- HTC Corporation / HTC America, Inc. v. Advanced Audio Devices, LLCAll claims unpatentablePTAB · Dec 29, 2015 · IPR2014-01155 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1, 3, 6, 7, 9, 11, 25, 30, 59, 77, 82, 85, and 117–122 are unpatentable under § 103 over the stated prior-art combinations.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedOther
“Based on the combination of references proposed by HTC, Mr. Schmandt testifies that a person of ordinary skill in the art would have recognized the advantages of Sound Blaster’s functionality, and sought to incorporate those features into Lucente. Ex. 1009 ¶ 240 (“a person of ordinary skill in the art would be motivated to combine a system with the flexibility, portability, and ease of use of Lucente with the audio 30 management capabilities of Sound Blaster”); id. at ¶ 242 (“it would be obvious to design a system with physical (e.g. push-button) controls to carry out the various functions designed by Sound Blaster, particularly in view of Lucente and Ozawa”) (emphasis added). The record reflects that such a modification would not have been outside the level of ordinary skill, which both experts define similarly. Ex. 1009 ¶ 25 (Schmandt: at least a bachelor’s degree in electrical engineering, computer science, or equivalent, and 1–3 years of experience in designing and programming consumer electronic devices); Ex. 2007 ¶ 8 (McAlexander: bachelor’s degree in electrical engineering or computer engineering, and at least two years of experience in the design of audio systems). This level of skill is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). AAD’s focus on whether the Sound Blaster hardware sound card could be installed on the Lucente device, or whether the Sound Blaster software could run on Lucente’s operating system, ignores that a person of ordinary skill is a “person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. It would not have been outside the level of ordinary skill in the art, as defined by both experts, to modify the device of Lucente to have the functionality described in Sound Blaster—including grouping and ordering songs—as well as the ability to download songs as described in Ozawa. We, therefore, find that a person of ordinary skill in the art would have had reason to combine the disclosures of Sound Blaster, Lucente, and Ozawa, and would have had a reasonable expectation of success in doing so.” slip op. at 30
- ExcludeMotion to exclude, deniedDenied
“Exclude 1. Pursuant to our Rules, a motion to exclude evidence must be filed to preserve any previously-made objections to evidence. 37 C.F.R. § 42.64(c). The motion must identify where in the record the objections were made, and must explain the objections. Id. We note that AAD does not identify where in the record its objections to evidence were made prior to their being the basis of the Motion to Exclude, in violation of Rule 42.64(c). Indeed, the Board is aware of AAD’s prior objections only because they were quoted in HTC’s opposition to the Motion to Exclude. For this reason, AAD’s Motion is procedurally deficient, and may be denied on this basis alone.” slip op. at 25
- Skill levelSkill level board ownDecided for petitioner
“management capabilities of Sound Blaster”); id. at ¶ 242 (“it would be obvious to design a system with physical (e.g. push-button) controls to carry out the various functions designed by Sound Blaster, particularly in view of Lucente and Ozawa”) (emphasis added). The record reflects that such a modification would not have been outside the level of ordinary skill, which both experts define similarly. Ex. 1009 ¶ 25 (Schmandt: at least a bachelor’s degree in electrical engineering, computer science, or equivalent, and 1–3 years of experience in designing and programming consumer electronic devices); Ex. 2007 ¶ 8 (McAlexander: bachelor’s degree in electrical engineering or computer engineering, and at least two years of experience in the design of audio systems). This level of skill is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). AAD’s focus on whether the Sound Blaster hardware sound card could be installed on the Lucente device, or whether the Sound Blaster software could run on Lucente’s operating system, ignores that a person of ordinary skill is a “person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. It would not have been outside the level of ordinary skill in the art, as defined by both experts, to modify the device of Lucente to have the functionality described in Sound Blaster—including grouping and ordering songs—as well as the ability to download songs as described in Ozawa. We, therefore, find that a person of ordinary skill in the art would have had reason to combine the disclosures of Sound Blaster, Lucente, and Ozawa, and would have had a reasonable expectation of success in doing so.” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“In our view, HTC’s proposed analysis better comports with the “expansive and flexible approach” to obviousness set forth by the Supreme Court in KSR. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Our inquiry is, therefore, not “whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). Based on the combination of references proposed by HTC, Mr. Schmandt testifies that a person of ordinary skill in the art would have recognized the advantages of Sound Blaster’s functionality, and sought to incorporate those features into Lucente. Ex. 1009 ¶ 240 (“a person of ordinary skill in the art would be motivated to combine a system with the flexibility, portability, and ease of use of Lucente with the audio 30 management capabilities of Sound Blaster”); id. at ¶ 242 (“it would be obvious to design a system with physical (e.g. push-button) controls to carry out the various functions designed by Sound Blaster, particularly in view of Lucente and Ozawa”) (emphasis added). The record reflects that such a modification would not have been outside the level of ordinary skill, which both experts define similarly. Ex. 1009 ¶ 25 (Schmandt: at least a bachelor’s degree in electrical engineering, computer science, or equivalent, and 1–3 years of experience in designing and programming consumer electronic devices); Ex. 2007 ¶ 8 (McAlexander: bachelor’s degree in electrical engineering or computer engineering, and at least two years of experience in the design of audio systems). This level of skill is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). AAD’s focus on whether the Sound Blaster hardware sound card could be installed on the Lucente device, or whether the Sound Blaster software could run on Lucente’s operating system, ignores that a person of ordinary skill is a “person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. It would not have been outside the level of ordinary skill in the art, as defined by both experts, to modify the device of Lucente to have the functionality described in Sound Blaster—including grouping and ordering songs—as well as the ability to download songs as described in Ozawa. We, therefore, find that a person of ordinary skill in the art would have had reason to combine the disclosures of Sound Blaster, Lucente, and Ozawa, and would have had a reasonable expectation of success in doing so.” slip op. at 30
Patent outcomesUS 7,289,393 unpatentable§ 103 obviousnesscites GrahamPatents in suitUS 7,289,393 - HTC Corporation / HTC America, Inc. v. Advanced Audio Devices, LLCAll claims unpatentablePTAB · Dec 29, 2015 · IPR2014-01154 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1, 3, 6, 7, 11, 12, 16, 22, 24, 27, 29, 30, 35–37, 43, and 45–47 are unpatentable under § 103; proposed substitute claims 49–65 were denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“AAD misunderstands our prior claim construction ruling. We cited the above-quoted portions of the specification to demonstrate that, when the ’403 patentee wished to refer to ordering sound tracks, the terms rearranging or customizing were used—as opposed to the term organizable. Dec. 9. By contrast, we noted that the specification of the ’403 patent does not use the word organizable outside the claims. Id. The claim language itself, therefore, is the best guide to the meaning of the term. As we noted in our Decision, claim 1 requires that the music library is “organizable into a 10 master song list and at least one group of sound tracks.” Ex. 1001, 21:32–33 (emphasis added); Dec. 9. This usage implies that the user must be able to, at the very least, add songs from the music library into groups such as the master song list and the group of sound tracks. We note that AAD’s expert, Mr. McAlexander, agreed with our construction of the term, with a minor caveat discussed below. Ex. 1016, 31:6–32:16 (“The actual context of an arrangement ordering and grouping, I have no problem with that. I think they’re right.”). AAD’s proposed construction, which limits organizable to only the ordering of songs, is not the broadest reasonable interpretation of the claim term.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“b. Analysis of Anticipation by Nathan ’259 Anticipation requires not only that all elements of a claim are disclosed within the four corners of a single prior art reference, but that the elements are “arranged as in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). For the following reasons, we determine that Petitioner has not proven by a preponderance of the evidence that Nathan ’259 teaches all elements of claim 1, and by extension, any of the challenged dependent claims.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“In our view, HTC’s proposed analysis better comports with the “expansive and flexible approach” to obviousness set forth by the Supreme Court in KSR. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Our inquiry is, therefore, not “whether the references could be physically combined but whether the claimed inventions are rendered obvious by the 37 teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). Based on the combination of references proposed by HTC, Mr. Schmandt testifies that a person of ordinary skill in the art would have recognized the advantages of Sound Blaster’s functionality, and sought to incorporate those features into Lucente. Ex. 1007 ¶ 168 (“a person of ordinary skill in the art would be motivated to combine a system with the flexibility, portability, and ease of use of Lucente with the audio management capabilities of Sound Blaster”); id. at ¶ 170 (“it would be obvious to design a system with physical (e.g. push-button) controls to carry out the various functions designed by Sound Blaster, particularly in view of Lucente and Ozawa”) (emphasis added). The record reflects that such a modification would not have been outside the level of ordinary skill, which both experts define similarly. Ex. 1007 ¶ 25 (Schmandt: at least a bachelor’s degree in electrical engineering, computer science, or equivalent, and 1–3 years of experience in designing and programming consumer electronic devices); Ex. 2003 ¶ 8 (McAlexander: bachelor’s degree in electrical engineering or computer engineering, and at least two years of experience in the design of audio systems). This level of skill is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). AAD’s focus on whether the Sound Blaster hardware sound card could be installed on the Lucente device, or whether the Sound Blaster software could run on Lucente’s operating system, ignores that a person of 38 ordinary skill is a “person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421.” slip op. at 37
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“In cases in which the proffered evidence of commercial success is licenses, rather than sales of products embodying the invention, there is a danger that the licenses may have been taken only because they were cheaper than defending an infringement suit. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 908 (Fed. Cir. 1985). In such situations, nexus between the commercial success and the patent cannot be inferred; rather, “affirmative evidence of nexus” is required. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004). In other words, a patent owner must demonstrate “a nexus between the merits of the invention and the licenses of record”; otherwise, the licenses are to be accorded little weight. In re GPAC Inc., 57 F.3d at 1580 (emphasis added). HTC notes that each of the licenses listed by Mr. Keller includes at least two patents that explicitly claim a compact disc recorder, an element not present in the claims of the ’403 patent. Pet. Reply 24. HTC also contends that AAD fails to demonstrate any link between the invention of the ’403 patent and the taking of the license; for example, AAD provides no 27 apportionment of revenues to show the amount attributable to the ’403 patent, as opposed to the other members of the licensed family. Id. We agree with HTC that the evidence provided by AAD does not establish a sufficient link between the merits of the invention claimed in the ’403 patent and the taking of the licenses. Although Mr. Keller notes that some of the provided licenses were taken in situations where there was no pending litigation against the licensee (Ex. 2004 ¶ 9), he does not address whether litigation had been threatened against those parties. We, therefore, cannot determine whether the licenses reflect the commercial value of the invention claimed in the ’403 patent, or whether they were taken merely to avoid the cost of litigation, either pending or threatened. Absent a persuasive showing of nexus, AAD’s evidence of licensing fails to establish commercial success. We conclude that the evidence of objective indicia of nonobviousness is insufficient to overcome the evidence of obviousness over the combined Nathan references.” slip op. at 27
Patent outcomesUS 6,587,403 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 6,587,403 - HTC Corporation / HTC America, Inc. v. Advanced Audio Devices, LLCAll claims unpatentablePTAB · Dec 29, 2015 · IPR2014-01156 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1, 2, 14, 20, and 43–47 are unpatentable as obvious over either Nathan ’259 and Nathan ’255, or Sound Blaster, Lucente, Ozawa, and Hawkins.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Court in KSR. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Our inquiry is, therefore, not “whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). Based on the combination of references proposed by HTC, Mr. Schmandt testifies that a person of ordinary skill in the art would have recognized the advantages of Sound Blaster’s functionality, and sought to incorporate those features into Lucente. Ex. 1008 ¶ 148 (“a person of ordinary skill in the art would be motivated to combine a system with the flexibility, portability, and ease of use of Lucente with the audio management capabilities of Sound Blaster.”); id. at ¶ 150 (“it would be obvious to design a system with physical (e.g. push-button) controls to carry out the various functions designed by Sound Blaster, particularly in view of Lucente and Ozawa”) (emphasis added). The record reflects that such a modification would not have been outside the level of ordinary skill, which both experts define similarly. Ex. 1008 ¶ 25 (Schmandt: at least a bachelor’s degree in electrical engineering, computer science, or equivalent, and 1–3 years of experience in designing and programming consumer electronic devices); Ex. 2007 ¶ 8 (McAlexander: bachelor’s degree in electrical engineering or computer engineering, and at least two years of experience in the design of audio systems). This level of skill is also reflected by the prior 30 art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). AAD’s focus on whether the Sound Blaster hardware sound card could be installed on the Lucente device, or whether the Sound Blaster software could run on Lucente’s operating system, ignores that a person of ordinary skill is a “person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. It would not have been outside the level of ordinary skill in the art, as defined by both experts, to modify the device of Lucente to have the functionality described in Sound Blaster—including grouping and ordering songs—as well as the ability to download songs as described in Ozawa and the on/off control of Hawkins. We, therefore, find that a person of ordinary skill in the art would have had reason to combine the disclosures of Sound Blaster, Lucente, Ozawa, and Hawkins and would have had a reasonable expectation of success in doing so.” slip op. at 30
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“licenses, rather than sales of products embodying the invention, there is a danger that the licenses may have been taken only because they were cheaper than defending an infringement suit. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 908 (Fed.Cir.1985). In such situations, nexus between the commercial success and the patent cannot be inferred; rather, “affirmative evidence of nexus” is required. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004). In other words, a patent owner must demonstrate “a nexus between the merits of the invention and the licenses of record,” otherwise the licenses are to be accorded little weight. In re GPAC Inc., 57 F.3d at 1580 (emphasis added). HTC notes that each of the licenses listed by Mr. Keller includes at least two patents that explicitly claim a compact disc recorder, an element not present in the claims of the ’502 patent. Pet. Reply 23–24. HTC also contends that AAD fails to demonstrate any link between the invention of the ’502 patent and the taking of the license; for example, AAD provides no apportionment of revenues to show the amount attributable to the ’502 patent, as opposed to the other members of the licensed family. Id. at 23. 19 We agree with HTC that the evidence provided by AAD does not establish a sufficient link between the merits of the invention claimed in the ’502 patent and the taking of the licenses. Although Mr. Keller notes that some of the provided licenses were taken in situations where there was no pending litigation against the licensee (Ex. 2004 ¶ 9), he does not address whether litigation had been threatened against those parties. We, therefore, cannot determine whether the licenses reflect the commercial value of the invention claimed in the ’502 patent, or whether they were taken merely to avoid the cost of litigation, either pending or threatened. Absent a persuasive showing of nexus, AAD’s evidence of licensing fails to establish commercial success.” slip op. at 19
- ExcludeMotion to exclude, deniedDenied
“Blaster is not offered for a hearsay purpose. As a prior art reference, Sound Blaster is offered to show what information it would have conveyed to a person of ordinary skill in the art; the truth of the contents of Sound Blaster is not relevant to this inquiry. See EMC Corp. v. Personal Web Techs., LLC, Case IPR2013-00085, slip op. at 66 (PTAB May 15, 2014) (Paper 73) (“a prior art document submitted as a ‘printed publication’ under 35 U.S.C. § 102(b) is offered simply as evidence of what it described, not for proving the truth of the matters addressed in the document.”); see Joy Techs., Inc. v. Manbeck, 751 F. Supp. 225, 233 n.2 (D.D.C. 1990), aff’d, 959 F.2d 226 (Fed. Cir. 1992)). Finally, AAD seeks to exclude Sound Blaster as not authenticated, as there is no evidence to authenticate the reference “except the inadmissible Miller Declaration.” Mot. Exclude 8. We have not found the Miller Declaration to be inadmissible, however. To authenticate an item of evidence, a party must “produce evidence sufficient to support a finding that the item is what the proponent claims it is.” Fed. R. Evid. 901(a). The Miller Declaration provides sufficient evidence to support the finding that Sound Blaster is what HTC contends it to be: a document distributed to the public with the commercially available version of the Sound Blaster 16 Audio Card. For these reasons, even if AAD’s Motion to Exclude were procedurally proper, we would not exclude Exhibit 1004, including the Sound Blaster reference, from the record.” slip op. at 27
Patent outcomesUS 7,817,502 unpatentable§ 103 obviousnesscites GrahamPatents in suitUS 7,817,502 - 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 - 10x Genomics, Inc. v. The University Of ChicagoInstitution deniedPTAB · Nov 16, 2015 · IPR2015-01163 · APJ Tina E Hulse · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–9 and 11 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering the Petition and Preliminary Response, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of claims 1–9 and 11. Accordingly, we decline to institute an inter partes review of those claims.” slip op. at 2
- Skill levelSkill level board ownOther
“For purposes of this Decision, we do not discern an appreciable difference between Petitioner and Patent Owner’s proposed levels of ordinary skill in the art that would impact our ultimate conclusions. Patent Owner does not indicate how many years of experience a “researcher interested in microfluidics” would have. Accordingly, we determine that a person of ordinary skill in the art would have at least a bachelor’s degree in chemistry, physics, chemical engineering, bioengineering, or mechanical engineering, or a related discipline, with at least four or five years of relevant experience. We also consider the cited prior art as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (finding the absence of specific findings on “level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“At this stage of the proceeding, we find Patent Owner’s proposed construction more persuasive because it is more consistent with the Specification’s definition of “plugs.” The Specification states: “‘Plugs’ in accordance with the present invention are formed in a substrate when a stream of at least one plug-fluid is introduced into the flow of a carrier-fluid in which it is substantially immiscible.” Ex. 1001, 9:27–30. To further limit the claim term, Petitioner relies on the Specification’s disclosure of other optional characteristics of a plug. For example, the Specification states that the plug’s “cross-section should be substantially similar to the cross-section of the channels in which they are formed.” Id. at 9:34–37 (emphasis added). The Specification also states that the carrier fluid “preferably” wets the walls of the channels and, “[i]f this condition is satisfied, the plug . . . remains separated from the walls by a thin layer of the carrier-fluid.” Id. at 20:59–63 (emphasis added). Because neither of these disclosures expressly limits the “plugs” of the claimed invention, we decline to include these limitations from the Specification in the broadest reasonable interpretation of the claim term. Accordingly, on the current record, we determine the broadest reasonable interpretation of the term “plugs of the aqueous fluid” to be “volumes of aqueous fluid formed when a stream of aqueous fluid is introduced into the flow of a substantially immiscible carrier-fluid.”” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“3. Remaining Claim Terms Petitioner proposes constructions for other claim terms of the ’193 patent. Based on the current record, however, we determine that the remaining claim terms need not be construed explicitly for purposes of this Decision.” slip op. at 9
Claim construction§ 103 obviousnessPatents in suitUS 8,304,193 - 10x Genomics, Inc. v. The University Of ChicagoInstitution deniedPTAB · Nov 16, 2015 · IPR2015-01158 · APJ Donna M Praiss · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–13 would have been obvious over the cited combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“not explained why a person of ordinary skill in the art would have had a reasonable expectation of success combining Haff’s capillary tube PCR device with Quake’s microfluidic system to amplify a substrate in droplets. Simply stating that it would have been “routine” is insufficient. To the extent Petitioner relies on the background information to support a reasonable expectation of success, Petitioner fails to explain any connection between the two. For example, if conducting PCR in a stream of reaction mixture in a microfluidic device was known, Petitioner has not explained why, with that knowledge, it would have been routine to conduct PCR in droplets in a microfluidic device. Moreover, even though Haff describes conducting PCR in a capillary tube device, neither Petitioner nor its declarant explains how the conditions for conducting PCR in microfluidic droplets would differ, or why a person of ordinary skill in the art would consider conducting PCR in microfluidic droplets to be “routine.”” slip op. at 18
- Skill levelSkill level board ownDecided for patent owner
“in the art. Petitioner contends that a person of ordinary skill in the art would have had a Ph.D. in chemistry, biochemistry, mechanical engineering, or a related discipline, with two years of experience in using, designing or creating microfluidic devices. Pet. 3. Alternatively, Petitioner asserts that a skilled artisan would have had an M.S. or bachelor’s degree in one of those disciplines with four or five years of additional relevant experience, respectively. Id. Patent Owner disagrees with Petitioner’s definition, arguing that Petitioner overstates the level of ordinary skill in the art in the 2002 time frame. According to Patent Owner, a person of ordinary skill in the art would have been a researcher interested in microfluidics with at least a bachelor’s degree in a “hard science,” such as chemistry, physics, chemical engineering, bioengineering, or mechanical engineering. Prelim. Resp. 15. For purposes of this Decision, we do not discern an appreciable difference between Petitioner and Patent Owner’s proposed levels of ordinary skill in the art that would impact our ultimate conclusions. Patent Owner does not indicate how many years of experience a “researcher interested in microfluidics” would have. Accordingly, we determine that a person of ordinary skill in the art would have at least a bachelor’s degree in chemistry, physics, chemical engineering, bioengineering, or mechanical engineering, or a related discipline, with at least four or five years of relevant experience. We also consider the cited prior art as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (finding the absence of specific findings on” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (Claim limitations must be read “in light of the specification as it would be interpreted by one of ordinary skill in the art.”). The Specification describes the plug broadly as being “formed in a substrate when a stream of at least one plug-fluid is introduced into the flow of a carrier-fluid in which it is substantially immiscible.” Ex. 1001, 10:3–6. We agree with Patent Owner that this is a defining attribute of the claimed plug and that the Specification describes further details as preferred embodiments. According to the Specification, the size of the plug may vary depending on the relative flowrates of the aqueous fluid and the carrier fluid, but “should be substantially similar to the cross-section of the channels in which they are formed.” Id. at 10:10–13, 22:35–37. Separation of the aqueous fluid from the channel wall is also described in an optional manner as occurring when the preferred condition of the carrier-fluid wetting the walls is satisfied. Id. at 21:35–41. The carrier fluid is described as “substantially immiscible” with the plug optionally being “surrounded by a non-polar or hydrophobic fluid such as an oil” or “encased by one or more layers of molecules that comprise both hydrophobic and hydrophilic groups or moieties.” Id. at 10:5–6, 22–31. Accordingly, for purposes of this decision, we adopt Patent Owner’s proposed construction for the term “plug of the aqueous fluid” because it includes the property of the carrier fluid for the plug being substantially immiscible without also incorporating specific embodiments described in the Specification.” slip op. at 9
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“the ’407 patent is microfluidic devices and Haff is “directed to a system for dealing with ‘larger volumes’ of fluids.” Prelim. Resp. 26–28. Patent Owner also argues that Haff is not reasonably pertinent to the problems being addressed in the ’407 patent. Id. at 28–29. We are not persuaded. Although Haff does not disclose the use of PCR in microfluidic devices, we do not believe such disclosure is necessary to consider Haff to be analogous art. “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1380–81 (Fed. Cir. 2007). On the current record, we find that Haff’s disclosure of PCR in larger-volume capillary tube devices logically would have commended itself to the inventors’ attention when considering methods of conducting PCR in smaller microfluidic devices. In other words, we find that the inventors logically would have considered how PCR is conducted in capillary tube devices to figure out how to scale down the reaction for microfluidic devices.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,329,407 - 10x Genomics, Inc. v. The University Of ChicagoInstitution deniedPTAB · Nov 16, 2015 · IPR2015-01156 · APJ Christopher L Crumbley · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 would have been obvious over Haff and Quake, or claim 6 over Haff, Quake, and Ramsey.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Despite that background information, we determine that Petitioner has not explained why a person of ordinary skill in the art would have had a reasonable expectation of success combining Haff’s capillary tube PCR system with Quake’s microfluidic system to amplify a substrate in droplets. Simply stating that it would have been “routine” is insufficient. To the extent Petitioner relies on the background information to support a reasonable expectation of success, Petitioner fails to explain any connection between the two. For example, if conducting PCR in a stream of reaction mixture in a microfluidic device was known, Petitioner has not explained why, with that knowledge, it would have been routine to conduct PCR in droplets in a microfluidic device. Moreover, even though Haff describes conducting PCR in a capillary tube device, neither Petitioner nor its declarant explains whether the conditions for conducting PCR in microfluidic droplets would differ, or why a person of ordinary skill in the art would consider conducting PCR in microfluidic droplets to be “routine.” Petitioner contends that a skilled artisan would have had a reasonable expectation of success because Quake teaches how to obtain encapsulated aqueous plugs with a single substrate molecule. Pet. 34. But even with that teaching, Petitioner has not explained why that—or any teaching in Haff or Quake—would establish a reasonable expectation of success in providing conditions that are suitable to conduct PCR in a microfluidic plug.” slip op. at 16
- Skill levelSkill level board ownDecided for patent owner
“For purposes of this Decision, we do not discern an appreciable difference between Petitioner and Patent Owner’s proposed levels of ordinary skill in the art that would impact our ultimate conclusions. Patent Owner does not indicate how many years of experience a “researcher interested in microfluidics” would have. Accordingly, we determine that a person of ordinary skill in the art would have at least a bachelor’s degree in chemistry, physics, chemical engineering, bioengineering, or mechanical engineering, or a related discipline, with at least four or five years of relevant experience. We also consider the cited prior art as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (finding the absence of specific findings on “level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“At this stage of the proceeding, we find Patent Owner’s proposed construction more persuasive because it is more consistent with the specification’s definition of “plugs.” The specification states: “‘Plugs’ in accordance with the present invention are formed in a substrate when a stream of at least one plug-fluid is introduced into the flow of a carrier-fluid in which it is substantially immiscible.” Ex. 1001, 9:27–30. To further limit the claim term, Petitioner relies on the specification’s disclosure of other optional characteristics of a plug. For example, the specification states that the plug’s “cross- section should be substantially similar to the cross-section of the channels in which they are formed.” Id. at 9:34–37 (emphasis added). The specification also states that the carrier fluid “preferably” wets the walls of the channels and, “[i]f this condition is satisfied, the plug . . . remains separated from the walls by a thin layer of the carrier-fluid.” Id. at 20:59–63 (emphasis added). Because neither of these disclosures expressly limits the “plugs” of the claimed invention, we decline to include these limitations from the specification in the broadest reasonable interpretation of the claim term. Accordingly, on the current record, we determine the broadest reasonable interpretation of the term “plugs of the aqueous fluid” to be “volumes of aqueous fluid formed when a stream of aqueous fluid is introduced into the flow of a substantially immiscible carrier-fluid.”” slip op. at 7
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“analogous art because the field of the ’148 patent is microfluidic devices, and Haff involves larger volumes of fluids. Prelim. Resp. 26–28. Patent Owner also argues that Haff is not reasonably pertinent to the problems being addressed in the ’148 patent. Id. at 28–30. We are not persuaded. Although Haff does not disclose the use of PCR in microfluidic devices, we do not believe such disclosure is necessary to consider Haff to be analogous art. “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1380–81 (Fed. Cir. 2007). On the current record, we find that Haff’s disclosure of PCR in larger-volume capillary tube devices logically would have commended itself to the inventors’ attention when considering methods of conducting PCR in smaller microfluidic devices. In other words, we find that the inventors logically would have considered how PCR is conducted in capillary tube devices to figure out how to scale down the reaction for microfluidic devices.” slip op. at 14
Claim construction§ 103 obviousnessPatents in suitUS 8,822,148 - Servicenow, Inc. v. Hewlett-Packard Co.Rehearing deniedPTAB · Nov 2, 2015 · IPR2015-00707 · APJ James B Arpin · IPR · Rehearing
The Board denied rehearing, leaving institution denied for claims 1, 22, and 23 because the evidence did not show a reasonable likelihood that the cited references were publicly accessible printed publications.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(emphasis added). In addition, “[e]vidence not already of record at the time of the decision will not be admitted [with a request for rehearing] absent a showing of good cause.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (emphasis added). When reconsidering a Decision on Institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Petitioner fails to make the critical link between the alleged identification of the Collaborate References on the “download page” and the exhibits relied upon in support of its asserted grounds. Despite Petitioner’s arguments and assertion that this “page” was publicly accessible “by no later than August 29, 2001,” Petitioner fails to demonstrate Exhibits 1004–1006, which Petitioner relies upon in support of each of the asserted grounds, were publicly accessible through the webpages included in Exhibit A to the Butler Affidavit more than one year prior to May 14, 2003. See Pet. 23; Ex. 1002 ¶ 144.” slip op. at 4
- BurdenDecided for patent owner
“parties and determined that, based upon this record, Petitioner failed to satisfy its burden of showing a reasonable likelihood that asserted references Exhibits 1004–1006 were publically accessible, printed publications. Id. at 19–20; see id. at 221 (“I agree with the majority’s recitation of the facts, established by the present record. I also agree with the majority’s evaluation that the evidence submitted by Patent Owner casts doubt on Petitioner’s assertion that the Collaborate References are prior art to the ’981 patent. Where the majority and I part ways, however, is whether this record meets the ‘reasonable likelihood’ standard for institution of an inter partes review.” (emphasis added)).2 Therefore, we did not misapply the standard for determining public accessibility by considering each piece of evidence regarding public accessibility separately, rather than as a whole.” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“in its Petition3 (see 37 C.F.R. § 42.71(d)) and now attempts to introduce new evidence (Reh’g Req. Appendix A) in support of its arguments. We could 3 Although Petitioner cites to pages 23 and 24 of its Petition (Reh’g Req. 8), Petitioner did not discuss the Restricted Rights Legends in Exhibits 1004– 1006 on the cited pages. not misapprehend or overlook arguments that Petitioner did not make or evidence that Petitioner did not present with its Petition. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. Moreover, as we explained in our Decision on Institution, “[w]e consider[ed] the references as a whole and read the download instructions, cited by Petitioner, in view of the restrictions on use and dissemination that also are set forth in the references.” Dec. 16.” slip op. at 8
§ 102 anticipationPatents in suitUS 7,925,981 - Henkel Corporation v. H.B. Fuller Co.All claims unpatentablePTAB · Oct 6, 2015 · IPR2014-00606 · APJ Brian P Murphy · IPR · Final written decision
Claims 22–25, 27, and 28 are unpatentable: claims 22–25 and 28 are anticipated, and claim 27 is obvious.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Preamble not limitingOther
“We conclude that the preamble language “[a] hot melt adhesive” is a statement of intended use, not a structural limitation of the claims, because the body of the claims defines a structurally complete composition. Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (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.”). The parties agree that hot melt adhesives are understood in the art as “‘100[%] solid thermoplastic materials that flow when heated’ and then form a ‘final bond . . . when the temperature has fallen to the ambient one, i.e., that of the material being glued.’” PO Resp. 5 (citing Ex. 1015 ¶ 15); Pet. Reply 4–5 (citing Ex. 1015 ¶ 15). The body of claims 22 and 28 recites a hot melt adhesive that flows when heated and bonds when cooled.” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Under Federal Rule of Evidence 702, a witness may be qualified as an expert by “knowledge, skill, experience, training, or education” and may give opinion testimony if the expert’s “specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702. We find Dr. Hsu to be qualified as an expert in polymers and adhesives, and we further find his specialized knowledge will help us 7 Dr. Hsu originally was funded by National Starch and Chemical Co., a company that was acquired by Petitioner. Ex. 1039, 16:8–17:13. understand the evidence regarding the claimed hot melt adhesive composition and determine facts in dispute between the parties. We further note that, although Patent Owner urges us to disregard Dr. Hsu’s testimony, Patent Owner repeatedly relies on Dr. Hsu’s testimony when necessary. Pet. Reply 2–3 (citing PO Resp. 5–8, 12, 17–22, 25–26, 32–33, 35–36). Patent Owner cannot have it both ways. Having considered the parties’ arguments and cited evidence, we will assign the appropriate weight to the expert opinion testimony offered by Dr. Hsu.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner that if one of ordinary skill in polymer science and engineering were to consider the four corners of the Eastotac Brochure, the H-142R hydrocarbon tackifying resin in Table 1 is directly related to the exemplary hot melt adhesive compositions in Table 3 by the teachings of the reference. Pet. Reply 8–10. The hydrocarbon tackifying resins of Table 1 are listed on pages 4 and 5 of the Eastotac Brochure. Ex. 1002, 4–5. At the top of page 4 just above Table 1, under the heading “Applications,” the Eastotac Brochure states “[t]hese resins are especially suited for low-molecular-weight polyethylene-based hot melt adhesives where elevated temperature resistance and high cohesive strength are required.” Ex. 1002, 4 (emphasis added); Pet. Reply 8. The next page following Table 1 (page 6) discloses exemplary hot melt adhesive compositions in Table 3, each one of which includes an “Eastotac resin” and thermoplastic base polymer in specified composition ranges by weight that overlap with the composition ranges recited in claim 22 of the ’404 patent. Although Patent Owner counts ten different applications for the Eastotac resins of Table 1, the Eastotac Brochure provides specified composition ranges for use of the Eastotac resins in only one application – hot melt adhesives. Ex. 1002. As recently reiterated by the Federal Circuit, “a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (citing In re Petering, 301 F.2d 676, 681 (CCPA 1962)). Patent Owner avoids addressing the teachings contained in the text of the Eastotac Brochure and narrowly focuses its discussion only on the express disclosures contained in Tables 1 and 3. PO Resp. 24–26 (citing Ex. 1039, 104:17–20, 106:2–11, 115:2–5). Dr. Hsu testified that, although Table 1 does not list a specific application for the Eastotac resins and Table 3 lists “Eastotac resin” rather than a specific Eastotac resin from Table 1, a fair reading of the Eastotac Brochure indicates “all the ones [resins] in Table 1 can be used in this [Table 3] composition,” including H-142R. Pet. Reply 9–10 (citing Ex. 1015 ¶¶ 41–42; Ex. 1039, 116:12–17, 116:21–117:3, 118:15–21, 121:7–18). Dr. Hsu further testified that one of ordinary skill would have been “motivated” to use the H-142R resin, listed in Table 1, in the hot melt adhesive compositions of Table 3 when a high peel value and high heat resistance were desired, “because Eastotac® H-142 has the highest Tg of the Eastotac® resins in the Eastotac Brochure.” Ex. 1015 ¶ 54. We find Dr. Hsu’s unrebutted testimony to be persuasive. As in the Kennametal case, we find that one of ordinary skill in the art of polymer science and engineering immediately would have envisaged the use of the H-142R hydrocarbon tackifying resin in combination with either APP or EVA thermoplastic base polymer in the exemplary hot melt adhesive compositions in Table 3 of the Eastotac Brochure. See id. at 1382–83.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Patent Owner does not provide any evidence that contradicts Dr. Hsu’s testimony. PO Resp. 40–41. We also are not persuaded by Patent Owner’s argument challenging the sufficiency of Petitioner’s evidence in support of a motivation to combine the asserted references. Rule 41 of the Uniform Freight Classification Committee provides good reason for one of skill in the art to make the asserted modification to the compositions disclosed in the Eastotac Brochure or Exxon Reference. The compositions contain hydrocarbon tackifying resins, and the Eastotac Brochure expressly states that the resins listed therein are “especially suited” for hot melt adhesives where “elevated temperature resistance and high cohesive strength are required.” Ex. 1002, 4. The ’404 patent, moreover, acknowledges the known use of higher Tg tackifying resins to increase heat resistance, and the rail freight packaging requirement for maintaining a hot melt adhesive bond up to 74º C. provides a known application and commercial rationale for using a high peel value adhesive, as recited in claim 27. We also find Dr. Hsu’s opinion articulates a specific, persuasive reason, based on the evidence of record, to explain why a person of ordinary skill in the art would have used a high Tg tackifying resin to achieve a hot melt peel value > 70 ºC., with a reasonable expectation of success. For the reasons stated above, we determine that one of ordinary skill in the art would have been motivated by the teachings of Litz to modify the adhesive compositions disclosed in either the Eastotac Brochure or the Exxon Reference to obtain a composition having a peel value of greater than about 70º C., with a reasonable expectation of success. Therefore, we conclude Petitioner has satisfied its burden of proving by a preponderance of the evidence that either the Eastotac Brochure or the Exxon Reference in combination with Litz would have rendered claim 27 of the ’404 patent obvious to a person of ordinary skill in the art under 35 U.S.C. § 103.” slip op. at 24
Patent outcomesUS 6,833,404 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,833,404 - LG Chem, Ltd. v. Celgard, LLCSome claims unpatentablePTAB · Oct 5, 2015 · IPR2014-00692 · APJ Donna M Praiss · IPR · Final written decision
Claims 1–11 are unpatentable as obvious: claims 7–10 over Tojo and claims 1–6 and 11 over Tobishima and Tojo; the other instituted grounds were not proven.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided 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 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“and Dr. Abraham, as well as the Handbook’s disclosure that separator pores as small as 0.1 µm are effectively barn doors, which cannot prevent electronic shorts caused by dendrite growth, Patent Owner persuades us that Tojo’s porous ceramic composite layer is not capable of hindering, interrupting, or delaying the passage, progress, or course of dendrite growth, with any degree of effectiveness that prevents electronic shorting. That is, Patent Owner persuades us that Tojo’s separators do not include a ceramic composite layer that is adapted to at least block dendrite growth and to prevent electronic shorting, as recited in claim 1 of the ’586 patent.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“As discussed above, Petitioner does not persuade us that it has established that Tojo’s separator includes that feature, because of the pores in Tojo’s ceramic composite layer. Because Petitioner relies on this limitation being inherently present in Tojo as argued with respect to claim 1 (Pet. 19, 23), Petitioner does not provide any evidence to support the obviousness of this limitation. In the context of an obviousness analysis, inherency “‘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.’” In re Oelrich, 666 F.3d 578, 581 (C.C.P.A. 1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939)). An inherent disclosure is one that is “sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function.” Id.; Par Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014) (“[T]he concept of inherency must be limited when applied to obviousness, and is present only when the limitation at issue is the ‘natural result’ of the combination of prior art elements.”) (quoting In re Oelrich, 666 F.2d at 581). As discussed above, the preponderance of the evidence leads us to conclude that Tojo’s disclosure would not necessarily produce pores with a tortuosity sufficient to block dendrite growth. Thus, even if an ordinary artisan were to find it obvious to try one of the specific matrix materials recited in dependent claim 4 (id. at 19), the resulting ceramic composite layer required by both claim 4 and claim 12 would, nonetheless, have the pores that Tojo teaches should be present in that layer. Therefore, a preponderance of the evidence does not support a finding that it would have been obvious that the separator disclosed by Tojo would result in a separator having the dendrite-blocking feature required by claims 4 and 12. Accordingly, because Petitioner has not shown that Tojo teaches or suggests all of the features required by claims 4 and 12, we conclude that Petitioner has not established by a preponderance of the evidence that claims 4 and 12 are unpatentable under 35 U.S.C. § 103 as obvious over Tojo.” slip op. at 21
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Even disregarding the procedural infirmities in Patent Owner’s Response, however, Petitioner persuades us that the evidence of secondary considerations is not entitled to substantial weight, because Patent Owner has not established a sufficient nexus between the merits of the claimed subject matter and that evidence. Petitioner persuades us also that the evidence of secondary considerations is not reasonably commensurate in scope with the claimed subject matter.” slip op. at 33
Patent outcomesUS 6,432,586 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,432,586
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.