- Syngenta Crop Protection AG v. Inflexion Point Technologies, LLCInstitution deniedPTAB · Dec 1, 2025 · PGR2025-00045 · APJ Debra L Dennett · PGR · Institution
The Board denied institution because Petitioner did not show it was more likely than not that any challenged claim was unpatentable under the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute a post-grant review under 35 U.S.C. § 324. Institution of a post-grant review is authorized by statute only when “the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). The burden is on Petitioner to show that the challenged patent is eligible for postgrant review. Mylan Pharms. Inc. v. Yeda Research & Dev. Co., PGR2016- 00010, Paper 9 at 10 (PTAB Aug. 15, 2016) (holding that the ultimate burden of persuasion remains with a petitioner to demonstrate that the challenged patent is eligible for post-grant review). Upon consideration of the Petition, Preliminary Response, and the cited evidence, we determine that Petitioner has not shown that it is more likely than not that any of the challenged claims are unpatentable. We thus determine to not institute a post-grant review of the ’027 patent based on the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“a Bachelor of Science degree in Agricultural or Mechanical Engineering with 2–4 years of practical, applied experience in the field of agricultural machinery, including systems integration and fluid handling and sprayer control systems, or equivalent experience. Prelim. Resp. 12 (citing Ex. 2001, ¶ 59). Patent Owner states that the differences in the asserted levels of ordinary skill should not change the outcome of the Petition. Id. For the purposes of this decision, we adopt Petitioner’s definition, which appears consistent with the level of skill shown in the prior art references of record and the ’027 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). Our analysis, however, would not change were we to adopt Patent Owner’s definition.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“Patent Owner contends that claim construction is necessary for the “seed-applied substance” term because Petitioner allegedly ignores the teaching of the specification in evaluating the term. Prelim. Resp. 12. Patent Owner points to the specification, which defines a “seed-applied substance” as “includ[ing] any composition applied to seeds prior to the seeds being planted (e.g., when the seed comes in contact with the soil in a field).” Id. at 13 (quoting Ex. 1001, 7:45-48). Patent Owner contends that the term means “a substance that is applied directly to the seed before the seed comes into contact with the soil in a field.” Id. (citing Ex. 2001, ¶ 55). According to Patent Owner, Petitioner erroneously uses a definition that “allows the ‘seedapplied substance’ to be applied to the seed (and soil) as the seed lay planted in the soil.’” Id. For the purpose of addressing Petitioner’s grounds, we use the definition of “seed-applied substance” provided in the ’027 patent, i.e., “any composition applied to seeds prior to the seeds being planted (e.g., when the seed comes in contact with the soil in a field).” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“[A] patentee may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history.”).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“3. Analysis Our analysis of whether Wagers discloses the limitation “individually applying the desired application amount of the selected type of the seed-applied substance to each seed as it is being delivered to the soil” is dispositive of Petitioner’s challenge to claim 1 as anticipated.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 12,102,027 - Zhuhai Cosmx Battery Co., Ltd. v. Ninge Amperex Technology LimitedInstitution deniedPTAB · Aug 20, 2025 · IPR2025-00385 · APJ Debra L Dennett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 were anticipated by Nishikawa or obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” For the reasons set forth below, upon considering the Petition and Preliminary Response, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to at least one challenged claim. Accordingly, we deny the Petition and decline to institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that A person of ordinary skill in the relevant art would typically hold an advanced degree in chemistry, material science, and/or a related discipline, and have at least two years of experience with designing and/or fabricating battery separators or have an equivalent level of education, training, and experience. Pet. 5. Patent Owner “adopts the definition proposed by Petitioner” for the purposes of the Preliminary Response. Prelim. Resp. 22. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s unopposed definition because it is consistent with the specification. We note that neither party indicated that the result would change under any different definition.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Absolute plastic deformation rate” and “relative plastic deformation rate” are the only claim terms disputed in this proceeding, and are clearly defined in the Specification and in claim 1. See Spec. 4:22–27, 4:47–54; 25:31–37. Because we determine that claim construction is not necessary to decide whether to institute, we do not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner’s arguments are unconvincing. Petitioner points to nothing in Nishikawa that allows a POSITA to determine L2 (defined as “a length of 4 Tensile strength is measured as force per units area, such as MPa or psi. One MPa equals one N/mm2. Nishikawa Table 1 discloses tensile strength in N/cm. Ex. 1004 Table 1. Petitioner makes calculations to convert the reported N/cm into N/m2 and then to GPa, but provides no explanation for why tensile strength is reported in N/cm or how it was measured. See Pet. 31. the porous substrate after the porous substrate is stretched to breakage and docked along the fracture caused by the breakage and flattened”) or L2 – L0. See generally Pet., Ex. 1004. Petitioner and its expert, Dr. Pecht, fail to adequately explain why tensile strength divided by Young’s modulus is “a proxy for L1 – L2” or why such a proxy is sufficient to disclose the limitation as stated. Instead, we are required to rely on “approximations” and “estimates” with insufficient explanation of why such they are appropriate or adequate. See Pet. 26, 30, 32; see also Ex. 1003 ¶¶ 97, 105–108, 111.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,964,927 - Cargill, Incorporated v. Bunge Loders Croklaan USA, LLCRehearing deniedPTAB · Apr 29, 2025 · IPR2024-01360 · APJ Debra L Dennett · IPR · Rehearing
The Board denied Cargill’s rehearing request, leaving institution denied for claims 1, 6–9, and 11–24 because the petition did not show a reason to combine the selected prior-art data without hindsight.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Upon request for rehearing, we assess a decision on institution “for an abuse of discretion” (37 C.F.R. § 42.71(c) (2020)), which occurs when a “decision was based on an erroneous conclusion of law,” “clearly erroneous factual findings,” or “a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The burden of showing a decision should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(c) (2020). The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. We have reviewed Petitioner’s Rehearing Request and carefully considered all the arguments presented. For the following reasons, we are not persuaded that we misapprehended or overlooked any arguments or evidence.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As discussed in the Decision, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). No matter the result of combining the allegedly “readily available and well-known” information taken from particular examples from the “documentary evidence” with Petrauskaite’s disclosure, a POSITA had to have been motivated to do so at the time the invention was made.1 What is missing from the Petition is the “why.” The only motivating force in this case appears to be hindsight spurring Petitioner on to choose particular examples of palm stearin disclosed in Deffense and the soybean oil in Neff in order to justify its assertion that Petrauskaite discloses the claimed wt% ranges of triglyceride classes.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable
“artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). No matter the result of combining the allegedly “readily available and well-known” information taken from particular examples from the “documentary evidence” with Petrauskaite’s disclosure, a POSITA had to have been motivated to do so at the time the invention was made.1 What is missing from the Petition is the “why.” The only motivating force in this case appears to be hindsight spurring Petitioner on to choose particular examples of palm stearin disclosed in Deffense and the soybean oil in Neff in order to justify its assertion that Petrauskaite discloses the claimed wt% ranges of triglyceride classes.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s. We find no instance in the Petition in which “motivation” and “iodine value” are discussed together or linked in any way. The same can be said of Dr. Marangoni’s declaration. And, as noted in the Decision, it was not until the Preliminary Reply that Petitioner argued that specific data on fatty acid wt% used for the conversion calculations were selected to represent “knowledge generally available to one of ordinary skill in the art” due to similarity of the iodine value (“IV”) of the palm stearin (and soybean oil) disclosed in Petrauskaite. See Prelim. Reply 2–3. New evidence or argument in the Preliminary Reply that could have presented earlier is not permitted. On this record, we find Petitioner relies its Rehearing Request on arguments about a motivation to combine, stemming from the significance of iodine values, that were not raised in the Petition. Accordingly, Petitioner fails to support that the Decision misapprehended or overlooked arguments in the Petition about the significance of iodine values.” slip op. at 8
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,645,473 - Cargill, Incorporated v. Bunge Loders Croklaan USA, LLCInstitution deniedPTAB · Mar 19, 2025 · IPR2024-01360 · APJ Debra L Dennett · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 6–9, and 11–24 were unpatentable as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the arguments and the associated evidence, we determine that Petitioner does not meet the reasonable likelihood standard, and we do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this institution decision, and based on the present record including the disclosure in the ʼ473 patent, we apply Petitioner’s definition of the level of ordinary skill in the art at the time the invention was made, consistent with pre-AIA section 103(a). See Pet. 9–10. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ473 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for several terms, all such constructions based on statements in the ’473 patent. See Pet. 10–12. Patent Owner presents no claim construction issues. Prelim. Resp. 8 n.3. For purposes of this Decision, we determine that no claim term requires express interpretation at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “only to the extent necessary to resolve the controversy” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“Petitioner’s representation of the problem as merely converting Petrauskaite’s disclosed mol% of triglycerides into wt% of triglycerides with simple calculations represents a form of prohibited reliance on hindsight. See Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1377 (Fed. Cir. 2012) (hindsight to use the invention to define the problem the invention solves); see also Ecolochem, Inc. v. Southern Cal. Edison Co., 227 F.3d 1361, 1372 (Fed. Cir. 2000) (”Defining the problem in terms of its solution reveals improper hindsight in the selection of the prior art relevant to obviousness.”). “[W]hen someone is presented with the identical problem and told to make the patented invention, it often becomes virtually certain that the artisan will succeed in making the invention.” Mintz, 679 F.3d at 1377. Here, Petitioner urges that one of ordinary skill in the art need merely convert mol% of triglycerides in a specific fat blend into wt% of triglycerides in the specific fat blend. See Pet. 14–15 (“[T]he wt% of Petrauskaite’s fat blends can easily be calculated based on the generally available prior art knowledge of fatty acid compositions of palm stearin and soybean oil.”). Petitioner’s reasoning says no more than that a skilled artisan, once presented with Petrauskaite and prior art knowledge, “would have understood that they could be combined, but that is not enough.” PersonalWeb Techs., LLC, v. Apple, Inc., 848 F.3d 987, 993 (Fed. Cir. 2017) (that two references could be combined does not imply a motivation to pick out those two references and combine them to arrive at the claimed invention). Our reviewing court instructs that indicating that a skilled artisan could have made modifications to arrive at the claimed invention does not establish that a person of ordinary skill would have made such modifications. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Petitioner attempts to check the “would have been motivated to modify Petrauskaite” box with testimony from its declarant, Dr. Maragoni. See Pet. 37–38. Such testimony includes [C]ombining such prior art elements according to known methods would have yielded nothing more than predictable results. A POSITA would naturally have turned to these references to understand Petrauskaite’s references better. Ex. 1003 ¶ 178. [T]he corresponding wt% of Petrauskaite’s fat blends] was readily-available and well-known in the art. Id. at ¶ 181. [T]he available information [on characterizations of oils and fats] is voluminous. Id. at ¶ 182. See Pet. 38. We find that such testimony fails to explain why the skilled artisan would have been motivated, without hindsight, to take the steps to reproduce the claimed invention, and to be conclusory, at best. On this record, we detect the taint of impermissible hindsight bias in” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,645,473 - Corning Incorporated v. Panduit Corp.Rehearing deniedPTAB · Jan 16, 2020 · IPR2019-00776 · APJ Debra L Dennett · IPR · Rehearing
The Board denied Corning’s rehearing request and left institution denied for claims 1–4 because the petition did not show a reasonable likelihood of proving obviousness on any asserted ground.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Request for Rehearing (Paper 16, “Rehearing Request” or “Reh’g Req.”) of our Decision denying institution of an inter partes review (Paper 15, “Decision” or “Dec.”) of claims 1–4 of U.S. Patent No. 8,488,115 B2 (Ex. 1001, “the ’115 patent”). In the Decision, we found that Petitioner failed to provide sufficient evidence to show that the choosing limitation of the claims would have been obvious over cited references in view of the knowledge of one of ordinary skill in the art. Dec. 20, 26, 29. We, thus, found that Petitioner did not establish a reasonable likelihood of prevailing in showing that claims 1–4 of the ’115 patent are unpatentable as obvious on any asserted ground. Id. at 22, 23, 27–30.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable
“negative slopes. See Ex. 1006, Figs. 2, 3. Petitioner failed to explain why one of ordinary skill in the art at the time of the invention, without using the ’115 patent as a template, would have elected to consider only some selected data in Abbott, while ignoring other data, or would have elected to choose an optical fiber based on such consideration. See Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (“To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.” (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983))). Instead, Petitioner merely cited to the conclusory opinion of its expert declarant. Pet. 42 (citing Ex. 1005 ¶ 252).” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“The second part of Petitioner’s first argument is that we “committed legal error by construing claim 1” of the ’115 patent “as requiring the slope to always be negative.” Reh’g Req. 4, 6–8. We made no such construction, either expressly or implicitly. In fact, we determined that no claim term required express construction. Dec. 7. In arguing that we committed legal error, Petitioner points to statements in Patent Owner’s briefing (Reh’g Req. 6–9), but Petitioner identifies nothing in our Decision that indicates we construed the “choosing” limitation of claim 1 to require that the DMD slope always be negative. Consequently, Petitioner’s assertion of legal error is unsupported.” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 8,488,115 - Corning Incorporated v. Panduit Corp.Rehearing deniedPTAB · Jan 16, 2020 · IPR2019-00775 · APJ Michelle N Ankenbrand · IPR · Rehearing
Denied Corning’s rehearing request; the Board maintained its denial of institution because the petition did not show a reasonable likelihood that claims 1–4 were obvious on any asserted ground.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“institute an inter partes review, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c) (2018). In pertinent part, 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Request for Rehearing (Paper 16, “Rehearing Request” or “Reh’g Req.”) of our Decision denying institution of an inter partes review (Paper 15, “Decision” or “Dec.”) of claims 1–4 of U.S. Patent No. 8,351,027 B2 (“the ’027 patent,” Ex. 1001). In the Decision, we found that Petitioner failed to provide sufficient evidence to show that the combined teachings of the prior art would have rendered obvious the limitation of claim 1 that requires “choosing for use in a communications network those optical fibers in which the result of subtracting the peak delay at the first radius from the peak delay at the second radius is a negative number” (“the choosing step”). Dec. 23–25, 29–30, 32. We, thus, determined that Petitioner did not establish a reasonable likelihood of prevailing in showing that claims 1–4 of the ’027 patent would have been obvious based on any asserted ground. Id. at 25–26, 30–33.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot reached
“negative slopes. See Ex. 1006, Figs. 2, 3. Petitioner failed to explain why one of ordinary skill in the art at the time of the invention, without using the ’027 patent as a template, would have elected to consider only some selected data in Abbott, while ignoring other data, or would have elected to choose an optical fiber based on such consideration. See Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (“To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.” (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983))); see also Dec. 25 (concluding that Petitioner’s argument appears to be the product of hindsight). Instead, Petitioner merely cited to the conclusory opinion of its expert declarant. Pet. 44 (citing Ex. 1005 ¶ 164).” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“legal error by construing claim 1” of the ’027 patent “as requiring the slope to always be negative.” Reh’g Req. 4, 6–8. We made no such construction. In fact, we determined that no claim term required express construction, expressly or implicitly. Dec. 7. In arguing that we committed legal error, Petitioner points to statements in Patent Owner’s briefing, see Reh’g Req. 6– 9, but does not identify anything in our Decision that indicates we construed the choosing step of claim 1 as requiring that the DMD slope should always be negative. Consequently, Petitioner’s assertion of legal error is unsupported.” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 8,351,027 - Corning Incorporated v. Panduit Corp.Institution deniedPTAB · Sep 16, 2019 · IPR2019-00776 · APJ Debra L Dennett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–4 obvious over any of the three asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). We may not institute an inter partes review “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). Applying that standard, and upon considering the information presented in the Petition and the Preliminary Response, we determine Petitioner does not show a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claims. Accordingly, we do not institute an inter partes review as to claims 1–4 of the ’115 patent.” slip op. at 2
- BurdenNot shown unpatentable
“On this record, we agree with Patent Owner that Petitioner fails to set forth a sufficient basis as to how an ordinarily skilled artisan would have arrived at the choosing step from Abbott’s disclosures and the knowledge of a POSITA, relying instead on conclusory statements from Dr. Ralph to bridge the gaps in Abbott. As Patent Owner highlights, and Dr. Ralph acknowledges, Abbott does not explicitly disclose that its MMF must be chosen based on the criterion in claim 1, i.e., choosing optical fibers in which the result of subtracting the pulse delay at the first radius from the pulse delay at the second radius is a negative number. Prelim. Resp. 14; Ex. 1005 ¶ 252 (“Abbott does not explicitly teach choosing multimode optical fibers on the specific basis of calculating a negative DMD slope (or shift).”). Although Petitioner argues that such a choosing step would have been obvious, Petitioner does not direct us to sufficient evidence to support that argument.” slip op. at 20
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“On this record, we agree with Patent Owner that Petitioner fails to set forth a sufficient basis as to how an ordinarily skilled artisan would have arrived at the choosing step from Abbott’s disclosures and the knowledge of a POSITA, relying instead on conclusory statements from Dr. Ralph to bridge the gaps in Abbott. As Patent Owner highlights, and Dr. Ralph acknowledges, Abbott does not explicitly disclose that its MMF must be chosen based on the criterion in claim 1, i.e., choosing optical fibers in which the result of subtracting the pulse delay at the first radius from the pulse delay at the second radius is a negative number. Prelim. Resp. 14; Ex. 1005 ¶ 252 (“Abbott does not explicitly teach choosing multimode optical fibers on the specific basis of calculating a negative DMD slope (or shift).”). Although Petitioner argues that such a choosing step would have been obvious, Petitioner does not direct us to sufficient evidence to support that argument.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“Moreover, although Petitioner argues that it would have been obvious for a POSITA to have chosen a MMF on the basis of calculating a negative DMD slope given Abbott’s disclosure, we agree with Patent Owner that Petitioner’s showing falls short on this record. Specifically, Petitioner does not direct us to a teaching or suggestion in Abbott of choosing a MMF based on the negative slope or DMD shift. Rather, Petitioner’s argument that “it would have been obvious to a POSITA to choose for use in a communications network those optical fibers in which the results of subtracting the pulse delay at the first radius from the pulse delay at the second radius is a negative number in order to obtain the optimized MMF described in Abbott (Pet. 42), appears to be the product of hindsight, coupled with Dr. Ralph’s conclusory testimony that the choosing step would have been obvious in view of Abbott’s teaching that its new MMF “has a variety of uses in the telecommunication industry.” Ex. 1005 ¶ 252 (quoting Ex. 1006, 4:1–6); see Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016) (in reaching a conclusion on obviousness, “the court must avoid ‘hindsight bias and must be cautious of arguments reliant upon ex post reasoning’” (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (a lack of objective support for expert opinion “may render the testimony of little probative value in a validity determination”); 37 C.F.R. § 42.65(a) (opinion testimony that does not disclose underlying facts “is entitled to little weight”). Accordingly, we determine that Petitioner fails to show a reasonable likelihood of prevailing in its assertion that claim 1 of the ’115 patent would have been obvious over Abbott and a POSITA’s knowledge.” slip op. at 22
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,488,115 - Corning Incorporated v. Panduit Corp.Institution deniedPTAB · Sep 16, 2019 · IPR2019-00775 · APJ Michelle N Ankenbrand · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–4 were unpatentable as obvious over any of the three asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). We may not institute an inter partes review “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). Applying that standard, and upon considering the information presented in the Petition and the Preliminary Response, we determine Petitioner does not show a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claims. Accordingly, we do not institute an inter partes review as to claims 1–4 of the ’027 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“ordinary skill in the art at the time of the invention of the ’027 patent would have “a working knowledge of fiber optic systems, a bachelor’s degree in Engineering or Physics or equivalent coursework, and approximately two years of professional experience or graduate studies involving optical fiber data transmission.” Pet. 15–16 (citing Ex. 1005 ¶ 20). At this stage of the proceeding, Patent Owner does not propose a definition for the level of ordinary skill in the art, or otherwise dispute Petitioner’s definition. See generally Prelim. Resp. Petitioner’s definition appears consistent with the level of ordinary skill in the art reflected in the prior art, and we apply it for purposes of this decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). Further, based on the information presented at this stage of the proceeding, we consider Petitioner’s declarant, Dr. Ralph, qualified to opine from the perspective of an ordinary artisan at the time of the invention. See Ex. 1005 ¶¶ 5–11 (Dr. Ralph’s background and qualifications); Ex. 1036 (Dr. Ralph’s curriculum vitae).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“282(b).” 37 C.F.R. § 42.100(b) (2018).7 Under this standard, we construe 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.” Id. Furthermore, at this stage in the proceeding, we expressly construe the claims only to the extent necessary to determine whether to institute inter partes review. 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))). Petitioner proposes that we construe the term “peak delay” recited in claim 1 of the ’027 patent. Pet. 14–15. Patent Owner does not challenge Petitioner’s proposed construction, but reserves the right to do so “at a later time.” Prelim. Resp. 10. Our resolution of the parties’ disputes does not turn on our interpretation of the term “peak delay.” Accordingly, it is not necessary to construe that term for purposes of this decision.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“forth a sufficient basis as to how an ordinarily skilled artisan would have arrived at the choosing step from Abbott’s disclosures and the knowledge of a POSITA, relying instead on conclusory statements from Dr. Ralph to bridge the gaps in Abbott. As Patent Owner highlights, and Dr. Ralph acknowledges, Abbott does not explicitly disclose that its MMF must be chosen based on the criterion in claim 1, i.e., choosing optical fibers in which the result of subtracting the peak delay at the first radius from the peak delay at the second radius is a negative number. Prelim. Resp. 13; Ex. 1005 ¶ 164 (“Abbott does not explicitly teach choosing multimode optical fibers on the specific basis of calculating a negative DMD slope (or shift).”). Although Petitioner argues that such a choosing step would have been obvious, Petitioner does not direct us to sufficient evidence to support that argument. For example, Petitioner argues that “[a]s exhibited by Figures 2 and 3 of Abbott, the preferred embodiment of Abbott would always have a negative DMD slope when measured at a 850 nm wavelength.” Pet. 43 (emphasis added). Dr. Ralph testifies similarly. Ex. 1005 ¶ 162 (“As exhibited by Figures 2 and 3 of Abbott, the preferred embodiment of Abbot would always have a negative DMD slope when measured at a 850 nm wavelength.”). However, as Patent Owner highlights with its annotation to Figure 2, some portion of Figure 2 has an upward or positive slope. Prelim. Resp. 14; see Ex. 1006, 9:44–46 (explaining that the slope is upward or positive in a certain region of the DMD curve). And Petitioner does not explain how Abbott’s Figure 3, which depicts a DMD curve at a 1300 nm wavelength, supports its negative DMD slope argument.11 See Pet. 43. Thus, the record does not support Petitioner’s assertion that Abbott’s Figures 2 and 3 show that Abbott’s DMD slope would “always” be negative. 11 Like Figure 2, Figure 3 also has a positive slope in a certain region of the DMD curve, as Patent Owner’s annotation to the figure indicates. See Prelim. Resp. 14; Ex. 1006, Fig. 3. Moreover, although Petitioner argues that it would have been obvious for a POSITA to have chosen a MMF on the basis of calculating a negative DMD slope given Abbott’s disclosure, we agree with Patent Owner that Petitioner’s showing falls short on this record. Specifically, Petitioner does not direct us to a teaching or suggestion in Abbott of choosing a MMF based on the negative slope or DMD shift. Rather, Petitioner’s argument that “Abbott teaches the desirability of optical fibers exhibiting a negative DMD slope in telecommunications systems” (Pet. 44), appears to be the product of hindsight, coupled with Dr. Ralph’s conclusory testimony that the choosing step would have been obvious in view of Abbott’s teaching that its new MMF “has a variety of uses in the telecommunication industry.” Ex. 1005 ¶ 164 (quoting Ex. 1006, 4:1–6); see Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016) (in reaching a conclusion on obviousness, “the court must avoid ‘hindsight bias and must be cautious of arguments reliant upon ex post reasoning’” (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (a lack of objective support for expert opinion “may render the testimony of little probative value in a validity determination”); 37 C.F.R. § 42.65(a) (opinion testimony that does not disclose underlying facts “is entitled to little weight”).” slip op. at 23
Claim construction§ 103 obviousnessPatents in suitUS 8,351,027
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.