- Fitesa Simpsonville, Inc. v. The Procter & Gamble CompanyInstitution deniedPTAB · Mar 20, 2024 · IPR2023-01450 · APJ Avelyn M Ross · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding the cited art previously considered or cumulative and no material Office error shown.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2019). 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 the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” For the reasons set forth below, upon considering the Petition, the Preliminary Response, the Reply, the Sur-reply, and evidence of record, we exercise our discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“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 in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 9
Discretionary denialcites PhillipsPatents in suitUS 10,513,801 - Fitesa Simpsonville, Inc. v. The Procter & Gamble CompanyInstitution deniedPTAB · Mar 20, 2024 · IPR2023-01451 · APJ Avelyn M Ross · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding the prior art previously considered and no material error by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“b) Advanced Bionics Framework Part (2) Having determined that the “same or substantially the same prior art” previously was presented to the Office, we now consider whether Petitioner sufficiently demonstrates that the Office materially erred. In assessing the second part of the Advanced Bionics Framework, we consider Becton, Dickinson factors (c), (e), and (f) to determine whether material error has been shown. Advanced Bionics, Paper 6 at 10. “An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.” Id. However, “[i]f reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” Id. at 9. Petitioner bears the burden of showing that the Examiner materially erred. Id. at 8.” slip op. at 19
Discretionary denialcites PhillipsPatents in suitUS 11,326,276 - Omega Liner Company, Inc. v. Buergofol GmbHInstitution deniedPTAB · Mar 20, 2024 · IPR2023-01402 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 would have been obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Those arguments are insufficient to support trial institution because neither Petitioner nor Dr. MacLean sufficiently explains why an ordinarily skilled artisan would have been interested in selecting a material capable of withstanding temperatures “incurred when using a heat-based curing process.” Id. To the contrary, elsewhere in the Petition, Petitioner consistently and repeatedly identifies UV-radiation curing (as opposed to heat-curing) as providing the impetus for selecting and combining other features from Glover and Brandenburger to attain a modified insertion tube that meets the challenged claims. Pet. 20–41 (relying on UV-radiation curable resins and UV-radiation curing). Critically lacking on this record is any explanation why an ordinarily skilled artisan would have been led to select one structural feature of the invention (the required “layer (a)” material, Ex. 1001, 14:50) to facilitate a heat-curing process, where the reasons for selecting every other structural feature of the invention are keyed to facilitating a UV-radiation curing process.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner disagrees, arguing that Petitioner’s proposed definition “completely ignores having any experience” within the field of “an insertion tube suitable for the renovation of subterranean pipes.” Prelim. Resp. 17. In Patent Owner’s view, the ordinarily skilled artisan would have had “some knowledge and experience in the end-use performance of polymeric films and sheet products” and, moreover, “would not necessarily have experience in the formulation or manufacturing of” those films and products. Id. On that basis, Patent Owner proposes modifying Petitioner’s definition by deleting “experience in the formulation or manufacturing of polymeric films and sheet products.” Id. The prior art itself can reflect the appropriate level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Each asserted reference in this case refers to manufacturing or formulating processes for polymeric materials useful in subterranean pipe renovation, which supports Petitioner’s proposed definition. See Ex. 1005, code (57), 3:33–4:58; Ex. 1006, code (57), 1:56–2:46, 4:8–41; Ex. 1007, code (57), 4:19–63; Ex. 1009, code (57), 2:28–3:5. Only Petitioner’s definition, moreover, is supported by declaration testimony. Pet. 3 (citing Ex. 1003 ¶ 23). In our analysis, therefore, we apply Petitioner’s definition, but note that neither party indicates that the result on institution would change under Patent Owner’s slightly different definition.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner submits that “[n]o formal claim construction [is] necessary” for purposes of deciding whether to institute review. Pet. 19. Patent Owner does not address claim construction, except to observe that “Petitioner proposes no construction of the claims.” Prelim. Resp. 17. On this record, no express claim construction is necessary. This Decision turns on the sufficiency of Petitioner’s showing that the asserted prior art suggests an internally situated tube having “a layer (a),” as specified in claim 1, which is characterized by a “VICAT softening point” that “is at least 100˚C.” Ex. 1001, 14:50–63. Neither party argues that the result would change in this case based on the meaning applied to those terms. See Pet. 19; Prelim. Resp. 17.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Those arguments are insufficient to support trial institution because neither Petitioner nor Dr. MacLean sufficiently explains why an ordinarily skilled artisan would have been interested in selecting a material capable of withstanding temperatures “incurred when using a heat-based curing process.” Id. To the contrary, elsewhere in the Petition, Petitioner consistently and repeatedly identifies UV-radiation curing (as opposed to heat-curing) as providing the impetus for selecting and combining other features from Glover and Brandenburger to attain a modified insertion tube that meets the challenged claims. Pet. 20–41 (relying on UV-radiation curable resins and UV-radiation curing). Critically lacking on this record is any explanation why an ordinarily skilled artisan would have been led to select one structural feature of the invention (the required “layer (a)” material, Ex. 1001, 14:50) to facilitate a heat-curing process, where the reasons for selecting every other structural feature of the invention are keyed to facilitating a UV-radiation curing process.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,794,269 - PTAB · Mar 19, 2024 · IPR2023-01372 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted IPR on claims 1, 3–7, and 10–13 on all asserted grounds, finding a reasonable likelihood of prevailing on the Hummel–Schuhmann and Hummel–Nagai obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the above reasons, we determine that Petitioner establishes “a reasonable likelihood” of prevailing with respect to claims 1, 10, and 11 based on the ground that asserts obviousness over Hummel and Schuhmann. 35 U.S.C. § 314(a).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner also adequately explains why an ordinarily skilled artisan would have been led to apply Schuhmann’s coating to the external surface of Hummel’s insertion tube; namely, “to provide a good release effect between the inner tubular film and the cured carrier material to prevent ‘tearing’ of the inner tubular film as desired by Hummel.” Id. at 43 (citing Ex. 1003 ¶ 194; Ex. 1005, 23:1–3). Accordingly, on this preliminary record, Petitioner shows sufficiently that independent claim 1 is unpatentable as obvious over the combined disclosures of Hummel and Schuhmann. Petitioner also shows sufficiently that dependent claims 10 and 11, which relate to applying a lipophilic migrating compound, such as a wax, over the external side of a tubular film, are unpatentable based on this ground. Id. at 49–51 (and evidence cited therein).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“that appear in claim 1. Even on this preliminary record, we have concerns about whether a migrating compound incorporated into an inner tubular film is “a coating or covering” of that film within the scope of claim 1. See id. at 30 (citing Ex. 1003 ¶ 134) (Petitioner’s reliance on extrinsic evidence to show that waxes migrate to the surface of the inner tubular film and, thereby, create “a ‘coating’” on that structure). To the contrary, claim 1 expressly requires that “the coating is applied over a section or an entire circumferential area of the outer facing external side” of the inner tubular film. Ex. 1001, 20:34–36 (Board’s emphasis). We need not resolve that issue, however, for purposes of deciding whether to institute review. See Nidec Motor Corp., 868 F.3d at 1017. Petitioner proposes two grounds that do not depend on a finding that a migrating compound incorporated into a film is “a coating or covering” as specified in claim 1, but instead are based on prior art that allegedly teaches a migrating compound applied over a film to satisfy the second, alternative prong of Petitioner’s proposed definition. Ex. 1001, 20:32; see Pet. 42–44, 55–57 (proposing that a coating containing a wax, as disclosed in Schuhmann or Nagai, would have been applied over the external surface of Hummel’s insertion tube).” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,657,882 - Videndum Production Solutions, Inc. v. Rotolight LimitedInstitution deniedPTAB · Jan 25, 2024 · IPR2023-01218 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution of IPR challenging claims 1–19, finding that General Plastic factors 3–7 outweighed factors favoring institution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“It is the “opportunity to morph positions along the way” that favors denying a second petition that is time-staggered relative to a first petition. General Plastic, Paper 19 at 9 n.13, 11 (Board’s emphasis). Petitioner had more than a mere opportunity to morph its positions. It is beyond dispute that Petitioner, in fact, accessed the trial record in IPR099 at least six months prior to filing the instant Petition. Ex. 1010 (Petitioner’s email dated January 14, 2023). Further, Petitioner leaves uncontested on this record Patent Owner’s assertion and evidence that Petitioner “bolstered arguments” in the Petition based on review of the trial record developed in IPR099. Prelim. Resp. 19–20 (identifying persuasive examples); see Reply 1–3 (declining to contest Patent Owner’s arguments or evidence on that point).” slip op. at 13
Discretionary denialPatents in suitUS 10,845,044 - Videndum Production Solutions, Inc. v. Rotolight LimitedInstitution deniedPTAB · Jan 24, 2024 · IPR2023-01219 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution of review of claims 1–22, exercising § 314(a) discretion because all General Plastic factors weighed against institution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“[F]actor 3 is directed to Petitioner’s potential benefit from receiving and having the opportunity to study Patent Owner’s Preliminary Response, as well as our institution decisions on the first-filed petitions, prior to its filing of follow-on petitions. . . . Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review. All other factors aside, this is unfair to patent owners and is an inefficient use of the inter partes review process and other post-grant review processes. General Plastic, Paper 19 at 17–18 (internal citation and footnote omitted).” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“D. Summary As discussed above, the evidence of record shows that all of the General Plastic factors weigh against institution. Although no single factor is dispositive, the evidence and circumstances as a whole weigh strongly in favor of denying institution in this case. As a result, we determine that it is appropriate to exercise our discretion under § 314(a) to deny institution.” slip op. at 16
Discretionary denialPatents in suitUS 10,197,258 - Videndum Production Solutions, Inc. v. Rolight LimitedInstitution deniedPTAB · Jan 24, 2024 · IPR2023-01220 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution of review of claims 1–21, exercising § 314(a) discretion because all General Plastic factors weighed against the serial petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Here, Petitioner was able to use the Board’s decision denying institution in IPR261 to learn that the art and arguments asserted in the first petition were insufficient for institution, which led Petitioner to find a different ground that would “result[] in the grant of review.” Id. In that regard, contrary to Petitioner’s assertion, Petitioner did modify the second petition in light of the institution decision in the first petition. See Reply 1. Moreover, as Patent Owner correctly notes, Petitioner was able to monitor the developments in the related IPR496 and use that information in preparing the Petition in this proceeding. Prelim. Resp. 27–30. The evidence of record thus shows that Petitioner was in a position to use the Board’s previous decisions regarding challenges to the ’257 patent as a roadmap—to avoid certain grounds and find others—for its second petition.” slip op. at 16
Discretionary denialPatents in suitUS 10,197,257 - 3M Company v. Bay Materials, LLCAll claims unpatentablePTAB · Jan 16, 2024 · IPR2022-01215 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1–4, 7, 11–14, 16, 18, and 31 are unpatentable as anticipated by Yu; claims 1–4, 7, and 31 are also anticipated by Stewart.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties disagree about the appropriate definition of the ordinarily skilled artisan and, in particular, whether that artisan would have had experience or familiarity with the “processing of thermoformable polymer sheets” to form “orthodontic and dental appliances.” Resp. 16 (citing Ex. 2008 ¶ 14); see Pet. 14–15 n.1 (disagreeing with that proposition). Patent Owner’s definition is supported by the plain wording of challenged claim 18, which recites a dental appliance. Resp. 16 (citing Pet. 14 n.1); Ex. 1001, 26:50–52. The ’263 patent, moreover, includes an “extensive discussion of dental appliances and the unexpectedly good properties of dental aligners” thermoformed from polymeric sheets. Resp. 16; Ex. 1001, 1:20–47, 4:57–5:10, 5:26–6:6, 6:39–43, 10:25–51, 11:30–48, 12:22–24, 13:25–29, 21:1–6, 24:2–3, 24:30–57; see id. at 15:23– 38 (describing the thermoforming process for making dental appliances).” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“about 60A to about 85D” when employed as the two soft outer layers in an unclaimed and disfavored soft-hard-soft layer composition (id. ¶ 109) does not convey, with reasonable clarity, that the inventors had possession of the inventive hard-soft-hard layer composition in which the single soft, inner layer also is within that same hardness range (id. ¶ 110). Critically, when discussing the soft, inner layer of the inventive hard-soft-hard layer composition, the ’176 application nowhere indicates that the soft inner layer must have “a hardness of from about 60A to about 85D.” Id. ¶ 109 (discussing a prior art embodiment); see id. ¶¶ 7, 33–35, 109–110. Even if the hardness limitation of the challenged claims would have been obvious from the relied-upon disclosure in the ’176 application (id. ¶ 109), as a matter of law, that circumstance is insufficient to establish a filing date through that application. “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (quotations omitted); see Pet. 21 (quoting that controlling precedent). Each of Patent Owner’s countervailing arguments is unpersuasive because, at best, Patent Owner attempts to show that it would have been obvious to import––from the description of the soft outer layers in an unclaimed and disfavored soft-hard-soft embodiment––a limitation not expressly imposed on the soft inner layer in the inventive hard-soft-hard embodiment. Ex. 2001 ¶ 109; Resp. 35–42. A showing of obviousness is not enough under the controlling precedent cited by Petitioner. PowerOasis, 522 F.3d at 1306.” slip op. at 9
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner
“about 60A to about 85D” when employed as the two soft outer layers in an unclaimed and disfavored soft-hard-soft layer composition (id. ¶ 109) does not convey, with reasonable clarity, that the inventors had possession of the inventive hard-soft-hard layer composition in which the single soft, inner layer also is within that same hardness range (id. ¶ 110). Critically, when discussing the soft, inner layer of the inventive hard-soft-hard layer composition, the ’176 application nowhere indicates that the soft inner layer must have “a hardness of from about 60A to about 85D.” Id. ¶ 109 (discussing a prior art embodiment); see id. ¶¶ 7, 33–35, 109–110. Even if the hardness limitation of the challenged claims would have been obvious from the relied-upon disclosure in the ’176 application (id. ¶ 109), as a matter of law, that circumstance is insufficient to establish a filing date through that application. “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (quotations omitted); see Pet. 21 (quoting that controlling precedent). Each of Patent Owner’s countervailing arguments is unpersuasive because, at best, Patent Owner attempts to show that it would have been obvious to import––from the description of the soft outer layers in an unclaimed and disfavored soft-hard-soft embodiment––a limitation not expressly imposed on the soft inner layer in the inventive hard-soft-hard embodiment. Ex. 2001 ¶ 109; Resp. 35–42. A showing of obviousness is not enough under the controlling precedent cited by Petitioner. PowerOasis, 522 F.3d at 1306.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“For the above reasons, we determine that the challenged claims are not entitled to the benefit of the filing date of the ’176 application because the application does not indicate that the inventors had possession of the hardness limitation of the claimed invention. See Reply 7–13 (Petitioner’s arguments on this issue). On the full trial record, we find that the earliest effective filing date to which the challenged claims are entitled is December 18, 2019, the filing date of the ’256 application from which the ’263 patent issued. Ex. 1001, codes (21), (22). Every challenged claim recites, or inherits via dependence, the hardness limitation “of from about 60A to about 85D” for the inner elastomeric layers of the inventive hard-soft-hard multilayer composition. Ex. 1001, 25:2–9 (independent claim 1), 26:1–8 (independent claim 11), 27:49–51 (independent claim 31). In view of our determination that the earliest effective filing date to which the challenged claims are entitled is December 18, 2019, we agree with Petitioner that Yu (Example 1) and Stewart (Example 2) qualify as prior art against the challenged claims. Pet. 43–49 (Petitioner’s persuasive arguments and evidence on point).” slip op. at 13
Patent outcomesUS 10,870,263 unpatentableClaim construction§ 102 anticipation§ 112 disclosurecites GrahamPatents in suitUS 10,870,263 - 3M Company v. Bay Materials, LLCNo claims unpatentablePTAB · Jan 16, 2024 · IPR2022-01214 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1–4, 7–11, and 13 were not shown unpatentable because Petitioner did not establish the flexural-modulus limitation over Hinz and the Durasoft data sheets, with or without Sun.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties disagree about the appropriate definition of the ordinarily skilled artisan and, in particular, whether that artisan would have had experience or familiarity with processing “thermoformable polymer sheets” to form “orthodontic and dental appliances.” Resp. 8; see Pet. 10–11 n.1 (disagreeing with that proposition). We agree with Patent Owner for the following reasons.” slip op. at 8
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“B. Conflicting Opinion Testimony Petitioner’s own witness, Dr. Giacomin, opines that an ordinarily skilled artisan “would have been familiar with various machines and methods that would have enabled the thermoforming of multilayer dental sheets into shapes that conform with the teeth (i.e., creating a dental appliance).” Ex. 1002 ¶ 25. Nonetheless, Petitioner does not contest Patent Owner’s evidence that Dr. Giacomin himself lacks that qualification. Compare Resp. 9–10 (citing Ex. 1002 ¶¶ 1–9, 17 & n.1), with Reply (nowhere contesting that evidence). Petitioner also leaves uncontested Patent Owner’s evidence that Dr. Osswald, by contrast, possesses “the required experience” with dental appliances, including thermoforming processes for their manufacture. Compare Resp. 10 (citing Ex. 2006 ¶¶ 2–8; Ex. 2007), with Reply (nowhere contesting that evidence). Dr. Giacomin possesses excellent qualifications in the field of polymer rheology, but on this record, he demonstrates no, or inadequate, familiarity or experience with methods of thermoforming dental appliances from polymeric materials, which by his own admission is a minimum qualification of the hypothetical person of ordinary skill in the art. Ex. 1002 ¶¶ 1–11 (statement of qualifications), App’x A (curriculum vitae). Patent Owner’s witness, Dr. Osswald, by contrast, has “experience with polymer materials used in dental appliances” and “shaping operations, including thermoforming” processes for such applications. Ex. 2006 ¶¶ 5, 6. Against that backdrop, where the two witnesses’ opinions differ about the level of ordinarily skill in the art of thermoforming processes for dental appliances at the time of the invention, we credit Dr. Osswald’s opinions over those of Dr. Giacomin. We take note, moreover, that Dr. Osswald’s opinions would not change under Petitioner’s somewhat different definition of the level of ordinary skill in the art. Ex. 2006 ¶ 14.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Claim terms are given their ordinary and customary meaning, as understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We construe only terms in controversy and then 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). No claim term requires express construction for purposes of this Decision.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“In the absence of explanation by Petitioner, we are left to wonder why either of those two ranges reported in Sun would have been recognized as applicable, without modification, to the three-layer dental splint of Hinz. Starting with a commercially-available, two-layer sheet of hard-soft PC-TPU or hard-soft PETG-TPU thermoplastic polymers, Hinz bonds a third layer, consisting of hard PC or hard PETG, to the soft TPU layer of the two-layer material by a process of thermoforming. No prior art reference explains how that process would have been understood to affect the overall flexural modulus of the resulting three-layer, hard-soft-hard composition. Petitioner does not supply an adequate reason for combining Sun’s preferred flexural modulus range, reported for Sun’s dental appliances at a temperature of 23˚ C, to dental splints formed by Hinz from fundamentally different polymers and a fundamentally different process. See Pet. 65–68 (entirety of four-page analysis on this ground); Resp. 32–38; Sur-reply 7–14 (well-supported explanation of those fundamental differences); Reply 8–16 (Petitioner’s unpersuasive responsive positions). The flexural modulus of Sun’s dental appliance not only is temperature dependent but also varies with the flexural strength of the polymeric material at hand. Ex. 1018 ¶ 12. Too late in the Reply, Petitioner raises fact-intensive reasons why those differences would not have mattered to an ordinarily skilled artisan. Reply 8–16. In any event, we agree with Patent Owner that Petitioner glosses over “[f]undamental differences” between the polymers and processes of Sun and Hinz, differences that “are central to [the] motivation to combine inquiry” and undercut Petitioner’s view that an ordinarily skilled artisan would have understood either of Sun’s flexural modulus ranges to apply, without modification, to Hinz’s polymers and process. Resp. 33 (quoting Adidas AG v. Nike, Inc., 963 F.3d 1355, 1359 (Fed. Cir. 2020)) (first alteration in original); see Sur-reply 8–16 (Patent Owner’s persuasive arguments and evidence on point). The ground based on Sun is deficient for the above reasons.” slip op. at 25
Patent outcomesUS 10,946,630 not shown unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,946,630 - Apple Inc. v. Dodots Licensing Solutions LLCInstitution deniedPTAB · Dec 15, 2023 · IPR2023-00937 · APJ Hubert C Lorin · IPR · Institution
The Board denied institution on claims 1–21 because Petitioner did not show a reasonable likelihood that the relied-upon Slivka Appendices qualified as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“On this record, Petitioner does not establish a reasonable likelihood that the Slivka Appendices are “(1) an application for patent, published under section 122(b), . . . or (2) a patent granted on an application for patent.” 35 U.S.C. 102(e). Accordingly, the relied-upon Slivka Appendices do not qualify as prior art under § 102(e) as Petitioner asserts. Pet. 9. III. CONCLUSION Petitioner’s invalidity contentions rely, in part, on disclosures from the Slivka Appendices, which Petitioner asserts qualify as prior art under § 102(e). Pet. 9. Because Petitioner has not established a reasonable likelihood of showing that the material it relies on was available as prior art at the time of the invention, we determine that the Petitioner has not satisfied its burden from the onset to show with particularity why the patent it challenges is unpatentable. 35 U.S.C. § 312(a)(3).” slip op. at 18
- BurdenDenied
“We determine that Petitioner has not satisfied its burden from the onset to show with particularity why the patent it challenges is unpatentable. Our determination is based on finding that Petitioner’s challenge relies on appendices (Ex. 1005, 69–245) missing from the ’695 patent (Ex. 1004) and insufficient indication on the record that the appendices have been incorporated into the ’695 patent, and that as a result, the relied-upon appendices do not qualify as prior art under 35 U.S.C. § 102(e) as Petitioner asserts. Pet. 9.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“Appendices (Ex. 1005, 69–245) missing from the ’695 patent (Ex. 1004) as published because the Slivka Appendices were not incorporated by reference into the ’695 patent specification. Thus, there is no sufficient indication on this record to establish a reasonable likelihood that the Slivka Appendices are available prior art for an inter partes review, as they are neither part of the patent. 35 U.S.C. § 311(b); see Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper No. 29 at 12–13 (December 20, 2019) (precedential) (discussing the standard at institution for a showing regarding the public availability of non-patent art). On this record Petitioner has not sufficiently shown that the Slivka Appendices, as separately-filed documents should be accorded their stamped “DEC 6 1996,” date for prior art purposes. As Patent Owner correctly explains, “the rule requiring publication of applications ‘after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought’ was not effective until November 29, 2000.” Prelim. Resp. 21 (citing 65 Fed. Reg. 57,024; 35 U.S.C. § 122(b)(1)). For applications filed before November 29, 2000, as here, “the prosecution history of an application remain[ed] confidential until the application itself issue[d] as a patent.” Hyatt v. U.S. Patent and Trademark Office, 797 F.3d 1374, 1378 (Fed. Cir. 2015). The current record, at most, might support a likelihood that the Slivka Appendices could be accorded the date they were first made publicly available, which is May 9, 2000, the date the ’695 patent issued. See 37 C.F.R. 1.11 (a) (“After a patent has been issued or a statutory invention registration has been published, the specification, drawings, and all papers relating to the case in the file of the patent or statutory invention registration are open to inspection by the public, and copies may be obtained by paying the fees therefore.”). As Patent Owner points out, however, this is “at least thirteen months after the ’545 patent’s effective filing date,” i.e., April 26, 1999 (based on a claim for priority to, inter alia, U.S. Provisional Application Ser. No. 60/131,083). Prelim. Resp. 29; Ex. 1001, code (60), 1:13–15. In addition, Petitioner only presents a case for availability of the Slivka reference under pre-AIA § 102(e). On this record, Petitioner does not establish a reasonable likelihood that the Slivka Appendices are “(1) an application for patent, published under section 122(b), . . . or (2) a patent granted on an application for patent.” 35 U.S.C. 102(e). Accordingly, the relied-upon Slivka Appendices do not qualify as prior art under § 102(e) as Petitioner asserts. Pet. 9.” slip op. at 17
§ 102 anticipationPatents in suitUS 9,369,545
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.