- PTAB · Oct 12, 2023 · IPR2023-00614 · APJ Zhenyu Yang · IPR · Institution
The Board instituted review of claims 1–3, 6–18, 21–24, and 27–29 on all asserted grounds, finding a reasonable likelihood of obviousness over Ducharme, Ianiro, Katzir, and Hasnain.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Patent Owner has not persuaded us to exercise our discretion to deny institution. Accordingly, we institute an inter partes review of all challenged claims based on all grounds raised in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“consider “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, 8. We focus our analysis on Ducharme, one of the primary references asserted in the Petition. Although Ducharme was “not before the Office during examination of the [’]895 Patent,” Patent Owner asserts that it is cumulative to a reference that “was presented to the Office during examination by IDS.” Prelim. Resp. 42–43. Patent Owner does not point to, and we have not found, any evidence showing discussion or application of the previously presented reference by the Examiner during prosecution of the ’895 patent or its related patents. In other words, “the record of the Office’s previous consideration of the art is not well developed or silent.” Advanced Bionics, 10. In such situations, “a petitioner may show the Office erred by overlooking something persuasive.” Id.; see also id. at 8 n.9 (“An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.”). On this record, Petitioner has shown sufficiently that the Examiner overlooked Ducharme’s teachings of the limitations that were the basis for allowing the challenged claims. Indeed, the Examiner allowed the challenged claims, stating that the closest prior art references lack the teachings of the emitted light being suitable for the commercial image recording when the emitted light is simultaneously at least 1000 lumens when either the first or the second LEDs are lit, is broad-spectrum white light having a color deviation corresponding to less than 5 points of both green and magenta of color compensation, and has a color rendering index of light emitted from each of the first or the second LEDs (whichever is lit) that is greater than 90. Ex. 1002, 150. Petitioner’s evidence indicates that Ducharme teaches an LED light suitable for commercial image recording that includes a plurality of first white LEDs having a first spectrum and a plurality of second white LEDs having a second spectrum. See, e.g., Ex. 1005, 4:1–7. Petitioner’s evidence also indicates that a person of ordinary skill in the art would have had reason to select first white LEDs with a daylight spectrum and second white LEDs with a tungsten spectrum. See, e.g., Ex. 1003 ¶ 449; Ex. 1006 ¶ 53. Further, Petitioner’s evidence indicates that LEDs satisfying the light quality parameters recited in the challenged claims were known to those of ordinary skill in the art. See, e.g., Ex. 1003 ¶ 480; Ex. 1005, 25:36–43; Ex. 1007, 7:11–15; Ex. 1008, 4:1–3. Thus, the evidence cited in the Petition demonstrates that the Office” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties agree that, for purposes of this Decision, no claim term needs specific construction beyond its plain and ordinary meaning. Pet. 14; Prelim. Resp. 14. Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to address the construction of any claim term.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a Bachelor of Science degree in electrical engineering, or a closely related field, along with at least two years of experience in the design of entertaining lighting systems, and the design and use of LEDs.” Pet. 14 (citing Ex. 1003 ¶ 32). Patent Owner does not dispute Petitioner’s definition of the skill level at this stage of the proceeding. Prelim. Resp. 13. For purposes of this Decision, we adopt Petitioner’s definition of the skill level because it is consistent with the prior art’s demonstration of the skill level at the time of the invention.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 10,566,895 - PTAB · Oct 10, 2023 · IPR2023-00611 · APJ Christopher L Crumbley · IPR · Institution
The Board instituted IPR on claims 1, 3, 4, 7–13, 23, 25, 26, 28, 29–39, and 41–45 on all asserted grounds, finding a reasonable likelihood of success over Mueller, Ansems, and Simon.
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.”” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“whether the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, Paper 6 at 8. Central to this analysis is factor (c) of Becton, Dickinson, which “focuses on the record developed by the Office in previously reviewing the art or arguments.” Id. at 10. In cases where the Office raised a specific teaching of a reference during prosecution, and the petitioner disagrees with that specific finding of record, “then ordinarily the petitioner’s required showing of material error must overcome persuasively that specific finding of record.” Id. On the other hand, we are often presented with circumstances such as those found in the present case, where the prior art that was previously presented to the Office was not substantively remarked upon or applied in a rejection of the claims. This often occurs in the context of art submitted on an IDS, which is the manner in which the majority of the references identified by Colt in this case were incorporated into the file history. Ex. 1002, 216 (Kit, Ducharme ’261, Mueller ’029), 217 (Katzir). Only Simon” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Skill Quasar asserts that a person of ordinary skill in the art at the time of the invention would have had “at least a Bachelor of Science degree in electrical engineering, or a closely related field, along with at least two years of experience in the design of entertaining lighting systems, and the design and use of LED lights.” Pet. 16 (citing Ex. 1003 ¶¶ 32–33). Colt does not dispute Quasar’s characterization of the level of skill, arguing that “the proposed level of ordinary skill does not affect the ultimate analysis.” Prelim. Resp. 15. At this stage of the proceeding, we adopt Quasar’s definition of the level of skill in the art, which is consistent with the disclosure of the ’224 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 › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“35 U.S.C. § 282(b), as articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. See 37 C.F.R. § 42.100(b) (2022). Under this standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. See Phillips, 415 F.3d at 1312–13. Both parties agree that the terms of the claims of the ’224 patent should be given their ordinary and customary meaning, but neither party further elaborates on what those meanings are for any particular claim term. Pet. 16–17; Prelim. Resp. 15. We interpret the parties’ positions to be that no claim term of the ’224 patent requires express construction for purposes of deciding whether to institute trial. Upon review of the record and the parties’ arguments, we agree. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,197,224 - Cisco Systems, Inc. v. Ramot At Tel Aviv University, Ltd.No claims unpatentablePTAB · Oct 3, 2023 · IPR2022-00576 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 13, 14, and 23–29 were not shown unpatentable as obvious over Roberts and Taraschuk, with or without Wright, because the asserted combinations did not teach or suggest the claimed delta features.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not discern a substantial difference between the parties’ definitions for the level of ordinary skill in the art. Instead, we determine that the parties’ definitions are substantially similar. We adopt Petitioner’s definition of the level of skill in the art, which is consistent with the disclosure of the ’872 patent and asserted prior art of record. The findings and conclusions rendered in this Decision would not change had we adopted Patent Owner’s definition.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We need not construe any claim term in our Decision in order to resolve the issues before us. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“for a LUT having the recited deltas except for Dr. Blumenthal’s analysis. Although Wright generally teaches compensating for mismatches, Dr. Blumenthal’s analysis fills in limitations 13.8 and 13.9––Petitioner does not set forth a sufficiently supported reason for using the specific values recited in limitations 13.8 and 13.9. At best, Petitioner presents an “obvious to try rationale”: In addition to the reasons mentioned above, a POSITA would have found it obvious to try a mapping scheme in which entries in the look-up table as taught by Taraschuk are selected such that successively decreasing inputs correspond to digital output entries with either decreasing, increasing, or similar deltas between their values. . . . Doing so would have involved choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. In that regard, the deltas between values of the corresponding digital outputs can either increase, decrease, or stay the same. Accordingly, there are only three possible relationships between deltas of successive digital outputs. With so few possibilities, a POSITA would have found it obvious to try each of them. Pet. 59 (citing Ex. 1003 ¶ 265). The analysis for 13.8 is incorporated by reference in 13.9. See Pet. 60. Although there are three possible relationships between two, consecutive deltas, there are many possible sequences of deltas––Petitioner does not sufficiently show a finite number of solutions in its challenge.” slip op. at 30
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner’s argument that the portions of Taraschuk in column 7, lines 61–67 and column 8, lines 13–15 cited by Petitioner in its challenge to claim 13 teach “an end-to-end approach” “because that calculation involves predistortion of the input M-bit word by subtracting a digitized analog sample of the ultimate output,” and as such, teach “[a]n approach that necessarily does one combined correction for all of the nonlinearities that occur in-between those ends—whether bit mismatches in the digital logic or non-linearities in the Mach-Zehnder modulator.” PO Sur-reply 18 (citing PO Resp. 30–36; Ex. 2018 ¶¶ 48, 49, 85–87, 89, 103; Ex. 1006, 7:34–39, 7:61–67). We further agree with Patent Owner’s assertion that [Patent Owner] and Prof. Dallesasse are not suggesting that Dr. Blumenthal should model the logic-level mismatches. But rather pointing out that calculating an idealized sinusoidal response in isolation is not obvious (or flowing naturally) from a reference that can only deal with compensating the combined response of the modulator and digital logic mismatches together—via real-time pre-distortion fed back from the ultimate output and subtracted from the input. Dallesasse testifies that Dr. Blumenthal starts with the premise that all that is required is deriving a complementary function to the sinusoidal response. . . . But this ignores that the disclosure of Taraschuk describes compensating “the sinusoidal response of the modulator” and “logic level mismatches through the D/A converter” together. . . . Dr. Blumenthal’s complementary sinusoidal correction curve won’t do that. The combined non-linearity from the multiple sources likely won’t simply be evenly sinusoidal. Taraschuk does not disclose, or in my opinion render obvious, any pre-calculation solution. (Taraschuk mentions a real-time analog feedback loop to pre-distort, which would not involve pre-calculation.) And it certainly does not suggest one that could deal with the combined and likely complex non-linearities described.” slip op. at 28
Patent outcomesUS 11,133,872 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,133,872 - Hope Medical Enterprises, Inc. v. Fennec Pharmaceuticals, Inc.No claims unpatentablePTAB · Sep 1, 2023 · IPR2022-00125 · APJ Julia Heaney · IPR · Final written decision
The Board granted the revised noncontingent motion to amend, canceled claims 18 and 20, and entered substitute claims 28 and 29, which were not proven obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, relying on the testimony of Dr. Rogers, contends that a person of ordinary skill in the art would have [had] a bachelor’s degree or equivalent in any of the pharmaceutical sciences with at least 5 years of experience in solid state chemistry; a master’s degree in any of the pharmaceutical sciences with at least 3 years of experience in solid state chemistry; or a Ph.D. in any of the pharmaceutical sciences with 1 year of experience in solid state chemistry. Pet. 8 (citing Ex. 1008 ¶¶ 24–28). Petitioner further states that such “[a] person could also have qualified as a [person of ordinary skill in the art] with some combination of (1) more formal education and less technical or professional experience or (2) less formal education and more technical or professional experience.” Id. Patent Owner does not dispute Petitioner’s proposed definition of a person of ordinary skill. See generally MTA, RMTA. 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 ’363 patent and the prior art of record. We note, however, that neither party contends that the outcome of this case would differ based on our adoption of any particular definition of a person of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In our Preliminary Guidance, we construed “for a pharmaceutical composition” to mean “in combination with pharmaceutically acceptable excipients,” based on the ’363 patent’s definition providing that “[t]he terms ‘formulation’ or ‘pharmaceutical composition’ as used herein refers to the drug in combination with pharmaceutically acceptable excipients.” Prelim. Guid. 5–6 (citing Ex. 1001, 12:26–28; Ex. 2010, 17:11–12; Ex. 2011, 26:26– 27). We also encouraged the parties to address whether “for a pharmaceutical composition,” which appears in the preamble of substitute claims 28 and 29, is limiting, as opposed to a statement of intended use or purpose. Id. at 6. Following our Preliminary Guidance, the parties submitted further arguments concerning the term “for a pharmaceutical composition.” Patent Owner argues the term requires that the claimed process provide STS that is sufficiently pure for use in a pediatric patient (see RMTA 8–11) and that the word “drug” in the ’363 patent’s definition of “pharmaceutical composition” requires that the anhydrous STS is of sufficient purity for pharmaceutical use. Reply RMTA 3. Petitioner argues that the construction set forth in our Preliminary Guidance was correct. See Sur-reply RMTA 2–3. Having considered the arguments and evidence, we do not further construe the term “for a pharmaceutical composition” in this Decision because, as discussed in our analysis of obviousness below, it is not necessary to construe the term in order to determine whether Petitioner has met its burden of demonstrating by a preponderance of the evidence that proposed substitute claims 28 and 29 are unpatentable. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 13
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“1. Reasonable Number of Substitute Claims A motion to amend must “propose a reasonable number of substitute claims.” 35 U.S.C. § 316(d)(1)(B); see 37 C.F.R. § 42.121(a)(3) (“A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims.”). Patent Owner proposes the same number of substitute claims as the original challenged claims that are cancelled, i.e., a one-to-one substitution for a total of two substitute claims. MTA 2; RMTA. “There is a rebuttable presumption that a reasonable number of substitute claims per challenged claim is one (1) substitute claim.” Lectrosonics, Paper 15 at 4; see 37 C.F.R. § 42.121(a)(3). Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner proposes a reasonable number of substitute claims. 2. Support in the Original Disclosure Patent Owner has identified written description support in the originally filed disclosure of the ’363 patent for the new limitations added for the proposed substitute claims. See RMTA 5–8. We have reviewed Patent Owner’s assertions of support in the original disclosure for the proposed revised substitute claims and determine that sufficient support exists. Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner has met this requirement. 3. Respond to a Ground of Unpatentability “A motion to amend may be denied where . . . [t]he amendment does not respond to a ground of unpatentability involved in the trial.” 37 C.F.R. § 42.121(a)(2)(i). Patent Owner asserts that the proposed revised substitute claims are patentable over the combination of references that forms the basis of the obviousness ground on which we instituted trial. RMTA 12–13. Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner has met this requirement. 4. Scope of the Claims Patent Owner asserts that the proposed revised substitute claims do not enlarge the scope of original claims 18 and 20. RMTA 5. We have reviewed Patent Owner’s assertion that the purity amendments of proposed revised substitute claims 28 and 29 narrow the claims’ scope. Id. Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner has met this requirement.” slip op. at 17
- BurdenNot shown unpatentable
“determine the evidence relied on by Petitioner does not support Petitioner’s position that a person of ordinary skill in the art would have been motivated to combine Levenson, Sherman, Edwards, and USP. Petitioner’s contention that it would have been obvious to a person of ordinary skill in the art to combine the teachings of Levenson with Sherman is based on Dr. Rogers’s testimony that “[b]oth references disclose synthesis of sodium thiosulfate pentahydrate.” Ex. 1008 ¶ 151; see Pet. 36, 38. Dr. Rogers further testified it would have been obvious to add Edwards’s dehydrating step to the preparation of STS pentahydrate “which is obtained following the teachings of Levenson and Sherman” because “Edwards itself discloses dehydrating [STS] pentahydrate.” Id. ¶ 154. The Petition included these arguments even though they were inconsistent with Petitioner’s previous statement, during the Sherman prosecution, that Levenson taught STS heptahydrate, and therefore “does not provide any teaching with respect to [STS] pentahydrate.” Ex. 2013, 97. This prior inconsistent statement undercuts Petitioner’s rationale for combining Levenson, Sherman, and Edwards in this proceeding. Moreover, Petitioner’s rationale for combining the references in this proceeding is inconsistent with its statements about Levenson during the Sherman prosecution. Recognizing this inconsistency, Petitioner now takes the position that the Petition and Dr. Rogers’s testimony were incorrect. Paper 32; see Tr. 21:14–22:7, 59:1–2 (reemphasizing that “Petitioner maintains the statements that it made in the Sherman prosecution regarding Levenson”). Petitioner attempts to rationalize the inconsistency between its statements in the Sherman prosecution (including that “Levenson does not provide any teaching with respect to [STS] pentahydrate”) and its position in this proceeding by arguing that Dr. Rogers relies on Levenson as teaching surface activation “regardless of any particular hydrates Levenson discloses.” Tr. 22:8–9. That argument is not persuasive, because Dr. Rogers’s declaration clearly states the primary reason for his opinion that it would have been obvious to a person of ordinary skill in the art to combine the teachings of Levenson with Sherman: “[b]oth references disclose synthesis of sodium thiosulfate pentahydrate.” Ex. 1008 ¶ 151. Contrary to Petitioner’s argument, Dr. Roger’s reliance on the surface activation teachings of Levenson is because he believes that both references pertain to STS pentahydrate; the surface activation teachings are not stated as an independent reason to combine the references. Id. Petitioner provides no further explanation of how a person of ordinary skill in the art would have been motivated to combine Levenson’s teachings regarding manufacture of STS heptahydrate with Sherman’s and Edwards’s teachings regarding STS pentahydrate, or how a person of ordinary skill would have regarded the difference between STS hydrates. Dr. Rogers’s acknowledgement of stability differences among STS hydrates highlights the insufficiency of Petitioner’s showing in this regard. See Ex. 2005, 35, 39. Having changed its position at the close of trial and having effectively withdrawn Dr. Rogers’s testimony as to similarities between Levenson and” slip op. at 24
Patent outcomesUS 10,792,363 not shown unpatentableClaim constructioncites KSR · GrahamPatents in suitUS 10,792,363 - PTAB · May 12, 2023 · IPR2023-00160 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1–30 and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a two-part framework for evaluating arguments under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had “a bachelor’s degree in mechanical engineering, electrical engineering, materials or chemical engineering, physics, chemistry, or a related discipline with at least five years of experience in the design of lithium-ion button-cell battery structures.” Pet. 19. Petitioner further contends that “[l]ess work experience may be compensated by more work experience.” 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. 10. 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 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe each 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) (2019). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Petitioner argues that “[t]he claims should be accorded their ordinary and customary meaning and do not require further construction by the Board for determination of this Petition.” Pet. 21. Patent Owner agrees that “no claim construction is necessary to deny institution.” Prelim. Resp. 10. We determine that no claim term requires express construction for purposes of this Decision.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“these drawbacks in a petition directed to a related patent, where Petitioner argued that “a significant portion of the available space within [Kobayashi’s] cell is reduced by the process of crimping the cell closed.” Id. at 46 (quoting Ex. 2008, 2–3). Patent Owner argues that “Petitioner fails to explain why the beaded-over Kobayashi housing Petitioner and its same expert disparaged in another petition would be used in the present combination of references proposed in this Petition.” Id. at 48. Patent Owner’s argument raises an issue about a tradeoff that a person of ordinary skill in the art might or might not have made: under Petitioner’s proposed combination of teachings, it may be that a person of ordinary skill in the art would have had to accept reduced internal volume, and the consequent reduction in energy capacity, as the price of avoiding short circuits. The question of whether this tradeoff existed and, if so, whether a person of ordinary skill in the art would have made the tradeoff is a factual issue best resolved on the full record to be developed at trial. Patent Owner also argues that a person of ordinary skill in the art would not have replaced Higuchi’s housing with Kobayashi’s to reduce the risk of short circuits. Prelim. Resp. 48–49. Patent Owner points to Petitioner’s arguments in a related case regarding claims 27 and 28 of U.S. Patent No. 11,024,905, where Petitioner argues that it would have been obvious to add Kubota’s insulation tape to Higuchi’s leads 11 and 12, and Patent Owner argues that a similar modification here “could reduce such risk Kobayashi’s housing.” Id. at 48–49 (citing Ex. 2042, 2–4). According to Patent Owner, if “Petitioner and its expert are correct that a [POSITA] would have been motivated to adhere an insulation strip to both sides of Higuchi’s lead, it would not be necessary to change Higuchi’s housing for Kobayashi’s beaded-over housing to reduce the risk of short circuits.” Id. at 49. The fact that the prior art may suggest that some combination of techniques is more desirable than, or otherwise preferred over, the combination on which Petitioner relies does not preclude a finding that the challenged claims would have been obvious over Petitioner’s proposed combination. See Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc., 713 F.3d 1369, 1376 (Fed. Cir. 2013) (quoting In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)). Thus, we have considered Patent Owner’s arguments, and although they cast doubt on Petitioner’s contentions and create a genuine issue of material fact, we are persuaded, on this record, that Petitioner provides sufficient reasoning with rational underpinning to support a motivation to combine the teachings of Higuchi and Kobayashi as proposed. Pet. 21–33. Specifically, Petitioner sufficiently establishes, for purposes of institution, that a POSITA would have had reason to modify Higuchi’s cell to use Kobayashi’s housing in order to reduce the risk that the cell would short circuit. Id. at 23–27. Whether Petitioner sufficiently establishes this issue to prove unpatentability is an issue we need not, and do not, resolve on this preliminary record. We invite the parties to develop these arguments further at trial, to the extent permitted under our rules.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,024,869 - Florida Food Products, LLC v. Kerry Group Services Int’L Ltd.All claims unpatentablePTAB · Apr 26, 2023 · IPR2022-00006 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1–5 are unpatentable as obvious over Voorde and Hara; the Board did not reach the remaining obviousness grounds.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“the invention would have had: a master’s or doctorate degree in food science, biology, chemistry, or a similar field; or a bachelor’s degree in food science, biology, chemistry, or a similar field along with at least 2-3 years of experience in food preservatives generally or more specifically 2-3 years of experience in the chemistry associated with food preservation and nitrates/nitrites [and] would have known that the USDA regulated nitrites for curing meat and would have been able to find these USDA regulations affecting meat products. Pet. 23–34 (citing Ex. 1002 ¶ 48). Kerry’s recitation of the level of ordinary skill in the art is nearly identical. Prelim. Resp. 13–14 (citing Ex. 2001 ¶¶ 43–44). To the extent the parties’ formulations of the level of skill differ, the differences do not appear to be material to any dispute between the parties or any issue of patentability that we must resolve. We determine that the level of ordinary skill the parties propose is consistent with the challenged patent and the asserted art, and adopt that level for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In the Petition, FFP addressed the construction of only one claim phrase, but also submitted that the construction of that phrase does not affect our decision in this case. Pet. 24. Specifically, FFP asked us to adopt a construction that “clarifies that the nitrite results from the added organism reducing the plant nitrate.” Id. at 25. Kerry does not address this construction, and we agree with FFP that construction of that claim phrase has no effect on our decision herein. Thus, we need not adopt it. See Nidec, 868 F.3d at 1017; Vivid Techs., 200 F.3d at 803.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Upon review, we do not believe it is proper to adopt a blanket approach that would assign weight to the entirety of Dr. Baldwin’s 12 In its Sur-Reply, Kerry raises for the first time that, under its definition of the level of skill in the art, Dr. Baldwin is not himself a person of ordinary skill and therefore is not allowed to offer expert testimony from the perspective of a skilled artisan, citing Kyocera Senco Indus. Tools Inc. v. ITC, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022). See Sur-Reply 15 n.1. To the extent that Kerry is seeking to disqualify Dr. Baldwin’s testimony in its entirety under Kyocera, we consider this to be a new argument that differs from Kerry’s initial argument that Dr. Baldwin’s testimony should be afforded little or no weight due to his lack of familiarity with the field of the ’304 patent. Because new arguments made for the first time in sur-reply are not permitted, we will only focus on Kerry’s initial challenge to the testimony of Dr. Baldwin. testimony, regardless of the subject of his particular opinions. It is clear that Dr. Baldwin has expertise in some areas of chemistry, while Dr. Milkowski’s experience is focused on other areas and emphasizes food chemistry. These differences in expertise may impact how we weigh the testimony of both witnesses, but that determination should be made in the context of a specific subject and based on the applicability of each witness’s background to the opinions. Therefore, we decline to adopt Kerry’s proposed approach of giving Dr. Baldwin’s testimony “little to no weight,” and instead will weigh the expertise of both witnesses in evaluating their testimony on specific areas of dispute, if necessary.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Upon review, we find that a person of ordinary skill in the art would have had reason to modify Voorde in the manner FFP suggests. Voorde explicitly discloses the advantages of heating the medium, and there is no disagreement that heating to 50–52°C would have resulted in at least some reduced microbial load, which is all that the claims require.13 Indeed, Voorde describes that as a result of heating to 50–52°C, its medium is “(partially) sterilized.” Ex. 1003, 7. Kerry’s argument that Voorde does not disclose starting with a “sterile medium” (PO Resp. 25) is unavailing; as discussed above, we do not interpret anything in claim 1 or the ’304 patent 13 At oral argument, Kerry raised for the first time a claim construction argument that “heat treating,” as recited in the claims, requires heating to a level in excess of what is required in Voorde, and a person of ordinary skill would have understood the term to refer to sterilization. Tr. 33:4–34:19, 55:3–9. We decline to address this late-arising argument fully, but note that we find that the ’304 patent does not support such a limited interpretation of the term “heat treating.” to require a sterile medium, and Kerry does not direct us to anything in the record that would persuade us otherwise.” slip op. at 18
Patent outcomesUS 11,071,304 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,071,304 - PTAB · Apr 11, 2023 · IPR2022-01478 · APJ Christopher M Kaiser · IPR · Institution
Instituted review of claims 1–30 on all asserted grounds after finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’907 patent, and we do not exercise discretion to deny the Petition. Accordingly, we institute an inter partes review of claims 1–30 of the ’907 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a two-part framework for evaluating arguments under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). In applying this framework, we consider the Becton, Dickinson7 factors that address discretion to deny when a petition presents the same or substantially the same prior art or arguments previously presented to the Office, including:” slip op. at 7
- Skill levelSkill level petitioner adoptedOther
“(“POSITA”) would have had “a Bachelor’s level college degree in Mechanical, Electrical, Materials or Chemical Engineering, or Science, including Chemistry or Physics or a related field and three to four years of training and experience in the design of electrochemical cells and batteries.” Pet. 5–6. Petitioner further contends that “[a]dditional work or research experience can substitute for a lesser or different education, and vice-versa.” Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail even under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 11. 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 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner requests that all claim terms other than “disposed along” be afforded their plain and ordinary meaning, as understood by a POSITA at the time of the purported invention.” Pet. 9. Patent Owner asserts that its arguments “do not hinge on the outcome of an actual controversy about any claim construction.” Prelim. Resp. 12 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We determine that no claim term requires express construction for purposes of this Decision.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,024,907 - Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution deniedPTAB · Mar 14, 2023 · IPR2022-01486 · APJ Christopher L Crumbley · IPR · Institution
The Board denied institution for claims 14–25 because Petitioner did not show a reasonable likelihood that either asserted obviousness combination taught the force-fitting connection limitation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). 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.”” slip op. at 2
- BurdenDenied
“top casing in an overlapping area, the top casing is disposed radially inward of the cup casing in the overlapping area, and the housing cup and the housing top are held together by a force-fitting connection.” Ex. 3001, 1:37–41. Independent claim 23 recites an identical limitation. Id. at 2:55– 59. The remaining challenged claims each depend, directly or indirectly, from one of these two claims. Id. at 1:47–2:29, 4:1–16. Accordingly, all of the challenged claims include a limitation requiring that “the housing cup and the housing top [be] held together by a force-fitting connection.” See 37 C.F.R. § 1.75(c). To show the obviousness of any of these claims, Petitioner must show that the asserted prior art teaches or suggests a “housing cup” and a “housing top” that “are held together by a force-fitting connection.” As discussed above, a battery made in accordance with the teachings of the prior art is not a battery that is “held together by a force-fitting connection” unless that battery would cease to be held together in the absence of the “force-fitting connection.”” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“ANALYSIS A. Claim Construction Petitioner does not propose an express construction of any claim term, and contends that the claims “should be given their ordinary and customary meaning.” Pet. 20. Patent Owner agrees that no term requires construction at this stage of the proceeding. Prelim. Resp. 20. For the reasons discussed below, we are able to determine whether to institute trial without expressly construing any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Expert testimonyPetitioner expert discountedOther
“cites to four paragraphs of Mr. Juzkow’s declaration, without discussing the testimony or providing any statement of its relevance. Pet. 31 (citing Ex. 1002 ¶¶ 402–405). It is unclear whether the cited testimony is intended to support the Kobayashi argument, the Brenner argument, or both. Id. In any case, the first cited paragraph does not contain any testimony supporting either of Petitioner’s arguments, instead merely directing the reader to “§X.A.1.f” of Mr. Juzkow’s declaration, without specifying the page numbers or paragraph numbers where that section can be found. Ex. 1002 ¶ 402. Section IX.A.1.f appears to include eleven additional paragraphs covering six pages and mostly to discuss a reference, Kaun, that is not at issue in this proceeding. Id. ¶¶ 125–135. The other three paragraphs cited in the Petition generally just parrot the conclusory language in the Petition and are of limited persuasive value. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). In any event, Mr. Juzkow’s testimony addresses only whether there is a force-fitting connection, not whether the button cell is held together by the forces. Ex. 1002 ¶¶ 403–405.” slip op. at 15
Claim constructionPatents in suitUS 9,496,581 - Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution deniedPTAB · Mar 14, 2023 · IPR2022-01484 · APJ Brian D Range · IPR · Institution
The Board denied institution because Petitioner did not show that the asserted combinations taught or suggested the claimed force-fitting connection holding the housing cup and top together.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). 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.”” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“top” that “are held together by a force-fitting connection.” Ex. 3001, 1:28– 29 (claim 1), 2:51–52 (claim 23). The parties disagree about whether the references on which Petitioner relies teach or suggest this limitation. Pet. 28–32, 64–66; Prelim. Resp. 53–61. As discussed more completely below, we are able to determine whether to institute trial without deciding precisely what the ’835 patent means when it describes two parts as “held together by a force-fitting connection.” Accordingly, we need not, and do not, construe this term expressly. See Nidec, 868 F.3d at 1017 (quoting Vivid Techs., 200 F.3d at 803). Although we need not decide the precise meaning of “held together by a force-fitting connection” in order to decide whether to institute trial, we note (1) that, without some evidence to the contrary, a battery casing whose half-parts are “held together by” a particular condition must be a battery casing whose half-parts would no longer be held together if the condition were not present, and (2) that neither party has directed us to any evidence to the contrary. Accordingly, whatever a “force-fitting connection” is, a battery made in accordance with the teachings of the prior art is not a battery that is “held together by a force-fitting connection” unless that battery would cease to be held together in the absence of the “force-fitting connection.”” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“Even if we accept Petitioner’s position that Kaun suggests radial forces around its seal, Petitioner has not presented sufficient evidence that such forces hold a housing cup and housing top together. With respect to the key “held together” recitation, Petitioner’s only argument or evidence in the Petition is a sole quote purportedly from Patent Owner’s expert, Dr. Peckerar:” slip op. at 19
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 9,153,835 - PTAB · Feb 22, 2023 · IPR2022-01283 · APJ Christopher L Crumbley · IPR · Institution
The Board instituted review of claims 1–63 on all asserted grounds, finding a reasonable likelihood of prevailing on obviousness over Roberts, Taraschuk, and Wright.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for institution is set forth in 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary 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; see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Having considered the parties’ arguments and the evidence of record, we determine that, for the reasons discussed herein, Petitioner demonstrates a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Patent Owner does not persuade us that we should exercise our discretion under 35 U.S.C. § 325(d) to deny institution. We thus institute an inter partes review on all challenged claims on all asserted grounds. 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
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“We need not proceed to the second prong of the Advanced Bionics framework because Petitioner presents a challenge applying Roberts and Taraschuk in combination with Wright, a reference not considered during prosecution of the ’998 patent. Petitioner’s challenge applying Roberts, Taraschuk, and Wright is also supported by Dr. Blumenthal’s Declaration, evidence which was not before the Examiner during prosecution of the ’998 patent. Patent Owner does not address this additional evidence, or provide us with any reason why they are “substantially the same” as the disclosures of Roberts and Taraschuk that were previously presented to the Office. Accordingly, we conclude that Petitioner presents at least one challenge–– the challenge applying Roberts, Taraschuk, and Wright––that is not based on substantially the same art or substantially the same arguments as previously presented during prosecution. Patent Owner’s arguments that “Wright is in a different field and uses a different approach to compensation as what is discussed (briefly) in Taraschuk” lend support to this finding. Prelim. Resp. 60. Even if we were to continue to the second prong of the Advanced Bionics framework, as Patent Owner urges, we would find that the Office erred in a manner material to the patentability of the challenged claims. Patent Owner’s argument relies heavily on the fact that both Roberts and Taraschuk were cited during prosecution, and while Roberts was the basis of a rejection, Taraschuk is “presumed to have [been] considered” because it was listed by the applicant on an IDS. Prelim. Resp. 2. But when a reference was not the basis of rejection, the Board has found that this weighs “strongly against exercising our discretion to deny institution.” CODE200, UAB et al. Patent Owner’s arguments in this case are nearly identical to those raised in a related case involving both Roberts and Taraschuk, where we found there was insufficient basis to justify discretionary denial. Cisco Systems, Inc. v. Ramot at Tel-Aviv University Ltd., IPR2022-00575, Paper 10 at 32–38 (PTAB Oct. 5, 2022). Patent Owner’s arguments fare no better here, and we incorporate our discussion in the related case herein. Indeed, the record before us in this case is even more persuasive of material error. As Petitioner notes, during prosecution of a related application that is a continuation of the ’998 patent, the Examiner rejected the pending claims over Roberts and Taraschuk after being provided with materials from this inter partes review, including the analysis in the Petition. Reply 1–3. At the very least, this rejection suggests that the Office erred by not rejecting the claims of the ’998 patent over Roberts and Taraschuk. For the foregoing reasons, we are not persuaded to exercise our” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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). According to Petitioner, [a] Person of Ordinary Skill in The Art (“POSITA”) in June of 2007 would have had a working knowledge of optical modulators and modulation schemes. A POSITA would have had a master’s degree in electrical engineering, or an equivalent, and two years of professional experience relating to optical communications, and in particular, optical signal modulation. 5 Patent Owner does not present objective evidence of nonobviousness at this stage of the proceeding. education, and vice versa. Pet. 9–10 (citing Ex. 1003 ¶¶ 21–23). According to Patent Owner: [a] person of ordinary skill in the art with respect to the ’998 Patent would have at least a Master of Science degree in Electrical Engineering or Electrical and Computer Engineering, with at least two years of academic or professional engineering experience in the analysis and design of optoelectronic systems for optical communications. Prelim. Resp. 43 (citing Ex. 2005 ¶ 22). We do not discern a substantial difference between the parties’” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner contends construction of the aforementioned terms is “not necessary to the resolution of any issues presented in the Petition.” Prelim. Resp. 44. As contended by Patent Owner, “[t]he Board did not need to and did not address claim construction in dismissing Cisco’s three prior IPRs challenging related patents with shared specifications.” Id. at 43–44 (citing Ex. 2004). We need not construe any claim term to resolve the institution question, and therefore, do not expressly define any claim term in our Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,342,998
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.