- Ceramtec GmbH v. Ceramedic LLCInstitution deniedPTAB · Dec 16, 2015 · IPR2015-01328 · APJ Kristina M Kalan · IPR · Institution
The Board denied institution on claims 1–53 because the ’364 publication was not shown to be prior art under § 102(b).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“On this record, Petitioner fails to show sufficiently that the claims of the ’584 patent are not entitled to a priority date earlier than September 28, 1999. Pet. 6, 14. The ’364 publication is not available as § 102(b) prior art, and Petitioner is not reasonably likely to prevail at trial on a ground based on that reference.” slip op. at 11
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Based on the information presented, we are not persuaded that the first, third, and fifth Taylor factors require that both Petitioner and Petitioner’s Customers must be named as real parties-in-interest. We do not find that totality of evidence, presented at this stage in the proceeding, tips the balance of the Taylor factors in Patent Owner’s favor. In particular, having considered the information presented by both parties at this stage of the proceeding, the record is insufficient to support a finding that the second Taylor factor (“whether a pre-existing substantive legal relationship with the party named in the proceeding justifies binding the third party”) or fourth Taylor factor (“whether the third party exercised or could have exercised control over the proceeding”) are met in this case. Atlanta Gas Light Co., slip op. at 9.” slip op. at 14
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable
“Petitioner’s argument is not persuasive because the challenged claims of the ’584 patent do not recite a specific volume Al2O3 content—and neither the specification nor the prosecution history are shown to limit the plain language of the claims, for example, by disclaimer of subject matter. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (in arriving at the broadest reasonable interpretation, the Board reads the claim language in light of the specification and the prosecution history); see also Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (“[T]he test for sufficiency is whether the disclosure . . . reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter.” (emphasis added)). Patent Owner has presented claim charts showing where every element of the disputed product and method claims is supported by the specification. Prelim. Resp. 25–33. Together with Patent Owner’s arguments, the claim charts showing where every element of the claims finds support in the specification is persuasive. We are not persuaded that the specification or the prosecution history limits, by disclaimer, the plain language of the claims—which include no express limitation on the Al2O3 content by volume of the sintered product. The standard for disclaimer or disavowal is exacting. See Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012). Petitioner relies on Gentry Gallery for the proposition that when the specification expressly states that the invention is of a particular scope, claims broader than the indicated scope lack written description support. Pet. 15. We are not persuaded by Petitioner’s argument that the specification sections it cites—including the two instances in which the 95– 100% range is mentioned5 and the data recited in Examples 1–7—limit the content by volume of Al2O3. Pet. 16–32. We have reviewed the Examples and the cited portions of the specification and are not persuaded that they disavow composites containing less than 95% by volume of Al2O3. The specification describes a number of embodiments by their variables, and describes exemplary ranges associated with the variables, but includes no clear language disclaiming other ranges for those variables. Embodiments” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for patent owner
“Petitioner’s argument is not persuasive because the challenged claims of the ’584 patent do not recite a specific volume Al2O3 content—and neither the specification nor the prosecution history are shown to limit the plain language of the claims, for example, by disclaimer of subject matter. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (in arriving at the broadest reasonable interpretation, the Board reads the claim language in light of the specification and the prosecution history); see also Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (“[T]he test for sufficiency is whether the disclosure . . . reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter.” (emphasis added)). Patent Owner has presented claim charts showing where every element of the disputed product and method claims is supported by the specification. Prelim. Resp. 25–33. Together with Patent Owner’s arguments, the claim charts showing where every element of the claims finds support in the specification is persuasive. We are not persuaded that the specification or the prosecution history limits, by disclaimer, the plain language of the claims—which include no express limitation on the Al2O3 content by volume of the sintered product. The standard for disclaimer or disavowal is exacting. See Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012). Petitioner relies on Gentry Gallery for the proposition that when the specification expressly states that the invention is of a particular scope, claims broader than the indicated scope lack written description support. Pet. 15. We are not persuaded by Petitioner’s argument that the specification sections it cites—including the two instances in which the 95– 100% range is mentioned5 and the data recited in Examples 1–7—limit the content by volume of Al2O3. Pet. 16–32. We have reviewed the Examples and the cited portions of the specification and are not persuaded that they disavow composites containing less than 95% by volume of Al2O3. The specification describes a number of embodiments by their variables, and describes exemplary ranges associated with the variables, but includes no clear language disclaiming other ranges for those variables. Embodiments” slip op. at 8
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 6,066,584 - Umicore AG & Co. KG v. BASF CorporationRehearing grantedPTAB · Dec 7, 2015 · IPR2015-01124 · APJ Jo-Anne M Kokoski · IPR · Rehearing
Granted Patent Owner’s rehearing request and limited trial to the listed § 103 grounds, excluding claims 17, 18, 21, and 22.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We agree that we overlooked Patent Owner’s arguments that Petitioner failed to demonstrate sufficiently that Maeshima, Breck, and Dedecek disclose or suggest the SAR values recited in claims 17, 18, 21, and 22. Upon further consideration, we agree with Patent Owner that Petitioner has not offered adequate evidence demonstrating that the higher SAR values required by claims 17, 18, 21, and 22 would have been obvious to a person having ordinary skill in the art over the combination of Maeshima and Breck, or over the combination of Dedecek and Breck. See, e.g., Pet. 13–14, 43; Ex. 1108 ¶¶ 122–129. Patent Owner’s Request for Rehearing is granted.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree that we overlooked Patent Owner’s arguments that Petitioner failed to demonstrate sufficiently that Maeshima, Breck, and Dedecek disclose or suggest the SAR values recited in claims 17, 18, 21, and 22. Upon further consideration, we agree with Patent Owner that Petitioner has not offered adequate evidence demonstrating that the higher SAR values required by claims 17, 18, 21, and 22 would have been obvious to a person having ordinary skill in the art over the combination of Maeshima and Breck, or over the combination of Dedecek and Breck. See, e.g., Pet. 13–14, 43; Ex. 1108 ¶¶ 122–129.” slip op. at 3
§ 103 obviousnessPatents in suitUS 8,404,203 - Osram Sylvania Inc. v. Jam Strait, Inc.All claims unpatentablePTAB · Sep 8, 2015 · IPR2014-00703 · APJ Miriam L Quinn · IPR · Final written decision
Claims 30 and 31 are unpatentable as obvious over Laforest; Petitioner did not show them unpatentable over Alvarez or Horowitz.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“The challenged claims are directed to a specific LED light bulb, one that can be inserted in a standard automotive mini-wedge socket. The ’625 patent states that the “present invention” is an LED “vehicle lamp module adapted for mounting in standard vehicle brake/tail lamps or turn signal assemblies to replace standard vehicle incandescent bulbs.” Ex. 1001, 4:39–42. The adaptation of the LED light bulb to fit a specific socket constrains the fit of the recited PCB in the “bulb body” and the “electrical control means” that are mounted onto that PCB, such that the light bulb has the dimensions of a mini-wedge bulb. The specification of the ’625 patent reflects this importance when describing that the PCB of the mini-wedge bulb of the “present invention” has the dimensions (thickness and height) of a standard automotive mini-wedge light bulb with the 194-part number, such that it can fit into the same socket as 3-digit incandescent mini-wedge bulbs with the 194-part number. See id. at 14:6–7, 36–44; 14:62–15:3. Furthermore, we noted that the use of “adapted for” in the preamble denotes that the LED light bulb is designed or made to fit into a mini-wedge type bulb socket. See In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014). As stated above, the ’625 patent describes that the mini-wedge type bulb has the same dimensions as a 194-part number light bulb, i.e., a 3-digit incandescent light bulb. See Ex. 1001, 14:6–7, 36–44; 14:62–15:3. Further, the specification describes that the mini-wedge light bulb can replace any 3-digit automotive bulb. Id. at 14:28–29. We interpreted these statements as an indication that the claimed LED light bulb is more than merely “capable of” fitting into a mini-wedge socket—it is designed to do so. Based on the guidance provided by the ’625 patent, we construed the preamble to mean “an LED light bulb designed to fit into sockets configured to receive a three-digit automotive incandescent lamp.” Dec. on Inst. 7.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“at least one light emitting diode mounted on the upper side of the printed circuit board” and “electrical control means mounted on the printed circuit board.” Ex. 1001, 30:7–9, 11–12. Neither party proposed a construction for the term “mounted on.” But the parties’ application of the term differs in scope. For example, Petitioner argues that “mounted on” does not require that both leads of a resistor are connected to a PCB. Tr. 21:3–15. Yet Patent Owner argues that both leads of the resistor would need to be connected to the PCB to meet the claim. Tr. 38:21–39:2. On this issue, we agree with Patent Owner that a resistor “mounted on” the PCB requires at least that both leads of the resistor are connected to the PCB. This understanding stems from the ordinary meaning of the term as understood by those of ordinary skill in the art. First, we note that the ordinary meaning of the word “mount” is “to fix securely to a support.”6 The specification confirms this definition by describing consistently how the LEDs and resistors are “mounted on” the PCB. See e.g., Ex. 1001, 14:6–9 (LEDs mounted on a PCB); 14:15–17 (resistors can be thru hole resistors or they can be surface mounted on the PCB). The diagrams all show that both electrical leads from these devices are fixed onto the PCB. For example, Figure 37 illustrates resistor 456 placed flat on the PCB with the leads coupled to it. Ex. 1001, Fig. 37. Figure 38 also shows the profile of the PCB illustrating LEDs 421 and resistors 456 and 457 connected to the PCB. Other embodiments of the ’625 patent also confirm this understanding. For example, Figures 7 and 8 depict one embodiment in which one lead of control circuitry 84 is connected to the LED, with control circuitry 84 suspended in the body cavity to allow for air cooling. Ex. 1001, 9:37–42. Additionally, the second lead of control circuitry 84 is neither shown nor described as being connected to the PCB. Another, similar, embodiment is shown in Figure 18, and is described as “suspended control circuitry.” Id. at 5:42–44. These descriptions lead us to conclude that the applicant used the term “mounted on the printed circuit board” to mean an installation of a device with its electrical connections, or leads, affixed to the PCB, and wherein the control circuitry is not suspended in a cavity. Compare this with a connection where at least one lead of the control circuitry is not affixed to a PCB, a connection described as suspended—not “mounted on.” Accordingly, guided by the use of the term “mounted on” in the specification and the term’s ordinary meaning as understood by a person of ordinary skill in the art, we conclude 6 See mount definition, THE AMERICAN HERITAGE COLLEGE DICTIONARY, 891 (Houghton Mifflin 3rd ed. 1997) (Ex. 3001). that “mounted on the printed circuit board” means that, at a minimum, all of the electrical leads of the electrical control means must be affixed to the PCB. slip op. at 9
- Skill levelSkill level board ownOther
“Petitioner proposes a particular level of ordinary skill in the art to which Patent Owner disagrees, without providing any evidence supporting such disagreement. Ex. 1002 ¶ 41; PO Resp. 18. In light of the evidence before us, we find that the references themselves represent the level of ordinary skill in the art, and that we need not explicate it further. See Okajima, 261 F.3d at 1355; GPAC, 57 F.3d at 1579 (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill was best determined by the references of record); Oelrich, 579 F.2d at 91 (“[T]he PTO usually must evaluate . . . the level of ordinary skill solely on the cold words of the literature.”).” slip op. at 12
- Expert testimonyPatent owner expert discountedDecided for petitioner
“Furthermore, we find the testimony of Mr. Wesson in this regard speculative. The statement that the modified Laforest bulb would “likely” be inoperable is tentative, at best. Also, Mr. Wesson did not perform any testing to support the theoretical explanation that the resulting LED bulb would flicker, degrade, and burn out prematurely. See 2001, 12; Tr. 28:22– 29:15. Indeed, Laforest does not disclose any specific values of the disclosed LED or resistor components, as acknowledged by Patent Owner’s counsel during oral argument. Tr. 29:4–8. Mr. Wesson’s testimony is too tentative to persuade us that Laforest’s bulb would be inoperable if the base were modified to fit a mini-wedge type socket. We also give less weight to Mr. Wesson’s testimony in support of Patent Owner’s “inoperability” argument because Mr. Wesson’s testimony is based on a “heat dissipation” technique disclosed in the specification, but not claimed. See Ex. 2001, 13 (comparing the bulb of Laforest with the embodiments of the ’625 patent by stating that “there are no means for dissipating the heat generated by this resistor”).” slip op. at 20
Patent outcomesUS 6,786,625 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,786,625 - Ceramtec GmbH v. Ceramedic LLCRehearing deniedPTAB · Aug 21, 2015 · IPR2015-00398 · APJ Kristina M Kalan · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving institution on Grounds 4, 8, and 13 in place because it found no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A request for rehearing must identify specifically all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). The Board applies an abuse of discretion standard in reviewing institution decisions. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denialDecided for petitioner
“The concept of redundancy is a tool used by the Board in determining whether to exercise its discretion to institute on or deny some or all grounds set forth in the Petition. The proper focus of a redundancy designation is on whether Petitioner articulates a meaningful distinction in terms of relative strengths and weaknesses with respect to the application of the prior art disclosures to one or more claim limitations. Liberty Mutual Ins. Co. v. Progressive Casualty Inc. Co., Case CBM2012-00003 (Paper No. 7), at *2 (PTAB Oct. 25, 2012). The Board, however, has broad discretion as to whether to apply redundancy principles. The concept is not a tool that bestows on Patent Owner any substantive right to a denial of institution on allegedly redundant grounds. Based on the analysis set forth in the Petition, we instituted trial on certain grounds based on the record before us at that time. As we noted in our Decision to Institute, “[a]part from Patent Owner’s claim construction arguments, which we have not adopted at this stage of the proceeding, the Preliminary Response does not address the substance of the prior art.” Dec. 9. We analyzed the evidence and the arguments articulated by Petitioner for Grounds 4, 8, and 13, and found them to meet the standard required for institution of an inter partes review. It is a matter of discretion to proceed or not to proceed with any ground, and we exercised that discretion without abuse.” slip op. at 3
Discretionary denialPatents in suitUS 6,066,584
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.