- PTAB · Sep 27, 2024 · IPR2024-00674 · APJ Monica S Ullagaddi · IPR · Institution
The Board instituted review of claim 44 on all asserted grounds and granted Texas Instruments’ motion to join IPR2023-01244 in an understudy role.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“On the present record, we agree with Petitioner that the two petitions filed to challenge the claims of the ’222 patent will not substantially burden the Board or the parties. The petitions in IPR2024-00673 and IPR2024- 00674 challenge different claims, and those claims appear on the present record to have different claim scope, as Petitioner argues. Paper 3, 3–4 (arguing that claim 44, challenged in IPR2024-00674, recites “a ‘surface layer,’ a ‘single drift layer,’ and ‘at least one well region disposed in the single drift layer,’ which are not” recited in the claims challenged in IPR2024-00673); Ex. 1001, 4:39–8:39. In addition, there is little overlap between the prior art asserted in the two petitions, and what overlap there is—the use of Kawagoe in both petitions—is used in different prior-art combinations in each petition. Compare IPR2024-00673, Paper 4, 5 (asserting Kawagoe alone and in combination with Gupta or Silverbrook), with IPR2024-00674, Paper 4, 5 (asserting Kawagoe in combination with Sakai). Accordingly, we do not exercise our discretion to deny either of the petitions challenging the ’222 patent for being parallel petitions.” slip op. at 5
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 16– 37. However, 35 U.S.C. § 315(b) also provides that the one year time bar “shall not apply to a request for joinder under subsection (c).” See also 37 C.F.R. § 42.122(b). Since the Petition is accompanied by a timely request for joinder (Paper 2) to the instituted proceeding (IPR2023-01244), which we grant as further discussed below (see infra § V), Patent Owner’s argument that the Petition is time-barred under 35 U.S.C. § 315(b) is moot, regardless of whether Petitioner is in privity with time-barred entities.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“statements made during prosecution of the ’195 patent contradict its arguments in the present proceeding. See generally Prelim. Resp. Based on the present record, Patent Owner’s statements during prosecution support a preliminary finding that a graded dopant concentration is enough to teach 9 The examined claims of the ’195 patent generally recited “a unidirectional drift field drawing all minority carriers from said surface layer to said substrate.” Ex. 1020, 286. Patent Owner amended the claims of the ’195 patent to recite “maintain[ing] a single static unidirectional electric drift field to aid the movement of minority carriers from said surface layer to said substrate.” Id. aiding carrier movement in a particular direction. Patent Owner does not dispute that Payne has a drift layer having a static unidirectional electric drift field and a well region having a graded concentration of dopants and a static unidirectional electric drift field at this stage of the proceeding. See generally Prelim. Resp. Patent Owner also does not dispute that Payne’s transistor has a surface layer and a substrate having an area with no active regions. Id. At this stage of the proceeding, Petitioner has the better position.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“statements made during prosecution of the ’195 patent contradict its arguments in the present proceeding. See generally Prelim. Resp. Based on the present record, Patent Owner’s statements during prosecution support a preliminary finding that a graded dopant concentration is enough to teach 9 The examined claims of the ’195 patent generally recited “a unidirectional drift field drawing all minority carriers from said surface layer to said substrate.” Ex. 1020, 286. Patent Owner amended the claims of the ’195 patent to recite “maintain[ing] a single static unidirectional electric drift field to aid the movement of minority carriers from said surface layer to said substrate.” Id. aiding carrier movement in a particular direction. Patent Owner does not dispute that Payne has a drift layer having a static unidirectional electric drift field and a well region having a graded concentration of dopants and a static unidirectional electric drift field at this stage of the proceeding. See generally Prelim. Resp. Patent Owner also does not dispute that Payne’s transistor has a surface layer and a substrate having an area with no active regions. Id. At this stage of the proceeding, Petitioner has the better position.” slip op. at 16
§ 103 obviousnessDiscretionary denialPatents in suitUS 11,121,222 - PTAB · Sep 27, 2024 · IPR2024-00673 · APJ Monica S Ullagaddi · IPR · Institution
The Board instituted review of claims 1–9, 13–28, and 32–42 on all asserted grounds and granted Texas Instruments’ motion to join IPR2023-01242 in an understudy role.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“On the present record, we agree with Petitioner that the two petitions filed to challenge the claims of the ’222 patent will not substantially burden the Board or the parties. The petitions in IPR2024-00673 and IPR2024- 00674 challenge different claims and, on the present record, those claims 8 Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“CTPG”). appear to have different claim scope, as Petitioner argues. Paper 3, 3–4 (arguing that claim 44, challenged in IPR2024-00674, recites “a ‘surface layer,’ a ‘single drift layer,’ and ‘at least one well region disposed in the single drift layer,’ which are not” recited in the claims challenged in IPR2024-00673); Ex. 1001, 4:39–8:39. In addition, there is little overlap between the prior art asserted in the two petitions, and what overlap there is—reliance on Kawagoe in both petitions—is applied in different prior art combinations in each petition. Compare IPR2024-00673, Paper 4, 5 (asserting Kawagoe alone and in combination with Gupta or Silverbrook), with IPR2024-00674, Paper 4, 5 (asserting Kawagoe in combination with Sakai). Accordingly, we do not exercise our discretion to deny either of the petitions challenging the ’222 patent for being parallel petitions.” slip op. at 5
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“III. WHETHER THE PETITION IS TIME-BARRED Pursuant to 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 19– 39. However, 35 U.S.C. § 315(b) also provides that the one-year time bar “shall not apply to a request for joinder under subsection (c).” See also 37 C.F.R. § 42.122(b). Because the Petition is accompanied by a timely request for joinder (Paper 2) to the instituted proceeding (IPR2023-01242), which we grant as further discussed below (see infra § V), Patent Owner’s argument that the Petition is time-barred under 35 U.S.C. § 315(b) is moot, irrespective of whether Petitioner is in privity with time-barred entities.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“statements made during prosecution of the ’195 patent contradict its arguments in the present proceeding. See generally Prelim. Resp. Based on the present record, Patent Owner’s statements during prosecution support a preliminary finding that a graded dopant concentration is enough to teach 13 The examined claims of the ’195 patent generally recited “a unidirectional drift field drawing all minority carriers from said surface layer to said substrate.” Ex. 1016, 286. Patent Owner amended the claims of the ’195 patent to recite “maintain[ing] a single static unidirectional electric drift field to aid the movement of minority carriers from said surface layer to said substrate.” Id. aiding carrier movement in a particular direction. Patent Owner does not dispute that Kawagoe has a graded dopant concentration in the active region at this stage of the proceeding. See generally Prelim. Resp. Patent Owner also does not dispute that Kawagoe’s transistor has carriers in the active region or that the graded dopant concentration of Kawagoe is lowered from the surface to the bottom substrate (Ex. 1007, Fig. 17). See generally Prelim. Resp. At this stage of the proceeding, Petitioner has the better position.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“under the pre-AIA version of 35 U.S.C. § 112, first paragraph and found that “movement of minority carriers is affected by multiple forces and fields” and that “it does not appear that simply the presence of ‘a unidirectional drift field’ in itself can achieve ‘drawing all minority carriers from said surface layer to said substrate.’” Ex. 1016, 289 (emphasis added). Patent Owner responded with the following argument: [A] unidirectional drift (electric) field necessarily affects all the present minority carriers in the same way - moving all minority carriers in the same direction because of the unidirectional drift due to the existence of the electric field. See “Physics and Technology of Semiconductor Devices,” A.S. Grove, pp. 224– 225, John Wiley and Sons, Inc., New York, 1st Edition 1967 (“This same electric field will then be of such direction as to aid the motion of injected holes. Thus the injected minority carriers will now move not only by diffusion but also by drift due to the existence of this electric field.”). Depending on the particular slope of the graded concentration of dopant, all minority carriers are either swept “down” (from the surface layer to the substrate) or “up” (from the substrate to the surface layer). See Applicant’s Figs. 5(b) and 5(c). Id. Patent Owner further argued that the Examiner’s finding appears to not consider that the graded dopant concentration itself creates a “built-in” electrical field that forces the movement of carriers into a particular direction, whereby the “direction” of the electrical field and the resulting direction of the carrier movement depends solely on the slope of the graded concentration of dopant. With regard to the existence of a “built-in” electric field created by a graded dopant density, . . . this inherent “built-in” unidirectional electric field is the additional parameter for ensuring that all minority carriers are being moved in one direction and which parameter the Office Action deemed to be missing from the disclosure. Id. at 289–90 (emphases added). Also, “without conceding its position on this issue,” Patent Owner amended claims to eliminate reference to “all carriers” and instead, refer to “carriers.” 13 Id. at 290. 4. Analysis of Claim 1 At this stage of the proceeding, we determine that Patent Owner’s statements made during prosecution of the ’195 patent contradict its arguments in the present proceeding. See generally Prelim. Resp. Based on the present record, Patent Owner’s statements during prosecution support a preliminary finding that a graded dopant concentration is enough to teach 13 The examined claims of the ’195 patent generally recited “a unidirectional drift field drawing all minority carriers from said surface layer to said substrate.” Ex. 1016, 286. Patent Owner amended the claims of the ’195 patent to recite “maintain[ing] a single static unidirectional electric drift field to aid the movement of minority carriers from said surface layer to said substrate.” Id. aiding carrier movement in a particular direction. Patent Owner does not dispute that Kawagoe has a graded dopant concentration in the active region at this stage of the proceeding. See generally Prelim. Resp. Patent Owner also does not dispute that Kawagoe’s transistor has carriers in the active region or that the graded dopant concentration of Kawagoe is lowered from the surface to the bottom substrate (Ex. 1007, Fig. 17). See generally Prelim. Resp. At this stage of the proceeding, Petitioner has the better position.” slip op. at 18
§ 103 obviousnessDiscretionary denialPatents in suitUS 11,121,222 - Spectrum Solutions, L.L.C. v. Dna Genotek Inc.All claims unpatentablePTAB · Feb 7, 2024 · IPR2022-01347 · APJ Donna M Praiss · IPR · Final written decision
Claims 1, 3–8, 11, and 12 are unpatentable as obvious over each of four grounds: Plante and Cho, with or without Maples, and Plante and Patterson, with or without Maples.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“(POSITA or POSA) “would have had at least a Bachelor’s degree in mechanical engineering, biomedical engineering, or similar technical degree and at least 3 years of experience in the medical device industry, including experience with containers and valves used in disposable medical devices.” Pet. 16 (citing Ex. 1002 ¶ 49). Petitioner further asserts that such a person would have collaborated with a team member with training and experience in the chemical/biological aspects of the invention, having a Ph.D. in microbiology, molecular biology, biochemistry, or related discipline and “at least two years of post-graduate experience in the area of biological sample preservation and nucleic acid extraction, preservation, and analysis.” Id. at 16–17 (citing Ex. 1011 ¶¶ 24–26). Patent Owner does not dispute using Petitioner’s proposed definition. PO Resp. 6.8 We apply Petitioner’s proposed definition because it is consistent with the problems addressed in the ’646 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings on 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, 162 (Fed. Cir. 1985))).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989)). “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Id. (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). “Conversely, a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’” Id. (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). The court in Catalina noted that although no litmus test exists for determining whether to treat a preamble as a limitation, several “guideposts” have emerged from the case law in this area. Id. In particular, guideposts tending to show that the preamble is a claim limitation include: Jepson claiming, dependence on a particular disputed preamble phrase for antecedent basis, when the preamble is essential to understand limitations or terms in the claim body, and when the preamble recites additional structure or steps underscored as important by the specification. Id. On the other hand, the preamble might not constitute a claim limitation when the claim body describes such a structurally complete invention that deleting the preamble phrase does not affect the structure or steps of the claimed invention. Id. at 809. Also, “preambles describing the use of an invention generally do not limit claims because the patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of the structure.” Id.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“the claim must be given their plain meaning unless the plain meaning is inconsistent with the Specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Additionally, ordinary, simple English words whose meaning is clear and unquestionable are to be construed to mean exactly what they say–– absent, of course, any indication that their use in a particular context changes their meaning. Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1372 (Fed. Cir. 2004). The abstract of the ’646 patent describes isolating and preserving cells from bodily fluids “for cellular analysis” and “genomic studies.” Ex. 1001, code (57). In the field of the disclosure portion of the ’646 patent, cells isolated from bodily fluids are preserved “for studies in any of: functional genomic and epigenetic studies, and biomarker discovery.” Id. at 1:25–29. In the background section, the ’646 patent describes the interest in “large-scale epigenetic research” for the purpose of “understanding the mechanisms of gene-environment interactions” suggesting that “epigenetic mechanisms may provide a molecular memory of environmental experiences.” Id. at 1:60–67. The background section further describes the challenges of collecting bodily fluids, such as saliva, is that it is a digestive fluid that can be rich in proteases and that existing solutions used to stabilize cells from blood, which is a transporter fluid, “will not protect cells from proteases found in some bodily fluids, such as saliva.” Id. at 3:24–36, 4:43–47. The detailed description section of the ’646 patent discloses “a solution for preserving cells in one or more bodily fluids, such as saliva and urine” that “may be beneficial for further separation into cell types and downstream molecular analysis” and “allows for storage of cells in the bodily fluid to retain their antigenicity and cellular architecture.” Id. at 16:9–15. The Specification describes some embodiments of solutions for preserving cells in one or more bodily fluids where the solutions contain a chemical fixing agent, a protease inhibitor, an antimicrobial agent, serum proteins, and are buffered to preferred pH ranges. Id. at 16:15–22. Thus, the plain meaning of “preserving a biological sample,” consistent with the ’646 patent disclosure focused on maintaining the architecture of cells contained in a bodily fluid that may include digestive proteases for further study downstream, is “preserving the integrity of a cell contained in a bodily fluid sample.”” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We agree that it is not necessary for us to construe these claim terms because neither party asserts that they are material to the asserted grounds in the Petition. 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.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 18
Patent outcomesUS 11,002,646 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,002,646 - 10x Genomics, Inc. v. The University Of ChicagoNo claims unpatentablePTAB · Nov 15, 2016 · IPR2015-01157 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1–31 were not shown unpatentable because the evidence did not establish the claimed surface-tension relationship under either instituted obviousness ground.
RulingsFinal written decision- Strike new argumentNew argument disregardedNew argument consideredMixed
“proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)). For this reason, our Rules require that “[a] reply may only respond to arguments raised in the corresponding opposition . . . or patent owner response.” See 37 C.F.R. § 42.23(b). This reasoning applies equally to reply declarations, submitted to support a party’s reply brief. See Intelligent Bio-Sys., Inc., 821 F.3d at 1369–70 (affirming exclusion of reply brief and supporting declaration). Our Trial Practice Guide provides that “a reply that raises a new issue or belatedly presents evidence will not be considered. . . . The Board will not attempt to sort proper from improper portions of a reply.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“Trial Practice Guide”). Of course, “the introduction of new evidence in the course of the trial is to be expected in inter partes review trial proceedings.” Genzyme Therapeutic Prod. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366 (Fed. Cir. 2016). That new evidence, however, must be responsive to an argument raised by the opposing party in its opposition brief. By contrast, when “new evidence necessary to make out a prima facie case for . . . unpatentability” or “new evidence that could have been presented in a prior filing” is introduced, these are indications that a new issue has been raised improperly. See Trial Practice Guide, 77 Fed. Reg. at 48,767.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“The theory advanced by 10X—that the surface tension relationship can be inferred from the lack of adhesion of droplets—suffers from at least two failings. First, as discussed above, to establish the presence of fluorinated surfactants with a hydrophilic head group, 10X relies on paragraph 117 of Quake, which it argues discloses surfactants residing at the oil-water interface between the droplets and the carrier fluid. Indeed, this reliance is crucial to its inference that the surfactants have a hydrophilic head group. But when it comes to inferring that the claimed surface tension relationship is present, 10X points to a different disclosure of surfactants coating the channel walls. As counsel conceded, the disclosures of paragraphs 117 and 118 “disclose two separate uses of surfactants.” Tr. 21:8–9. 10X cannot have it both ways, arguing that the hydrophilic head group is implied because the surfactant is at the oil-water interface, while also arguing that the surface tension relationship is implied because the surfactant coats the channel walls. Furthermore, even if we were to accept 10X’s reliance on the surfactant coating the channel walls, its proposed inference is not supported by the record or logic. While it may be the case that if the surface tension relationship is present, droplets do not adhere to the wall, to infer the reverse would be affirming the consequent.9 In other words, we cannot infer from the fact that droplets do not adhere to the channel wall that the claimed surface tension relationship is necessarily present, because there are other possible causes of non-adherence. As Chicago correctly notes, Quake discloses multiple reasons why a droplet may not adhere to a channel wall, including droplet shape (“about four times as long as [it is] wide”) and size (“[d]roplet adherence is overcome when the droplet is massive enough in relation to the channel size”). PO Resp. 24–25 (citing Ex. 1004 ¶ 92).” slip op. at 25
- ExcludeNot reached
“D. Motion to Exclude Chicago moves to exclude various exhibits filed by 10X, namely Exhibits 1037, 1043, 1045, 1047, 1050, 1051–1056, 1072, 1081, 1088–1092, and portions of Dr. Huck’s testimony (Exs. 1002 and 1087). Mot. 1. The basis for the Motion is Chicago’s prior objections to these exhibits on grounds of hearsay (FRE 802), prejudice (FRE 403), or unreliability (FRE 702). Even having considered these objected-to exhibits, however, we have found in Chicago’s favor on the merits of 10X’s patentability challenge. As such, the grant or denial of Chicago’s Motion would have no effect on the outcome of the proceeding. We, therefore, dismiss the Motion to Exclude as moot.” slip op. at 28
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for patent owner
“We agree with Chicago that Quake does not explicitly disclose that the surfactants of paragraph 117 have a hydrophilic head group, and that “surfactants” in general include surface active agents both with and without a hydrophilic head group. Nevertheless, we find that a person of skill in the art would understand the surfactants disclosed in paragraph 117 may include a hydrophilic head group. Dr. Olmsted notes, and Chicago does not dispute, that the other surfactants listed as “exemplary”—namely, Tween and Span— have hydrophilic head groups. Ex. 1085 ¶ 27. Furthermore, the sentence characterizes the surfactants as “soluble in oil relative to water,” from which Dr. Olmsted concludes that the oil-water boundary is the surface where the surfactants are expected to reside. Id. ¶ 29. While Chicago is correct that other portions of Quake—for example, as discussed extensively above, paragraph 118—disclose surfactants that coat the channel walls, we do not understand paragraph 117’s surfactants to be so limited.8 For this reason, we find credible Dr. Huck’s and Dr. Olmsted’s testimony that a person of ordinary skill in the art would understand paragraph 117’s disclosure to refer to surfactants having a hydrophilic head group. We find that Quake discloses fluorinated surfactants that reside at the droplet-carrier fluid interface, and which have a hydrophilic head group.” slip op. at 23
Patent outcomesUS 8,889,083 not shown unpatentable§ 103 obviousnesscites GrahamPatents in suitUS 8,889,083 - Bio-Rad Laboratories, Inc. v. California Institute Of Technology And Fluidigm CorporationAll claims unpatentablePTAB · Apr 21, 2016 · IPR2015-00009 · APJ Donna M Praiss · IPR · Final written decision
Claims 1, 2, 5–11, 18, 19, 30, 31, 46, 47, and 49–51 are unpatentable as obvious over Stewart II and Burns; additional grounds cover claims 49, 51 and 18, 19, 46, 47.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Skill in the Art In determining the level of skill in the art, various factors may be considered, including “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). There is evidence in the record before us that reflects the knowledge level of a person with ordinary skill in the art. Petitioner’s Declarant, Dr. Anna, attests that a person with ordinary skill in the art would “hav[e] at least the equivalent of a Bachelor’s degree in engineering, physics, or chemistry and two years of academic, research, or industry experience related to fluid mechanics, fluid dynamics, or microfluidics.” Ex. 1002 ¶ 29. Patent Owner does not dispute Dr. Anna’s assessment of the level of ordinary skill. PO Resp. 3. Thus, we adopt Petitioner’s Declarant’s attestation as to the level of skill in the art.” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner essentially contends that Dr. Anna’s deposition and declaration statements in this proceeding concerning Stewart II are inconsistent with statements in her earlier publication indicating that the named inventors on the ’503 patent were the first to report droplet formation in a T-shaped device. Dr. Anna explained she was unaware of Stewart II at the time of her publication and that, even in view of Stewart II, her published statements about the Thorsen 2001 Article being the first to report on microdroplet formation in a T-shaped device would still be accurate, because Stewart II was not part of the body of work reported in the academic literature. Ex. 2018, 31:9–11, 59:21–60:3, 61:2–12, 63:11–21. The veracity of Dr. Anna’s explanation is supported by Patent Owner’s expert, Dr. Squires, who testified at deposition that he does not typically include patents in his own academic review papers and did not cite the patent literature in his own papers on the subject of microfluidics. Ex. 1020, 31:5–9, 37:19– 38:21, 40:20–41:17. Dr. Anna’s deposition testimony, in fact, clarifies any apparent inconsistency between her declaration and the Thorson 2001 Article. Accordingly, we are not persuaded that Dr. Anna’s testimony should be given diminished weight in light of her prior statements about the Thorson 2001 Article.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“In our Decision on Institution, we interpreted two claim terms of the ’503 patent as shown below: Table 1 Term Construction sheared severed or broken off dispersed droplets of sample fluid of monodisperse sample fluid droplets substantially uniform size Dec. on Inst. 6–7. The parties do not challenge our claim constructions. Consequently, for purposes of this Final Written Decision, we adopt the constructions as stated in Table 1 in accordance with the analysis set forth in our Decision on Institution. Id.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We are persuaded that Petitioner meets its burden of showing that the selection of known channel sizes for microfluidic devices as disclosed in Burns would have been obvious as a predictable variation in the same field because the dimensions of Burns are less than 267 microns as directed by Stewart II. KSR, 550 U.S. at 417. The combination is supported by the Anna Declaration. Dr. Anna testified that the fluid behavior in the Stewart II device would be “substantially the same” in a device having the dimensions disclosed by Burns. Ex. 1002 ¶ 50 (“fluid behavior (including flow characteristics, fluid forces, etc.) would be substantially the same in devices designed for droplets of less than 267 microns as they would be in devices designed for droplets of less than 100 microns.”). Dr. Squires’s testimony that the combination of Burns with Stewart II would have been unpredictable with no reasonable expectation of success due to multiple factors affecting droplet formation is not supported by the record. See Ex. 2019 ¶¶ 23–27, 29, 30, 37, 38. Dr. Squires’s opinion is based on Stewart II being unbelievable because it does not disclose operating data. Id. at ¶¶ 29– 30. Referring to Burns, Dr. Squires further states “[n]or does the mere fact that channels with dimensions smaller than 100 microns could be fabricated at the time of invention provide a basis for one of ordinary skill in the art to believe that Stewart II’s device would operate as described by Stewart II when using channels with dimensions of 100 microns or less.” Id. at ¶ 37. The formation of microdroplets, however, is disclosed in both Stewart II and Burns. Stewart II discloses droplet formation in a microfluidic device at dimensions less than 267 microns in diameter. Ex. 1004, 3–4. Burns discloses droplet formation in a microfluidic device at the claimed dimensions. Ex. 1005, 7. While multiple factors may affect droplet formation, the formation of droplets in devices having a channel that is less than 267 microns in diameter (Stewart II) or in the claimed range (Burns) is supported by the evidence.” slip op. at 21
Patent outcomesUS 7,294,503 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,294,503 - Bio-Rad Laboratories, Inc. v. California Institute Of Technology And Fluidigm CorporationAll claims unpatentablePTAB · Apr 21, 2016 · IPR2015-00010 · APJ Donna M Praiss · IPR · Final written decision
Claims 1–5 and 10–17 are unpatentable as obvious over Stewart II and Burns.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“declaration statements in this proceeding concerning Stewart II are inconsistent with statements in her earlier publication indicating that the named inventors on the ’539 patent were the first to report droplet formation in a T-shaped device. Dr. Anna explained she was unaware of Stewart II at the time of her publication and that, even in view of Stewart II, her published statements about the Thorsen 2001 Article being the first to report on microdroplet formation in a T-shaped device would still be accurate because Stewart II was not part of the body of work reported in the academic literature. Ex. 2018, 31:9–11, 59:21–60:3, 61:2–12, 63:11–21. The veracity of Dr. Anna’s explanation is supported by Patent Owner’s expert, Dr. Squires, who testified at deposition that he does not typically include patents in his own academic review papers and did not cite the patent literature in his own papers on the subject of microfluidics. Ex. 1017, 31:5–9, 37:19– 38:21, 40:20–41:17. Dr. Anna’s deposition testimony, in fact, clarifies any apparent inconsistency between her declaration and the Thorsen 2001 Article. Accordingly, we are not persuaded that Dr. Anna’s testimony should be given diminished weight in light of her prior statements about the Thorson 2001 Article. Regarding hypothetical modifications to the Stewart II device that Dr. Anna allegedly could not answer during deposition, Patent Owner asserts Dr. Anna was “asked to discuss the effect that reducing the channel size would have on Stewart II’s device.” PO Resp. 10–11 (citing Ex. 2018, 113:4–115:5, 109:24–110:13). Patent Owner’s questions, however, were hypotheticals concerning contamination or pressure, which, Dr. Anna testified, required additional information about the nature of the contamination. Ex. 2018, 113:4–6, 113:11–14, 114:9–12. Patent Owner further asserts that Dr. Anna was not able to explain “how one of ordinary skill in the art would understand the dimensions and operation of SII’s device in light of the disclosure it works at both 10nl and 1L volumes.” PO Resp. 10 (citing Ex. 2018, 107:21–109:16). That assertion is unpersuasive, because the questions presented to Dr. Anna were directed to the forces that govern droplet formation at 10nl and 1L; Dr. Anna testified that the relevant forces were the same, specifically, viscous forces, capillary forces, and inertia. Ex. 2018, 107:21–108:2, 108:10–19. We do not find Dr. Anna’s deposition testimony to undermine the credibility of Dr. Anna’s Declaration in this proceeding because the questions asked of the witness were fairly answered. Therefore, after considering arguments and evidence by both Petitioner and Patent Owner, we are not persuaded that Dr. Anna’s testimony is entitled to little or no weight.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Skill in the Art In determining the level of skill in the art, various factors may be considered, including “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). There is evidence in the record before us that reflects the knowledge level of a person with ordinary skill in the art. Petitioner’s Declarant, Dr. Anna, attests that a person with ordinary skill in the art would “hav[e] at least the equivalent of a Bachelor’s degree in engineering, physics, or chemistry and two years of academic, research, or industry experience related to fluid mechanics, fluid dynamics, or microfluidics.” Ex. 1002 ¶ 28. Patent Owner does not dispute Dr. Anna’s assessment of the level of ordinary skill. PO Resp. 3. Thus, we adopt Petitioner’s Declarant’s attestation as to the level of skill in the art.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“the evidence is that the selection of known channel sizes for microfluidic devices as disclosed in Burns would have been obvious as a predictable variation in the same field, because the dimensions of Burns are less than 267 microns as directed by Stewart II. KSR, 550 U.S. at 417. The combination is supported by the Anna Declaration. Dr. Anna testified that the fluid behavior in the Stewart II device would be “substantially the same” at the dimensions disclosed by Burns. Ex. 1002 ¶ 47 (“fluid behavior (including flow characteristics, fluid forces, etc.) would be substantially the same in devices designed for droplets of less than 267 microns as they would be in devices designed for droplets of less than 100 microns.”). See Ex. 2019 ¶¶ 23–27, 29, 30, 37, 38. Dr. Squires’s opinion is based on Stewart II being unbelievable because it does not disclose operating data. Id. at ¶¶ 29– 30. Referring to Burns, Dr. Squires further states “[n]or does the mere fact that channels with dimensions smaller than 100 microns could be fabricated at the time of invention provide a basis for one of ordinary skill in the art to believe that Stewart II’s device would operate as described by Stewart II when using channels with dimensions of 100 microns or less.” Id. at ¶ 37. The formation of microdroplets, however, is disclosed in both Stewart II and Burns. Stewart II discloses droplet formation in a microfluidic device at dimensions less than 267 microns in diameter. Ex. 1004, 3–4. Burns discloses droplet formation in a microfluidic device at the claimed dimensions. Ex. 1005, 7. While multiple factors may affect droplet formation, the formation of droplets in devices having a channel that is less than 267 microns in diameter (Stewart II) or in the claimed range (Burns) is supported by the evidence.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We are not persuaded that Burns teaches away from the asserted combination as argued by Patent Owner. See PO Resp. 26. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). According to Patent Owner, the operation of Burns’s system showing a droplet in contact with a channel wall is incompatible with Stewart II in two ways: (1) Stewart II requires a continuous phase between the channel and the dispersed phase to reduce contamination by the reactants in the dispersed phase, and (2) Stewart II requires droplets to be spherical. PO Resp. 26–28. These distinctions between the two references do not amount to discouraging one skilled in the art from the path leading to the claimed invention. Both Burns and Stewart II address contamination of the walls and disclose ways in which to reduce contamination, including making the walls smooth and washing them. Ex. 1005, 108; Ex. 1004, 2, 7. The common objective of Burns and Stewart II would have provided a further reason to combine the references, rather than discouraging the combination. In addition, the evidence does not support a particular droplet geometry being critical to the microfluidic device of Stewart II, as asserted by Patent Owner. See PO Resp. 28. Dr. Squires testified that the droplets shown in Figure 1 of Stewart could have alternate shapes. Ex. 1017, 143:11–13.” slip op. at 21
Patent outcomesUS 8,252,539 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,252,539 - 10x Genomics, Inc. v. The University Of ChicagoAdverse judgmentPTAB · Feb 3, 2016 · IPR2015-01162 · APJ Donna M Praiss · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and ordered claims 1–13 cancelled.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“DISCUSSION Under 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Here, Patent Owner requests cancellation of all claims and entry of adverse judgment. Paper 20, 1. Under these circumstances, entry of judgment adverse to the Patent Owner and cancellation of claims 1–13 is appropriate.” slip op. at 2
NonePatents in suitUS 8,273,573 - SK Innovation Co., Ltd. v. Celgard, LLCSome claims unpatentablePTAB · Sep 25, 2015 · IPR2014-00679 · APJ Francisco C Prats · IPR · Final written decision
Claims 7–9 are unpatentable as obvious over Tojo and Lundquist, and claim 10 as obvious over Tojo and Kejha; claims 1–6, 11, and 12 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDisclaimer not foundDecided for petitioner
“Our reviewing court, however, has “cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). Patent Owner does not direct us to any specific disclosure in the Specification of the ’586 patent clearly limiting or defining dendrite blocking as impeding dendrite growth for the entire intended life of a rechargeable battery. Accordingly, because the ’586 patent does not clearly disclaim the scope of dendrite blocking in the manner Patent Owner advances, we are not persuaded that we should limit the claims to the asserted primary goal, or preferred result, of the ’586 patent. We, therefore, decline to adopt Patent Owner’s proffered claim construction.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“It is well settled that the “very essence of inherency is that one of ordinary skill in the art would recognize that a reference unavoidably teaches the property in question.” Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed. Cir. 2009) (emphasis added); see also In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (“Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”). Given the evidence discussed above that the pores in Tojo’s ceramic composite layer would allow dendrite growth, Petitioner does not persuade us that, because Tojo’s ceramic composite layer contains the inorganic particles and matrix material required by claim 1, Tojo unavoidably teaches that its ceramic composite layer is adapted to block dendrite growth enough to prevent electronic shorting. See Reply 4–6. Moreover, even assuming for argument’s sake that larger dendrites would be blocked by Tojo’s pores (see id. at 8), Petitioner concedes that dendrites may grow at an atomic scale (id. at 7), and the evidence discussed above supports a finding that Tojo’s pores would not block dendrites of that size from producing an electronic short.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayMotivation foundTeaching away not foundDecided for petitioner
“A reference does not teach away, however, “if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (citing In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Patent Owner does not direct us to disclosures in Tojo that clearly or specifically criticize or discredit the use of fluoropolymers as the matrix material in its ceramic composite layer. Moreover, as noted above, and as Petitioner points out (Reply 13–14), Tojo’s teaching regarding its matrix material is rather expansive. See 1007 ¶ 22 (“The binders are not particularly limited, as long as they are conventionally in use, and examples include various polyesters, polyolefins, rubbers, acrylic resins, or the like . . . .”) (emphases added). Given this expansive disclosure, we agree with Petitioner that an ordinary artisan would not have viewed Tojo’s failure to include fluoropolymers in its list of binder materials as a teaching away, even in light of the earlier mention of fluoropolymers as known separator materials.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Because Tojo teaches that essentially any conventional polymeric material used in batteries can be used as its inorganic particle binder material, and because Lundquist, in turn, teaches that PTFE copolymers are useful as a binder material for inorganic particles in a battery separator containing the same two layers contained in Tojo’s separator, we find that that an ordinary artisan would have been prompted to use Lundquist’s PTFE copolymers as the binder material in Tojo’s separator. Patent Owner’s arguments and evidence do not persuade us to the contrary.” slip op. at 26
Patent outcomesUS 6,432,586 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,432,586 - SK Innovation Co., Ltd. v. Celgard, LLCAll claims unpatentablePTAB · Sep 25, 2015 · IPR2014-00680 · APJ Francisco C Prats · IPR · Final written decision
Claims 7–11 are unpatentable as obvious over Tsukamoto, Lundquist, and Tojo because the references teach the claimed separator features and provide a reason to combine them.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“A. Claim Construction In an inter partes review, the Board interprets claims in an unexpired patent using the “broadest reasonable construction in light of the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b); In re Cuozzo Speed Tech., LLC, 793 F. 3d 1268, 1275 (Fed. Cir. 2015). Under that standard, the Board applies to claim terms their ordinary and customary meaning, as would be 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 conclude that, for the purposes of this decision, based on the parties’ contentions and the record developed during trial, no claim terms require express construction. Terms in the challenged claims will be given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure of the ’586 patent. See id.” slip op. at 7
- Skill levelSkill level board ownOther
“As to the level of ordinary skill in the pertinent art, the parties’ experts advance slightly different opinions. See Ex. 1004 ¶¶ 26–27 (Arnold Decl.); Ex. 2002 ¶¶ 74–75 (White Decl.). Nonetheless, neither party specifically asserts error in the opinion of the other party’s expert, and neither party asserts specifically that the conclusion of obviousness turns on adoption of a particular level of ordinary skill. In that regard, both experts generally agree that an ordinarily skilled artisan at the critical time would have had a degree in chemistry, physics, material science, or chemical engineering; at least two to three years of experience in the battery industry or research and development of lithium batteries; and knowledge of the components and problems of lithium batteries, including dendrite growth, electronic shorting, and separators. See id. When evaluating the parties’ contentions regarding the scope and content of the prior art, and the differences between the prior art and the challenged claims, we take into consideration both parties’ assertions regarding the level of ordinary skill. We note also that the level of ordinary skill in the art may be evidenced by the cited references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“We also find that an ordinary artisan would have been prompted to use Tojo’s polyolefinic microporous membrane as the separator element in Tsukamoto’s battery. Specifically, as Petitioner discusses, and as noted above, Tojo teaches that its microporous membrane has the desirable properties of quick pore closure and excellent shutdown function, which halt battery reactions so as to avoid excessive temperature increase. Pet. 49–50; Ex. 1007 ¶¶ 3, 13, 15. As Petitioner also discusses, Tsukamoto recognizes the concerns of battery overheating. Pet. 51–52; Ex. 1032 ¶¶ 3, 29. Given these teachings, an ordinary artisan would have been prompted to use Tojo’s microporous polyolefinic membrane as the separator element in Tsukamoto’s battery, to impart to Tsukamoto’s battery the desirable properties of Tojo’s membrane. Moreover, because using Tojo’s membrane as the separator component in Tsukamoto’s battery assembly would produce, between the battery’s electrodes, a combination of layers having all of the features required by claim 7 of the ’586 patent, the combination of Tsukamoto and Tojo suggests a separator having all of the features required by claim 7.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“We are not persuaded. As discussed above, the teachings of the cited references support Petitioner’s contention that an ordinary artisan would have been prompted to use Tojo’s separator membrane in Tsukamoto’s battery. Because the teachings in the prior art support Petitioner’s posited combination of references, Petitioner’s contentions of obviousness are not based on improper hindsight. Moreover, even if the cited references do not address precisely the same problems, as Petitioner contends (Reply 5–6), each of Tsukamoto, Tojo, and Lundquist are in the field of lithium battery improvement, and address the issue of avoiding the undesirable effects of increased battery temperature. See Ex. 1032 ¶¶ 2–3 (Tsukamoto discussing lithium batteries and potential battery fires due to temperature increase); Ex. 1007 ¶ 3 (Tojo discussing separator shutdown function to prevent excessive temperature increase in high energy lithium batteries); Ex. 1008, 2:47–53 (Lundquist discussing use of battery separator in lithium batteries to stop thermal runaway and explosive reaction); see also In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (A reference is analogous prior art when it is “from the same field of endeavor, regardless of the problem addressed . . . .”) (emphasis added).” slip op. at 15
Patent outcomesUS 6,432,586 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,432,586 - Canon Inc. v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Aug 19, 2015 · IPR2014-00631 · APJ Richard E Rice · IPR · Final written decision
Claims 1–24 are unpatentable: claims 1, 2, 8, 11, 13–16, 19–21, and 24 as anticipated by Mishima; claims 3–7, 9, 10, 12, and 15–23 under specified obviousness combinations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Patent Owner’s argument that we should limit “selecting” in claim 1 to “user . . . selecting” (PO Resp. 3) is not persuasive for the reasons that we provided in the Decision to Institute. Inst. Dec. 8–9. In addition, Patent Owner’s proposed claim construction would exclude embodiments in which the image capture device, itself, selects an automatic trigger condition. E.g., Ex. 1001, 10:28–32 (“The camera automatically enters the automatic response mode as soon as power is applied unless otherwise instructed by the operator. Alternately, configuration tools can be provided to select from various sensed conditions.”), 12:23–26 (“Once one or more subjects of interest have been stored, digital image capture device 10 can employ these subjects of interest as image capture triggers whenever it is placed in automatic response mode.”). Patent Owner has not explained sufficiently why “selecting” should be interpreted to exclude such embodiments. See, e.g., Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed. Cir. 2008) (holding that, at least where claims can be interpreted reasonably to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence to the contrary). For the above reasons, we determine that the term “selecting” carries its ordinary and customary meanings, and is not limited to acts performed by a user of the image capture device; and we maintain our interpretation.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundTerm construed board ownDecided for petitioner
“[D]isavowal requires that ‘the specification [or prosecution history] make[] clear that the invention does not include a particular feature.’” GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (quoting SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)). Applying that standard in this case, we are not persuaded that the prosecution history makes clear that claim 1 does not include “entering” of a threshold level by the image capture device itself. The statement on which Patent Owner relies is only part of a sentence; the full sentence reads as follows: In amended Claim 1, a trigger condition and associated threshold [are] selected by a user in a step prior to image capture, the image capture device then monitors a signal corresponding to the trigger condition so that the image capture device can automatically determine when an image should he captured without intervention by a user. Ex. 1015, 6 (emphasis added). The thrust of that sentence, as explained in the paragraph that follows it in the prosecution history, is that, in claim 1, “the timing of image capture[] is determined automatically by the image capture device without the involvement of the user.” Id. (emphasis added). The Beck reference is not distinguished by the applicant on the basis of how the threshold level is selected, but rather on how an image is captured “after a trigger condition and associated threshold ha[ve] been satisfied.” Id. As such, whether “a trigger condition and associated threshold” are selected by a user, or by the device itself, is not central to applicant’s argument distinguishing the Beck reference. Accordingly, the statement that “a trigger condition and associated threshold [are] selected by a user” does not evidence a clear intent to disavow claim scope, contrary to Patent Owner’s contention. For the reasons discussed above, we determine that the broadest slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“In opposition, Patent Owner argues that Mishima fails to disclose entering a threshold level corresponding to the automatic trigger condition, because, as asserted by Dr. Bovik, “the user is not involved in setting the threshold in any way.” PO Resp. 31 (citing Ex. 2006 ¶ 72). As discussed above, however, the user does not need to be involved in setting the threshold level under our interpretation of “entering.” See supra Section II.A.4. That is, the term “entering” is not limited to acts of entering performed by a user, but encompasses acts of entering performed by the image capture device itself. See id. We determine that Petitioner has made a sufficient showing that Mishima discloses “entering a threshold level.” See PO Resp. 32. In particular, Petitioner has shown that, when the user sets Mishima’s device in the automatic mode and selects a reference image for comparison with a captured image or photographic subject, the device sets or selects a threshold level, such as Kn, P, or 40%, and, thus, satisfies the “entering a threshold level” requirement under our claim construction. See Pet. 13–15; Pet. Reply 13–15; Ex. 1002 ¶ 43; Ex. 1016 ¶¶ 13, 48–50; Ex. 1005 ¶ 40 (describing “setting a threshold value Kn” based on reference brightness value K0), ¶ 90 (setting or selecting “X < P” to determine a match, where P is a threshold value and X is the average square of differences between the part that is subject to recognition and the user-selected image pattern); ¶ 114 (describing setting a threshold level as “40%” of “the number of pixels that produce 1”). Moreover, we are not persuaded by Dr. Bovik’s testimony that “the user [in Mishima] is not involved in setting the threshold in any way.” See Ex. 2006 ¶ 72. Dr. Bovik does not address adequately Mishima’s disclosure that the user places the camera in the automatic imaging mode and selects a reference image6 for comparison with a captured image or photographic subject. See, e.g., Ex. 1005 ¶¶ 26, 37, 38, 83, 85, 87, 97, 98, 107, 108; see Pet. Reply 14 (citing Ex. 1005 ¶¶ 37, 83). Those acts satisfy “selecting an automatic image trigger condition.” See Pet. 14; Ex. 1002 ¶ 42. Dr. Bovik does not discuss whether those acts also satisfy “entering a threshold level corresponding to the automatic image trigger condition.” As such, Dr. Bovik’s analysis of Mishima is inconsistent with his” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“In opposition, Patent Owner argues that a person of skill in the art would not have combined the teachings of Mishima and Misawa because: (1) the devices of Mishima and Misawa are not similar as Petitioner contends and, in fact, operate in fundamentally different ways, (2) the reasons Petitioner provides for combining Mishima and Misawa are undermined by the teachings of those references, and (3) Misawa would discourage one of ordinary skill from combining it with Mishima to arrive at the inventions of claims 3-6. PO Resp. 34. Patent Owner argues, for example, that Misawa “has nothing to do with automatic image trigger conditions, thresholds, or automatic image capture.” Id. at 35 (citing Ex. 2006 ¶ 91). We are persuaded by Petitioner, however, that Patent Owner’s argument is largely unresponsive to Petitioner’s asserted reason to combine, which “does not rely on Misawa for automatic image capture, but for an example user interface for creating an image database.” See Pet. Reply 15. We also are persuaded that a person of ordinary skill “would have looked to Misawa’s user interface as an example of how to construct/control image feature database 80 used in Mishima’s camera.” Id. at 16 (citing Ex 1005 ¶¶ 80, 94); see Ex. 1016 ¶¶ 53–55. Patent Owner has not persuaded us that using Misawa’s selection/extraction process in Mishima’s camera would have been outside the skill in the art, or yielded an unpredictable result. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Further, we are not persuaded by Patent Owner’s argument that Misawa would have led one in a divergent direction and, thus, teaches away from the recited method. See PO Resp. 44–45 (citing Ex. 2006 ¶¶ 108–111). Patent Owner has not shown that Misawa criticizes, discredits, or otherwise discourages investigation into the invention claimed. See Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009 (“A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed.”) (emphases added; citation omitted). Patent Owner makes essentially the same arguments for claims 4–6 as” slip op. at 37
Patent outcomesUS 7,817,914 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,817,914
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.