpreted to include two properties). In view of the foregoing, we construe the phrase “a non-ionic side group capable of imparting solubility in water” to not require any particular numeric threshold of solubility. No further construction of the claim is necessary to resolve the dispute between the parties with respect to institution of trial.15” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“in situations where a district court trial date is set to occur before the issuance of the Board’s final written decision. The facts and reasoning of Fintiv are, at a minimum, only applicable to cases in which the district court has actually set a trial date in a copending litigation. But here, as will be discussed below, the parties agree that no trial date has been set, and the District Court has stayed the litigation. Prelim. Reply 8; Prelim. Sur-Reply 6 (“There has never been a trial date). Furthermore, that stay will continue until our final determination should we decide to institute trial. Without a trial date, we see no need to engage in a full analysis of the Fintiv factors,17 as there is no basis for Patent Owner’s argument for discretionary denial.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We are not persuaded by Patent Owner’s argument. Xue expressly discloses that its glycopolymers utilizing poly(ethylene glycol)-tethered spacers (Polymers B and C) “are highly water-soluble due to their long, flexible, hydrophilic spacers.” Ex. 1010, Abstr., 2289–90. As claim 1 does not require any particular solubility threshold, on this record, Petitioner sufficiently demonstrates that Xue expressly discloses the solubility limitation of independent claim 1.” slip op. at 33
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,302,648 - PTAB · Jan 6, 2023 · IPR2022-01205 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 1–10, 18, and 20 based on the asserted § 102 and § 103 grounds.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“Here, Patent Owner filed a statutory disclaimer of claims 11–17 of the ’417 patent. Prelim. Resp. 1–2; Ex. 2019. Based on our review of Exhibit 2019, we determine that a disclaimer of claims 11–17 of the ’417 patent under 35 U.S.C. § 253(a) has been filed with the Office as of October 5, 2022. Based on the information in the public record, we find that the disclaimer complies with the above-listed requirements of 37 C.F.R. § 1.321(a). Because claims 11–17 have been disclaimed under 35 U.S.C. § 253(a), in compliance with 37 C.F.R. § 1.321(a), we do not reach challenges to claims 11–17. As a result, the remaining challenged claims are claims 1–10, 18, and 20 (“the challenged claims”).” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“in situations where a district court trial date is set to occur before the issuance of the Board’s final written decision. The facts and reasoning of Fintiv are, at a minimum, only applicable to cases in which the district court has actually set a trial date in a copending litigation. But here, as will be discussed below, the parties agree that no trial date has been set, and the 14 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. District Court has stayed the litigation. Prelim. Reply 8; Prelim. Sur-Reply 6 (“There has never been a trial date). Furthermore, that stay will continue until our final determination should we decide to institute trial. Without a trial date, we see no need to engage in a full analysis of the Fintiv factors,15 as there is no basis for Patent Owner’s argument for discretionary denial.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the reasons above, we determine that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail with respect to challenged claims 1–10, 18, and 20 of the ’417 patent. At this juncture in the proceeding, we have not made a final determination with respect to the patentability of the challenged claims, or with respect to claim construction. V. ORDER For the foregoing reasons, it is ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–10, 18, and 20 of the ’417 patent is hereby instituted with respect to the ground of unpatentability set forth in the Petition; and FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial will commence on the entry date of this Decision.” slip op. at 44
- Skill levelOther
“would have at least a Ph.D. degree in chemistry, or a bachelor’s or master’s degree plus experience involving the use and design of fluorescent probes or dyes.” Pet. 18 (citing Ex. 1007 ¶¶ 14–18). Patent Owner agrees that a POSITA may have a Ph.D. degree or master’s degree in chemistry, but asserts that a POSITA would also have “some experience with fluorescence” in addition to a Ph.D. degree in chemistry and that the experience of a POSITA with a master’s degree in chemistry is alternatively “industry experience in the field of biological detection systems.” Prelim. Resp. 5–6 (citing Ex. 2001 ¶ 7). For purposes of this Decision, we need not resolve these differences between the parties’ definitions, because any differences do not affect our analysis.13 If either party believes that adopting its preferred definition of the level of ordinary skill would have a material effect on the outcome of this proceeding, the party should address this issue during the instituted trial. slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,955,417 - PTAB · Jan 6, 2023 · IPR2022-01207 · APJ Jon B Tornquist · IPR · Institution
Instituted IPR of claims 1–14, 18, and 19 on all asserted grounds after finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. Thus, we hereby institute an inter partes review as to claims 1–14, 18, and 19 of the ’620 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“be lifted for each patent for which the petition is denied. As noted above, there are six related petitions at the Board involving the patents before the court. The district court stayed the litigation “pending resolution of the IPR proceedings that have been instituted on the patents at issue in this case.” Ex. 2006, 2. Regarding the length of the stay, the district court explicitly ordered the parties not to use continuance of the fact discovery to October 28, 2022 “as grounds for . . . opposing institution of any post-grant proceeding.” Ex. 2007, 2. Regarding when the stay will be lifted, the order merely gives Patent Owner the opportunity to “seek to lift the stay as to any patents that are not instituted for review.” Ex. 2006, 2 (emphasis added). But we decline to speculate whether the district court would grant such a motion directed only to one of the six patents. Among the reasons warranting a stay of the litigation, the district court found “IPR has the potential to streamline issues for trial” and “the resources the parties will need to expend for experts could be significantly impacted by the outcome of any instituted IPR proceedings.” Id. Thus, the litigation is stayed pending the outcome of the six related proceedings, not merely the outcome of this institution decision, and the district court stayed the litigation for the explicit purpose of gaining efficiency and avoiding duplication of efforts by letting this inter partes review proceed to its conclusion first.14 See Prelim. Reply. 4–5. While Patent Owner may seek to lift the stay as to any patent for which institution is denied, the grant of any such request is uncertain. Accordingly, this factor strongly weighs against discretionary denial of institution.” slip op. at 15
- Skill levelOther
“Petitioner asserts that a person of ordinary skill in the art (POSITA) “would have at least a Ph.D. degree in chemistry, or a bachelor’s or master’s degree plus experience involving the use and design of fluorescent probes or dyes.” Pet. 17 (citing Ex. 1007 ¶¶ 14–18). Patent Owner agrees that a POSITA may have a Ph.D. degree or master’s degree in chemistry, but asserts that a POSITA would also have “some experience with fluorescence” in addition to a degree in chemistry and that the experience of a POSITA with a master’s degree in chemistry is alternatively “industry experience in the field of biological detection systems.” Prelim. Resp. 10 (citing Ex. 2001 ¶ 7). For purposes of this Decision, we need not choose between the parties’ proposed levels of one of ordinary skill in the art, which are quite similar, as neither party asserts that the anticipation or obviousness analyses in this case would turn on which definition is adopted. See Prelim. Resp. 10 (Patent Owner stating that its arguments and conclusions “would not change” if Petitioner’s definition were applied).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for patent owner
“The express language of claim 1 requires no solubility threshold, and dependent claim 10 demonstrates that where a solubility threshold was intended by the inventors of the ’620 patent they knew how to expressly set forth that threshold in the claims. Compare Ex. 1005, 213:26–27 (“capable of imparting solubility in water”), with id. at 218:12–14 (“The method according to claim 1, wherein each R is a non-ionic side group capable of imparting solubility in water in excess of 10 mg/mL.”). Thus, the claim language does not support applying a particular solubility threshold in claim 1. As noted by Patent Owner, the written description of the ’620 patent explains that “[i]n some embodiments, each R is independently a non-ionic side group capable of imparting solubility in water in excess of 10 mg/mL.” Id. at 54:2–10; Prelim. Resp. 12–13. This solubility threshold, however, is not in claim 1, and we decline to import such a limitation from the written description into claim 1 absent compelling reasons for doing so. See SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc., 242 F.3d 1337, 1340 (Fed. Cir. 2001) (explaining that “reading a limitation from the written description into the claims” is “one of the cardinal sins of patent law”); see also Thorner v. Sony Comp. Entm’t Am., LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (“It is likewise not enough that the only embodiments, or all of the embodiments, contain a particular limitation. We do not read limitations from the specification into claims; we do not redefine words.”). In view of the foregoing, we construe the term “non-ionic side group capable of imparting solubility in water” to not include any particular numeric solubility threshold.13” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,288,620 - PTAB · Jan 6, 2023 · IPR2022-01203 · APJ Christopher L Crumbley · IPR · Institution
The Board instituted IPR on claims 1–10, 12–14, and 17–19 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. Patent Owner has not persuaded us that we should exercise our discretion to deny institution. We hereby institute an inter partes review as to claims 1–10, 12–14, and 17–19 of the ’989 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“in situations where a district court trial date is set to occur before the issuance of the Board’s final written decision. The facts and reasoning of Fintiv are, at a minimum, only applicable to cases in which the district court has actually set a trial date in a copending litigation. But here, as will be discussed below, the parties agree that no trial date has been set, and the District Court has stayed the litigation. Prelim. Reply 8; Prelim. Sur-Reply 6 (“There has never been a trial date.”). Furthermore, that stay will continue until our final determination should we decide to institute trial. Without a trial date, we see no need to engage in a full analysis of the Fintiv factors,14 as there is no basis for Patent Owner’s argument for discretionary denial.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“numerical solubility limit into the claims, noting that the ’989 patent expressly defines “non-ionic side groups capable of imparting solubility in water” as simply “side groups which are not charged and allow the resulting polymer to be soluble in water or aqueous solution with no visible particulates.” Prelim. Reply 1 (citing Ex. 1001, 54:9–13). Petitioner notes that this definition contains no numerical limit, and that it is followed by a statement that in some embodiments, the R group is capable of imparting solubility in excess of 10 mg/mL. Id. at 2 (citing Ex. 1001, 54:13–16). Petitioner contends that reading a limitation from “some embodiments” into the claims would be “one of the cardinal sins of patent law.” Id. (citing Phillips, 415 F.3d at 1320; Polaris Innovations Ltd. v. Brent, 48 F.4th 1365, 1375–76 (Fed. Cir. 2022)). Petitioner also directs our attention to related patents that expressly claim a solubility in excess of 10 mg/mL, arguing that when Patent Owner sought to claim such polymers, it knew how to do so. Id. (citing Ex. 1005, 218:11–12; Ex. 1006, 239:43–45, 252:51–52, 254:39–40, 262:56–57, 269:31–35).” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“proposed claim construction on solubility above, which we declined to do on the present record. For this reason, we find them unpersuasive. In addition, we note that Xue expressly discloses that its glycopolymers utilizing PEG-tethered spacers (Polymers B and C) “are highly water-soluble due to their long, flexible, hydrophilic spacers.” Ex. 1010, Abstract, 2289–90. Petitioner sufficiently sets forth why a person of ordinary skill in the art would have considered the PEG side chains of Xue to impart solubility in water, which is all we have construed the claims to require.” slip op. at 35
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,458,989 - PTAB · Jan 5, 2023 · PGR2022-00046 · APJ Robert L Kinder · PGR · Institution
The Board instituted PGR on the design claim, finding PayPal more likely than not anticipates and renders the claim obvious; it also instituted on all other petition grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute a post-grant review under 35 U.S.C. § 324(a) (2018), which provides that review may not be instituted unless “the information presented in the petition,” if “not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Applying that standard, for reasons explained below, we grant the Petition and institute a post-grant review of the challenged claim.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner further asserts that “[t]he designer of ordinary skill would be someone with a background in designing animated GUI’s, such as animated GUI’s that facilitate financial transactions.” Id. at 64 (citing Ex. 1003 ¶ 109). Based on the record before us, we adopt Petitioner’s identification of the ordinary observer and designer of ordinary skill in the art for purposes of this Decision because they are consistent with the disclosures of the asserted prior art references and the ’453 patent, supported by witness testimony, and unopposed by Patent Owner at this juncture.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“portion with animated [GUI].” Ex. 1001, code (57). “Petitioner proposes that the ’453 Patent claim should be construed as a display screen portion with an animated graphical user interface displaying a series of images including the elements shown in non-broken lines in FIGS. 1-4,” and “in accordance with its explicit statements that the broken lines and the dot lines ‘form[] no part of the claimed design’ and that ‘[t]he process or period in 8 Petitioner refers to a graphical user interface as a GUI. which one image transitions to another image forms no part of the claimed design.’” Pet. 43–44. For purposes of this Decision, we agree with Petitioner’s proposed construction that the claim encompasses a display screen portion with an animated graphical user interface displaying a series of images including the elements shown in non-broken lines and agree that the broken lines and dot lines in the figures form no part of the claimed design. See id. To the extent that the features of the claimed design require further discussion, however, we provide it in our assessment of the challenges, which we turn to next.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Petitioner explains that PayPal was publicly accessible because “MPEP § 2128 states that YouTube videos ‘can be sources of prior art, provided the public accessibility requirements . . . are met,’” where “‘[p]rior art disclosures on the Internet . . . are considered to be publicly available as of the date the item was publicly posted,” and, here, PayPal is a YouTube video that was publicly posted on April 8, 2021 “and has received over 107,000 views,” with “a corresponding April 8, 2021 article posted by CNET [having] linked to this video.” Pet. 20 (citing MPEP § 2128; Ex. 1028). Petitioner also points out that “persons interested and having ordinary skill in cashless payment applications could locate PayPal exercising reasonabl[e] diligence . . . by searching the Internet for videos concerning QR code payment systems payments,” and that “PayPal has been viewed over 100,000 times, suggesting that PayPal is a well-known payment system and that persons interested and having ordinary skill in cashless payment applications could have easily located PayPal.” Id. at 20–21. Petitioner argues that PayPal qualifies as “otherwise available to the public” prior art because “the U.S. Patent & Trademark Office’s training materials specifically list YouTube videos as prior art that should be considered ‘otherwise available to the public’ under 35 U.S.C. § 102 (a)(1) . . . [,] [a]nd the evidence described above confirms that PayPal was otherwise available to the public as of its publication date of April 8, 2021.” Pet. 21 (citing Ex. 1032, 15). Based on the record before us, we determine it is more likely than not that PayPal qualifies as prior art, either as a printed publication or as otherwise available to the public.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousness - PTAB · Dec 21, 2022 · IPR2022-01088 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–4, 6–15, and 17–21 on all petitioned grounds after finding a reasonable likelihood that Brochure and Blunt rendered the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any [preliminary] 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(a) (2018). For the reasons below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in physics or engineering and experience with the installation of cable,” and that “[a]dditional education could substitute for professional experience and vice versa.” Pet. 4 (citing Ex. 1002 ¶ 15). At this stage of the proceeding and on the current record, we find that Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the ’771 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt it in our consideration of the issues presently before us.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. 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)). Petitioner contends that “no terms need construction and the plain and ordinary meaning of each term can be applied.” Pet. 4 (citing Phillips, 415 F.3d at 1312–13). On the present record at this stage of the proceeding, we need not construe any claim terms expressly because the meaning of the terms is not in dispute. See Realtime Data, 912 F.3d at 1375.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends that one of ordinary skill in the art would have been motivated to “modify Brochure’s cable reel with Blunt’s reel structure or substitute Brochure’s reel with Blunt’s reel 34" to . . . replenish the supply of cable in Brochure’s reel when it is exhausted in an environmentally friendly way.” Pet. 27 (citing Ex. 1002 ¶¶ 51–56; Ex. 1004 ¶ 107). Additionally, Petitioner asserts that one of ordinary skill in the art “would have expected success in modifying Brochure’s cable reel with the reel structure of Blunt’s reel 34" or substituting Brochure’s reel with Blunt’s reel 34" because the modification would merely involve using a known technique to improve similar devices in the same way taught.” Id. at 28 (citing Ex. 1002 ¶ 53). We have reviewed Petitioner’s detailed arguments challenging claims 1–4, 6–15, and 17–21 and the evidence on which Petitioner relies (see Pet. 16–83), and we find, on the preliminary record before us, that Petitioner has shown sufficiently that the combination of Brochure and Blunt satisfies the elements of claims 1–4, 6–15, and 17–21, and that one of ordinary skill in the art would have been motivated to combine the teachings as proposed by Petitioner with a reasonable expectation of success.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,906,771 - PTAB · Dec 19, 2022 · IPR2022-01087 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–8 and 10–19 on all grounds, finding a reasonable likelihood that claims 1–8 and 10–19 would be obvious over Brochure and Blunt.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] 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(a) (2018). For the reasons below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. 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
- Skill levelSkill level petitioner adoptedDecided for petitioner
“G. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Eldering’s testimony, proposes that a person of ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in physics or engineering and experience with the installation of cable,” and that “[a]dditional education could substitute for professional experience and vice versa.” Pet. 4 (citing Ex. 1002 ¶ 15). At this stage of the proceeding and on the current record, we find that Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the ’016 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt it in our consideration of the issues presently before us.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends that one of ordinary skill in the art would have been motivated to “modify Brochure’s cable reel with Blunt’s reel structure or substitute Brochure’s cable reel with Blunt’s reel 34" to . . . replenish the supply of cable in the cable reel installed in the Tote bag when it is exhausted in an environmentally friendly way.” Pet. 26 (citing Ex. 1002 ¶¶ 58–63; Ex. 1004 ¶ 107). Additionally, Petitioner asserts that one of ordinary skill in the art “would have expected success in modifying Brochure’s cable reel with the reel structure of Blunt’s reel 34" or substituting Brochure’s cable reel with Blunt’s reel 34" because the modification would merely involve using a known technique to improve similar devices in the same way taught.” Id. at 27 (citing Ex. 1002 ¶ 60). We have reviewed Petitioner’s detailed arguments challenging claims 1–8 and 10–19 and the evidence on which Petitioner relies (see Pet. 17–92), and we find, on the preliminary record before us, that Petitioner has shown sufficiently that the combination of Brochure and Blunt satisfies the elements of claims 1–8 and 10–19, and that one of ordinary skill in the art would have been motivated to combine the teachings as proposed by Petitioner with a reasonable expectation of success.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,941,016 - PTAB · Dec 7, 2022 · IPR2022-00946 · APJ Frances L Ippolito · IPR · Institution
The Board instituted IPR of claims 1–12 and 14–22 on all petition grounds, finding a reasonable likelihood that PPC would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented in the Petition, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–12 and 14–22 of the ’342 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“In addition, Petitioner contends that a POSITA would understand that Brochure in combination with Blunt teaches the “first flange configured to engage the first frame” and the “second flange configured to engage the second frame.” Pet. 42–44 (citing Ex. 1002 ¶¶ 65–75; Ex. 1004 ¶¶ 96–97, Figs. 3, 11; Ex. 1006; Ex. 1001, 10:50–53). Specifically, Petitioner argues that a POSITA would understand that when the separable cable reel disclosed in Blunt is inserted into the bag in Brochure, “the ‘first flange’ is ‘configured to engage’ the ‘first frame’ in the base of the bag and the outer engaged with the ‘first frame.’” Id. at 40. Petitioner reasons that a POSITA would understand that the cable reels of Brochure and Blunt are similarly configured when the cable reel in Blunt is assembled. Pet. 40 (citing Ex. 1002 ¶ 68). According to Petitioner, a POSITA would know that when the Blunt cable reel is inserted into the Brochure bag, the outer side of the flange first inserted into the bag (i.e., the “first flange”) is configured to engage with the first frame at the base of the bag in Brochure. Id. Petitioner explains the same is true for the outer side of the second flange, which is the flange facing out of the bag cover. Id. At this stage, we note that the preliminary evidence supports Petitioner’s contentions that Blunt teaches reel 34", flange 42", core 36", and separate flange 40". Ex. 1004 ¶ 96, Fig. 11. Further, Dr. Eldering’s unrebutted testimony supports Petitioner’s position that a POSITA would have been motivated to implement a two-component reel structure, such as Blunt’s cable reel 34", within Brochure’s cable reel apparatus. See Ex. 1002 ¶ 57. Dr. Eldering also testifies a POSITA would understand the environmentally friendly advantages of replenishing the supply of cable in the cable reel installed in the Tote bag. Id. ¶ 53 (citing Ex. 1004 ¶ 107). Upon review of the preliminary record and based on the evidence and” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes “the plain meaning of each claim term can be applied.” Pet. 5. For purposes of this Decision, we do not expressly construe any 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 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,988,342 - PTAB · Dec 7, 2022 · IPR2022-00947 · APJ George R Hoskins · IPR · Institution
Instituted IPR of claims 1–8 on all petitioned grounds; the Board found a reasonable likelihood of prevailing on at least claim 1 over Brochure and Blunt.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For reasons provided below, we determine, on behalf of the Director (see 37 C.F.R. § 42.4(a)), that the Petition demonstrates a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. See 35 U.S.C. § 314(a). We therefore institute the petitioned inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“to the ’471 patent “would have at least a bachelor’s degree in physics or engineering and experience with the installation of cable,” and “[a]dditional education could substitute for professional experience and vice versa.” Pet. 4; Ex. 1002 ¶ 15. At this stage of the proceeding, we find Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the ’471 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt it in our consideration of the issues presently before us.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“terms need construction and the plain meaning can be applied.” Pet. 5. Petitioner asserts claim 4’s “means for releasably coupling” limitation (Ex. 1001, 12:21–27, pg. 20 (Cert. of Correction)) is a means-plus-function limitation under 35 U.S.C. § 112(f), and Petitioner provides a corresponding construction. See Pet. 5–6. For reasons provided below, we determine Petitioner’s challenge to claim 1 provides a sufficient basis to justify institution of review regardless of claim 4, so we do not reach this claim construction issue at the present time. See 35 U.S.C. § 314(a) (authorizing institution of inter partes review if there is a reasonable likelihood Petitioner would prevail with respect to at least one of the challenged claims). Based on our review of the record at this preliminary stage, we determine no explicit construction of any claim term is needed to decide whether to institute review. 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“have been motivated to implement a two-component reel structure, such as Blunt’s cable reel 34ʹʹ, within Brochure’s cable reel apparatus. See Pet. 28–34, 36–38, 49–52. This would have been done, according to Petitioner, in order to permit the user to “replenish the supply of cable in Brochure’s cable reel when it is exhausted in an environmentally friendly way.” Id. at 28 (emphasis added); Ex. 1002 ¶ 57. Petitioner points out that Brochure describes its system as being “Environmentally-Friendly,” and alleges that Blunt similarly describes how its two-component reel 34ʹʹ can “be replenished with a new supply of cable when the cable supply in the reel is exhausted such that the reel would be reused in ‘an environmentally friendly manner.’” Pet. 28–29 (quoting Ex. 1006; Ex. 1004 ¶ 107) (citing Ex. 1004 ¶¶ 19, 73, 89); Ex. 1002 ¶ 58. Specifically, according to Petitioner, using Blunt’s replenishable two-component reel in Brochure “would be environmentally friendly because it would save cost and reduce waste since the entire cable reel does not have to be disposed.” Pet. 29 (citing Ex. 1004 ¶ 19; Ex. 1005, 1:21–25, 4:33–57, Fig. 6); Ex. 1002 ¶ 58. Petitioner also asserts this modification could have been achieved with a reasonable expectation of success, given various similarities between Brochure’s and Blunt’s rotatable mounting of a cable reel, and related teachings in those and other prior art references. See Pet. 29–32; Ex. 1002 ¶¶ 59–61. Petitioner further provides illustrations of how a person of ordinary skill in the art might have implemented this combination. See Pet. 32–34; Ex. 1002 ¶ 62. Upon review of the foregoing, we determine Petitioner’s contentions regarding the motivations that would have led a person of ordinary skill in the art to use, with a reasonable expectation of success, Blunt’s two-component cable reel structure within Brochure’s cable dispensing apparatus, are sufficiently articulated and supported by the evidence of record to justify institution of review.” slip op. at 21
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,001,471
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.