- PTAB · Jun 7, 2022 · IPR2022-00052 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR on all asserted grounds for claims 2–5, 7, 11–13, 21, and 23, finding a reasonable likelihood that Petitioner would show them unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . 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, Petitioner demonstrates a reasonable likelihood of prevailing with respect to the remaining challenged claims— claims 2–5, 7, 11–13, 21, and 23 of the ’251 patent. Accordingly, we institute an inter partes review with respect to these claims on all grounds asserted in the Petition. See SAS Inst. Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018).” slip op. at 2
- Parallel petitionsDecided for petitioner
“Typically, “one petition should be sufficient to challenge the claims of a patent,” but “there may be circumstances in which more than one petition may be necessary.” CTPG 59. For example, more than one petition may be necessary “when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. Given the priority date dispute addressed only in the -00051 Petition, and in light of Patent Owner’s decision not to challenge Petitioner’s filing of parallel petitions, we decline to exercise our discretion to deny either petition. See CTPG 61 (“The Board will consider the parties’ submissions in determining whether to exercise its discretion to institute inter partes review under 35 U.S.C. § 314(a).”).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under that standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have had to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Neither party asserts that any claim terms of the ’251 patent require construction. Pet. 6–7; Prelim. Resp. 13. And, upon review of the parties’ arguments and supporting evidence, we find that no terms require construction for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“In view of the foregoing, and after reviewing the parties’ arguments and supporting evidence, we determine that Petitioner demonstrates a reasonable likelihood that Birrell and Schultz teach or suggest “at least one LED circuit having a plurality of LEDs . . . wherein the at least one LED circuit is mounted on a reflective substrate,” as recited in claim 1 of the ’251 patent. Petitioner also provides a sufficient rationale, supported by record evidence, explaining why one of ordinary skill in the art would have combined Birrell and Schultz. b) Reasonable Expectation of Success Patent Owner contends the Petition does not support institution because incorporating Schultz’s flexible, multilayer optical film in Birrell would present substantial challenges “for reconciling the build characteristics of the multi-layer rigid frame construction of Birrell with the flexible construction of Schultz.” Prelim. Resp. 22. And, given the differences in construction between the two lighting devices, Patent Owner contends the combination of Schultz’s reflective surface materials with Birrell’s circuit board 58 is not a “predictable use of known lighting design techniques and components according to their established functions,” as asserted by Petitioner. Id. at 21–22. Contrary to Patent Owner’s argument, Petitioner does not contend that one of ordinary skill in the art would have used Schultz’s specific reflective material in Birrell. Rather, Petitioner argues that the use of reflective substrates to provide mechanical support for an array of LEDs was well known in the art and, given Schultz’s disclosure of the benefits of such a reflective coating, one of ordinary skill in the art would have sought to apply a reflective coating in Birrell. Pet. 13–16. In addition, Dr. Baker, citing to multiple disclosures in the prior art, testifies that one of ordinary skill in the art would have reasonably expected success in implementing a reflective substrate in Birrell. Ex. 1002 ¶¶ 82–85. Patent Owner’s bare attorney argument is not sufficient to call this testimony into question at this stage of the proceeding. c) Conclusion with Respect to Claim 1 For the reasons set forth above, Petitioner demonstrates sufficiently” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,492,251 - PTAB · Jun 7, 2022 · IPR2022-00051 · APJ Jon B Tornquist · IPR · Institution
Instituted IPR on claims 1 and 6 over all asserted grounds because the petition showed a reasonable likelihood of prevailing on obviousness over Birrell and Schultz and over Piepgras.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“At bottom,” the two-part framework utilized for 35 U.S.C. § 325(d) “reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9. The art in the -01369 IPR has not yet been fully considered. There has been no definitive determination in that proceeding as to the scope of the prior art nor any definitive determination as to whether the submitted evidence is sufficient to show that any claims of the ’251 patent would have been obvious. As such, there is no reference point to determine whether the Office erred; there has simply been no definitive determination to analyze or reconsider. Accordingly, the framework described in Advanced Bionics is not yet applicable and does not support discretionary denial.6 Thus, we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d) on these facts. slip op. at 6
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“6 When different petitioners challenge the same patent, discretionary denial may be appropriate under 35 U.S.C. § 314(a), upon evaluation of the non-exhaustive factors set forth in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19, at 15–16 (Sept. 6, 2017) (precedential). See Valve Corp. v. Elecs. Scripting Prods., Inc., IPR2019- 00062, Paper 11, at 2, 9 (April 2, 2019) (applying the General Plastic factors to a second petition filed by a different party). Application of the General Plastic factors, however, requires analysis of, among other things, any relationship between the different petitioners and the timing of the second petition with respect to Patent Owner’s preliminary response and the Board’s institution decision in the first proceeding. Id. at 9, 12. Patent Owner presents no persuasive evidence demonstrating that these factors counsel in favor of discretionary denial in this case, and Petitioner presents evidence that they do not. Pet. 81–84 (Petitioner asserting that it has no “significant relationship” with the petitioner in the -01369 IPR and that no preliminary response had been filed in the -01369 IPR when the Petition was filed). Accordingly, we do not consider discretionary denial under § 314(a).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party asserts that any claim terms of the ’251 patent require construction. Pet. 21–22; Prelim. Resp. 13. And, upon review of the 6 When different petitioners challenge the same patent, discretionary denial may be appropriate under 35 U.S.C. § 314(a), upon evaluation of the non-exhaustive factors set forth in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19, at 15–16 (Sept. 6, 2017) (precedential). See Valve Corp. v. Elecs. Scripting Prods., Inc., IPR2019- 00062, Paper 11, at 2, 9 (April 2, 2019) (applying the General Plastic factors to a second petition filed by a different party). Application of the General Plastic factors, however, requires analysis of, among other things, any relationship between the different petitioners and the timing of the second petition with respect to Patent Owner’s preliminary response and the Board’s institution decision in the first proceeding. Id. at 9, 12. Patent Owner presents no persuasive evidence demonstrating that these factors counsel in favor of discretionary denial in this case, and Petitioner presents evidence that they do not. Pet. 81–84 (Petitioner asserting that it has no “significant relationship” with the petitioner in the -01369 IPR and that no preliminary response had been filed in the -01369 IPR when the Petition was filed). Accordingly, we do not consider discretionary denial under § 314(a). parties’ arguments and supporting evidence, we find that no terms require construction for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends that a person of ordinary skill in the art would have been able to apply a reflective coating, such as that disclosed in Shultz, to Birrell’s circuit board, and would have sought to do so because such coatings were well known in the art and it was understood that a reflective coating would improve the illumination provided by an LED lighting system. Pet. 29–30; Ex. 1002 ¶ 105. Petitioner’s arguments and rationale for the proposed combination are clear and supported by evidence of record. Pet. 29–30 (citing Ex. 1046 ¶¶ 47–49; Ex. 1002 ¶ 101; Ex. 1018, 6:6–18, 6:48–7:34; Ex. 1022, Abstract, ¶¶ 18, 34, 81). Accordingly, Petitioner sufficiently explains for purposes of institution why one of ordinary skill in the art would have sought to combine the disclosures of Birrell and Schultz to arrive at the subject matter of claim 1.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,492,251 - Restem, LLC. v. Jadi Cell, LLCInstitutedPTAB · Apr 20, 2022 · IPR2021-01535 · APJ Devon Zastrow Newman · IPR · Institution
The Board instituted IPR on claims 1–15 over all asserted grounds, finding a reasonable likelihood that Petitioner would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2019). 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.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information presented shows a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we authorize an inter partes review to be instituted as to the Challenged Claims of the ’176 patent on the grounds raised in the Petition. Our factual findings and conclusions at this stage of the proceeding are based on the evidentiary record developed thus far (prior to Patent Owner’s Response). This is not a final decision as to patentability of claims for which inter partes review is instituted. Any final decision will be based on the record, as fully developed during trial.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 15 (citing Ex. 1007 ¶¶ 19–24). Patent Owner does not comment on the characterization offered by Petitioner or offer one of its own. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s characterization as it is consistent with the level of skill in the art at the time of the invention as reflected by the ’176 patent and the cited prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“Prelim. Resp. 16. Patent Owner cites Ex. 1001 6:32–34, noting that the patent specification “expressly defines ‘isolated cell’ as ‘[referring] to a cell that has been isolated from the subepithelial layer of a mammalian umbilical cord.’” Id. As neither party references any prosecution history related to interpretation of this claim term, we look only to the claim itself and the specification as intrinsic evidence. DePuy Spine, 469 F.3d at 1014. Claim 1 recites “an isolated cell prepared by a process comprising . . . ” Ex. 1001 at 19:6. As Patent Owner notes, the patent specification states “the term ‘isolated cell’ refers to a cell that has been isolated from the subepithelial layer of a mammalian umbilical cord.” Id. at 6:32–34. The remainder of the citations Petitioner cites relate to additional steps for isolating the cell, or characteristics of the cell, such as the markers expressed or not expressed, but do not further elucidate the meaning of “an isolated cell” itself. Dr. Olsen’s testimony reiterates the content of these citations but does not add any additional information or explanation. Ex. 1007 ¶¶ 67–68. Given the definition provided in the specification, we interpret “an isolated cell,” consistent with Patent Owner’s definition, to mean “one or more cells isolated from the subepithelial layer of a mammalian umbilical cord.”” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInstituted
“the Wharton’s Jelly, epithelium, etc.” and that, without evidence that the recited markers are expressed/not expressed as recited, there is no inherent disclosure. Prelim. Resp. 22, 25, 28–29 (citing Ex. 2022 ¶ 162). Patent Owner is correct that an ultimate finding of anticipation requires such confirmation, but, for purposes of institution, our standard is a reasonable likelihood. 35 U.S.C. § 314(a). Due to the breadth of claim 1, Majore’s method must produce only one cell having the recited limitations to anticipate. Petitioner’s expert testifies that production of such cells would be inherent by Majore. See Ex. 1007 ¶ 97 (“Majore’s protocol would produce a population of adherent cells that necessarily and inevitably comprise the cells of the subepithelial layer.”). And, although we recognize that the burden of persuasion does not rest on Patent Owner, Dr. Burger’s testimony, which focuses heavily on the differences in methodology between Majore and the ’176 patent disclosure and Petitioner’s alleged failure of proof, is not persuasive at this stage to overcome the evidence presented by Petitioner. See Ex. 2002 ¶¶ 137–163. Indeed, both Majore and the ’176 patent disclose umbilical cord tissue cut into sections and placed into environments fostering cell culture and replication. Ex. 1011 at 18, Ex. 1001 at 13:57–14:5. Both methods encourage and result in adherent cells growing on a plastic growth surface awash in culture media. Id. On this record, Petitioner has provided sufficient factual basis to establish a reasonable likelihood that Majore’s explant method of dissecting umbilical cord, culturing cells, and growing adherent cells would have produced (or did produce) at least one cell with the recited limitations. In this regard, we credit the testimony of Dr. Olsen that the isolated cells disclosed in Majore are MSCs cultured from umbilical cord tissues including the subepithelial layer, which have migrated to the periphery of the cut tissue and adhered to the tissue culture vessel. Ex. 1007 ¶¶ 95–97. That Majore discloses genetic markers with similar expression/non-expression to the markers recited in claim 1 is further evidence that at least some cells were cultured from the subepithelial layer. Id. ¶ 99. Moreover, even if we gave weight to the process limitations construed as requested by Patent Owner (Prelim. Resp. 13–20), the limitations are sufficiently broad as to read on Majore with the exception of the express/non-expressed markers. With regard to markers not examined by Majore, we credit Dr. Olson’s statement that “the cells obtained by Majore’s protocol necessarily and inevitably comprise the same cells produced by the process steps of claim 1[A] and 1[B]” and that the skilled artisan would have understood that the marker expression pattern would be identical for those cells. Id. ¶ 101.16 The evidence on this issue is subject to final determination on a more complete record developed through trial.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,803,176 - Rimfrost As v. Aker Biomarine Antarctic AsAll claims unpatentablePTAB · Apr 6, 2022 · IPR2020-01533 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–19 are unpatentable as obvious over the combined prior art, considered with the knowledge of a person of ordinary skill in the art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Neither Patent Owner nor Dr. Jaczynski disputes Petitioner’s definition of a person of ordinary skill in the art. Ex. 2015 ¶ 8 (“For purposes of this proceeding, I will accept [Petitioner’s] definition of a [person of ordinary skill in the art].”). Upon review of the ’046 patent and the prior art of record, we find Petitioner’s uncontested definition reasonable and supported by the evidence of record. Accordingly, we adopt this definition of one of ordinary skill in the art for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Upon review of the parties’ arguments and supporting evidence, we determine that no terms of the ’046 patent require construction in order to resolve the disputes in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 9
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“Collateral estoppel protects a party from having to litigate issues that have been fully and fairly tried in a previous action and adversely resolved against a party-opponent.” Ohio Willow Wood Co. v. Alps South, LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013). In the context of patent claims, collateral estoppel applies “[i]f the differences between the unadjudicated patent claims and adjudicated patent claims do not materially alter the question of invalidity.” Id. Petitioner points to no prior decision of the Board where the issue of whether it would have been obvious to denature a krill product and then store it for 1 to 36 months before extraction was at issue. Moreover, to demonstrate that the added limitation would have been obvious, Petitioner relies heavily on the disclosures of Budziński, which was not at issue or analyzed in the prior proceedings. Pet. 39. Accordingly, Petitioner has not demonstrated that collateral estoppel applies to any issue in this proceeding. slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Breivik II’s disclosures would have understood that extraction of fresh krill is preferable over stored krill products, and that extraction should be performed on the fishing vessel as opposed to on land. PO Resp. 53. On this record, we agree with Patent Owner that Breivik II teaches or suggests a successful method of immediately processing and extracting fresh caught krill on-board a fishing vessel. We also agree that Breivik II suggests that its disclosed method may have advantages over conventional krill oil extraction processes. The disclosed advantages to immediately denaturing and extracting krill oil discussed in Breivik II, however, are only “expected,” not definitive, and we are directed to no disclosure in Breivik II to suggest that extraction from a stored, denatured krill meal was unlikely to result in a useful krill oil. See In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (noting that the case law “does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention”); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (explaining that a reference teaches away when it suggest that a particular course of action “is unlikely to be productive of the result sought by the applicant,” and that “[a] known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product of the same use”). Moreover, although, as noted in Breivik II, oxidation and enzymatic hydrolysis are of particular concern during krill processing procedures, Petitioner and Dr. Tallon persuasively demonstrate that the denatured and “stable” krill meal of Budziński was not subject to significant enzymatic hydrolysis or deterioration of krill lipid antioxidants, such as astaxanthin. Ex. 1006 ¶¶ 172, 421, 434; Ex. 1086 ¶¶ 50–51; see also Ex. 1010, 822–823 (Fricke disclosing storing denatured krill products for a period of time before extraction with a polar solvent). As such, we are not persuaded that Breivik II would have taught away from, or otherwise discouraged, one of ordinary skill in the art from extracting krill oil from a denatured and stable krill meal that has been stored from between 1 and 36 months. Patent Owner further argues that, consistent with Breivik II’s disclosures, Budziński instructs that krill should be “processed as soon as possible after capture” and that “[t]he only way to meet this requirement is to install processing facilities on-board the vessel.” PO Resp. 51 (citing Ex. 1008, 25). The required processing of Budziński, however, is to denature the problematic krill enzymes, not to extract krill oil. Ex. 1008, 25. And, once the krill products are denatured, Petitioner persuasively demonstrates that krill oil extraction could be successfully performed either on-board a vessel or on land after a storage period of up to 13 months. In view of the foregoing, we find that Breivik II and Budziński do not teach away from, or counsel against, extracting krill oil from a krill meal that had been denatured and stored for 1 to 36 months.” slip op. at 26
Patent outcomesUS 9,816,046 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,816,046 - PTAB · Mar 18, 2022 · IPR2021-01346 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1–16 on all asserted obviousness grounds, finding a reasonable likelihood that Samsung would prevail.
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 it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. Based on the information presented in the Petition and the supporting evidence, we are persuaded there is a reasonable likelihood Petitioner would prevail with respect to the challenged claims. Accordingly, we institute an inter partes review of claims 1–16 on all of the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that [a] person of ordinary skill in the art . . . (“POSITA”) would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and two or more years of experience with LED devices and/or related circuit design, or a related field. . . . More education can supplement practical experience and vice versa. Pet. 4–5 (citing Ex. 1002 ¶¶ 20–21). We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’466 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any specific claim constructions. Pet. 6. No terms require construction at this stage. See Nidec Motor Corp. v. 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.”) (internal quotation omitted).” slip op. at 7
- BurdenOther
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a).” slip op. at 5
Claim constructioncites KSR · GrahamPatents in suitUS 10,499,466 - PTAB · Mar 18, 2022 · IPR2021-01345 · APJ Jennifer Meyer Chagnon · IPR · Institution
The Board instituted IPR on claims 1–20 on all three § 103 grounds, finding a reasonable likelihood that claims 1, 7, 16, and 20 would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314, which provides that an inter partes review may be instituted only upon a showing 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). Moreover, if the Board institutes a trial, the Board will institute on all challenges raised in the petition. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018) (“SAS”) (holding that a decision to institute under 35 U.S.C. § 314 may not institute review on fewer than all claims challenged in the petition); see also Patent Trial and Appeal Board Consolidated Trial Practice Guide 64 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (“CTPG”) (“The Board will not institute on fewer than all claims or all challenges in a petition.”). Applying those standards, and upon consideration of the information presented in the Petition, as well as the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing in showing the unpatentability of at least one of the challenged claims. 1 Petitioner identifies itself, Samsung Electronics Co., Ltd., as well as Samsung Electronics America, Inc. as real parties-in-interest. Pet. 1. 2 Patent Owner identifies itself, Lynk Labs, Inc., as the real party-in-interest. Paper 4, 1. Accordingly, we institute an inter partes review of all challenged claims of the ’252 patent, based on all grounds identified in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. For purposes of this proceeding, Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and two or more years of experience with LED devices and/or related circuit design, or a related field,” whereby “[m]ore education can supplement practical experience and vice versa.” Pet. 3–4 (citing Ex. 1002 ¶¶ 20–21). To the extent necessary, and for purposes of this Decision, we accept the assessment offered by Petitioner, as it is supported by Dr. Baker’s testimony and appears to be consistent with the ’252 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We determine we need not explicitly construe any claim terms at this stage of the proceeding.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Petitioner further contends that “[i]n light of Garcia’s disclosure (incorporating DeMuro’s disclosures), a [person of ordinary skill in the art] would have been motivated, and found it predictable, to configure Hack’s device 100 (‘apparatus’) in the manner described above in this section (i.e., resulting in an implementation tracking the features of [this] limitation).” Id. at 16 (citing Ex. 1002 ¶ 88). Petitioner supplies detailed reasoning why one of ordinary skill in the art would have modified Hack to incorporate Garcia’s wireless charging technique, and would have had a reasonable expectation of success in doing so. Id. at 16–20; Ex. 1002 ¶¶ 89–91. e) a proximity sensor Petitioner relies on the combined teachings of Hack and Garcia for teaching this limitation of claim 1. Pet. 20–23. Garcia discloses proximity sensor 208. Id. at 20–21 (citing Ex. 1006, 2:66–3:3, Fig. 3; Ex. 1002 ¶ 92). According to Petitioner, Garcia “explains that it was known even at the time of Garcia to determine if a battery charger is close (proximate) to a battery, in order to determine if a wireless communication link should be established to support wireless recharging.” Id. at 21 (citing, e.g., Ex. 1006, 2:8–17; Ex. 1002 ¶ 93). Petitioner contends that a person of ordinary skill in the art “would have . . . found such a proximity sensor to be useful and predictable to implement in Hack’s device 100 to similarly support wireless charging.” Id. at 22 (citing Ex. 1002 ¶ 94). Petitioner further explains that a person of ordinary skill in the art “would have had a reasonable expectation of success implementing this configuration” (i.e., including a proximity sensor in Hack’s device 100) Id. at 22–23 (citing Ex. 1002 ¶ 94). f) Conclusion as to Claim 1 Petitioner’s contentions and cited evidence as to claim 1, summarized above, are persuasive on the preliminary record now before us. As noted, Patent Owner does not offer arguments at this stage of the proceeding. Based on the current record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion that claim 1 would have been obvious over the combined teachings of Hack and Garcia.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,492,252 - PTAB · Mar 15, 2022 · IPR2021-01299 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR of claims 1–20 on all petitioned grounds, finding a reasonable likelihood that the challenged claims would have been obvious.
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 it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. Based on the information presented in the Petition and the supporting evidence, we are persuaded there is a reasonable likelihood Petitioner would prevail with respect to the challenged claims. Accordingly, we institute an inter partes review of claims 1–20 on all of the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that [a] person of ordinary skill in the art (“POSITA”) would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and two or more years of experience with LED devices and/or related circuit design, or a related field. . . . More education can supplement practical experience and vice versa. Pet. 4 (citing Ex. 1002 ¶¶ 20–21). Patent Owner does not address the level of skill in the art at this stage. See generally Prelim. Resp. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’674 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties propose no constructions. Pet. 5; see generally Prelim. Resp. No terms require construction at this stage. See Nidec Motor Corp. v. 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.”) (internal quotation omitted).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“At this stage, Petitioner’s arguments are more persuasive. We agree with Petitioner’s stated rationales and do not view them or its supporting declaration as conclusory. Certainly they are more detailed than Patent Owner lets on, as Petitioner does not merely rely on Oba and Gillespie being in the same field. Rather, as detailed above, Petitioner contends, for example, that the combination would help eliminate the need for a special dedicated LED status display in Oba. Pet. 11 (citing Ex. 1071 ¶ 53). Petitioner further argues that the combination of Gillespie’s capacitive touch circuitry with Oba’s display was one of a finite number of available and known technologies for implementing touch detection at the time, which would facilitate touch detection in Oba. Id. at 20 (citing Ex. 1002 ¶ 97). And Petitioner contends that Gillespie’s OLED display would conserve power used by Oba’s display and would provide better readability of the display. Id. at 25 (citing Ex. 1002 ¶ 103; Ex. 1071 ¶ 113). None of these arguments are conclusory, as Patent Owner suggests.8 Not only that, but on this record, Gillespie’s OLED and capacitive touch features are not present in Oba, which undercuts Patent Owner’s argument that Oba “discloses all aspects of Gillespie such that there would be no reason to combine these references.” Prelim. Resp. 7–8. As for hindsight, we note: Any judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1394–1395 (CCPA 1971). We find no impermissible hindsight on this record because Petitioner bases its arguments on the teachings of Oba and Gillespie, not on the disclosure in the ’674 patent Specification.” slip op. at 15
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,506,674 - PTAB · Mar 15, 2022 · IPR2021-01347 · APJ Jon B Tornquist · IPR · Institution
The Board instituted inter partes review of claims 1–25 on all asserted grounds, finding a reasonable likelihood that Petitioner would show the claims unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a)(2021). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the arguments and evidence of record, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to the Challenged Claims of the ’298 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. See SAS Inst. Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“to modify Birrell to use Logan’s method of transferring power using inductive coupling because this method would avoid interference problems and would allow “flexibility” when wirelessly powering devices having different voltage requirements. Id. at 13–14 (explaining that voltage magnitude adjustments may be made by adjusting the windings of the coils; for example, by including more windings in the transmitting coil than the receiving coil the transmitted voltage may be reduced). On this record, Petitioner explains sufficiently for purposes of institution why one of ordinary skill in the art would have combined the disclosures of Birrell and Logan to arrive at the devices and circuits set forth in Demonstrative A, and as described by Petitioner.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“On this record, Petitioner identifies sufficiently for purposes of institution where Birrell discloses every limitation of claim 6. Accordingly, Petitioner demonstrates a reasonable likelihood that claim 6 is anticipated by Birrell.” slip op. at 15
§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,966,298 - PTAB · Mar 15, 2022 · IPR2021-01300 · APJ Jon B Tornquist · IPR · Institution
The Board instituted inter partes review of claims 1–22 on all asserted grounds, finding a reasonable likelihood that Petitioner would show the claims unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Conclusion with Respect to Claim 1 On this record, Petitioner sufficiently identifies where each limitation of claim 1 is taught or suggested by Oba, Sato, Gillespie, and Hara. Petitioner also sufficiently explains for purposes of institution why one of ordinary skill in the art would have sought to combine the identified references to arrive at the subject matter of claim 1 with a reasonable expectation of success. Accordingly, Petitioner demonstrates a reasonable likelihood that claim 1 would have been obvious over Oba, Sato, Gillespie, and Hara.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Other
“aspects of notebook computers, or generic computer systems, were known in the art and could be successfully substituted with, or used to modify, specific components of Oba. We disagree that reliance on these types of references is, by itself, evidence of hindsight reconstruction. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”). Nor do we find that the Petition and the supporting evidence that it relies upon place an undue burden on the Board to resolve the current dispute between the parties, as argued by Patent Owner. c) Conclusion with Respect to Claim 1 On this record, Petitioner sufficiently identifies where each limitation of claim 1 is taught or suggested by Oba, Sato, Gillespie, and Hara. Petitioner also sufficiently explains for purposes of institution why one of ordinary skill in the art would have sought to combine the identified references to arrive at the subject matter of claim 1 with a reasonable expectation of success. Accordingly, Petitioner demonstrates a reasonable likelihood that claim 1 would have been obvious over Oba, Sato, Gillespie, and Hara.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“provides only a single, conclusory assertion regarding expectation of success with respect to implementing Hara’s disclosures in Oba’s notebook computer. Prelim. Resp. 10 (citing Pet. 21). We disagree. As noted above, Petitioner provides specific arguments and citations to record evidence to support its argument that one of ordinary skill in the art would have had a reasonable expectation of success in implementing Hara’s disclosures in the apparatus of Oba, Sato, and Gillespie. Pet. 20–21 (citing Ex. 1002 ¶¶ 106– 108; Ex. 1045, 11:27–35, 11:60–62, Fig. 4D2; Ex. 1013, 4:19–24, Fig. 1; Ex. 1044, 6:3–14, Fig. 14). In the absence of specific reasons to doubt Petitioner’s arguments, on this record Petitioner explains sufficiently for purposes of institution why one of ordinary skill in the art would have had a reasonable expectation of success in implementing Hara’s disclosures in the electronic device of Oba, Sato, and Gillespie.” slip op. at 16
§ 103 obviousnesscites KSRPatents in suitUS 11,019,697 - New World Medical, Inc. v. The Regents Of The University Of CaliforniaAll claims unpatentablePTAB · Mar 11, 2022 · IPR2021-00066 · APJ Robert A Pollock · IPR · Final written decision
Claims 1–11 are unpatentable: claims 1–11 are anticipated by Quintana and obvious over Quintana; the Board did not reach the Jacobi ground.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Patent Owner filed a motion to exclude evidence (Paper 38); Petitioner opposed (Paper 41); and Patent Owner filed a reply in support of its motion (Paper 43). Petitioner also filed a motion to exclude evidence (Paper 39); Patent Owner opposed (Paper 40); and Petitioner filed a reply in support of its motion (Paper 42). We addressed (and denied) the parties’ motions to exclude in Paper 49.” slip op. at 3
- Expert testimonyPetitioner expert creditedPatent owner expert discountedOther
“We “conclude[d] that the better course is to have a complete record of the evidence,” and, therefore, denied Petitioner’s Motion, but also explained that “to the extent that Dr. Condon’s testimony and Patent Owner’s reliance thereon ventures into areas the witness has conceded he either does not understand or has inadequately analyzed,” we would accord it little weight, as distinguished “from that relating to Dr. Condon’s technical expertise in, for example, anatomy, eye surgery, and his own reading of evidence.” Order 13. Therefore, it is through this lens that we consider and analyze Dr. Condon’s testimony here.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 22 (citing Ex. 1003 ¶ 24). On page 18 of our Institution Decision, we provisionally accepted Petitioner’s proposed definition, which was not opposed by Patent Owner, and is consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’544 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). As Patent Owner expressly agrees with our analysis, we apply Petitioner’s proposed definition here. See PO Resp. 11, n.4. C.” slip op. at 25
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“1. “A device useable to create an opening in the trabecular meshwork of the eye” Independent claim 1 is directed to “[a] device useable to create an opening in the trabecular meshwork of the eye” and having a “foot member . . . advanceable, tip first, through Schlemm’s Canal to facilitate performance of a surgical procedure using the surgical instrument.” Ex. 1001, 23:4–5, 23:18–20. As an initial matter, we consider the preamble of claim 1 limiting here because a device that “create[s] an opening in the trabecular meshwork” recites or, at a minimum, implies, “essential structure or steps” required for the insertion and advancement of the instrument through Schlemm’s Canal as set forth in [1.d]. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002).8” slip op. at 26
Patent outcomesUS 9,999,544 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,999,544
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.