• Nanofiber Solutions, LLC v. Acera Surgical, Inc.Some claims unpatentable
  PTAB · 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 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,632,228
• Peag LLC (D/B/A Jlab Audio) / Audio Partnership LLC et al. v. Varta Microbattery GmbHAll claims unpatentable
  PTAB · Jan 5, 2022 · IPR2020-01214 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 1–8 are unpatentable as obvious over Kobayashi and skilled-artisan knowledge; the contingent motion to amend is granted for substitute claims 9–16.

  RulingsFinal written decision

  • ExcludeNew argument disregardedNew argument consideredGranted in part

    “regarding (1) the motivation to combine Kaun with Kobayashi based on dendrite formation (id. at 2–4), (2) additional motivations to modify Kaun with Kobayashi (id. at 4–6), (3) a reasonable expectation of success relating to Kaun’s central fastener (id. at 6–7), and (4) a reasonable expectation of success regarding Kobayashi’s modified electrode assembly (id. at 7–9). Because we do not reach Petitioner’s challenge based on the combination of Kaun and Kobayashi, as discussed below, we similarly need not reach Patent Owner’s Motion to Exclude Mr. Gardner’s opinions as they relate to the Kaun/Kobayashi combination. Accordingly, we dismiss Patent Owner’s Motion to Exclude these purportedly new opinions as moot. We address Patent Owner’s remaining concerns, relating to Mr. Gardner’s allegedly new testimony regarding Kobayashi, below.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision on Institution, we determined that a person of ordinary skill in the art at the time of the invention of the ’913 patent would have had at least a bachelor’s degree in mechanical engineering, or a similar field, such as materials engineering, chemical engineering, or physics with at least five years of experience in the field of battery design and manufacturing. A person with a master’s degree in one of the above fields could have less practical experience of approximately three years. A person with a PhD could have less practical experience, about two years. A person with less education but more relevant practical experience may also meet this standard. DI 20–21 (adopting Petitioner’s proposed definition). For purposes of this Final Written Decision, we maintain our determination from the Decision on Institution because neither party asserts that our decision depends on that determination and because the level of skill is consistent with the record. See PO Resp. 8 (stating that “[t]he claims are patentable regardless of which definition is used.”); see generally Pet. Reply; MTA Opp. 1–2 (“Regardless of which definition is used, however, Patent Owner’s Substitute Claims are still not patentable.”).” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “In their briefing, the parties dispute the meaning of three claim terms or phrases—(1) “insulating means”, (2) “connected to one another by at least one flat separator,” and (3) “button cell.” See Pet. 17–21; PO Resp. 9–12. We discern no material difference between the parties’ respective constructions. Additionally, Patent Owner, during the hearing, expressed a general view that claim construction was unlikely to affect the parties’ positions.6 In particular, Patent Owner states that “[o]ur position is that really nothing turns on claim construction. You don’t have to engage in claim construction in this case.” Tr. 56:18–20, 56:21–24 (explaining that 6 The parties disagree as to what the newly added phrase “the cup casing include[ing] a first part proximal to the flat bottom area and a second part disposed in the overlapping area, the first part of the casing being disposed radially inward with respect to the second part” means. See generally MTA Opp.; MTA Reply; MTA Sur-reply. Neither party proposes an express construction for this phrase. Id. We address the interpretation of this phrase below and only to the extent necessary to resolve the dispute raised by the parties’ substantive arguments. limitations were submitted for construction “to gain some benefit in the co-pending litigations.”). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) in the context of an inter partes review). Because the outcome of our decision does not depend on either parties’ claim construction position, we determine that none of the identified claim terms require construction to resolve the issues in dispute in this proceeding.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “On this issue, we agree with Petitioner. Mr. Gardner explains that the skilled artisan “would further recognize that the output conductor can be comprised of various materials . . . . which could be metal or various materials . . . . [and] the shape of the output conductor is not particularly limited.” Ex. 1003 ¶ 322. Mr. Gardner further testifies that a person of ordinary skill in the art “would recognize, not only that metal foil conductors could be inserted into these grooves without difficulty, but also that the depth of the grooves can be altered in order to better accommodate metal foil output conductors.” Ex. 1041 ¶¶ 53, 70. We recognize Patent Owner’s argument that numerous factors must be considered and that conventional battery design does not necessarily translate to button cell designs (PO Resp 25–26), but as Mr. Gardner testifies, “this may be true in some cases, [but] the lessons and advantages of using techniques from conventional battery design and applying it to button cell would be obvious to a [person of ordinary skill in the art].” Ex. 1041 ¶ 103. He continues to explain that “[n]aturally, such transposition of techniques would require some modification and adjustments. . . . [and that] each of these adjustments, . . . would be well within the skill of a [person of ordinary skill in the art].” Id. ¶ 104 (describing, for example, “reducing the thickness of the conductor plates of Kobayashi”). We credit Mr. Gardner’s testimony. Moreover, Patent Owner does not allege that any proposed modification would be beyond the skill of a person of ordinary skill in the art or explain how any of the “constraints unique to . . . button cell design” (PO Resp. 25) are relevant to the proposed substitution of a metal foil for a metal terminal electrode plate. See generally id.; Sur-reply. Finally, Patent Owner argues that “[r]eliance upon the general knowledge of a [person of ordinary skill in the art] to provide a missing element in a combination of references is an exception rather than the rule” and “is particularly true where the proposed modification goes to the essence of the claims.” PO Resp. 26. Patent Owner states that “Petitioners have provided no more than ‘conclusory statements and unspecified expert testimony’ to supply a metal foil that is admittedly missing from Kobayashi, and is not shown in any other button cell art.” Id. at 27. We disagree. As the Federal Circuit has explained ‘common sense and common knowledge have their proper place in the obviousness inquiry,’ (a) invoking ‘common sense . . . to supply a limitation that was admittedly missing from the prior art’ should generally only be done when the [missing] limitation in question [is] unusually simple and the technology particularly straightforward;’ and (b) references to common sense ‘cannot be used as a wholesale substitute for reasoned analysis and evidentiary support’ Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1338 (Fed. Cir. 2020)(quoting Arendi S.A.R.L v. Apple Inc., 832 F.3d 1355, 1361–1362 (Fed. Cir. 2013)). Here, Petitioner proposes to substitute a metal foil for a metal terminal electrode plate to provide contact with the inner surface of the button cell housing. Ex. 1006 ¶ 34. As detailed above, Petitioner and Mr. Gardner direct our attention to the prior art of record which suggests use of foil within small battery cells to provide electrical contact was well-known and explains why the skilled artisan would have reduced the thickness of the terminal electrode plate to maximize the available space for active electrode components. Accordingly, unlike the expert in Arendi, Petitioner here provides more than “conclusory statements and unspecific expert testimony.” Arendi, 832 F.3d at 1366.” slip op. at 22

  Patent outcomesUS 9,799,913 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,799,913
• Peag LLC (D/B/A Jlab Audio) / Audio Partnership LLC et al. v. Varta Microbattery GmbHAll claims unpatentable
  PTAB · Jan 5, 2022 · IPR2020-01212 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 1–12 are unpatentable as obvious over Kobayashi and Kaun; the contingent motion to amend is granted for substitute claims 14–25.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “that “Kaun discloses that the cell is sealed ‘by a ‘U’ shaped insulator/gasket 32 . . . to seal the cell without pressure-loading,’” and therefore, venting via a pressure release seal is not required. Pet. 64 (citing Ex. 1005 ¶ 120). In an alternate embodiment, Kaun provides a means to relieve gas pressure “via the peripheral gasket which can reseal after an event.” Ex. 1005 ¶ 91. As Petitioner explains, “Kaun discloses that it is sealed, but upon the application of certain conditions, the internal pressure of gases within the cell can cause gases to vent. During such events, Kaun discloses ‘[t]he specified limit for internal pressure is handled by release via the peripheral gasket which can reseal after an event.’” Pet. Reply 13 (citing Ex. 1041 ¶¶ 37–39; Ex. 1005 ¶¶ 91, 101). Thus, while Kaun discloses venting to prevent pressure build up, Kaun “is otherwise sealed at all times during functioning.” Id. (citing Ex. 1041 ¶¶ 38–39; Ex. 1005 ¶ 101). Neither the ’835 patent nor Patent Owner’s own proposed construction of “closed without being beaded over” requires closure at all times. Furthermore, Mr. Gardner testifies that “[i]f a battery which, upon application of significant internal pressure, would be considered not ‘closed’ at other times, th[e]n almost no battery could be considered closed. [Because] [a]ny battery, when subjected to certain pressures, would leak or burst.” Ex. 1041 ¶ 39. We credit Mr. Gardner’s undisputed testimony in this regard. Mr. Gardner reasons that a person of ordinary skill in the art would understand that Kaun is closed.” Id. Dr. Peckerar similarly testifies that Kaun shows a housing that is closed without being beaded over. Ex. 1034, 131:4–11; 237:19–238:22 (describing Kaun as “closed during normal operation”). Accordingly, the record evidence supports Petitioner’s assertion that the combination of Kobayashi and Kaun suggests a button cell that is closed without being beaded over.” slip op. at 28

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We discern no material difference between the parties’ respective constructions. Additionally, Patent Owner, during the hearing, expressed a general view that claim construction was unlikely to affect the parties’ positions.8 In particular, Patent Owner states that “[o]ur position is that really nothing turns on claim construction. You don’t have to engage in 8 The parties disagree as to what the newly added phrase “the cup casing include[ing] a first part proximal to the flat bottom area and a second part disposed in the overlapping area, the first part of the casing being disposed radially inward with respect to the second part” means. See generally MTA Opp.; MTA Reply; MTA Sur-reply. Neither party proposes an express construction for this phrase. Id. We address the interpretation of this phrase below and only to the extent necessary to resolve the dispute raised by the parties’ substantive arguments. claim construction in this case.” Tr. 56:18–20, 56:20–24 (explaining that limitations were submitted for construction “to gain some benefit in the co-pending litigations.”). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) in the context of an inter partes review). Because the outcome of our decision does not depend on either parties’ claim construction position, we determine that none of the identified claim terms require construction to resolve the issues in dispute in this proceeding.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “Thus, Patent Owner identifies three claimed features—i.e., the jelly- roll configuration, the insulating layer, and a housing closed without being beaded over—as responsible for the improved performance of the VARTA CoinPower® button cell batteries. Id. However, Patent Owner’s declarants testify further and explain that it is the combination of the three identified features, in addition to a flat foil conductor resting flat between the electrode top and housing and welding the foil conductor from outside the housing, that are responsible for improved performance. In particular, Mr. Miehlich, employed in VARTA’s marketing and sales department, testifies that the new cell design, which “provided unprecedented increases in performance, including in energy density, charge capacity, and cycling stability,” consisted of a “jelly roll electrode coil packed tightly into an uncrimped, button-like housing. The electrode coil was protected against short-circuiting by [an] insulating means, and was connected to the cell terminals by a flexible flat foil conductors resting flat between the electrode top and housing, and welded to the housing components from the outside. These features are all found in the claims of the VARTA patents here under review. Ex. 2045 ¶¶ 15–16. And, Dr. Lindner, one of the named inventors of the ’835 patent, testifies that the complex issues we faced were how to safely pack the required amount of electrode material into the very small “button”-sized housing and protect it against short circuits; how to connect the “jelly roll” electrode to the terminals in such a confined space without itself consuming much volume, and how to seal the top and bottom of the cell housing, all while accommodating the expansion and contraction of the electrode winding and the resulting mechanical forces. Ex. 2046 ¶ 33. According to Dr. Linder, the jelly-roll configuration with an insulator, flexible foil output conductors, sealing the cell without crimping, and welding the foil conductors from outside the housing each contributed to the improved battery performance. Id. ¶¶ 34–43. Thus, it is the combination of five elements—not the three claimed in the ’835 patent—that are purportedly responsible for the “vastly increased performance characteristics” of the CoinPower® products. Id. ¶ 43; see also id. ¶ 45 (noting that “various aspects of our invention are covered by 10 issued patents, including the four United States patents here under review” (emphasis added)); Tr. 84:24–85:10 (explaining that welding, for example, is “also part of the success”). Like the patent owner in Fox Factory, “[i]n light of the patentee’s own assertions about the significance of the unclaimed features, no reasonable fact finder could conclude that these features are insignificant.” Fox Factory, 944 F.3d 1375. As a result, the patent claims are not coextensive with the CoinPower® products because those products include “‘critical’ unclaimed feature[s] that [are] claimed by a different patent and materially impacts the product’s functionality.” Id.” slip op. at 40

  Patent outcomesUS 9,153,835 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,153,835
• Peag LLC (D/B/A Jlab Audio) / Audio Partnership LLC et al. v. Varta Microbattery GmbHAll claims unpatentable
  PTAB · Jan 5, 2022 · IPR2020-01213 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1–8 are unpatentable as obvious over Kobayashi and Kwon; substitute claims 10–14, 16, and 17 are allowed, while the motion to amend is denied as to claim 15.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “On this issue, we agree with Petitioner. Mr. Gardner explains that the skilled artisan “would further recognize that the output conductor can be comprised of various materials . . . . which could be metal or any various materials [and] the shape of the output conductor is not particularly limited.” Ex. 1003 ¶ 322. Mr. Gardner further testifies that a person of ordinary skill in the art “would recognize, not only that metal foil conductors could be inserted into these grooves without difficulty, but also that the depth of the grooves can be altered in order to better accommodate metal foil output conductors.” Ex. 1041 ¶¶ 53, 70. We recognize Patent Owner’s argument that numerous factors must be considered and that conventional battery design does not necessarily translate to button cell designs (PO Resp. 20– 21), but as Mr. Gardner testifies, “this may be true in some cases, [but] the lessons and advantages of using techniques from conventional battery design and applying it to button cell would be obvious to a [person of ordinary skill in the art].” Ex. 1041 ¶ 103. He continues to explain that “[n]aturally, such transposition of techniques would require some modification and adjustments. . . . [and that] each of these adjustments, . . . would be well within the skill of a [person of ordinary skill in the art].” Id. ¶ 104 (describing, for example, “reducing the thickness of the conductor plates of Kobayashi”). We credit Mr. Gardner’s testimony. Moreover, Patent Owner does not allege that any proposed modification would be beyond the skill of a person of ordinary skill in the art or explain how any of the “difficulties in manufacturing a button cell” (PO Resp. 52) are relevant to the proposed substitution of a metal foil for a metal terminal electrode plate. See generally id.; Sur-reply. Thus, based on the evidence and argument of record, we determine that the combination of Kobayashi and Kwon, and the general knowledge of those skilled in the art, would suggest the use of foil in place of Kobayashi’s terminal electrode plates, and that the foil would bear flat on one of the lateral ends of the electrode separator assembly.” slip op. at 24

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision on Institution, we determined that a person of ordinary skill in the art at the time of the invention of the ’858 patent would have had at least a bachelor’s degree in mechanical engineering, or a similar field, such as materials engineering, chemical engineering, or physics with at least five years of experience in the field of battery design and manufacturing. A person with a master’s degree in one of the above fields could have less practical experience of approximately three years. A person with a PhD could have less practical experience, about two years. A person with less education but more relevant practical experience may also meet this standard. DI 20 (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. 7 (person of ordinary skill “would possess a Bachelor’s degree in electrical, mechanical or chemical engineering or equivalent [and] would also have two to three” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “We discern no material difference between the parties’ respective constructions. Additionally, Patent Owner, during the hearing, expressed a general view that claim construction was unlikely to affect the parties’ positions. In particular, Patent Owner states that “[o]ur position is that really nothing turns on claim construction. You don’t have to engage in claim construction in this case.” Tr. 56:18–20, 56:20–22 (explaining that limitations were submitted for construction “to gain some benefit in the co-pending litigations.”). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) in the context of an inter partes review). Because the outcome of our decision does not depend on either parties’ claim construction position, we determine that none of the identified claim terms require construction to resolve the issues in dispute in this proceeding.” slip op. at 13

  • ExcludeMotion to exclude, deniedMixed

    “We are not persuaded that the identified portions of Mr. Gardner’s Supplemental Declaration are improper. In the Petition, Petitioner alleged that a person of ordinary skill in the art would have had reason to substitute known metal foils for the metal conductor plates of Kobayashi in order to reduce the size of inactive materials and improve performance. Pet. 69–70 (citing Ex. 1003 ¶ 323). In its Response, Patent Owner argued, among other things, that the metal foil lacks the requisite rigidity to support the remaining components of the winding axis core (PO Resp. 26–27, 31) and that because metal connecting plates 4a and 5b are positioned within recesses of insulating plates 8 and 9, replacing the metal connecting plates with metal foils would result in an unreliable connection because the metal foil would become embedded within the grooves of the insulating plates (id. at 28–29, 30). Mr. Gardner’s supplemental testimony specifically addresses Dr. Peckerar’s and Patent Owner’s concerns that metal foils would be unsuitable in Kobayashi due to their flexibility and thickness as compared to the insulating plates. Ex. 1041 ¶¶ 53 (“the depth of the grooves can be altered in order to better accommodate metal foil output conductors”), 70, 71 (explaining that it is the winding core that provides structure not the output conductor plates), 81, 86 (explaining that the person of ordinary skill in the art could either adjust the size of the output conductors or the depth of the cavities themselves), 87. Therefore, Mr. Gardner’s testimony that the ordinarily skilled artisan would have understood how to account for the technical challenges Patent Owner identified properly responds to arguments raised by Patent Owner in its Patent Owner response. Accordingly, we deny Patent Owner’s Motion to Exclude as to Mr. Gardner’s testimony on this issue.” slip op. at 9

  Patent outcomesUS 9,799,858 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,799,858
• Peag LLC (D/B/A Jlab Audio) / Audio Partnership LLC et al. v. Varta Microbattery GmbHAll claims unpatentable
  PTAB · Jan 5, 2022 · IPR2020-01211 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1–12 are unpatentable as obvious over Kobayashi; substitute claims 14–25 are allowed because the cited combinations do not teach the claimed cup casing structure.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “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 would have had at least a bachelor’s degree in mechanical engineering, or a similar field, such as materials engineering, chemical engineering, or physics with at least five years of experience in the field of battery design and manufacturing. A person with a master’s degree in one of the above fields could have less practical experience of approximately three years. A person with a PhD could have less practical experience, of about two years. A person with less education but more relevant practical experience may also meet this standard. DI 20 (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. 6 (stating that “[t]he claims are patentable regardless of which definition is used.”); see generally Pet. Reply.” slip op. at 14

  • ExcludeMotion to exclude, deniedMixed

    “We are not persuaded that the identified portions of Mr. Gardner’s Supplemental Declaration are improper. In the Petition, Petitioner alleged that a person of ordinary skill in the art would have had reason to substitute known metal foils for the metal conductor plates of Kobayashi in order to reduce the size of inactive materials and improve performance. Pet. 31 (citing Ex. 1003 ¶ 323). In its Response, Patent Owner argued, among other things, that the metal foil lacks the requisite rigidity to support the remaining components of the winding axis core (PO Resp. 22–27, 31), and that because metal connecting plates 4a and 5b are positioned within recesses of insulating plates 8 and 9, replacing the metal connecting plates with metal foils would result in an unreliable connection because the metal foil would become embedded within the grooves of the insulating plates (id. at 28, 31). Mr. Gardner’s supplemental testimony specifically addresses Dr. Peckerar’s and Patent Owner’s concerns that metal foils would be unsuitable in Kobayashi due to their flexibility and thickness as compared to the insulating plates. Ex. 1041 ¶¶ 53 (“the depth of the grooves can be altered in order to better accommodate metal foil output conductors”), 70, 71 (explaining that it is the winding core that provides structure not the output conductor plates), 81, 86 (explaining that the person of ordinary skill in the art could either adjust the size of the output conductors or the depth of the cavities themselves), 87. Therefore, Mr. Gardner’s testimony that the ordinarily skilled artisan would have understood how to account for the technical challenges Patent Owner identified properly responds to arguments raised by Patent Owner in its Patent Owner Response. Accordingly, we deny Patent Owner’s Motion to Exclude Mr. Gardner’s testimony regarding Kobayashi’s modified electrode assembly.” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Upon review of Petitioner’s arguments and supporting evidence, we find that Petitioner adequately shows that a person of ordinary skill in the art would have modified Kobayashi to include metal foils in place of its terminal electrode plates. Petitioner explains that one of ordinary skill in the art would have known that metal foil may be used in batteries because the use of metal foil as a conductor is common in the art. Pet. 31, 39 (citing Ex. 1003 ¶¶ 256, 323). Petitioner directs our attention to Kobayashi which details use of metal foil for conducting elements. Id. at 39; see also Ex. 1006 ¶¶ 7, 21, 26, 27 (describing metal foil electrodes). Furthermore, Mr. Gardner testifies that “reducing the thickness of the output conductors has the effect of reducing the ratio of inactive to active components within the cell, which improves energy density . . . . [and is] a well-known goal in the art.” Ex. 1003 ¶ 323. Mr. Gardner further opines that a person of ordinary skill in the art “would be motivated to reduce the thickness of the output conductors of Kobayashi in order to increase energy density within the cell” and “to use metal foils as the output conductors, as this furthers the well-known goal in the art of reducing the size of internal battery components.” Id. We acknowledge Patent Owner’s argument that Mr. Gardner relies on teachings related to conventional battery design—not button cell batteries—and that he discusses considerations “relating to thickness of the electrodes, not of output conductors.” PO Resp. 19–20. But, Mr. Gardner’s testimony similarly relies on passages directed to “basic concepts” of battery operations and, as a whole, focuses on the concept that reducing the thickness of the terminal electrode plates would “maximize the space available inside the cell for active components,” thereby increasing electrode density and improving battery performance. Ex. 1003 ¶ 323 (citing Ex. 1009, 35). According to Mr. Gardner, “these adjustments would be well within the skill of a [person of ordinary skill in the art].” Ex. 1041 ¶¶ 104. We credit Mr. Gardner’s testimony. “Moreover, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill.” KSR, 550 U.S. at 401.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Upon review of Petitioner’s arguments and supporting evidence, we find that Petitioner adequately shows that a person of ordinary skill in the art would have modified Kobayashi to include metal foils in place of its terminal electrode plates. Petitioner explains that one of ordinary skill in the art would have known that metal foil may be used in batteries because the use of metal foil as a conductor is common in the art. Pet. 31, 39 (citing Ex. 1003 ¶¶ 256, 323). Petitioner directs our attention to Kobayashi which details use of metal foil for conducting elements. Id. at 39; see also Ex. 1006 ¶¶ 7, 21, 26, 27 (describing metal foil electrodes). Furthermore, Mr. Gardner testifies that “reducing the thickness of the output conductors has the effect of reducing the ratio of inactive to active components within the cell, which improves energy density . . . . [and is] a well-known goal in the art.” Ex. 1003 ¶ 323. Mr. Gardner further opines that a person of ordinary skill in the art “would be motivated to reduce the thickness of the output conductors of Kobayashi in order to increase energy density within the cell” and “to use metal foils as the output conductors, as this furthers the well-known goal in the art of reducing the size of internal battery components.” Id. We acknowledge Patent Owner’s argument that Mr. Gardner relies on teachings related to conventional battery design—not button cell batteries—and that he discusses considerations “relating to thickness of the electrodes, not of output conductors.” PO Resp. 19–20. But, Mr. Gardner’s testimony similarly relies on passages directed to “basic concepts” of battery operations and, as a whole, focuses on the concept that reducing the thickness of the terminal electrode plates would “maximize the space available inside the cell for active components,” thereby increasing electrode density and improving battery performance. Ex. 1003 ¶ 323 (citing Ex. 1009, 35). According to Mr. Gardner, “these adjustments would be well within the skill of a [person of ordinary skill in the art].” Ex. 1041 ¶¶ 104. We credit Mr. Gardner’s testimony. “Moreover, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill.” KSR, 550 U.S. at 401.” slip op. at 21

  Patent outcomesUS 9,496,581 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,496,581
• SNF S.A. v. Solenis Technologies, L.P.Rehearing denied
  PTAB · Nov 4, 2021 · IPR2020-01730 · APJ David Cotta · IPR · Rehearing

  The Board denied rehearing and, despite finding a reasonable likelihood of obviousness for claims 12 and 13, denied institution because most challenged claims did not meet the threshold and review would be inefficient.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be found if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2

  • Obviousness (§103) › KSR rationalesNot reached

    “Petitioner offers to waive its arguments with respect to invalidity grounds 2 and 3 if we institute inter partes review. Id. This offer makes our exercise of discretion a closer call, but even absent grounds 2 and 3, granting institution would require that we institute on all claims. We have determined that, for a sizeable majority of challenged claims, Petitioner has not demonstrated a reasonable likelihood of prevailing. Under the circumstances presented here, we determine it would not be an efficient use of the Board’s time and resources to institute review. See Chevron, Paper 9 at 10–11; Deeper, Paper 7. Accordingly, we exercise discretion under 35 U.S.C. § 324(a) to decline to institute post-grant review.” slip op. at 11

  • Other 314aInstitution denied discretionary otherInstitution denied

    “reasons discussed herein and in the Decision, Petitioner has failed to demonstrate a reasonable likelihood that it will prevail with respect to challenged claims 1–11 and 14–21. However, based on the preliminary record, Petitioner has demonstrated a reasonable likelihood that claims 12 and 13 would have been obvious over the cited art. Accordingly, this case presents the question whether we should exercise our discretion to deny institution. Our decision as to whether discretionary denial is warranted is guided by Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 (PTAB Nov. 7, 2018) (informative) and Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 (PTAB Jan. 24, 2019) (informative). Both of these cases explain that “the Board may consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute inter partes review under 35 U.S.C. § 314(a).” Chevron, Paper 9 at 10–11; Deeper, Paper 7 at 42. In Chevron, the panel ultimately exercised discretion to deny institution where “Petitioner demonstrate[d], at most, a reasonable likelihood of prevailing with respect to two dependent claims out of a total of twenty challenged claims.” Chevron, Paper 9 at 12. Similarly, in Deeper, the panel exercised discretion to deny institution where Petitioner demonstrated a reasonable likelihood of prevailing with respect to only two out of twenty three challenged claims. Deeper, Paper 7 at 43.” slip op. at 10

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Mixed

    “art – selecting values within the ranges disclosed in the prior art to calculate a ratio – did not support institution because Petitioner never explained how or why it selected any of the specific values it used to calculate the claimed ratio. Dec. 13. We concluded that Petitioner’s second use of the ranges disclosed in the art – optimizing within the disclosed ranges – did not support institution because the prior art did not disclose that the ratio of WAMW to % DADMAC was a result effective variable (id. at 17) and because Petitioner had not shown that independently optimizing WAMW and % DADMAC would lead to copolymer having the claimed ratio (id. at 17–20).” slip op. at 4

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 9,644,320
• Satco Products, Inc. v. The Regents Of The University Of CaliforniaAll claims unpatentable
  PTAB · Oct 12, 2021 · IPR2020-00780 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1, 5–7, 9, 13, 14, 18–20, 22, and 26 are unpatentable based on anticipation by Okamoto or Miyahara and obviousness over the asserted combinations.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “construction requiring at least one lead to provide structural support to the LED chip. First, Patent Owner contends that the plain meaning of the term “lead frame” requires that the leads must form “the structural frame supporting the LED chip.” Sur-Reply 4. According to Patent Owner, “[o]n its face, the meaning is clear” that “‘lead frame’ is a frame formed by leads.” Id. We do not find this conclusory statement helpful in determining whether the leads in a lead frame are required to provide structural support to the LED chip. Patent Owner does not identify any evidence, intrinsic or extrinsic, that the plain meaning of the term “lead frame” requires that any leads provide direct or indirect support to the LED chip. In fact, Patent Owner refers to several dictionary definitions of the term “lead frame,” none of which makes any reference to support. PO Resp. 5 (citing Ex. 1023, 4 (“Lead Frame. The metallic portion of a component package that is used to interconnect with semiconductor die by wire bonding and to provide output terminal leads.”); Ex. 1024, 4 (“lead frame— . . . 2. The metal part of a solid-state device package that achieves electrical connection between the die and other parts of the system of which the IC is a component. . . .); Ex. 1026, 3 (“lead frame the metallic portion of the device package that makes electrical connections from the die to other circuitry.”).” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “The fundamental error in Petitioner’s argument on this point, however, is that the claims at issue in this proceeding do not require “a lead frame including a transparent plate,” but instead “a lead frame having a transparent plate therein.” Petitioner must do more than show that Okamoto discloses that “the transparent plate is part of the lead frame,” as argued in the Petition. And, as we pointed out in our Institution Decision, Petitioner concedes that “Okamoto’s lead frame sits on its transparent plate, rather than the transparent plate being in the lead frame.” Institution Dec. 17 (citing Pet. 39; Ex. 1008 ¶¶ 34, 36). During the trial, Petitioner did not engage with this issue or provide any reason for us to diverge from our prior conclusion that, because “the plain language of the claims requires that the lead frame have a transparent plate ‘therein’ . . . [b]y Petitioner’s own admission . . . Okamoto does not anticipate.” Id. In other words, because Petitioner concedes that Okamoto’s transparent plate is not in its lead frame, it cannot meet the requirement of claims 1 and 14 that the lead frame have a transparent plate therein. For this reason, we maintain our prior determination that Okamoto does not disclose a lead frame having a transparent plate therein, and as a result, Petitioner has not shown by a preponderance of the evidence that claims 1 and 14 are anticipated.” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Patent Owner also asserts that “Petitioner fails to explain how its proposed modification of wrapping the wiring pattern 6 around the ends of the substrate results in a lower-profile.” PO Resp. 17. According to Patent Owner, “Okamoto already provides the alleged lower-profile benefits of Shimizu, as seen by comparing figure 2 of each reference.” Id. at 18. But Dr. Dupuis supports Petitioner’s contention by stating that a person of ordinary skill in the art would know to use a “chip-type” package instead of a “lead-type” package in applications where a lower profile is needed. Ex. 1003 ¶¶ 129–134 (citing Ex. 1017, 8:31–67; Ex. 1016, Fig. 1, 33–35; Ex. 1022, Figs. 1–3, 6–8, 13, ¶¶ 2–14). Also, Okamoto states that Figure 2 is “a planar view of the light source device of” Figure 1. Ex. 1008 ¶ 43. And Figure 1 of Okamoto, reproduced above, clearly shows protruding lead frame 8. Id. at Fig. 1, ¶ 29. Figure 2 of Okamoto, however, does not show lead frame 8. See id. at Fig. 2. Thus, we do not agree with Patent Owner that Figure 2 of Okamoto shows a package with a lower profile. Instead, the record supports Petitioner’s position that the modified device created using the disclosures of Okamoto and Shimizu has a lower profile (i.e., leads wrapped around substrate 2 as opposed to protruding as shown by Okamoto Figures 1 and 8). See Pet. 42–43; Ex. 1003 ¶¶ 138–142. Patent Owner argues that “Petitioner ignores Dr. Schubert’s explanation that Shimizu was directed towards general illumination, while Okamoto is directed towards a signaling light source” so a person of ordinary skill would not combine the two references. Sur-Reply 16 (citing Ex. 1044, 93:15–96:13). Because we do not see this argument in Patent Owner’s Response, nor do we see anything in Dr. Schubert’s declaration to support such an argument, we do not agree that Petitioner improperly failed to respond to an argument. See PO Resp. 12–21; Ex. 2008 ¶¶ 112–120. Moreover, we find that both Shimizu and Okamoto disclose methods of creating white light using an LED and, therefore, the evidence supports a finding that both references are relevant to a consideration of obviousness. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) (“In order to rely on a reference as a basis for rejection of the applicant’s invention, the reference must either be in the field of the applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned.”). In sum, on the complete record, we find that the combination of Okamoto and Shimizu teaches each limitation of claims 1 and 14, and we find that a skilled artisan would have had reasons, with rational underpinning, to combine Okamoto and Shimizu.” slip op. at 29

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Upon further review, and in light of the arguments in Petitioner’s Reply (Reply 21–24), we conclude that our preliminary determination in the Institution Decision was in error, to the extent that we agreed with Patent Owner’s arguments that claims 13 and 26 require “all layers” of the LED to be transparent. The claims recite “a plurality of III-nitride layers, including an active region that emits light, wherein all of the layers except for the active region are transparent.” Ex. 1001, 21:46–52. The second half of this phrase, which contains the transparency requirement, recites “the layers,” meaning that it relies on an earlier recitation in the claim for antecedent basis of “layers.” This basis is found in the recitation of “a plurality of III-nitride layers.” In other words, the proper interpretation of “all of the layers” in claims 13 and 26 is that the term refers back to the III-nitride layers, not all of the layers of the LED as a whole (such as, for example, a mirror). And the parties agree that the mirror of a conventional LED is not a III-nitride layer. Tr. 18:15–18; 45:4–13. As a result, our preliminary determination that the non-transparent mirror of the APA LEDs prevented a finding of obviousness was incorrect. We agree with Petitioner that the ’916 patent admits that LEDs having transparent III-nitride layers were conventional in the art, and that these are “all of the layers except for the active region” as required in claims 13 and 26. Notably, during the trial Patent Owner did not attempt to defend against Petitioner’s ground for the same reason it raised in the Preliminary Response; instead, Patent Owner now argues that because of the mirror on conventional LEDs, these devices would not meet the claim limitation that “light is extracted effectively through all the layers.” PO Resp. 21. But this reflects a misunderstanding of Petitioner’s ground of unpatentability, which does not rely on the APA for this limitation. Petitioner’s ground is based on the argument that, while Okamoto discloses an LED without a mirror, it does not “specifically describe the layers of its blue LEDs, other than to say that it is a GaN-based LED.” Pet. 61. Petitioner turns to the APA for this missing information regarding the layers that were conventionally used in LEDs; but notably, the Petition does not rely on the APA’s mirror. Id. All Petitioner concludes from the APA is that a person of skill in the art “would reasonably expect the GaN-based LEDs of Okamoto to include multiple layers, which layers would at least include an active layer sandwiched between a p-side layer and an n-side layer.” Id. (citing Ex. 1003 ¶¶ 203– 205; Ex. 1001, 10:20–31). Patent Owner’s argument that the application of the APA’s layers to Okamoto would have brought along the mirror of the APA LED’s is therefore misguided and unpersuasive. In sum, we agree that a person of ordinary skill in the art would have looked to conventional LEDs, such as those admitted to be prior art in the ’916 patent, when determining the layers of Okamoto’s LED. And according to the ’916 patent, these conventional III-nitride layers would have been understood to be transparent to an emission wavelength. As a result, we conclude that claims 13 and 26 would have been obvious over the combined disclosures of Okamoto and Shimizu in light of the APA.” slip op. at 35

  Patent outcomesUS 10,217,916 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,217,916
• Ty Inc. v. Softbelly’S, Inc.All claims unpatentable
  PTAB · Sep 10, 2021 · IPR2020-00689 · APJ John E Schneider · IPR · Final written decision

  Claims 15 and 16 are unpatentable: claim 15 as anticipated by Ogawa and obvious over Ogawa and Masahiro; claim 16 as obvious over Ogawa with Cherk, and with Masahiro and Cherk.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We have considered the arguments presented by the parties and the evidence of record and are not persuaded that our original definition of a person of ordinary skill in the art was in error. While the claims at issue refer to an optical grade fabric, we note that the fabric is not the invention. Rather, as stated in the Specification, the field of the invention is “cleaning tools for electronic display screens, and more specifically to cleaning tools for computer display screens and the like.” Ex. 1001, col. 1, ll. 4–6. The claims further narrow the field of the invention to cleaning tools in the form of a doll-like structure. Id. at col. 6, l. 37. Based on the forgoing, we continue to apply the same definition of a person of ordinary skill in the art we used in our Decision on Institution. However, the findings and conclusions set forth below would have been the same had we instead adopted Patent Owner’s proposed definition.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “We have considered the arguments presented by the parties and the evidence of record and conclude that Petitioner has the better position. The term “display screen,” as used in the challenged claims, refers to an intended use of the cleaning tool. As such, it does limit the scope of the claims. We begin by noting that the challenged claims are directed to a device or apparatus. Ex. 1002, col. 2, ll. 8–13. As such, the claims “cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (1990). The preamble of both claims 6 and 11 read in part: “doll-like figure for cleaning or wiping the surface of a display screen.” Ex. 1001, col. 6, ll. 37–38; col. 7, ll. 1–2. Both claims end with the clause “providing a pliant cleaning tool for wiping a display screen.” Id. at col. 6, ll. 50–51; col. 7, ll. 13–14. These phrases are crafted in terms of a device for performing a specific function or use. This type of phrase has been found to recite an intended use and not a physical limitation. See Marrin v. Griffin, 599 F.3d 1290, 1294–96 (Fed. Cir. 2010). The recitation of the intended use in the body of the claim does not affect our analysis. The term for wiping a display screen still recites a use of the device that does not impart a structural limitation.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We have considered the testimony of both experts and the evidence of record and find Mrs. Ryan’s testimony to be more persuasive. Therefore, we agree with Petitioner that Ogawa discloses a wiping tool which has an inner chamber formed by a strip of optical grade fabric — the wipe portion — and a non-optical grade fabric — the gripping body. We give more weight to Mrs. Ryan’s testimony based on her extensive experience in designing plush toys. Ex. 1005 ¶¶ 3–5. Mrs. Ryan has worked in the area of plush toy design for over twenty-six years and has taught classes relating to plush toy design. Id. ¶¶ 3–4; page 40. In addition, Mrs. Ryan’s testimony regarding how one skilled in the art would envision the wiping tool of Ogawa is consistent with the evidence of record. For example, King4 teaches that teddy bears are formed by joining pieces of fabric creating an inner pocket into which stuffing is inserted. Ex. 1026, 7–12. Cockrill5 also teaches that teddy bears are traditionally made by cutting out the material, sewing the pieces together, and then stuffing the bears. Ex. 1025, 67.” slip op. at 17

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We have considered the testimony of both experts and the evidence of record and find Mrs. Ryan’s testimony to be more persuasive. Therefore, we agree with Petitioner that Ogawa discloses a wiping tool which has an inner chamber formed by a strip of optical grade fabric — the wipe portion — and a non-optical grade fabric — the gripping body. We give more weight to Mrs. Ryan’s testimony based on her extensive experience in designing plush toys. Ex. 1005 ¶¶ 3–5. Mrs. Ryan has worked in the area of plush toy design for over twenty-six years and has taught classes relating to plush toy design. Id. ¶¶ 3–4; page 40. In addition, Mrs. Ryan’s testimony regarding how one skilled in the art would envision the wiping tool of Ogawa is consistent with the evidence of record. For example, King4 teaches that teddy bears are formed by joining pieces of fabric creating an inner pocket into which stuffing is inserted. Ex. 1026, 7–12. Cockrill5 also teaches that teddy bears are traditionally made by cutting out the material, sewing the pieces together, and then stuffing the bears. Ex. 1025, 67. Dr. Adanur’s experience and expertise appears to be primarily focused on textiles. Ex. 2005 ¶¶ 8–24. While Dr. Adanur testified that he has some experience in the area of plush toys, that experience appears to be limited to selection of fabric that could be used to manufacture plush toys and making several puppets at home to earn extra money. Ex. 1027, 52, 57–59, 78–79. In addition, Dr. Adanur does not cite to any evidence other than Ogawa to support his opinions as to what one skilled in the art would envision upon reading Ogawa. See Ex. 2005 ¶¶ 84–87. Patent Owner, however, contends that Ogawa is silent as to whether the tool has an inner chamber made from a piece of optical grade fabric and a piece of non-optical grade fabric. PO Resp. 1, 22. 4 King, Make Your Own Teddy Bears, 1985 (Ex. 1026) (“King”). 5 Cockrill, The Teddy Bear Encyclopedia, 1993 (Ex. 1025) (“Cockrill”).” slip op. at 17

  Patent outcomesUS 6,195,831 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,195,831
• BASF Corporation v. Ingevity South Carolina, LLCNo claims unpatentable
  PTAB · Sep 9, 2021 · PGR2020-00037 · APJ Julia Heaney · PGR · Final written decision

  Claims 1–10, 14–28, 32–38, 51, 52, 55–57, 59, 64–72, and 76–82 were not shown unpatentable for indefiniteness or obviousness over Hiltzik, Clontz WIPO, and Clontz SAE.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “art include “(1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field.” Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id. Petitioner argues a person of ordinary skill in the art at the time of the invention “would possess at least a B.S. in chemistry or chemical or mechanical engineering and would have at least one year of experience working on control of automotive evaporative emissions,” and “would also understand the chemistry and physics associated with the phenomena of fuel vapor adsorption, desorption, and diffusion.” Pet. 28 (citing Ex. 1003 ¶ 17). Patent Owner does not dispute the level of ordinary skill in the art. We adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’553 patent and the asserted prior art.” slip op. at 11

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Patent Owner and Dr. Rockstraw present peer-reviewed scientific literature demonstrating that gravimetric and volumetric measurement techniques were known to measure equivalent adsorption capacities and were viewed as compatible with each other. See Ex. 2022 ¶¶ 95–107 (addressing Anson7 (Ex. 2007), Belmabkhout8 (Ex. 1021), Zielinski9 (Ex. 2069)). For example, Belmabkhout reported similar results between measurements by gravimetric and volumetric instruments, except at very high pressures. Ex. 1021, 856–57. Zielinski reported “excellent agreement” between volumetric and gravimetric adsorption capacity measurements (Ex. 2069, 5–6); Dr. Zielinski (who oversaw the testing reported by Intertek 7 Anson, A., et al., “Hydrogen adsorption on a single-walled carbon nanotube material: a comparative study of three different adsorption techniques,” Nanotechnology 15 (2004), 1503. 8 Belmabkhout, Y., et al., “High-pressure adsorption measurements. A comparative study of the volumetric and gravimetric methods,” Measurement Science and Technology 15 (2004) 848. 9 Zielinski, J. et al., “High pressure sorption isotherms via differential pressure measurements,” Adsorption 13 (2007), 1–7. in Ex. 1020) also testified that he would expect capacity measurements for either a gravimetric or volumetric technique to yield the same results, or be “superimposable” under ideal conditions, because they represent “the same experimental measured quantities.” Ex. 2026, 52:11–53:7, 54:13–22, 69:12– 70:3, 139:8–19. Petitioner’s argument that these papers are not relevant because they do not address measurements on the adsorption capacity of n-butane (see Pet. Reply 26) is not persuasive, because Petitioner does not direct us to sufficient evidence showing a reason why measurements of n-butane’s adsorption capacity would have been subject to different measurement inconsistencies. Further, Petitioner’s argument about a 3% deviation in results between the measurement techniques reported in Anson and Belmabkhout is not persuasive because the papers’ conclusions suggest a person of ordinary skill in the art would not have seen such a deviation as significant (e.g., Ex. 1021, 849: “we have not observed important discrepancies” between gravimetric and volumetric measurements). Dr. Rockstraw also testifies as to numerous additional texts and standards that confirm persons of ordinary skill in the art understood that gravimetric and volumetric measurement techniques would provide consistent results when proper experimental protocols are followed and the instruments’ accuracy and precision are taken into consideration. See Ex. 2022 ¶¶ 88–91, 119–127. This evidence is essentially unrebutted by Petitioner. We find that the evidence submitted by Patent Owner as to the gravimetric and volumetric measurement techniques demonstrates that they were well established in the art as comparable methods of measuring adsorption capacity, and accordingly, not a basis for determining claim” slip op. at 16

  • ExcludeMotion to exclude, grantedGranted in part

    “Exhibit 2027. Paper 57 (“Pet. Mot.”). We do not discuss or cite Exhibit 2080 or paragraph 39 of Exhibit 2027 in this Decision, and consideration of them played no part in our determinations set forth herein. Because their presence in the record would not affect our analysis in this Decision, we dismiss as moot Petitioner’s motion with respect to these exhibits. B. Patent Owner’s Motion to Exclude Patent Owner filed a motion to exclude Exhibits 1015–1016, 1023– 1025, 1032, 1038–1039, 1042 (certain paragraphs), 1044, 1046–1049, and 1052–1054. Paper 56 (“PO Mot.”). Patent Owner groups these exhibits into four categories, which we apply in discussing the motion below. 1. Patent Owner moves to exclude Exhibits 1015 and 1046 as “irrelevant determinations from other adjudicative bodies regarding different patents.” PO Mot. 1. We do not discuss or cite these exhibits in this Decision, and have not considered them in reaching our decision herein. Because the presence of these exhibits in the record would not affect our analysis in this Decision, we dismiss as moot Patent Owner’s motion with respect to these exhibits. 2. Patent Owner moves to exclude Exhibits 1023, 1024, 1025,” slip op. at 46

  • Disclosure Requirements (§112) › Definiteness (Nautilus)Written description adequateNot shown unpatentable

    “Petitioner has not shown by a preponderance of the evidence that the gravimetric and volumetric methods provide fundamentally different measurements of adsorption capacity. Patent Owner and Dr. Rockstraw present peer-reviewed scientific literature demonstrating that gravimetric and volumetric measurement techniques were known to measure equivalent adsorption capacities and were viewed as compatible with each other. See Ex. 2022 ¶¶ 95–107 (addressing Anson7 (Ex. 2007), Belmabkhout8 (Ex. 1021), Zielinski9 (Ex. 2069)). For example, Belmabkhout reported similar results between measurements by gravimetric and volumetric instruments, except at very high pressures. Ex. 1021, 856–57. Zielinski reported “excellent agreement” between volumetric and gravimetric adsorption capacity measurements (Ex. 2069, 5–6); Dr. Zielinski (who oversaw the testing reported by Intertek 7 Anson, A., et al., “Hydrogen adsorption on a single-walled carbon nanotube material: a comparative study of three different adsorption techniques,” Nanotechnology 15 (2004), 1503. 8 Belmabkhout, Y., et al., “High-pressure adsorption measurements. A comparative study of the volumetric and gravimetric methods,” Measurement Science and Technology 15 (2004) 848. 9 Zielinski, J. et al., “High pressure sorption isotherms via differential pressure measurements,” Adsorption 13 (2007), 1–7. in Ex. 1020) also testified that he would expect capacity measurements for either a gravimetric or volumetric technique to yield the same results, or be “superimposable” under ideal conditions, because they represent “the same experimental measured quantities.” Ex. 2026, 52:11–53:7, 54:13–22, 69:12– 70:3, 139:8–19. Petitioner’s argument that these papers are not relevant because they do not address measurements on the adsorption capacity of n-butane (see Pet. Reply 26) is not persuasive, because Petitioner does not direct us to sufficient evidence showing a reason why measurements of n-butane’s adsorption capacity would have been subject to different measurement inconsistencies. Further, Petitioner’s argument about a 3% deviation in results between the measurement techniques reported in Anson and Belmabkhout is not persuasive because the papers’ conclusions suggest a person of ordinary skill in the art would not have seen such a deviation as significant (e.g., Ex. 1021, 849: “we have not observed important discrepancies” between gravimetric and volumetric measurements). Dr. Rockstraw also testifies as to numerous additional texts and” slip op. at 16

  Patent outcomesUS 10,323,553 not shown unpatentable
  § 103 obviousness§ 112 disclosurecites KSR · Graham · Nautilus
  Patents in suitUS 10,323,553
• Red Diamond, Inc. v. Southern Visions, LLPOther
  PTAB · Mar 31, 2021 · IPR2020-00001 · APJ Jeffrey W Abraham · IPR · Final written decision

  The Board canceled claims 1, 5, 8, and 10–12, but denied entry of substitute claims 20–25 because claims 20 and 24 were indefinite and claims 21–23 and 25 were obvious.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “LEVEL OF ORDINARY SKILL IN THE ART In the Institution Decision, we determined that “a person of ordinary skill in the art would have had sufficient experience and/or education in the food industry to possess an understanding of (1) sugar particle size as it pertains to brewed beverages and (2) sugar particle size screening.” Inst. Dec. 7. We observed that this level of ordinary skill is consistent with the level of ordinary skill that we adopted in a related case that involves similar subject matter. See Red Diamond, Inc. v. Southern Visions, LLP, PGR2019- 00045, Paper 9 at 6–8 (PTAB Oct. 15, 2019). We also asked the parties to expressly discuss the level of ordinary skill in the art in the remaining briefing if either party disagreed with our determination. Inst. Dec. 7–8. For purposes of this Final Written Decision, we maintain our determination from the Institution Decision because neither party disputes the level of ordinary skill identified in the Institution Decision (see Revised MTA 7–8), and because we continue to find that the stated level of ordinary skill is consistent with the record.” slip op. at 5

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “consider” the Revised Motion to Amend and cancel original claims 1, 5, 8, and 10–12. Revised MTA 1. Because Patent Owner has not indicated that our consideration of the Revised Motion to Amend is contingent on a determination that original challenged claims 1, 5, 8, and 10–12 are unpatentable, we grant Patent Owner’s request to cancel original challenged claims 1, 5, 8, and 10–12. See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018- 01129, Paper 15 at 3 (PTAB Feb. 25, 2019) (precedential) (“Lectrosonics”) (“A request to cancel claims will not be regarded as contingent.”). The remaining issue before us is whether to grant the Revised Motion to Amend as to proposed substitute claims 20–25.” slip op. at 6

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable

    “sugar, which indicates that between 2–25% of the particles in EFG sugar can have a size in the range of U.S mesh sieve nos. 20–30. Ex. 2003, 42 (showing the “Typical Analysis” for “X-fine” granulated sugar). Even if we were to agree with Patent Owner that this shows a typical analysis for EFG sugar, it still presents a variance of up to 20% for particles having a size in the range of U.S. mesh sieve nos. 20 and 30. Ex. 2003, 42. Thus, the evidence of record suggests that the particle size distribution for EFG sugar, including the number of particles falling in the range of U.S. mesh sieve nos. 3–35, can vary among different EFG sugars. Thus, the term “typical grocery store sugar,” “might mean several different things” in terms of the number of its particles having a size in the range of U.S. mesh sieve nos. 3–35, and “no informed and confident choice is available among the contending definitions.” HZNP Meds. LLC v. Actavis Labs UT, 940 F.3d 680, 698 (Fed. Cir. 2019) (quoting Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1371 (Fed. Cir. 2015)); Opp. 9; Reply 4.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “sugar in its products (Ex. 1008, 11:2–5), and Mr. Ebersole’s testimony demonstrates that a person of ordinary skill in the art would have known that Standard Grade and Medium Grade sugars are commercial grade granulated sugars and that the particles in Standard Granulated and Medium Granulated sugars “are almost entirely within the range of U.S. mesh nos. 3–35” (Ex. 2076 ¶ 51). The evidence of record thus supports Petitioner’s assertion that following the typical industry practice of using 1 ounce of tea particles and 1 pound of sugar per gallon of tea, and using a commercial grade granulated sugar (as taught by Cooper) such as Standard Granulated or Medium Granulated sugar (which are known to be “almost entirely within the range of U.S. mesh nos. 3–35”), would yield a product having a blend ratio of tea particles to sugar granules having a size in the range of U.S. mesh sieve nos. 3–35 in the range of 1:16–1:25, as recited in proposed substitute claims 21 and 23. Opp. 20–21; Ex. 1008, 11:2–5; Ex. 1001, 17–20, 57–65. In view of the foregoing, we find Petitioner has established sufficiently that the teachings of Cooper, considered in view of admitted prior art sweetening practices, teaches or suggests all of the limitations of proposed substitute claims 21 and 23. Petitioner has presented evidence demonstrating sufficiently that Cooper teaches the use of sugar having particle sizes falling “almost entirely” within the range of mesh 3–35, that following typical industry practices using such sugar would result in the claimed blend ratio of tea to sugar having a size in the range of mesh 3–35, and that a person of ordinary skill in the art would have had reason to brew commercial-sized batches of tea, with a reasonable expectation of success in doing so, as Cooper allows.” slip op. at 26

  § 103 obviousness§ 112 disclosurecites KSR · Nautilus
  Patents in suitUS 9,549,634

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.