- Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution deniedPTAB · May 12, 2023 · IPR2023-00161 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–30 would have been obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We are not persuaded, on this record, that Petitioner adequately establishes that a POSITA would have been motivated to modify Brown in the manner proposed. Brown teaches that its battery casing with the stacking mechanism is used in both single and multi-cell batteries:” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 23 (citing Ex. 1003 ¶ 67–68); see Ex. 1010, 1:17–18, 2:38–46, 3:2–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Compare Ex. 1003 ¶¶ 67–68, with Pet. 22–23. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential).” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“(‘POSITA’) would have had at least a bachelor’s degree in mechanical engineering, electrical engineering, materials or chemical engineering, physics, chemistry or a related discipline.” Pet. 19. In addition, Petitioner argues that a person of ordinary skill in the art would have had “at least five years of experience in the design of lithium-ion button cell battery structures.” Id. Petitioner further contends that “[l]ess work experience may be compensated by a higher level of education, such as a master’s or doctorate degree,” and vice-versa. Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 12. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. at 11–12 (“Patent Owner reserves the right to dispute Petitioner’s definition of a [person of ordinary skill in the art] if an IPR is instituted.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner.” slip op. at 6
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,024,869 - PTAB · May 11, 2023 · IPR2023-00046 · APJ Christopher L Crumbley · IPR · Institution
The Board instituted IPR on claims 1–20 on all petitioned grounds, finding a reasonable likelihood of success for at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2022). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); see also Patent Trial and Appeal Board Consolidated Trial Practice Guide 64 (Nov. 2019) (“TPG”) (“The Board will not institute on fewer than all claims or all challenges in a petition.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ANALYSIS A. Level of Skill In determining the level of ordinary skill in the art, various factors may be considered, including the “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). Petitioner contends that a person of ordinary skill in the art at the time of the invention would have had “at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of access control.” Pet. 10 (citing Ex. 1003 ¶¶ 36– 38). At this stage of the proceeding, we adopt Petitioner’s definition of the level of skill in the art, which is consistent with the disclosure of the ’830 patent and asserted prior art of record. If the parties disagree with our preliminary finding, they are invited to further brief the issue of level of ordinary skill in the art and, in particular, which disputed issues material to patentability turn on the definition adopted by the Board.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“claims themselves.”). Here, the plain language of claim 1 requires the interfaces and the processor to be coupled via the external communication lines. Petitioner provides no potential reading for this express language, other than to simply say it cannot mean that the external communication lines be between the interfaces and the processor. Though not stated directly, Petitioner appears to interpret “via” as simply meaning “and”: “the unidirectional communication interface and the bidirectional communication interface are coupled to a processor via and the external communication lines.” At this stage, this interpretation appears to conflict with how the ’830 patent uses “via” elsewhere in the claims. For example, claim 1 also recites that the reader “uses the unidirectional communication interface to communicate with the processor via the external communication lines.” If the patent were using “via” to simply mean “and,” this recitation would be nonsensical. Rather, it appears on this record that one of ordinary skill in the art would have understood “via” to have its ordinary meaning of “through.”8” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“The appropriate comparison, however, is not between the Figures of the ’830 patent and the prior art, but rather the claims of the patent and the disclosures of the prior art. And, as discussed above, both claims 1 and 3 of the ’830 patent require that the processor be coupled to (or communicate with) the communications interfaces via the external communication lines. The disclosures of Chis that Petitioner cites do not specify such an arrangement; nor does Petitioner even argue that they do. Rather, in Chis, the processor and the external communication lines are coupled via the interfaces, not the other way around.9 Petitioner’s analysis, grounded in a claim construction we do not adopt, is not persuasive as to these claim limitations. As such, Petitioner has not demonstrated a reasonable likelihood of success as to independent claims 1 or 3, or as to dependent claims 2 and 4–10, each of which contains the “via” limitation via dependency.” slip op. at 15
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,467,830 - Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution deniedPTAB · Apr 11, 2023 · IPR2022-01477 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–30 would be unpatentable, including a sufficient motivation to remove Brown’s stacking mechanism.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 13. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to dispute Petitioner’s definition of a [person of ordinary skill in the art] if an IPR is instituted.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“establishes that a POSITA would have been motivated to modify Brown in the manner proposed. Brown teaches that its battery casing with the stacking mechanism is used in both single and multi-cell batteries: A cell casing for a primary dry cell battery of the button type is disclosed which includes a case with a first elongated electrically conductive member affixed centrally to its exterior surface, and a cover with a second elongated electrically conductive hollow member affixed centrally to its interior surface in communication with an aperture. Both a single and a multi-cell battery are described which include the above battery casing. Ex. 1005, 1:11–18 (emphasis added). Consistent with this teaching, Brown’s Example I describes a cell casing “formed generally in accordance” with the casing depicted in Brown’s Figure that includes a stacking mechanism, in particular a screw (member 14) welded to the outside center of case 11. Id. at 2:58–81. In Example II, the “non-stacking variant” cited by Petitioner, Pet. 15, Brown teaches using the “cell casing of Example I,” which includes the stacking mechanism, in a single-cell battery. Ex. 1005, 3:1–18. Brown explicitly states that the aperture in the cover is sealed when the cell is used in a single cell battery, but provides for no other” slip op. at 12
- Expert testimonyPetitioner expert discountedDecided for patent owner
“In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 15 (citing Ex. 1002 ¶ 54); see Ex. 1005, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential).” slip op. at 13
§ 103 obviousnesscites PhillipsPatents in suitUS 11,024,907 - Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution deniedPTAB · Mar 14, 2023 · IPR2022-01474 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–24 would have been obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 18 (citing Ex. 1002 ¶ 50); see Ex. 1005, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). For these reasons, we are not persuaded that Petitioner makes a sufficient showing that a POSITA would have been motivated to modify Brown as proposed. Accordingly, we conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that independent claim 1, and claims 2, 4–6, 9–11, 13–15, 18, 23, and 24 that depend, directly or indirectly, therefrom, would have been obvious over the combined teachings of Brown, Higuchi, and Fujita.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 18 (citing Ex. 1002 ¶ 50); see Ex. 1005, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). For these reasons, we are not persuaded that Petitioner makes a sufficient showing that a POSITA would have been motivated to modify Brown as proposed. Accordingly, we conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that independent claim 1, and claims 2, 4–6, 9–11, 13–15, 18, 23, and 24 that depend, directly or indirectly, therefrom, would have been obvious over the combined teachings of Brown, Higuchi, and Fujita.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 18 (citing Ex. 1002 ¶ 50); see Ex. 1005, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). For these reasons, we are not persuaded that Petitioner makes a sufficient showing that a POSITA would have been motivated to modify Brown as proposed. Accordingly, we conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that independent claim 1, and claims 2, 4–6, 9–11, 13–15, 18, 23, and 24 that depend, directly or indirectly, therefrom, would have been obvious over the combined teachings of Brown, Higuchi, and Fujita.” slip op. at 13
§ 103 obviousnesscites PhillipsPatents in suitUS 11,024,905 - Allstate Insurance Company v. Atos, LLCSome claims unpatentablePTAB · Mar 7, 2023 · IPR2021-01449 · APJ Julia Heaney · IPR · Final written decision
Claim 5 is unpatentable as anticipated by Kim; claims 1–4 were not shown unpatentable under the asserted obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Having considered the parties’ arguments and evidence, we adopt the level of ordinary skill in the art proposed by Petitioner, because it is consistent with the disclosures of the ’174 patent and the prior art of record. We note, however, that neither party contends that any issue in this case turns on the differences between the parties’ definitions of one of ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Having reviewed the parties’ arguments and evidence, we determine that Petitioner’s proposed construction of “rotation vector” is consistent with the ’174 patent’s usage of the term “rotation vector” (or “vector of rotation”). See Ex. 1001, 1:54–2:11. Dr. Kanellakopoulos’s opinion supports that “rotation vector” would be understood by a person of ordinary skill in the art to describe the motion of a body that is rotating around a point. As to the other aspects of Patent Owner’s proposed construction, describing the characteristics of magnitude and direction, we determine that those attributes are not necessary to interpreting how a skilled artisan would understand “rotation vector” in light of the claim language and specification. See Tr. 47:26–48:7 (in Patent Owner’s proposed construction of “rotation vector,” “the magnitude requirement is not particularly important”). We address the parties’ arguments as to differences between a rotation vector and angular momentum vector in Section II.D.2 below, because they underlie Petitioner’s challenges involving Kleppner.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“Having considered the parties’ positions as to construction of the term “movement vector” and applicability of the definition of “movement vector” set forth in the ’174 patent specification (Ex. 1001, 2:29–31), we construe the term “movement vector” to mean “a vector derived from the cross product of the centrifugal force vector and the rotation vector.” We adopt the definition set forth in the ’174 specification because we determine patentee acted as its own lexicographer. Cont’l Cirs. LLC v. Intel Corp., 915 F.3d 788, 796 (Fed. Cir. 2019) (citing Phillips, 415 F.3d at 1316) (“When the patentee acts as its own lexicographer, that definition governs.”). We agree with Petitioner that the words “while a vehicle is turning” would be superfluous in the construction, because the step of “detecting a movement vector during the turn” already recites that the vehicle is turning. Apple, Inc. v. Ameranth, 842 F.3d 1229, 1237 (Fed. Cir. 2016) (“Construing a claim term to include features of that term already recited in the claims would make those expressly recited features redundant.”)” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We decline to adopt Patent Owner’s construction because it improperly reads into claim 5 a requirement that the specification and claim language do not support. The specification passages relied on by Patent Owner do not expressly state that a vehicle independent state must be determined while the device is inside a vehicle, and contrary to Patent Owner’s argument, they also do not necessarily imply that. For example, the descriptions of “vehicle independent movement” and “vehicle independent event” in the specification (see Ex. 1001, 1:16, 42) refer to “phone falling to the ground.” “Falling to the ground” implies that the phone may be outside a vehicle, not inside. Further, the specification’s reference to detecting a vehicle dependent state “while also” recognizing a vehicle independent event does not necessarily imply that the vehicle dependent state and vehicle independent event are being detected simultaneously, as Patent Owner argues. In the language of claim 5, a “vehicle independent state” is recited in the determining step (step c), and the requirement that the portable device is located “inside a vehicle” relates to creation of an operation indicator, as part of the detecting step (step b). Patent Owner does not dispute this, and agrees that a portable device “not in the vehicle” can satisfy the determining step (step c). Tr. 73:5–8. Patent Owner, however, argues step c’s recitation that a “vehicle independent state” is based on step b’s “predetermined criteria” creates a link between “vehicle independent state” and step b, and thus an “express requirement” in step c that the device is located inside the vehicle. See Tr. 73:8–26, 76:1–3. We decline to read this requirement into the claim language. Although the claim language states that determining a “vehicle independent state” is based on “predetermined criteria,” and step b describes comparing “predetermined criteria” to an “operation indicator” that is created when the device is inside a vehicle, it does not limit the step of determining a vehicle independent state to a time when the portable device is inside a vehicle. Accordingly, we construe “vehicle independent state” to mean a state triggered when the portable device is moved independently of the movement of the vehicle.” slip op. at 23
Patent outcomesUS 9,846,174 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,846,174 - Nanofiber Solutions, LLC v. Acera Surgical, Inc.Some claims unpatentablePTAB · Dec 13, 2022 · IPR2021-01016 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1, 2, 4–7, and 13 are unpatentable: claims 1, 2, 4, 5, and 13 as anticipated by Johnson, and claims 6 and 7 as obvious over Johnson and Johnson–Liu, respectively.
RulingsFinal written decision- Skill levelOther
“Petitioner contends that: A person of ordinary skill in the art (“POSITA”) at the time of filing the ‘228 Patent would have been a person having a bachelor's degree in science or engineering, for example in the fields of chemistry, chemical engineering, or biomedical engineering, with undergraduate research experience, coupled with at least three years of industry experience, that linked the fabrication of fibrous polymeric materials to performance requirements for scaffolds for the promotion of proliferation of biological cells and the growth and/or reconstruction of biological tissues. Pet. 11–12 (citing Ex. 1002 ¶¶ 112–116). In response, Patent Owner notes that all challenged claims recite electrospun fibers but that Petitioner’s proposed level of skill “requires (1) no coursework, training or experience with electrospinning and (2) improperly focuses on scaffolds for the promotion of proliferation of biological cells and the growth and/or reconstruction of biological tissues.” PO Resp. 7 (citing Ex. 2001, ¶¶ 38–39). But Patent Owner then concedes that this “difference is immaterial to deciding the issues raised by the Petition.” Id. at 8.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construe claims “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b); see Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Furthermore, we expressly construe the claims only to the extent necessary to resolve the parties’ dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 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))). The parties agree that the terms of the challenged claims should be given their “plain and ordinary meaning” and that no express claim construction is necessary to address Petitioner’s challenges. Pet. 12; PO Resp. 6. We agree that no claim terms require express construction for purposes of resolving the dispute between the parties.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Upon review, we are unpersuaded that Petitioner has improperly mixed and matched disclosures from Johnson to arrive at an anticipatory reference. Patent Owner is correct that Petitioner primarily relies on Example 1 as evidence for the method by which its scaffold is made. But the disclosure found in paragraph 98 is not a “distinct” teaching of the type described in Net MoneyIN; rather, it is a general description of the structures that may be created by Johnson’s method: “A scaffold may comprise any number of layers, including about 1 layer, about 2 layers, about 3 layers, about 4 layers, about 5 layers, and so on.” Ex. 1009 ¶ 98. Patent Owner has not directed us to anything in the disclosure of Johnson that indicates that this is a “distinct” teaching or embodiment, instead of a general description of the types of scaffolds that Johnson encompasses. We see no reason why the general disclosures regarding Johnson’s scaffolds should be limited to specific embodiments, or precluded from applying to the method of Example 1.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableNot shown unpatentable
“We are unconvinced by Petitioner’s arguments and evidence. While we recognize that the range of claim 3 is very broad, and it is possible that scaffolds having fiber diameters as set forth in Johnson could have a mean pore size falling within the range, inherency “may not be established by probabilities or possibilities.” Par Pharm., Inc. v. Twi Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014). Nor does Petitioner sufficiently explain why a person of ordinary skill in the art would have understood the process of Example 1 to necessarily result in the claimed mean pore size. We are also persuaded by Patent Owner’s argument that Boland 2005’s disclosure of a fiber diameter similar to Johnson’s that nevertheless falls outside the claimed mean pore size range. We note that Petitioner never addresses Boland 2005 in its Reply. 4. Conclusion as to Anticipation For these reasons, we find that Petitioner has met its burden of showing that claims 1, 2, 4, 5, and 13 are anticipated by Johnson, but has failed to meet its burden as to claim 3.” slip op. at 18
Patent outcomesUS 10,632,228 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,632,228 - Eve Energy Co., Ltd. v. Varta Microbattery GmbHNo claims unpatentablePTAB · Aug 8, 2022 · IPR2021-00474 · APJ Christopher L Crumbley · IPR · Final written decision
Claim 13 was not shown unpatentable because Petitioner did not establish a reason to modify Brown; challenges to claims 1–12 and the contingent motion to amend were dismissed as moot.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“In the Decision on Institution, we determined that a person of ordinary skill in the art at the time of the invention of the ’581 patent is a person holding a bachelor’s degree in engineering (mechanical, electrical or chemical), general science, materials science or the equivalent and 3-4 years of work experience with electrochemical cell packaging systems. DI 8 (adopting Petitioner’s proposed definition). For purposes of this Final Written Decision, we maintain our determination from the Decision on Institution because neither party disputes that determination and because the level of skill is consistent with the record. See PO Resp. 5 (stating that “[t]he claims are patentable regardless of which definition is used.”); see generally Pet. Reply.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that the terms of the challenged claims should be given their ordinary and customary meaning, but does not state with specificity what the ordinary and customary meaning of any term may be. Pet. 17. In our Decision on Institution, we interpreted Petitioner’s position to be that no claim term of the ’581 patent requires express construction, and Petitioner did not disagree with this understanding during trial. Patent Owner agreed that no claim term required construction beyond its plain and ordinary meaning. PO Resp. 6. We agree that no claim terms require express construction for purposes of resolving the dispute between the parties. See Nidec Motor,868 F.3d at 1017; Vivid Techs., 200 F.3d at 803 (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“the output conductor of a battery cell appears “simple” and that the proposed modification to Brown may be one of a small set of possible options. But that does not remove Petitioner’s obligation to explain why a person of ordinary skill in the art would have had some reason to make the modification to the prior art that has been proposed. Requiring a petitioner to articulate a reason to modify the prior art guards against hindsight evaluation of a modification which may only appear obvious after the fact. For this reason, the Supreme Court has noted that “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness,” and that “[t]o facilitate review, this analysis should be made explicit.” See KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Here, after evaluating the entirety of the factual record adduced at trial, we cannot conclude that Petitioner has set forth a sufficiently supported reason why a person of ordinary skill in the art would have modified Brown. First, we agree with Patent Owner that Petitioner’s articulated goal of maximizing the volume of active material in the cell is undercut by the modification it proposes. As Petitioner’s expert Mr. Juzkow admitted, relocating Brown’s output conductor to the bottom of the cell would reduce the volume available for active material by approximately one percent. While we do not disregard Mr. Juzkow’s subsequent testimony that other modifications to Brown’s cell (such as removal of the central screw cavity) could compensate for this loss in volume, the fact remains that Petitioner did not propose these additional modifications in the Petition. It is incumbent on Petitioner to set forth all modifications to the prior art it plans to rely on, and justify why a person of ordinary skill in the art would have had reason to make them, so that we may fully evaluate whether it would have been obvious to do so. In any event, even if we were to accept Mr. Juzkow’s late assertion of other modifications that could be used to compensate for the loss in volume of active material, the fact remains that it is these other modifications that would be serving the motivation proposed by Petitioner of maximizing the volume of active material; relocating the output conductor would have no positive effect towards this modification. Thus, we conclude that Petitioner’s expressed motivation of maximizing active material volume has no rational relationship to the modification of Brown that is central to its Petition, of relocating the output conductor from the side of the casing to the bottom.” slip op. at 24
- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
“propose substitute claims 26–38 in the event that we determined original claims 1–13 to be unpatentable. MTA 4. Original claims 1–12 are no longer at issue in this proceeding, having been canceled and replaced by substitute claims 14–25 via a granted Motion to Amend in IPR2020-01211. And we have found that Petitioner has not established by a preponderance of 13 Although not raised in briefing by either party, we have also evaluated whether estoppel under 37 C.F.R. § 42.73(d)(3)(i) would require a finding of unpatentability of claim 13 in light of our prior determination in IPR2020- 01211 that claims 1–12 are unpatentable. See 37 C.F.R. § 42.73(d)(3)(i) (“A patent applicant or owner is precluded from . . . obtaining in any patent: A claim that is not patentably distinct from a finally refused or canceled claim.”). We conclude that it does not. The Board has previously held that defending the patentability of a previously-issued claim in an inter partes review does not qualify as “obtaining in a patent” that claim, and therefore patent owner estoppel does not apply in this situation. See Apple Inc. v. ContentGuard Holdings, Inc., IPR2015-00458, Paper 9, 8 (PTAB July 15, 2015). the evidence that claim 13 is unpatentable. The contingency on which Patent Owner’s Motion to Amend is based, therefore, has not occurred. We dismiss the Motion to Amend as moot.” slip op. at 27
Patent outcomesUS 9,496,581 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,496,581 - Fluid Energy Group Ltd. v. Green Products And Technologies, LLCNo claims unpatentablePTAB · Jul 5, 2022 · IPR2021-00357 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1–8 were not shown unpatentable: the asserted obviousness combinations failed to establish claim 1’s required removal of cementitious material from a distinct surface, and the precise limitations of claims 5 and 6.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Accordingly, we agree with Petitioner that Patent Owner’s argument, that “[p]roviding a composition does not require understanding the nuances of each chemical contained therein,” is flawed. Sur-reply 1. To determine whether a claim is unpatentable for obviousness to one of ordinary skill in the pertinent art, we consider “the differences between the subject matter sought to be patented and the prior art.” 35 U.S.C. § 103(a) (2006); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Here, Patent Owner acknowledges that “[t]he primary difference between known methods and the claimed invention of the ’912 Patent is a novel composition that solved problems associated with the previously used prior art compositions.” Sur-reply 11. Further, the specification informs that “[o]ne of skill in the art will recognize that these compositions are not intended to be limiting, and variations in ingredients and proportions can be made without departing from the spirit of the invention.” Ex. 1001, 3:13–16. Accordingly, Patent Owner’s view that an ordinarily skilled artisan would only need to rely on pre-formulated cleaning compositions and reported safety information, without “their own chemical knowledge,” is inconsistent with the disclosure of the ’912 patent. Sur-reply 2–3. An ordinarily skilled artisan, as required by the ’912 patent, would understand the nuances of the chemicals required by the terms of the claims. Therefore, we find that Petitioner’s definition, on this record, is representative of the level of ordinary skill in the art and consistent with the disclosures of the ’912 patent. See Ex. 1001, 3:13–16.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“of intended purpose or use, “can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim” as drafted, taking care to avoid importing “‘extraneous’ limitations from the specification.” MPEP § 2111.02 (9th ed. rev. 10.2019 June 2020) (quoting Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989)). Particularly, the MPEP explains that: If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Based on the information presented on this record, we determine that nothing in the body of claim 1 supports a determination that the “cleaning” clause of the preamble represents an additional method step of the claimed invention. Ex. 1001, 3:23–24. To the contrary, the body of the claim fully and completely sets forth all of the required method steps of the invention, as well as the components of the required composition. See id. at 3:25–4:2. Specifically, independent claim 1 comprises three method-step limitations, namely, “providing a composition,” “applying the composition to a surface,” and “removing the composition . . . from the surface.” Id. Those limitations, taken together, indicate that the preamble’s mention of “cleaning” is a non-limiting intended use of the composition specified in the body of the claim.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“To be clear, claim 1 requires removing a “released cementitious material” from “a surface.” Id. at 3:28–4:2. Petitioner provides no persuasive reason why an ordinarily skilled artisan would have understood the term “cementitious material” to include “an efflorescence”—indeed, as just noted, the ’912 patent expressly distinguishes those two materials. Id. at 2:59–61. Claim 1 does not broadly encompass a step of removing a released efflorescence from a cementitious material, but is limited to by its plain terms to removing a “released cementitious material” from “a surface.” Id. at 3:28–4:2; see also id. at 2:61–62 (distinguishing “an efflorescence” from “cementitious materials”). In a nutshell, the claim language does not explicitly or implicitly support a construction that broadly encompasses a method of “applying the composition to a surface” of a cementitious material to “release” an efflorescense (id. at 3:28–29), even though one embodiment seems to allow for such use (id. at 2:38–39, 2:59–61). Taking account of the totality of the information presented, we determine that construing “surface” and “cementitious material” using the examples in the majority of the embodiments provided in the ’912 patent specification is necessary to “tether the claims to what the specification[] indicate[s] the inventor actually invented.” Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011). In doing so, we adopt “[t]he construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention . . . [which] in the end, [is] the correct construction.” Phillips, 415 F.3d at 1312. Accordingly, on this record, we construe claim 1, and each other challenged claim through dependence from claim 1, to require a step of applying a composition to “a surface” structurally separate and distinct from the “cementitious material” that is released and removed “from the surface.” Id. at 3:28–4:2.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Sargent discloses “that urea hydrochloride is an inexpensive and useful agent for the removal of the build-up of water-insoluble metal salts on surfaces, and the dissolution of water-insoluble metal salt dispersions or suspensions.” Resp. 21–22 (quoting Ex. 1006, 2:3–6). Although the background section of the ’912 patent describes the “removal of water-insoluble cementitious and lime materials” as “a difficult process,” Petitioner directs us to no evidence sufficient to establish that calcium carbonate is “a cementitious material” within the meaning of claim 1. Ex. 1001, 1:13–14, 3:28–29; see Pet. 22; Reply 14 (totality of Petitioner’s information on point). Instead, in conclusory fashion, Petitioner simply assumes that Sargent’s disclosure of “water-insoluble metal salt dispersions or suspensions” and “calcium carbonate” constitute “cementitious material” within the scope of claim 1. Reply 14; see Pet. 22 (relying on Sargent’s disclosure of the removal of “calcium carbonate”); see also Ex. 1003 ¶ 103 (conclusory opinion cited at Pet. 22 and Reply 14). Further, Petitioner assumes that the “applying” and “removing” steps of claim 1 are satisfied by Sargent’s application of a composition “to a surface of a cementitious material to release a portion of the cementitious material therefrom.” Pet. 16 (Petitioner’s emphasis). Specifically, Petitioner argues that Sargent teaches the removal of released cementitious material from the surface because an ordinarily skilled artisan “would understand that a result of Sargent’s rinsing process is to remove the composition by rinsing with water, which will also release at least a portion of any cementitious material, such as calcium carbonate, dissolved from the surface.” Id. at 22 (citing Ex. 1006, 6:57–7:2; Ex. 1003 ¶ 103). For reasons explained above in our claim construction analysis, however, we construe claim 1 to require application of the composition to a surface distinct from the cementitious material being removed from the surface. See supra II.C.2. As Patent Owner contends, “It would be absurd to hold that cleaning a surface involves removing the surface from the surface,” because “[t]he background section of the ’912 Patent clearly contemplates that surfaces to be cleaned include surfaces of vehicles and that it is undesirable to ‘damage the target surface.’” Resp. 7 (citing Ex. 1001, 1:46). As explained above, we do not give limiting effect to the preamble of” slip op. at 25
Patent outcomesUS 7,938,912 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,938,912 - Applied Materials, Inc. / Intel Corporation et al. v. Demaray LLCNo claims unpatentablePTAB · Jun 29, 2022 · IPR2021-01031 · APJ Kimberly Mcgraw · IPR · Final written decision
Claims 1–21 were not shown unpatentable because Petitioner did not establish that the prior art taught or suggested the claimed narrow band-rejection filter or a sufficient reason to add one.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“In our Decision on Institution, we adopted Petitioner’s proposal regarding the level of one of ordinary skill in the art, except that we deleted the qualifier “at least” to eliminate vagueness as to the appropriate amount of relevant experience. Inst. Dec. 10 (noting that the qualifier expands the range without an upper bound, i.e., encompassing an unlimited amount of years of experience, and thus, does not meaningfully indicate the level of ordinary skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner assert that construction of any claim term is required to resolve any issues in dispute. See Pet. 11 (citing Ex. 1002 ¶ 54); PO Resp. 10–11.” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“patent. Petitioner, who bears the burden to show Hirose is prior art, asserts that Hirose qualifies as prior art under pre-AIA 35 U.S.C. § 102(e) because Hirose’s filing date of July 18, 2001 is before the March 16, 2002 effective filing date of the ’657 patent. See Pet. 5. Patent Owner responds that Hirose does not qualify as prior art to the ’657 patent because the inventors of the ’657 patent conceived and reduced to practice the ’657 invention on or before Hirose’s filing date of July 18, 2001, likely as early as June 13, 2001. PO Resp. 12. To support this position, Patent Owner provides argument and evidence relating to the conception of the subject matter recited in claims 1–8 and 10–21. Id. at 15– 39. An inventor may antedate a § 102(e) reference by showing that the invention was conceived before the effective date of the reference, followed by reasonably continuous diligence until the constructive reduction to practice. Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356, 1362 (Fed. Cir. 2001). Evidence of such conception and reduction to practice must be provided on a claim-by-claim basis.” slip op. at 18
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We agree with Dr. Glew’s testimony that Hong, like Barber, does not suggest that a filter is required to protect a DC power source applied to a target from an RF power source applied to substrate. Ex. 2009 ¶ 152. We further agree that, rather than supporting Petitioner’s position, Hong supports Patent Owner’s position that at the time of the invention, one of ordinary skill in the art would not have thought that RF coupling into a remote pulsed DC power source was a concern or that it would have been desirable to place a filter between the DC power source and the substrate. Id. ¶ 153.” slip op. at 39
Patent outcomesUS 7,381,657 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,381,657 - Applied Materials, Inc. / Intel Corporation et al. v. Demaray LLCNo claims unpatentablePTAB · Jun 29, 2022 · IPR2021-01091 · APJ Kimberly Mcgraw · IPR · Final written decision
Claims 1–21 were not shown unpatentable because the petitioner failed to establish the claimed narrow band-rejection filter or a sufficient reason to add one to Barber’s system.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Decision on Institution, we adopted Petitioner’s proposal regarding the level of one of ordinary skill in the art, except that we deleted the qualifier “at least” to eliminate vagueness as to the appropriate amount of relevant experience. Inst. Dec. 10 (noting that the qualifier expands the range without an upper bound, i.e., encompassing an unlimited amount of years of experience, and thus, does not meaningfully indicate the level of ordinary skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner assert that construction of any claim term is required to resolve any issues in dispute. See Pet. 11 (citing Ex. 1002 ¶ 54); PO Resp. 10–11. In our Decision on Institution we invited the parties to address whether the claim term “providing an RF bias that corresponds to the narrow band rejection filter to the substrate” requires that (1) the frequency of the RF bias be the same as the frequency at which the filter operates or whether (2) the frequency of the RF bias could be a shift from the frequency at which the filter operates. Inst. Dec. 37–38. Patent Owner states the term should be construed according to its plain and ordinary meaning, which the parties in the copending litigation allegedly agreed requires the claimed filter “to have a rejection band set at a frequency of the RF bias power supply.” PO Resp. 10 (citing Ex. 2021; Ex. 2022, 7–10). Petitioner “disputes PO’s suggestion of ‘agree[ment] (EX 2022, 10)” but argues that Patent Owner’s “positions are not dispositive because they do not distinguish the prior art.” Reply 1. On the full record now before us, we agree that express construction of this term is not necessary as resolution of the present dispute does not turn on whether the frequency of the RF bias is the same as, or a shift from, the frequency at which the filter operates. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“narrow band-rejection filter (aka notch filter).” Pet. 22–23. Petitioner’s expert, Dr. Subramanian, testified that the difference between a narrow band-rejection filter and a band-rejection filter depends on the relationship between the bandwidth and the center frequency. See, e.g., Ex. 2030, 95:15– 21 (explaining that the bandwidth is “much, much, much smaller than the center frequency”). There is inadequate evidence that the bandwidth of Hirose’s filter is sufficiently narrow to constitute a narrow band-rejection filter. Rather, the evidence of record shows that Hirose’s filter is a band-rejection filter, not a narrow band-rejection filter.” slip op. at 29
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Not reached
“Petitioner met its burden of production to demonstrate that Hirose, which has a filing date prior to the filing date of the ’657 patent, was prior art by asserting Hirose was prior art under § 102(e). See Dynamic Drinkware, 800 F.3d at 1379. Hirose’s earlier filing date shifts the burden of production to Patent Owner to produce evidence supporting a date of invention before Hirose’s filing date. See id. With its Response, Patent Owner presents evidence it contends shows a date of conception of claims 1–8 and 10–21 prior to July 18, 2001, followed by reasonably continuous diligence. For the purposes of this decision, we need not determine whether Hirose qualifies as prior art, because, as explained below, even if Hirose qualifies as prior art, Petitioner has not sufficiently shown that all of the asserted claims would have been obvious over the grounds asserting Hirose.” slip op. at 18
Patent outcomesUS 7,381,657 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,381,657
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.