- Trove Brands, LLC v. Camelbak Products, LLCInstitution deniedPTAB · Jul 8, 2025 · IPR2025-00155 · APJ James A Worth · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 3–9, 11–17, or 19 were unpatentable on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 311 and any response filed under [35 U.S.C. §] 313 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(a) (2018).1 For the reasons set forth below, we determine that Petitioner has not demonstrated that there is a reasonable likelihood that at least one of claims 1, 3–9, 11–17, and 19 of the ’187 patent is unpatentable based on the grounds set forth in the Petition, and we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (“POSITA”) would have had an undergraduate degree in mechanical engineering or equivalent coursework, and a year or more of experience in designing, prototyping, and/or manufacturing fluid containers or similar products. Pet. 19 (citing Ex. 1003 ¶ 29). Petitioner asserts that more work experience may substitute for a lower level of education, and vice versa. Id. Patent Owner admittedly sets forth “a similar, though slightly different, level of ordinary skill”: a bachelor’s degree in mechanical engineering or the equivalent coursework and approximately one year of experience with liquid-containing devices, with more work experience substituting for less education and vice versa. Prelim. Resp. 27 (citing Ex.2001 ¶¶ 60–64). Patent Owner discerns no material difference between the definitions provided by the parties for purposes of the Board’s decision on whether to institute this proceeding. Id. For purposes of this decision, we adopt Petitioner’s proposed level of skill as being consistent with the prior art, although our conclusion on whether to institute would be unchanged under either definition.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“The failure to use the word “means” in a claim element creates a rebuttable presumption that § 112 ¶ 6 does not apply. Williamson v. Citrix Online, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). The presumption can be overcome and § 112 ¶ 6 will apply if the challenger demonstrates that the claim term fails to “recite[ ] sufficiently definite structure” or else recites “function without reciting sufficient structure for performing that function. “Construing a means-plus-function claim term is a two-step process.” Id. at 1351. “The [tribunal] must first identify the claimed function.” Id. “Then, the [tribunal] must determine what structure, if any, disclosed in the specification corresponds to the claimed function.” Id. There may be multiple claimed functions, each with disclosed corresponding structure. See id. at 1351–52.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We are persuaded by Patent Owner that the term “automatically” in “to automatically disengage the first and second catch structures” means that it is not just the force applied by the user that disengages the first and second catch structures, but also the bias of the mouthpiece that helps to disengage the first and second catch structures. In the first instance, we agree with Patent Owner that the claim itself recites that, upon actuation, the mouthpiece assembly is “release[d]” to “move via its bias from the stowed configuration to the dispensing configuration.” See Ex. 1001, 21:59–64. This meaning is supported by the Specification which states: “In some examples, the mouthpiece assembly is biased toward the dispensing configuration and thus moves automatically under its bias upon release by the user-release mechanism.” Ex. 1001, 1:64–67. We further agree with Patent Owner that the plain and ordinary meaning of “automatic” is that the user operation alone is not responsible for the action. For example, in one dictionary cited by Petitioner, “automatic” is defined as “2: having a self-acting or self-regulating mechanism.” See Ex. 2007, 1.11 The district court construction is consistent therewith. The district court identified two functions, the first of which is the same as that of the ’028 patent, i.e., “Automatically disengaging the first and second catch structures upon actuation of the user release mechanism and thereby releasing the mouthpiece assembly to move via its bias from the stowed configuration to the dispensing configuration.” See Section II.C.1, supra. In discussing that function, the district court states: “While a user may impart force upon user engagement portion 260 to release the mouthpiece, the bias of the mouthpiece towards the dispensing configuration causes the mouthpiece to move automatically, satisfying the requirements of Claim 1.” Ex. 2002, 16. We conclude that the term “automatically” in “adapted to” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,684,187 - Trove Brands, LLC v. Camelbak Products, LLCInstitution deniedPTAB · May 22, 2025 · IPR2025-00146 · APJ Linda E Horner · IPR · Institution
The Board denied institution because Trove did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition and the preliminary response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we deny the Petition and do not institute an inter partes review of claims 1, 3, 5–8, and 10–19 of the ’879 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner and Patent Owner propose constructions for the term “user release mechanism,” as recited in claim 1. Pet. 20–23; Prelim. Resp. 27–30. Patent Owner also proposes constructions for “automatically disengage the first and second catch structures,” as recited in claim 1. Prelim. Resp. 30– 32. For purposes of this particular Decision, we determine that no term requires construction to decide whether to institute inter partes review of the ’879 patent. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“First, Petitioner’s reason to modify Kiyota “to provide the advantage of a bite actuated mouthpiece” (Pet. 42) does not explain why one would use Choi’s mount 100. Petitioner has not clearly established that to use a bite-actuated mouthpiece requires mount 100. Choi describes that “cap assembly 14 may include a mount 100 to which the bite-actuated mouthpiece is removably mounted, or secured.” Ex. 1005 ¶ 46. This description suggests that mount 100 is not a required component for a bite-actuated mouthpiece. Our understanding is supported by Patent Owner’s expert, who testified that using Choi’s mount as a “rigid collar member” in Kiyota’s mouthpiece assembly does not require combining its bite-actuated valve because “the bite-actuated portion has nothing to do with the alleged rigid collar member portion.” Ex. 2001 ¶ 119 (citing Ex. 1005 ¶ 46); see also Prelim. Resp. 55. Thus, Petitioner has not adequately supported this first reason to modify Kiyota to use Choi’s mount 100.” slip op. at 22
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,165,879 - Trove Brands, LLC v. Camelbak Products, LLCInstitution deniedPTAB · May 7, 2025 · IPR2024-01501 · APJ Linda E Horner · IPR · Institution
The Board denied institution because Trove did not show a reasonable likelihood of proving claims 1, 2, 5, 6, 8, 9, 15, 16, or 21 obvious over the asserted prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition and the preliminary response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we deny the Petition and do not institute an inter partes review of claims 1, 2, 5, 6, 8, 9, 15, 16, and 21 of the ’028 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner argues that a POSITA would have “a bachelor’s degree in mechanical engineering or the equivalent coursework and approximately one year of experience with liquid-containing devices, with more work experience substituting for less education and vice versa.” Prelim. Resp. 23 (citing Ex. 2001 ¶¶ 56–65). Patent Owner also states that it “discerns no material difference between the definitions provided by the parties for purposes the Board’s decision on whether to institute this proceeding.” Id. We agree that there appears to be no material difference in the parties’ definitions of the level of ordinary skill in the art. For the purposes of this Decision, we apply Petitioner’s definition of the level of ordinary skill in the art. We determine that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’028 patent, based on our review of the limited record. Moreover, the prior art itself may be sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not” slip op. at 11
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“as a means-plus-function limitation under 35 U.S.C. § 112, sixth paragraph, because “mechanism” is a nonce word for performing the claimed function without reciting structure for performing that function, and a POSITA would not have understood the term to have “a sufficiently definite meaning as the name for a structure that performs the claimed function.” Pet. 16–17 (citing Ex. 1003 ¶ 39). For claim 1, Petitioner identifies two distinct structures described in the ’028 patent that correspond to the claimed “user release mechanism” for performing the claimed functions. Id. at 34. Specifically, Petitioner asserts that the ’028 patent describes a first embodiment in which the corresponding structure includes sliding member 238, and its component parts. Id. at 34– 35 (citing Ex. 1001, 12:50–13:25, 13:29–33). In the second embodiment, the corresponding structure includes user engagement portion 260 on rigid collar 170. Id. at 35–36 (citing Ex. 1001, 13:40–54). Petitioner does not separately address the structure corresponding to the “user release mechanism” as recited in claim 21. Id. at 53‒54 (relying on the same arguments presented for unpatentability of claim 1). court issued a claim construction order in the parallel litigation construing the term “user release mechanism” as a means-plus-function limitation under § 112, sixth paragraph. Prelim. Resp. 23 (citing Ex. 2002, 12–15). The district court ruled that the corresponding structure for claim 1 includes “[s]liding member 238, including its component parts,” or “[u]ser engagement portion 260.” Ex. 2002, 15. For claim 21, the district court ruled that the corresponding structure includes “[s]liding member 238, including its component parts” or “[u]ser engagement pad 240, planar portion 242, tabs 244, collar engagement portion 254, depression 256.” Id. at 17. Patent Owner indicates that, “[f]or purposes of this proceeding only,” it does not dispute that the claimed user release mechanisms are means-plusfunction limitations, and it does not dispute the corresponding structure identified by Petitioner, even though the district court did not specifically identify engagement portion 260 as corresponding structure for claim 21. Prelim. Resp. 25 (citing Ex. 2002, 15–19). Although Patent Owner does not dispute Petitioner’s proposed interpretation of the “user release mechanism,” because claim interpretation is a matter of law and the dispositive issue in this Decision turns on the interpretation of this claim limitation, we address it in this Decision. We agree with the parties that the “user release mechanism” elements recited in claims 1 and 21 are means-plus-function limitations governed by § 112, sixth paragraph. See 35 U.S.C. § 112 ¶ 6 (“An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”). “means,” it uses the nonce word “mechanism” without reciting structure for performing the functions recited in the claims. See Williamson v. CitrixOnline, LLC, 792 F.3d 1339, 1350 (Fed. Cir. 2015) (“Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word “means” because they ‘typically do not connote sufficiently definite structure’ and therefore may invoke § 112, para. 6.”).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“[U]nder § 112, ¶ 6 equivalence, functional identity is required” and “[s]tructural equivalence under § 112, ¶ 6 is met only if the differences are insubstantial, that is, if the assertedly equivalent structure performs the claimed function in substantially the same way to achieve substantially the same result as the corresponding structure described in the specification.” (citing Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1308 (Fed. Cir. 1998)). Here, Petitioner states that Kiyota’s lock release buttons 40 “perform the claimed function in the same way to achieve the same result” as the ’028 patent’s sliding member 238, and its component parts (Pet. 37) without providing sufficient supporting explanation or evidence. Petitioner explains only that the two structures operate in “substantially the same way” by a user pressing an element that that slides towards the mouthpiece assembly to disengage the catch structures. Id. at 37–38 (citing Ex. 1003 ¶ 89). The Petition does not discuss any of the differences between Kiyota’s structure and the ’028 patent’s structure or provide an explanation of why these differences are insubstantial. Indeed, as Patent Owner persuasively explains, there are notable differences in the “way” the two structures perform the claimed function and the “result” they achieve. See Prelim. Resp. 39–40 (discussing the ’028 patent’s one-finger operation and indirect catch disengagement, versus Kiyota’s two-finger operation and direct catch disengagement). Moreover, the analysis in Dr. Vallee’s declaration substantially parallels the discussion in the Petition and does not provide any additional explanation or evidence to show that the differences between the “way” the two structures operate or the “result” they achieve are insubstantial. Compare Ex. 1003 ¶¶ 85–91, with Pet. 34–38. For these reasons, Petitioner fails to show sufficiently that Kiyota discloses an equivalent structure to the structure described in the ’028 patent corresponding to the “user release mechanism” recited in claim 1. Accordingly, Petitioner has not met its burden to show a reasonable likelihood that claim 1 is unpatentable as obvious over Kiyota. slip op. at 23
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,782,028 - Intelligent Wellhead Systems, Inc. v. Downing Wellhead Equipment, LLCInstitution deniedPTAB · Sep 12, 2024 · IPR2024-00583 · APJ Benjamin D M Wood · IPR · Institution
The Board denied institution on all grounds because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. ANALYSIS A. Legal Standards Used in the Merits Analysis “In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that, for the ’779 patent, one of ordinary skill in the art “would have had an engineering degree and two or more years’ wellrelated operations experience, or equivalent education/experience.” Pet. 8. Patent Owner does not offer an alternative definition, but its Declarant, Mr. Hughett, submits that one of ordinary skill in the art would have had “a degree in petroleum or mining engineering, mechanical engineering, or a comparable discipline, and at least two years of experience in oil and gas extraction, or an equivalent combination of education and experience.” Ex. 2006 ¶ 17. On the record, we do not discern a meaningful difference between Petitioner’s and Mr. Hughett’s proposed definitions, and therefore adopt Petitioner’s definition for purposes of this Decision. We also presume that the cited prior-art references reflect the level of ordinary skill at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining the level of ordinary skill in the art may be evidenced by the cited references themselves).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The Specification does not suggest a particular definition of threshold, and neither party suggests that it is a term of art in the relevant field. Therefore, we consult a general dictionary for guidance. See Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (If “the specification does not assign or suggest a particular definition [of a claim term], in determining the ordinary and customary meaning of the claim term as viewed by a person of ordinary skill in the art, it is appropriate to consult a general dictionary definition of the word for guidance.”). Because Merriam-Webster’s online dictionary, Merriam-Webster.com, provides several definitions for threshold, we refer to the intrinsic record “to identify which of the different possible dictionary meanings is most consistent with the use of the words by the inventor.” Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1300 (Fed. Cir. 2003). Based on the context in which threshold is used in claims 1 and 8, we consider the most relevant definition to be “a level, point, or value above which something is true or will take place and below which it is not or will not.” Merriam- Webster.com/dictionary/threshold (accessed July 30, 2024). The claim context also indicates that threshold encompasses the opposite situation, i.e., the threshold may be a value below which something is true or will take place and above with it is not true or will not take place. Thus, a flow-rate value and time value are “thresholds” when there is an action that will or will not take place (or something is or is not true) depending on whether those values are met. The Specification identifies one particular action that occurs when these thresholds are met: performance of a CP swap from hydraulically fracturing the n1 well (i.e., a first well) to hydraulically fracturing the n1+1 well (i.e., a second well). Ex. 1001, 13:28–52, Figs. 1B, 12. To perform a CP swap, according to the Specification, zipper valves for the n1+1 well are opened while fluid is being pumped to the n1 well, allowing hydraulic fracturing fluid to flow to both wells, after which zipper valves for the n1 well are closed. Id. at 14:14–38, Figs. 15, 16A, 16B, 16C. This procedure is precisely what claims 1 and 8 recite. In addition to requiring “determining that the flow rate is below a flow-rate threshold . . . for a threshold amount of time,” claims 1 and 8 recite, e.g., “(c) during pumping of the fluid into the first well via the first valve, opening a second valve associated with a second well,” and “(e) during pumping of the fluid into the second well via the second valve, closing the first valve associated with the first well.” Ex. 1001, claims 1, 8. Thus, in the context of these claims, a flow-rate threshold and threshold amount of time would be flow-rate and time values that determine whether or not a second valve associated with a second well is opened during pumping of fluid into the first well via the first valve.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We are not persuaded that Ciezobka teaches or suggests limitation [1.3]. First, we agree with Patent Owner that this limitation necessarily requires comparing the measured flow rate to a threshold. Petitioner also appears to agree that such a comparison is necessary to perform limitation [1.3]. See Pet. 15 (“Ciezobka discloses determining the flowrate of the fluid and comparing the determined flowrate to certain thresholds . . . , and therefore discloses determining that the flow rate of the fluid being pumped into the first well is below a flowrate threshold.”) (emphasis added). Ciezobka does not, however, teach such a comparison. Assuming that the initial flow rate can be considered a “threshold,” Ciezobka’s teaching of the existence of an initial flow rate followed by the existence of a lower pulse flow rate does not constitute a teaching of a comparison of the two flow rates. Second, Petitioner has not established that the “initial flow rate” is a “threshold.” As discussed above, we construe “flow rate threshold” in the context of claim 1 to mean a flow rate value that an actual flow rate must drop below for a threshold amount of time in order for a second valve associated with a second well to be opened. See Section II.C. Ciezobka does not teach that a measured flow rate must drop below the initial flow rate or any other specific flowrate before one of valves 218 or 219 is opened. Instead, the valve is opened after a specific period of time and without comparing the actual flow rate to the initial flow rate. See Ex. 1037, 12:8– 12 (teaching that a pressure pulse is created by closing valve 219 “for a short period of time” ranging from 1 minute to 1 second, preferably 10 seconds). Indeed, opening valve 218/219 causes flow rate drop to one of the wells; it does not occur as a result of the flow-rate drop.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,401,779 - Intelligent Wellhead Systems, Inc. v. Downing Wellhead Equipment, LLCInstitution deniedPTAB · Jun 5, 2024 · IPR2024-00256 · APJ Benjamin D M Wood · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing: Krupa was not established as prior art, and the other grounds failed to show key claim limitations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority under 35 U.S.C. § 314, 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.” 35 U.S.C. § 314(a). Upon considering the Petition, we determine that Petitioner has not satisfied this threshold requirement, and therefore we do not institute inter partes review of claims 1–3, 6, 8–10, 13, 15–18, 25–28, 31, and 36 of the ’779 patent.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“Here, however, Krupa’s actual filing date is after the ’779 patent’s filing date. Compare Ex. 1003, code (22) (Krupa filed Feb. 18, 2022) with Ex. 1001, code (22) (’779 patent filed Jul. 29, 2021). Petitioner therefore must seek the benefit of the earlier February 25, 2021 filing date of the Krupa Provisional. 35 U.S.C. § 102(d)(2). Pet. 6. Under subsection 102(d)(2), to qualify as prior art, a reference patent or published patent application is considered effectively filed as of the filing date of its provisional application only to the extent that the provisional “describes the subject matter” relied on in the reference patent document. We cannot presume that the Krupa Provisional describes the subject matter in Krupa that the Petition relies on, however. See Dynamic Drinkware, 800 F.3d at 1380 (“[B]ecause the PTO does not examine priority claims unless necessary, the Board has no basis to presume that a reference patent is necessarily entitled to the filing date of its provisional application.”). The burden to make this showing thus falls squarely on Petitioner. But Petitioner does not explain how the Krupa Provisional supports the relevant subject matter relied on in Krupa. In fact, Petitioner did not introduce the Krupa Provisional into the record, so it would not be possible to do so.7 Accordingly, Petitioner has not adequately shown that Krupa is prior art, and therefore Petitioner does not have a reasonable likelihood of prevailing with respect to any of the claims challenged in Grounds 1, 2, and 4, which grounds rely on Krupa in whole or substantial part.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We are not persuaded that Kajaria teaches limitation [1.5] or limitation [8.7]. First, Kajaria does not expressly teach these limitations, and, indeed, Petitioner does not appear to contend as much. Instead, Petitioner contends that one of ordinary skill in the art would have understood paragraph 35 of Kajaria as “includ[ing]” this step. But paragraph 35 teaches that “it may be desirable to provide pressurized fluid to a particular well at a particular time or place in the frac cycle, while simultaneously stopping the flow of fluid into another well that is in a different place in the frac cycle.” Ex. 1004 ¶ 35 (emphasis added). Providing pressurized fluid to one well which simultaneously stopping flow to another well suggests that fluid flow is not being provided to both wells at the same time. Second, “direct[ing] flow between wells continuously” is not the same as pumping flow to wells continuously, as Petitioner’s argument suggests. Paragraph 35 of Kajaria states that it is possible to direct flow between wells continuously “simply by opening or closing the valves 66 associated with individual wells,” and is silent regarding whether the frac pumps are on. This suggests that “direct[ing] flow between wells continuously” only refers to the valve lineup—i.e., at least one valve 66 is open “continuously’’—and does not mean providing fluid flow continuously. Interpreting the “continuously” statement in paragraph 35 in this manner is consistent with our interpretation of the “simultaneously stopping” sentence in the same paragraph, discussed above.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage of the proceeding, we do not perceive the need to expressly construe any claim terms, as the threshold question of institution can be decided without doing so. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where construction is not material to the dispute). See Pet. 14; see also Prelim. Resp. 40.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,401,779 - PTAB · Jun 20, 2023 · IPR2023-00293 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of success on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition, Preliminary Response, and the evidence of record, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we do not institute inter partes review of claims 1–3, 6, 13, 14, 17–21, 26–28, and 41 of the ’138 patent based on the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A POSITA in the technology field of the ’138 patent would have had a degree in mechanical engineering or a similar discipline, along with 2 years of professional experience working with the design and development of fuel injection systems for internal combustion engines or an equivalent level of skill, knowledge, and experience. (See Ex. 1003, ¶¶ 37–39, 41.) This POSITA would be aware of and generally knowledgeable about how fuel injector valves are structured and operate, and how they are used to deliver fuel to an engine’s combustion chambers. (Id., ¶ 40.) Pet. 23. Patent Owner does not dispute Petitioner’s proposed definition. See Prelim. Resp. 18. Instead, Patent Owner similarly argues “that a POSITA in the timeframe of the invention would have had a degree in mechanical engineering or a similar discipline along with two (2) years of professional experience working with fuel injectors or fuel injection systems for internal combustion engines.” Id. (citing Ex. 2004 ¶ 14). For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends “that the terms of the ’138 patent’s claims do not require further construction and can be afforded their plain and ordinary meaning.” Pet. 15 (citing Ex. 1003 ¶¶ 82–85). Patent Owner asserts that, “[f]or the purposes of this preliminary response, Patent Owner does not seek construction of any term.” Prelim. Resp. 19. On this record, we determine that no claim term requires an express construction for the purpose of determining whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Ex. 1002 ¶ 208 (emphases added). But, Dr. Quinlan’s citations to Klügl do not support these conclusions. Figure 1 and lines 41–42 of column 1 do not teach that the fluid in chamber 5 moves through a cylindrical space of “constant width” and “unchanging shape,” or that the fluid maintains a constant thickness throughout actuation. Ex. 1006, Fig. 1, 1:41–42, 3:23– 29. Likewise, column 3, lines 32–29 teach that “pressure is exerted on the drive piston 3 via the first membrane 6[.]” See id. at 3:23–29. Absent from these cited passages is any mention of constant width, unchanging shape, or fluid thickness.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,575,138 - PTAB · Jun 20, 2023 · IPR2023-00292 · APJ Carl M Defranco · IPR · Institution
The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood that any claim was obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition, Preliminary Response, and the evidence of record, we determine that the information presented in the Petition does not establish a reasonable likelihood that Bosch would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we decline to institute inter partes review of challenged claims 1–3, 6, 11, 12, 14, 15, and 18–20 as raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Bosch contends that one skilled in the art “would have had a degree in mechanical engineering or a similar discipline, along with 2 years of professional experience working with the design and development of fuel injection systems for internal combustion engines or an equivalent level of skill, knowledge, and experience” and “would be aware of and generally knowledgeable about how fuel injector valves are structured and operate, and how they are used to deliver fuel to an engine’s combustion chambers.” Pet. 23 (citing Ex. 1003 ¶¶ 37–41). Westport does not dispute Bosch’s proposed definition of the level of skill in the art, similarly proposing that one skilled in the art “would have had a degree in mechanical engineering or a similar discipline along with two (2) years of professional experience working with fuel injectors or fuel injection systems for internal combustion engines.” Prelim. Resp. 18 (citing Ex. 2004 ¶ 14). For purposes of deciding institution, we adopt Bosch’s proposed definition of the level of skill in the art as reasonable and consistent with the prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Bosch contends that “the terms of the ’829 patent’s claims do not require further construction and can be afforded their plain and ordinary meaning.” Pet. 15. Westport asserts that, “[f]or the purposes of this preliminary response, [it] does not seek construction of any term.” Prelim. Resp. 19. On this record, we do not perceive the need to expressly construe any claim term in order to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 9
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Id. ¶ 208 (emphasis added). But, Bosch’s expert’s citations to Klügl do not support these conclusions. Neither Figure 1 nor the cited passage in Klügl’s column 1 teaches that the fluid in chamber 5 moves through a cylindrical space of “constant width” and “unchanging shape,” or that the fluid maintains a constant thickness throughout actuation. See Ex. 1006, Fig. 1, 1:41–42, 3:23–29. Likewise, the cited passage from Klügl’s column 3 teaches that “pressure is exerted on the drive piston 3 via the first membrane 6[.]” See id. at 3:23–29. Absent from these cited passages is any mention of constant width, unchanging shape, or fluid thickness. If anything, the cited passage from Klügl’s column 3 supports that the exertion of pressure on drive piston 3 leads to flexing of membrane 6. Bosch’s expert further testifies that “[t]he fluid is unable to leave chamber 5 during actuation (it cannot flow through throttle 10 and is held in place by a membrane 6).” Ex. 1002 ¶ 212. While that may be so, neither Bosch nor its expert explains how membrane 6 maintains the constant dimensions of the purported cylindrical space, i.e., constant width, unchanging shape, and constant fluid thickness. See id. ¶¶ 208, 222. Rather, the conclusions of Bosch and its expert are unsupported by the cited passages in Klügl and the reference as whole. In contrast, Westport’s expert explains that “membrane [6] will tend to deform inward where it contacts the drive piston and bulge outward where unconstrained in the annular area between the edge of the drive piston and the wall of the transmission module in order to accommodate the volume of the fluid contained therein.” Ex. 2004 ¶ 52. Said another way, Westport’s expert considers that only a portion of membrane 6 bears against drive piston 6, while the remaining portion is left “unconstrained.” Id. ¶ 51. As a result, the unconstrained portion of membrane 6 will experience pressure from the fluid within pressure chamber 5, but will not contact piston 3. Id. The testimony of Westport’s expert’s is consistent and better supported by the disclosure of Klügl while the testimony of Bosch’s expert is incomplete and does not fully account for how membrane 6 functions in Klügl’s actuator assembly. See Ex. 1003 ¶¶ 207–215, 218–222. Moreover, the Petition itself does not explicitly discuss Klügl’s membrane 6 with regard to claim 1(e). See Pet. 34–40. For these reasons, we find that Bosch’s arguments are incomplete and insufficiently developed to support its obviousness contentions for independent claim 1.” slip op. at 16
Claim constructioncites PhillipsPatents in suitUS 6,298,829 - PTAB · Mar 22, 2023 · IPR2022-01437 · APJ William V Saindon · IPR · Institution
The Board denied institution for claims 1–18 and 20 because Petitioner did not show a reason to combine Xia and Park’s strainer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Critical to the present case is that Petitioner has not explained why it would have been obvious to modify Xia by borrowing features that are meant to solve problems unique to water-filter vacuum cleaners. Petitioner asserts, and we agree, that the result of adding a strainer is that it would strain out particles. But we must ask—what drives a person of ordinary skill in the art, looking at the upright wet vacuum of Xia, to consider Park’s strainer in the first place? See Kahn, 441 F.3d at 988. Park does not tell us, because the drive to add a strainer in Park is specifically to overcome a problem unique to the mode of operation in Park. In addition, Petitioner points to no general teaching in Park, nor offers any other evidence, suggesting to add strainers to recovery tanks. KSR, 550 U.S. at 420 (“any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed”). In sum, Petitioner does not provide us with other evidence showing that a person of ordinary skill in the art would recognize that Park’s structure was more generally applicable to non-recirculating vacuum systems.3 Thus, Petitioner’s justification for its proposed modification falls short. III. CONCLUSION As explained above, we find that Petitioner has not established a reason with rational underpinnings that explains why a person of ordinary skill in the art would have considered it obvious to modify Xia’s upright vacuum cleaner to include the strainer used in Park’s water filter recirculation system. Each of the grounds relies on this combination of features, and thus contains the same deficiency. Accordingly, we do not institute inter partes review on any challenged claims on any asserted grounds.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree with Patent Owner. We find nothing in Park that would indicate its strainer would be useful on devices that do not have water recirculation. In both the recirculation and draining scenarios where Park touts the benefit of the strainer, the benefit is tied to the fact that Park is a water-filter vacuum that relies on movement of dirty water through a relatively small path at the bottom of the cylindrical tube (i.e., holes 31-a). Ex. 1005 ¶ 55 (stating, “[t]he water passage (81) is not blocked by residue since dirty water does not contain the residue”). If the water had large enough particles, the path would clog and prevent recirculation or draining (as the case may be). Xia has no analogous structures facing these problems because it works differently—Xia has no need to clean dirty water to prepare it for re-use or drainage. Accordingly, Petitioner’s position that Park teaches or suggests to a person of ordinary skill in the art to install a strainer in Xia does not have support in Park.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have had a Bachelor’s degree in Mechanical Engineering (or an equivalent discipline) or equivalent work experience, and at least one year’s worth of experience in research, design and/or development related to vacuum cleaners . . . (or other comparable industrial design). Additional education could substitute for experience, and vice versa. Pet. 19 (citing Ex. 1003 ¶ 20). Patent Owner states that a person of ordinary skill in the art: would have a bachelor’s degree in mechanical engineering or similar discipline and at least one year of experience designing vacuum cleaners (or comparable industrial design). Additional education could substitute for experience, and vice versa. Prelim. Resp. 10 (no evidence cited). For purposes of this Decision, we perceive no meaningful distinction between the two positions. We apply Petitioner’s level of skill because it is the losing party, although we do not believe adopting Patent Owner’s level of skill would affect the outcome.” slip op. at 7
§ 103 obviousnesscites KSRPatents in suitUS 11,185,205 - Viken Detection Corporation v. American Science And Engineering, Inc.Institution deniedPTAB · Dec 16, 2022 · PGR2022-00047 · APJ Carl M Defranco · PGR · Institution
The Board denied institution because Viken did not show that any of claims 1–22 was more likely than not unpatentable for lack of written description or enablement.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“We apply the claim construction standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). That is, “the words of a claim ‘are generally given their ordinary and customary meaning’ . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1312–13; see also 37 C.F.R. § 42.200(b). Viken asserts that “the only terms that need construction are ‘a first X-ray source,’ ‘a second X-ray source,’ and ‘a third X-ray source’ of claim 1.” Pet. 20. According to Viken, the “X-ray sources of claim 1 should be construed to be ‘a first backscatter X-ray source,’ ‘a second backscatter X-ray source,’ and ‘a third backscatter X-ray source,’ respectively,” because one skilled in the art “would understand these sources to be backscatter sources in view of the intrinsic evidence (claims and specification).” Id. at 21 (citing Ex. 1012 ¶ 95). In particular, Viken asserts “[t]he only sources paired with backscatter detectors in the ’783 patent are backscatter sources.” Id. at 22 (citing Ex. 1012 ¶¶ 88, 95). We disagree, as discussed below in connection with Viken’s first ground.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Viken asserts that a person having ordinary skill in the art would be “a person with [a] Ph.D. in physics or similar discipline and at least two years of experience working with an interdisciplinary team designing and creating systems involving penetrating radiation sources and detectors.” Pet. 9 (citing Ex. 1012 ¶ 20). At this stage, ASE does not contest that formulation of the level of skill in the art. Nor do we discern any reason to question Viken’s formulation, as it appears consistent with the level of skill reflected in the ’783 patent and the prior art of record. We, therefore, apply Viken’s formulation for purposes of determining whether to institute.” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“Viken is mistaken on both counts. First, we disagree with Viken’s assertion that the claims are limited to a backscatter-only imaging system. Nor do we agree with Viken’s assertion that the Specification is limited to describing only a combined transmission/backscatter imaging system. We address each of these assertions in turn.” slip op. at 9
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)EnabledNot shown unpatentable
“G. Ground 5 – Enablement of System that is not a Combination Viken asserts that “claims 1–22 of the ’783 patent are invalid for failing to comply with the enablement requirement of 35 U.S.C. § 112(a) because the specification does not enable a two-plane backscatter-only system.” Pet. 41. Viken’s non-enablement assertions fail for the simple reason that they are premised on the same improper assumptions discussed above with respect to Viken’s assertions that claim 1 is limited to a backscatter-only imaging system. As discussed above in section II.C., the claims of the ’783 patent are not so limited. Also, as discussed above in section II.D, the Specification of ’783 patent provides adequate written description support for an X-ray imaging system that includes two planes. Given the high level of skill in the art based on Viken’s formulation—“a person with [a] Ph.D. in physics or similar discipline and at least two years of experience working with an interdisciplinary team designing and creating systems involving penetrating radiation sources and detectors” (Pet. 9 )— and given Viken’s improper reading of limitations into the claims in alleging lack of enablement, we are not persuaded that one skilled in the art would be unable to make or use the invention as claimed.” slip op. at 20
Claim construction§ 112 disclosurecites PhillipsPatents in suitUS 11,143,783 - Whitewater West Industries, Ltd. v. American Wave Machines, Inc.Institution deniedPTAB · Nov 17, 2022 · IPR2022-01035 · APJ Benjamin D M Wood · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 would be unpatentable over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In sum, Petitioner has not persuaded us that the combination of Van Gucht and Uddin teaches or suggests elements [1.D], [1.E], or [1.F], and has not persuaded us that one of ordinary skill in the art would have had reason to combine Van Gucht and Uddin. Accordingly, we are not persuaded that Petitioner is reasonably likely to prevail in showing the unpatentability of claim 1 or its dependent claims. Because, as stated above, the issues and arguments regarding claim 9 are largely the same as those regarding claim 1, we also are not persuaded that Petitioner has a reasonable likelihood of” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Although we agree with Petitioner that the ASCS method utilizes pressure sensors, Petitioner relies on the SAS method for the plenum-vent limitation. Pet. 24–25 (citing Ex. 1006, 2:2–3:1). Petitioner’s reliance on the SAS embodiment for the claimed vent and on the ASCS embodiment for the claimed pressure sensor is problematic. Petitioner does not acknowledge that it is relying on different embodiments for these claim limitations, much less explain how or why one of ordinary skill in the art would have combined them to achieve the claimed invention. Nor is it clear from our reading of Uddin how or why the skilled artisan would have done so. Indeed, Uddin appears to characterize SAS and ASCS as two distinct, mutually exclusive methods of dealing with compressor surge. See, e.g., Ex. 1006, 3:1 (“As opposed to the SAS which limits the compressor operating area of a surge control line, ASCS is stabilizing surge by an active element such that the compressor operating point is allowed to cross the surge line . . . .”). For the controller limitation, Petitioner relies on the unsupported assertion that a “POSITA familiar with Uddin would recognize that a controller is operationally connected to the sensors and the vents in the described systems.” Pet. 24–25. Petitioner’s reasoning seems to be that because, in SAS, the blow-off valve opens to discharge fluid downstream when “the compressor operating point is crossing the surge control line,” there must be a “controller” that “senses” this condition and then actuates the valve. Id. at 25 (citing Ex. 1006, 2:2–3:1). Petitioner does not offer any evidence to support this contention, however.8 Conversely, Patent Owner 8 Although Petitioner’s Declarant, Dr. Stevick, repeats this contention verbatim, Petitioner does not cite to this testimony as supporting evidence. See Pet. 24–25. Regardless, we would not have found such testimony persuasive, as Dr. Stevick also does not support this contention with evidence or persuasive technical reasoning. See 37 C.F.R. § 42.65(a) has proffered evidence that a controller is not required. According to this evidence, a blow-off valve is self-actuating, meaning that it opens when pressure is sufficiently high to overcome a counterforce biasing the valve shut, such as that provided by a spring. Prelim. Resp. 29 (citing Ex. 2005, 3–4). The pressure set point is determined by the choice of spring used by the valve, so pressure need not be “measured” per se. See Ex. 2005, 3. Thus, on this record, we are not persuaded that the SAS embodiment uses a controller. Finally, we find untenable Petitioner’s apparent reason why one of ordinary skill in the art would have applied Uddin’s teaching to a system having multiple fans: “Although Uddin primarily focuses on a single fan, sensor, valve combination, a POSITA would readily appreciate its applicability to systems incorporating multiple fans, sensors and vents as the need and the science remain the same.” Pet. 25. This assertion suffers from three problems. First, Petitioner has not established that Uddin teaches “a single fan, sensor, valve combination.” As discussed above, the SAS embodiment uses a fan and a valve, but not necessarily a sensor. Uddin’s ASCS embodiment (which Petitioner does not appear to be relying on) uses a fan and a sensor, but not necessarily a valve.9 Second, Petitioner has not (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); cxLoyalty, Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1378 (Fed. Cir. 2021) (“We do not accord weight to conclusory expert testimony.”). 9 Uddin does not describe ASCS as using a blow-off valve, but rather an “active element,” or “actuator.” Ex. 1006, 3:1. According to Uddin, “Several actuators have been applied in active surge control,” such as “a moveable plenum wall,” “close coupled valve,” “drive torque,” etc. Id. established the existence in the prior art of “systems incorporating multiple fans, sensors and vents” to which Uddin’s purported single fan/sensor/valve combination would have been applicable. Petitioner does not contend, and we do not find, that Van Gucht teaches such a system. Third, Petitioner’s only support for why a skilled artisan would have “appreciate[d the] applicability” of Uddin’s sensor to Van Gucht’s fans and plenum is the patent at issue. Pet. 25 (“[T]he ’492 Patent highlights the importance of each fan having its own sensor and vent.”) (citing Ex. 1001, 5:4–7).10 “Obviousness can not be established by hindsight combination to produce the claimed invention.” In re Dance, 160 F.3d 1339, 1343 (Fed. Cir. 1998) (internal citation omitted). Using an inventor’s disclosure to defeat the patentability of the inventor’s claims is “the essence of hindsight.” Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1320 (Fed. Cir. 2004). In sum, Petitioner has not persuaded us that the combination of Van” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“III. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 325(d) Patent Owner urges us to exercise our discretion under 35 U.S.C. § 325(d) to deny institution because the same or substantially the same prior art or arguments were already considered during prosecution of the ’492 patent. Prelim. Resp. 7–11. Because we find that Petitioner has not shown a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims, this argument is moot.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“invention “would have knowledge and familiarity with: (i) design of mechanical structures and (ii) fluid characteristics and the interaction of fluid forces upon mechanical structures, and (iii) basic fan and system 2 European Patent Application No. 0,287,714 A1, pub. Oct. 26, 1988 (Ex. 1004, “Van Gucht”). 3 U.S. Patent No. 4,730,355, iss. Mar. 15, 1988 (Ex. 1005, “Kreinbihl”). 4 Nur Uddin and Jan Tommy Gravdahl, Two General State Feedback Control Laws for Compressor Surge Stabilization, ResearchGate, June 2016 (Ex. 1006, “Uddin”). curves.” Pet. 10. Petitioner further contends that one of ordinary skill in the art “would also have a basic understanding of control systems and sensors as reflected in the prior art references.” Id. at 11. According to Petitioner, this knowledge and experience “could be obtained by: (i) successfully completing a Master’s degree in Mechanical Engineering or Control Systems Engineering or (ii) at least 5 years of experience in a job working with control systems, including designing or implementing fan-generated fluid displacement systems.” Id. at 12–13 (citing Ex. 1007 ¶ 41). At this stage, Patent Owner does not contest that assertion. See Prelim. Resp. 12. Nor do we discern any reason to question its credibility at this stage. Further, we presume that the cited prior art references reflect the level of ordinary skill at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining the level of ordinary skill in the art may be evidenced by the cited references themselves).” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,738,492
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.