- PTAB · Apr 11, 2023 · IPR2022-01473 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–25 on all asserted grounds, finding a reasonable likelihood of unpatentability on at least one claim based on Higuchi and Kobayashi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’904 patent, and we do not exercise discretion to deny the Petition. Accordingly, we institute an inter partes review of claims 1–25 of the ’904 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“In determining whether to exercise discretion to deny institution under 35 U.S.C. § 314(a), the Board considers the trial date in related litigation as part of an assessment of all relevant circumstances of the case, including the merits, in an effort to balance considerations such as system efficiency, fairness, and patent quality. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv Order”); see also NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 19–20 (PTAB Sept. 12, 2018) (precedential) (denying institution relying, in part, on § 314(a) because the parallel district court proceeding was scheduled to finish before the Board reached a final decision). In particular, the Board evaluates the following factors (“Fintiv factors”): 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv Order, 5–6. In evaluating these factors, “the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a two-part framework for evaluating arguments under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). In applying this framework, we consider the Becton, Dickinson10 factors that address discretion to deny when a petition presents the same or substantially the same prior art or arguments previously presented to the Office, including: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; 10 Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton, Dickinson”). (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson, Paper 8 at 17–18. Factors (a), (b), and (d), relate to whether the same or substantially the same art or arguments were previously presented to the Office, and factors (c), (e), and (f) relate to whether the petitioner demonstrates that the Office erred in a manner material to the patentability of the claims. Advanced Bionics, Paper 6 at 9–11. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether the petitioner has demonstrated a material error by the Office. Id. 2. Examination of the ’904 Patent Although Patent Owner argues that the Petition asserts references previously in the Patent Office’s records, Patent Owner does not argue that the Examiner previously considered the combinations of art that the Petition raises, namely, the combination of Brown, Higuchi, and Fujita or the combination of Higuchi and Kobayashi. Resp. 33–34. And, to the extent that Patent Owner argues that substantially the same art was previously presented, the record does not persuasively establish how the art is substantially the same or how the art is now relied upon in the same manner. Resp. 33–34. As such, the record does not establish that the ’904 examination previously considered the art in a similar or cumulative way or to the same extent. As such, at least Becton, Dickinson factors (a), (b), (c), and (d) weigh against denial of institution. 3.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“establishes that a POSITA would have been motivated to modify Brown in the manner proposed. Brown teaches that its battery casing with the stacking mechanism is used in both single and multi-cell batteries: A cell casing for a primary dry cell battery of the button type is disclosed which includes a case with a first elongated electrically conductive member affixed centrally to its exterior surface, and a cover with a second elongated electrically conductive hollow member affixed centrally to its interior surface in communication with an aperture. Both a single and a multi-cell battery are described which include the above battery casing. Ex. 1005, 1:11–18 (emphasis added). Consistent with this teaching, Brown’s Example I describes a cell casing “formed generally in accordance” with the casing depicted in Brown’s Figure that includes a stacking mechanism, in particular a screw (member 14) welded to the outside center of case 11. Id. at 2:58–81. In Example II, Brown teaches using the “cell casing of Example I,” which includes the stacking mechanism, in a singlecell battery. Id. at 3:1– 18. Brown explicitly states that the aperture in the cover is sealed when the cell is used in a single cell battery, but provides for no other modifications to the casing. Id. at 3:13–16 (“The aperture was then sealed by means of a short #2-56 round-head machine screw and a 10-mil thick polytetrafluoroethylene polymer gasket.”). In Example III, Brown similarly teaches a battery with fifteen stacked cell casings wherein, after each casing member of each cell was threaded into the hollow member of the cover of the adjacent, the aperture on the last cover was “sealed with a threaded screw as in Example II.” Id. at 3:19–29. These teachings demonstrate that Brown contemplated using the casing with the stacking mechanism in a single cell battery and accounted for that by sealing the aperture in the cover. In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explain why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 19 (citing Ex. 1002 ¶ 57–59); see Ex. 1005, 1:11–18, 3:1–18. Mr. Juzkow’s testimony in this regard repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing significant reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022- 00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). For these reasons, we are not persuaded that Petitioner makes a sufficient showing that a POSITA would have been motivated to modify Brown as proposed. Because Petitioner relies on its modified Brown with respect to Grounds 1A to 1E, we also conclude that that Petitioner does not, on this record, demonstrate a reasonable likelihood of prevailing in showing that any of claims 1–25 would have been obvious over the combined teachings of Brown, Higuchi, and Fujita. Pet. 18–31. Because of our determination regarding ground 2, however, this conclusion does not prevent institution. See SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018). We invite the parties to develop the issue further at trial to the extent permitted under our rules and applicable law.14” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,024,904 - Scientific Design Company, Inc. v. Shell USA, Inc., F/K/A Shell Oil CompanyAll claims unpatentablePTAB · Mar 28, 2023 · IPR2022-00158 · APJ Kristina M Kalan · IPR · Final written decision
Claims 1–28 are unpatentable: claims 1–14 and 17–28 as obvious over Lockemeyer and Liu, and claims 15–16 as obvious over Lockemeyer, Liu, Lockemeyer-II, and Kowaleski.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“contention that a person of ordinary skill in the art “would have held a Bachelor’s or Master’s degree in chemical engineering or a related discipline with five or more years of experience in the catalyst field.” Pet. 11 (citing Ex. 1014 ¶¶ 12–14); Dec. 6. Patent Owner represents that it “does not challenge Petitioner’s . . . POSA definition (Petition, 11).” PO Resp. 19. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Accordingly, we adopt Petitioner’s definition, because it is consistent with the cited prior art. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner proposes a construction for “non-platelet morphology” in claim 27 as “the morphology of the carrier when imaged by scanning electron microscopy at a magnification of 2000, and to the substantial absence in such images of structures having substantially flat surfaces.” Pet. 10–11 (citing Ex. 1001, 5:31–35). Patent Owner represents that it “does not challenge Petitioner’s proposed claim interpretations (Petition, 10–11).” PO Resp. 19. On this record, we determine that no claim terms require express construction. See, e.g., Vivid Techs., 200 F.3d at 803.” slip op. at 7
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We find credible Dr. Haller’s explanation that a person of ordinary skill “would have been motivated to use Liu to direct the pore size distribution, especially ones that are within the ranges taught by Lockemeyer” with “a reasonable expectation of success” (Ex. 1014 ¶¶ 193–197) and would have pursued Lockemeyer’s “invitation to optimize PSD, where Liu’s PSDs show outstanding performance” (Ex. 1038 ¶ 152). With regard to Patent Owner’s arguments, first, we do not find persuasive Patent Owner’s argument that different amounts of silver and promoters in Lockemeyer and Liu’s examples “eviscerate” a motivation to modify Lockemeyer’s PSD. See Sur-Reply 24. Regarding silver, we find more persuasive Petitioner’s argument that a person of ordinary skill would have understood the 35.5 wt% silver in Liu’s Example 1 catalyst to be within Lockemeyer’s preferred range of 1–50 wt% silver. See Reply 22 (citing Ex. 1003 ¶¶ 69–70; Ex. 1038 ¶¶ 135–139). We credit Dr. Haller’s testimony that one of ordinary skill in the art seeking to improve upon Lockemeyer’s carriers “would not have ignored the high performance of Liu’s exemplified carriers simply because they were used in catalysts with a higher amount of silver because the amount used in Liu’s examples are well within the preferred range taught by Lockemeyer.” Ex. 1038 ¶ 137. Further, Dr. Haller’s testimony is responsive to Patent Owner’s argument (see PO Resp. 56–57) and not improper new argument.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“limitations of the challenged claims, and secondarily on Liu’s Carriers S, T, and V to disclose the “nested range” limitations. Pet. 52–53. Contrary to Patent Owner’s claims that Petitioner is demonstrating a “modification” of Lockemeyer’s PSD, we find that Lockemeyer already discloses a PSD “such that the pores with diameters from 0.2–10 μm represent more than 75%, in particular more than 80% of the total pore volume” (id. at 52 (citing Ex. 1003 ¶ 26)), although Lockemeyer does not disclose a sub-PSD within that range. Accordingly, relying on Liu to disclose a sub-PSD range within the range of 0.2–10 μm where “at least 80% of the pore volume contained in the pores with diameters in the range of from 0.1 to 10 μm is contained in pores with diameters in the range of from 0.3 to 10 μm” is not so much a modification of Lockemeyer as an optimization of Lockemeyer’s PSD within the range of 0.2–10 μm. Lockemeyer discloses that PSD has “been found to play a significant role” in preparing carriers for catalysts with excellent properties. Ex. 1003 ¶ 5 (cited in Pet. 53). Liu presents a desirable PSD in carriers such as Carriers S, T, and V, which Liu describes through its results as making catalysts that are selective, active, and stable. See Pet. 47 (citing Ex. 1002, 6:1–2, 21:10–22:16). We are persuaded by Petitioner’s reasoning and supporting testimony regarding why one of ordinary skill in the art would have been motivated to make the combination with a reasonable expectation of success. Pet. 46–48 (citing Ex. 1014 ¶¶ 188–197). We find credible Dr. Haller’s explanation that a person of ordinary skill “would have been motivated to use Liu to direct the pore size distribution, especially ones that are within the ranges taught by Lockemeyer” with “a reasonable expectation of success” (Ex. 1014 ¶¶ 193–197) and would have pursued Lockemeyer’s “invitation to optimize PSD, where Liu’s PSDs show outstanding performance” (Ex. 1038 ¶ 152).” slip op. at 22
Patent outcomesUS 8,357,813 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,357,813 - Scientific Design Company, Inc. v. Shell USA, Inc., F/K/A Shell Oil CompanyAll claims unpatentablePTAB · Mar 28, 2023 · IPR2022-00159 · APJ Julia Heaney · IPR · Final written decision
Claims 1–28 are unpatentable under § 103: claims 1–14 and 17–28 over Lockemeyer and Liu, and claims 15–16 over those references with Lockemeyer-II and Kowaleski.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art In our Institution Decision, we accepted Petitioner’s undisputed contention that a person of ordinary skill in the art “would have held a Bachelor’s or Master’s degree in chemical engineering or a related discipline with five or more years of experience in the catalyst field.” Pet. 12 (citing Ex. 1014 ¶¶ 12–14); Dec. 6. Patent Owner represents that it “does not challenge Petitioner’s . . . POSA definition.” PO Resp. 21. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of a person of ordinary skill in the art. Accordingly, we adopt Petitioner’s definition, because it is consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). Under that standard, claim terms “are generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303 at 1312–13 (Fed. Cir. 2005) (en banc). Petitioner argues the term “non-platelet morphology” as recited in claim 27 should be construed as “the morphology of the carrier when imaged by scanning electron microscopy at a magnification of 2000, and to the substantial absence in such images of structures having substantially flat surfaces,’” because of the description in the ’825 specification. Pet. 11 (citing Ex. 1001, 5:33–37). Otherwise, Petitioner argues that the challenged claims should be given their ordinary and customary meaning. Id. Patent Owner does not dispute Petitioner’s proposed claim construction. PO Resp. 21. On this record, we determine we need not explicitly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“limitations of the challenged claims, and secondarily on Liu’s Carriers S, T, and V to disclose the “nested range” limitations. Pet. 52–53. Contrary to Patent Owner’s claims that Petitioner is demonstrating a “modification” of Lockemeyer’s PSD, we find that Lockemeyer already discloses a PSD “such that pores with diameters from 0.2–10 μm represent more than 75%, in particular more than 80% of the total pore volume” (id. (citing Ex. 1003 ¶ 26)), although Lockemeyer does not disclose a sub-PSD within that range. Accordingly, relying on Liu to disclose a sub-PSD within the range of 0.2– 10 μm where “at least 80% of the pore volume contained in the pores with diameters in the range of from 0.1 to 10 μm is contained in pores with diameters in the range of from 0.3 to 10 μm” is not so much a modification of Lockemeyer as an optimization of Lockemeyer’s PSD within the range of 0.2–10 μm. Lockemeyer discloses that PSD has “been found to play a significant role” in preparing carriers for catalysts with excellent properties. Ex. 1003 ¶ 5 (cited in Pet. 53). Liu presents a desirable PSD in carriers such as Carriers S, T, and V, which Liu describes through its results as making catalysts that are selective, active, and stable. See Pet. 47 (citing Ex. 1002, 6:1–2, 21:10–22:16). We are persuaded by Petitioner’s reasoning and supporting testimony regarding why one of ordinary skill in the art would have been motivated to make the combination with a reasonable expectation of success. Id. at 46–48 (citing Ex. 1014 ¶¶ 196–202). We find credible Dr. Haller’s explanation that a person of ordinary skill “would have been motivated to use Liu to direct the pore size distribution, especially ones that are within the ranges taught by Lockemeyer” with “a reasonable expectation of success” (Ex. 1014 ¶¶ 198–202) and would have pursued Lockemeyer’s “invitation to optimize PSD, where Liu’s PSDs show outstanding performance” (Ex. 1038 ¶ 152).” slip op. at 23
- Obviousness (§103) › KSR rationalesMotivation foundUnpatentable
“claimed limitation that at least 80% of the total pore volume is contained in pores with diameters from 0.1–10 μm,” and a person of ordinary skill in the art “would have been motivated to modify the pore size distribution of carriers to optimize performance, as a matter of routine.” Pet. 43–45 (citing Ex. 1014 ¶¶ 182, 185–186) (emphasis added). We also credit Dr. Haller’s testimony: As I stated in my previous declaration, Lockemeyer discloses a PSD that encompasses the claimed distributions (as exemplified in Carriers A-C of the ’825 patent) and a process for making the carrier that is virtually identical to the process disclosed in the ’825 patent. EX1014, ¶¶ 184, 187–192. Accordingly, based on Lockemeyer’s disclosure, a POSA would have made the claimed carriers with routine experimentation. Ex. 1038 ¶ 163 (cited in Reply 25). Relatedly, the Petition relies on Federal Circuit precedent establishing that “a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art” (Pet. 15 (citing In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003))), and that once overlap of the claimed range and prior art are shown, a patentee must establish criticality of the claimed range to rebut a determination of obviousness. Id. (citing E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1006, 1008 (Fed. Cir. 2018); see also Tr. 6:5–6 (“There is no evidence that any of the claimed ranges exhibit any criticality or unexpected results, which should end the inquiry regarding obviousness.”), 76:18–77:2. Patent Owner does not carry its burden of producing evidence of criticality adequate to rebut the presumption of obviousness that is established by Petitioner’s information regarding the overlapping ranges.” slip op. at 27
Patent outcomesUS 8,357,825 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,357,825 - Amp Plus, Inc., Dba Elco Lighting v. DMF, Inc.Some claims unpatentablePTAB · Mar 27, 2023 · IPR2019-01094 · APJ Debra L Dennett · IPR · Remand
On remand, the Board held claim 22 not unpatentable over Imtra 2011 and Imtra 2007, alone or with Gifford, because Petitioner did not prove the obviousness grounds by a preponderance of the evidence.
RulingsRemand decision- BurdenNot shown unpatentable
“Petitioner bears the burden of proving unpatentability of the challenged claims, a burden that never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Petitioner must establish the facts supporting its challenge by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). In view of Petitioner’s failure to direct us to evidence sufficient to establish a person of ordinary skill in the art could have and would have installed the marine recessed lighting system disclosed in Imtra 2011 in a building, we find Petitioner fails to show obviousness of claim 22 over the combination of Imtra 2011 and Imtra 2007 by a preponderance of the evidence.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“D. Ground 3: Obviousness over Imtra 2011, Imtra 2007, and Gifford Petitioner fails to show that the Imtra references render claim 22 obvious. In the Final Decision we noted that Petitioner challenged several claims, including claim 22, as obvious over the combination of Imtra 2011, Imtra 2007, and Gifford, and determined that Petitioner failed to prove by a preponderance of the evidence that one of ordinary skill in the art would have been motivated to modify the Imtra references in view of Gifford’s teaching. Id. at 48–49. The Federal Circuit affirmed our determination, which we maintain here. For these reasons, Petitioner fails to show obviousness of claim 22 over the combination of Imtra 2011, Imtra 2007, and Gifford by a preponderance of the evidence.” slip op. at 9
Patent outcomesUS 9,964,266 mixed§ 103 obviousnessPatents in suitUS 9,964,266 - Scientific Design Company, Inc. v. Shell USA, Inc., F/K/A Shell Oil CompanyAll claims unpatentablePTAB · Mar 14, 2023 · IPR2021-01537 · APJ Kristina M Kalan · IPR · Final written decision
Claims 1–28 are unpatentable as obvious over the Lockemeyer-based combinations in Grounds 4 and 5; the Board did not reach Grounds 1–3.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art In our Institution Decision, we accepted Petitioner’s undisputed contention that a person of ordinary skill in the art “would have held a Bachelor’s or Master’s degree in chemical engineering or a related discipline with five or more years of experience in the catalyst field.” Pet. 10 (citing Ex. 1014 ¶¶ 12–14); Dec. 6. Patent Owner represents that it “does not challenge Petitioner’s . . . POSA definition (Petition, 10).” PO Resp. 19. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Accordingly, we adopt Petitioner’s definition, because it is consistent with the cited prior art. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner proposes a construction for “non-platelet morphology” in claim 22 as “the morphology of the carrier when imaged by scanning electron microscopy at a magnification of 2000, and to the substantial absence in such images of structures having substantially flat surfaces.” Pet. 10 (citing Ex. 1001, 5:27–31). Patent Owner represents that it “does not challenge Petitioner’s proposed claim interpretations (Petition, 9–10).” PO Resp. 19. On this record, we determine that no claim terms require express construction. See, e.g., Vivid Techs., 200 F.3d at 803.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Petitioner’s challenges rely primarily on Lockemeyer to meet the limitations of the challenged claims, and secondarily on Liu’s Carriers S, T, and V to disclose the “nested range” limitations. Pet. 47–48. Contrary to Patent Owner’s claims that Petitioner is demonstrating a “modification” of Lockemeyer’s PSD, we find that Lockemeyer already discloses a PSD “such that pores with diameters from 0.2–10 μm represent more than 75%, in particular more than 80% of the total pore volume” (id. (citing Ex. 1003 ¶ 26)), although Lockemeyer does not disclose a sub-PSD within that range. Accordingly, relying on Liu to disclose a sub-PSD within the range of 0.2– 10 μm where “at least 80% of the pore volume contained in the pores with diameters in the range of from 0.1 to 10 μm is contained in pores with diameters in the range of from 0.3 to 10 μm” is not so much a modification of Lockemeyer as an optimization of Lockemeyer’s PSD within the range of 0.2–10 μm. Lockemeyer discloses that PSD has “been found to play a significant role” in preparing carriers for catalysts with excellent properties. Ex. 1003 ¶ 5 (cited in Pet. 48). Liu presents a desirable PSD in carriers such as Carriers S, T, and V, which Liu describes through its results as making catalysts that are selective, active, and stable. See Pet. 42 (citing Ex. 1002, 6:1–2, 21:10–22:16). We are persuaded by Petitioner’s reasoning and supporting testimony regarding why one of ordinary skill in the art would have been motivated to make the combination with a reasonable expectation of success. Pet. 41–43 (citing Ex. 1014 ¶¶ 170–179). We find credible Dr. Haller’s explanation that a person of ordinary skill “would have been motivated to use Liu to direct the pore size distribution, especially ones that are within the ranges taught by Lockemeyer” with “a reasonable expectation of success” (Ex. 1014 ¶¶ 175–179) and would have pursued Lockemeyer’s “invitation to optimize PSD, where Liu’s PSDs show outstanding performance” (Ex. 1038 ¶ 152).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“limitations of the challenged claims, and secondarily on Liu’s Carriers S, T, and V to disclose the “nested range” limitations. Pet. 47–48. Contrary to Patent Owner’s claims that Petitioner is demonstrating a “modification” of Lockemeyer’s PSD, we find that Lockemeyer already discloses a PSD “such that pores with diameters from 0.2–10 μm represent more than 75%, in particular more than 80% of the total pore volume” (id. (citing Ex. 1003 ¶ 26)), although Lockemeyer does not disclose a sub-PSD within that range. Accordingly, relying on Liu to disclose a sub-PSD within the range of 0.2– 10 μm where “at least 80% of the pore volume contained in the pores with diameters in the range of from 0.1 to 10 μm is contained in pores with diameters in the range of from 0.3 to 10 μm” is not so much a modification of Lockemeyer as an optimization of Lockemeyer’s PSD within the range of 0.2–10 μm. Lockemeyer discloses that PSD has “been found to play a significant role” in preparing carriers for catalysts with excellent properties. Ex. 1003 ¶ 5 (cited in Pet. 48). Liu presents a desirable PSD in carriers such as Carriers S, T, and V, which Liu describes through its results as making catalysts that are selective, active, and stable. See Pet. 42 (citing Ex. 1002, 6:1–2, 21:10–22:16). We are persuaded by Petitioner’s reasoning and supporting testimony regarding why one of ordinary skill in the art would have been motivated to make the combination with a reasonable expectation of success. Pet. 41–43 (citing Ex. 1014 ¶¶ 170–179). We find credible Dr. Haller’s explanation that a person of ordinary skill “would have been motivated to use Liu to direct the pore size distribution, especially ones that are within the ranges taught by Lockemeyer” with “a reasonable expectation of success” (Ex. 1014 ¶¶ 175–179) and would have pursued Lockemeyer’s “invitation to optimize PSD, where Liu’s PSDs show outstanding performance” (Ex. 1038 ¶ 152).” slip op. at 21
Patent outcomesUS 8,084,390 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,084,390 - PTAB · Mar 14, 2023 · IPR2022-01476 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board instituted IPR on claims 1–24, finding a reasonable likelihood that the asserted obviousness combinations would render at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“35 U.S.C. § 314(a), the Board considers the trial date in related litigation as part of an assessment of all relevant circumstances of the case, including the merits, in an effort to balance considerations such as system efficiency, fairness, and patent quality. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv Order”); see also NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 19–20 (PTAB Sept. 12, 2018) (precedential) (denying institution relying, in part, on § 314(a) because the parallel district court proceeding was scheduled to finish before the Board reached a final decision). In particular, the Board evaluates the following factors (“Fintiv factors”): 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a two-part framework for evaluating arguments under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had “a Bachelor’s level college degree in Mechanical, Electrical, Materials or Chemical Engineering, or Science, including Chemistry or Physics or a related field and three to four years of training and experience in the design of electrochemical cells and batteries.” Pet. 6. Petitioner further contends that “[a]dditional work or research experience can substitute for a lesser or different education, and vice-versa.” Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail even under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 12. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to dispute Petitioner’s definition of a [person of ordinary skill in the art] if an IPR is instituted.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,024,905 - Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution deniedPTAB · Mar 14, 2023 · IPR2022-01474 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–24 would have been obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 18 (citing Ex. 1002 ¶ 50); see Ex. 1005, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). For these reasons, we are not persuaded that Petitioner makes a sufficient showing that a POSITA would have been motivated to modify Brown as proposed. Accordingly, we conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that independent claim 1, and claims 2, 4–6, 9–11, 13–15, 18, 23, and 24 that depend, directly or indirectly, therefrom, would have been obvious over the combined teachings of Brown, Higuchi, and Fujita.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 18 (citing Ex. 1002 ¶ 50); see Ex. 1005, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). For these reasons, we are not persuaded that Petitioner makes a sufficient showing that a POSITA would have been motivated to modify Brown as proposed. Accordingly, we conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that independent claim 1, and claims 2, 4–6, 9–11, 13–15, 18, 23, and 24 that depend, directly or indirectly, therefrom, would have been obvious over the combined teachings of Brown, Higuchi, and Fujita.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 18 (citing Ex. 1002 ¶ 50); see Ex. 1005, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). For these reasons, we are not persuaded that Petitioner makes a sufficient showing that a POSITA would have been motivated to modify Brown as proposed. Accordingly, we conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that independent claim 1, and claims 2, 4–6, 9–11, 13–15, 18, 23, and 24 that depend, directly or indirectly, therefrom, would have been obvious over the combined teachings of Brown, Higuchi, and Fujita.” slip op. at 13
§ 103 obviousnesscites PhillipsPatents in suitUS 11,024,905 - Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution deniedPTAB · Mar 14, 2023 · IPR2022-01486 · APJ Christopher L Crumbley · IPR · Institution
The Board denied institution for claims 14–25 because Petitioner did not show a reasonable likelihood that either asserted obviousness combination taught the force-fitting connection limitation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- BurdenDenied
“top casing in an overlapping area, the top casing is disposed radially inward of the cup casing in the overlapping area, and the housing cup and the housing top are held together by a force-fitting connection.” Ex. 3001, 1:37–41. Independent claim 23 recites an identical limitation. Id. at 2:55– 59. The remaining challenged claims each depend, directly or indirectly, from one of these two claims. Id. at 1:47–2:29, 4:1–16. Accordingly, all of the challenged claims include a limitation requiring that “the housing cup and the housing top [be] held together by a force-fitting connection.” See 37 C.F.R. § 1.75(c). To show the obviousness of any of these claims, Petitioner must show that the asserted prior art teaches or suggests a “housing cup” and a “housing top” that “are held together by a force-fitting connection.” As discussed above, a battery made in accordance with the teachings of the prior art is not a battery that is “held together by a force-fitting connection” unless that battery would cease to be held together in the absence of the “force-fitting connection.”” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“ANALYSIS A. Claim Construction Petitioner does not propose an express construction of any claim term, and contends that the claims “should be given their ordinary and customary meaning.” Pet. 20. Patent Owner agrees that no term requires construction at this stage of the proceeding. Prelim. Resp. 20. For the reasons discussed below, we are able to determine whether to institute trial without expressly construing any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Expert testimonyPetitioner expert discountedOther
“cites to four paragraphs of Mr. Juzkow’s declaration, without discussing the testimony or providing any statement of its relevance. Pet. 31 (citing Ex. 1002 ¶¶ 402–405). It is unclear whether the cited testimony is intended to support the Kobayashi argument, the Brenner argument, or both. Id. In any case, the first cited paragraph does not contain any testimony supporting either of Petitioner’s arguments, instead merely directing the reader to “§X.A.1.f” of Mr. Juzkow’s declaration, without specifying the page numbers or paragraph numbers where that section can be found. Ex. 1002 ¶ 402. Section IX.A.1.f appears to include eleven additional paragraphs covering six pages and mostly to discuss a reference, Kaun, that is not at issue in this proceeding. Id. ¶¶ 125–135. The other three paragraphs cited in the Petition generally just parrot the conclusory language in the Petition and are of limited persuasive value. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). In any event, Mr. Juzkow’s testimony addresses only whether there is a force-fitting connection, not whether the button cell is held together by the forces. Ex. 1002 ¶¶ 403–405.” slip op. at 15
Claim constructionPatents in suitUS 9,496,581 - Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution deniedPTAB · Mar 14, 2023 · IPR2022-01487 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 9–16 were obvious over either asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- BurdenNot shown unpatentable
“crimping or beading-over process of closing a battery casing, Petitioner offers only attorney argument for the proposition that such a process creates a battery casing that is “held together by a force-fitting connection.” Id. But “[a]ttorney argument is not evidence.” Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1359 (Fed. Cir. 2018) (quoting Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017)).” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“27–28. Patent Owner responds that no term requires construction at this stage of the proceeding. Prelim. Resp. 20. For the reasons discussed below, we are able to determine whether to institute trial without construing “insulating means,” so we do not construe this term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
Claim constructionPatents in suitUS 9,799,913 - Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution deniedPTAB · Mar 14, 2023 · IPR2022-01484 · APJ Brian D Range · IPR · Institution
The Board denied institution because Petitioner did not show that the asserted combinations taught or suggested the claimed force-fitting connection holding the housing cup and top together.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“top” that “are held together by a force-fitting connection.” Ex. 3001, 1:28– 29 (claim 1), 2:51–52 (claim 23). The parties disagree about whether the references on which Petitioner relies teach or suggest this limitation. Pet. 28–32, 64–66; Prelim. Resp. 53–61. As discussed more completely below, we are able to determine whether to institute trial without deciding precisely what the ’835 patent means when it describes two parts as “held together by a force-fitting connection.” Accordingly, we need not, and do not, construe this term expressly. See Nidec, 868 F.3d at 1017 (quoting Vivid Techs., 200 F.3d at 803). Although we need not decide the precise meaning of “held together by a force-fitting connection” in order to decide whether to institute trial, we note (1) that, without some evidence to the contrary, a battery casing whose half-parts are “held together by” a particular condition must be a battery casing whose half-parts would no longer be held together if the condition were not present, and (2) that neither party has directed us to any evidence to the contrary. Accordingly, whatever a “force-fitting connection” is, a battery made in accordance with the teachings of the prior art is not a battery that is “held together by a force-fitting connection” unless that battery would cease to be held together in the absence of the “force-fitting connection.”” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“Even if we accept Petitioner’s position that Kaun suggests radial forces around its seal, Petitioner has not presented sufficient evidence that such forces hold a housing cup and housing top together. With respect to the key “held together” recitation, Petitioner’s only argument or evidence in the Petition is a sole quote purportedly from Patent Owner’s expert, Dr. Peckerar:” slip op. at 19
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 9,153,835
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.