- Chongqing HKC Optoelectronics Technology Co., Ltd. v. 138 East LCD Advancements LimitedInstitution deniedPTAB · Aug 28, 2023 · IPR2023-00475 · APJ Wesley B Derrick · IPR · Institution
Institution was denied because the petition did not sufficiently show that the counter-electrode potential line was one of the claimed main wiring lines coupled to peripheral driving circuits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) as the evidence that supports the grounds for the challenge to each claim’”). When challenging claims based on obviousness, the Petitioner must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (citations omitted). The burden of persuasion, whether for anticipation or for unpatentability for obviousness, never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. See Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in the art “would have either a bachelor’s degree in electrical or computer engineering with three years of experience in the field of display technology or a master’s degree with one year of experience in the field of display technology.” Pet. 8 (citing Ex. 1002 ¶¶ 38‒41). Patent Owner, “[f]or purposes of th[e]” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“5. Analysis Claim 1 recites “in a peripheral region of the image display region on the element substrate, a plurality of external circuit connection terminals, a plurality of main wiring lines . . . and peripheral driving circuits.” Ex. 1001, 21:55‒60. The plain and ordinary meaning of this phrase includes that the plurality of main wiring lines and peripheral driving circuits are formed on the element substrate. Claim 1 further recites, for the main wiring lines, “each having one end coupled to each of the plurality of external circuit connection terminals, and peripheral driving circuits coupled to the other ends of the main wiring lines.” Id. at 21:57‒59. The plain and ordinary meaning of this phrase is that each main wiring line is connected at one end to an external circuit connection terminal and, at the other end, to the peripheral driving circuits; this is how Petitioner addresses “a plurality of main wiring lines” as to this portion of claim 1 in accordance with the plain and ordinary meaning. Pet. 15 (“Figure 4 shows wiring lines coupled to the external connection terminals 102 at one end and coupled to peripheral circuits, including data line driving circuit 101, and scanning line driving circuit 104, at the other.”); see also Ex. 1002 ¶ 59. Petitioner and its driving circuit 104 as peripheral circuits. Pet. 15‒16 (citing Ex. 1005 ¶¶ 1, 78‒80, Fig. 4; reproducing Fig. 4 without annotation); Ex. 1002 ¶¶ 56‒59.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner fails, however, to address the clause, “which is at least one of the plurality of main wiring lines,” and the implication that follows from the plain language of the claim. Id. Specifically, as set forth above, the “plurality of main wiring lines” are coupled at one end to peripheral circuits, and Petitioner provides no basis for the wiring 400 (LCCOM) to be coupled to any element identified by Petitioner as a peripheral circuit. Id. at 15‒17 (identifying data line driving circuit 101 and scanning line driving circuit 104 as peripheral circuits). Rather, Petitioner sets forth that wiring 400 (LCCOM) “supplies potential from the external input terminal 102 to the vertical conduction terminal 106 and then to the counter electrode 21 on the counter substrate 20.” Id. at 17 (citing Ex. 1005 ¶ 85, Figs. 3, 4; Ex. 1002 ¶¶ 63‒65). Further, to the extent Petitioner states that Muraide “discloses a counter electrode provided in the peripheral region on a counter substrate that is arranged to face the element substrate” (id. at 16 (citing Ex. 1005 ¶ 41; Ex. 1002 ¶¶ 60‒62)), Petitioner does not clearly identify the counter electrode as a peripheral circuit (id.) and, further, the counter electrode on the counter substrate is not a peripheral driving circuit on the element (“in a peripheral region of the image display region on the element substrate, . . . peripheral driving circuits” (emphasis added))). Accordingly, on this record, we determine that Petitioner fails to sufficiently establish “a counter electrode potential line that supplies counter electrode potential to the counter electrode, which is at least one of the plurality of main wiring lines.” Although Patent Owner did not clearly raise this particular issue, “[i]n an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3)). The burden of persuasion, whether for anticipation or for unpatentability for obviousness, never shifts to Patent Owner. See Dynamic Drinkware, 800 F.3d at 1378. Further, our role is not to remedy the deficiencies in Petitions that fall short. Sirona Dental Sys. GMBH v. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018) (quoting SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356–57 (2018)) (explaining that because “‘the petitioner’s contentions, not the Director’s discretion, define the scope . . . [,]’ [i]t would thus not be proper for the Board to deviate from the grounds in the petition and raise its own obviousness theory” “institut[ing] a different inter partes review”); cf. Magnum Oil Tools, 829 F.3d at 1380–81 (rejecting an argument that the Board properly “ma[de] an obviousness argument on behalf of [petitioner]” that “could have been included in a properly-drafted petition,” because “petitioner . . . bears the burden of proof”).” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,116,390 - PTAB · Sep 29, 2022 · IPR2022-00986 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR on claims 1–5 based on the same grounds as IPR2021-01443 and granted Zhuhai CosMX Battery Co., Ltd.’s motion to join that proceeding.
RulingsInstitution decision- Other 314aDecided for petitioner
“deny institution based on Petitioner’s refusal to enter a Sotera-style stipulation in the related CosMX litigation. Prelim. Resp. 1, 3–4; see Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A) (“Sotera”). A June 2022 Memorandum from the Director states, “Consistent with Sotera Wireless, Inc., . . . the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“six non-exclusive Fintiv factors. Fintiv I at 6. Recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor,” the Board “takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id.; see also Interim Procedure at 3 (providing “binding agency guidance” regarding how the Board’s discretion under 35 U.S.C. § 314(a) and the Fintiv factors apply to “sample fact patterns”). After considering the parties’ arguments and evidence in light of the Fintiv factors and the Interim Procedure, we decline to exercise our discretion to deny the Petition as explained further below.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After considering the Petition, the Preliminary Response, and the record as a whole and for the same reasons as stated in the institution decision in the 1443 IPR, we determine that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. See 1443 IPR, Paper 16 at 14‒35 (PTAB Apr. 8, 2022).” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Here, Petitioner’s Motion for Joinder requests no more than the statute allows. Petitioner represents that “the Petition asserts the same grounds and relies on the same evidence for unpatentability” as presented in the 1443 IPR. Mot. 7. Furthermore, Petitioner agrees that, if joined to the 1443 IPR, Petitioner will take a secondary “understudy” role and will not request any changes to the trial schedule. Mot. 4, 7–8. Petitioner states that it will assume a primary role only if the petitioner in the 1443 IPR ceases its participation. Mot. 8.” slip op. at 10
Discretionary denialPatents in suitUS 9,350,019 - PTAB · Sep 29, 2022 · IPR2022-00985 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted inter partes review of claims 1–11 on the grounds instituted in IPR2021-01441 and joined Zhuhai CosMX Battery Co., Ltd. to that proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“In assessing whether to exercise such discretion, the Board weighs the six non-exclusive Fintiv factors. Fintiv I at 6. Recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor,” the Board “takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id.; see also Interim Procedure at 3 (providing “binding agency guidance” regarding how the Board’s discretion under 35 U.S.C. § 314(a) and the Fintiv factors apply to “sample fact patterns”). After considering the parties’ arguments and evidence in light of the Fintiv factors and the Interim Procedure, we decline to exercise our discretion to deny the Petition as explained further below.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After considering the Petition, the Preliminary Response, and the record as a whole and for the same reasons as stated in the institution decision in the 1441 IPR, we determine that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. See 1441 IPR, Paper 16 at 11‒49 (PTAB Apr. 8, 2022).” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Here, Petitioner’s Motion for Joinder requests no more than the statute allows. Petitioner represents that “the Petition asserts the same grounds and relies on the same evidence for unpatentability” as presented in the 1441 IPR. Mot. 7. Furthermore, Petitioner agrees that, if joined to the 1441 IPR, Petitioner will take a secondary “understudy” role and will not request any changes to the trial schedule. Mot. 4, 7–8. Petitioner states that it will assume a primary role only if the petitioner in the 1441 IPR ceases its participation. Mot. 8. Patent Owner states that, if the Board grants institution, then “Patent Owner does not oppose Petitioner’s Joinder Motion.” Prelim. Resp. 1. The petitioner in the 1441 IPR has not opposed Petitioner’s Motion for Joinder. See Mot. 8 (stating that the petitioner in the 1441 IPR has not provided its position about whether it would oppose the motion). We find that Petitioner’s Motion for Joinder is timely under 37 C.F.R. § 42.122(b). After considering the unopposed motion, we are persuaded that joinder is appropriate and will have little to no impact on the timing, cost, or presentation of the trial on the instituted grounds. In consideration of the foregoing, and in the manner set forth in the following Order, the Motion for Joinder is granted.” slip op. at 10
Discretionary denialPatents in suitUS 9,077,035 - PTAB · Sep 29, 2022 · IPR2022-00984 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR of claims 1–5 on the same §103 grounds as IPR2021-01440 and granted Zhuhai CosMX Battery Co., Ltd.’s motion to join that proceeding.
RulingsInstitution decision- Other 314aDecided for petitioner
“reasonably been raised before the PTAB.” Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Interim Procedure”),6 3 (footnote omitted; citing Sotera). In other words, under the Interim Procedure, a petitioner may avoid discretionary denial of the petition based on a parallel district court litigation by providing a Sotera-style stipulation. The Interim Procedure does not, however, make a Sotera-style stipulation a prerequisite for institution. Under our informative precedent, an inter partes review may be instituted despite the absence of a Sotera-style stipulation. Sand Revolution II, LLC v. Cont’l Intermodal Grp.-Trucking LLC, IPR2019-01393, Paper 24 at 12 n.5 (PTAB June 16, 2020) (informative) (“Sand Revolution”) (instituting inter partes review notwithstanding the absence of a stipulation not pursue any ground that could have been reasonably raised in an inter partes review). Thus, exercising our discretion to deny institution under 35 U.S.C. § 314(a) merely because Petitioner has not entered a Sotera-style stipulation would be inappropriate in this case.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“related CosMX litigation. We decline to speculate on how the district court would rule on a stay, if one were requested. Sand Revolution at 7 (declining to predict whether or not the district court would grant a stay, if requested); Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv II”) (explaining that factor 1 generally “does not weigh for or against discretionary denial” when neither party has requested a stay). Accordingly, this factor is neutral.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After considering the Petition, the Preliminary Response, and the record as a whole and for the same reasons as stated in the institution decision in the 1440 IPR, we determine that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. See 1440 IPR, Paper 17 at 14‒34 (PTAB Apr. 8, 2022).” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Here, Petitioner’s Motion for Joinder requests no more than the statute allows. Petitioner represents that “the Petition asserts the same grounds and relies on the same evidence for unpatentability” as presented in the 1440 IPR. Mot. 7. Furthermore, Petitioner agrees that, if joined to the 1440 IPR, Petitioner will take a secondary “understudy” role and will not request any changes to the trial schedule. Mot. 4, 7–8. Petitioner states that it will assume a primary role only if the petitioner in the 1440 IPR ceases its participation. Mot. 8.” slip op. at 10
Discretionary denialPatents in suitUS 8,691,446 - PTAB · Jul 6, 2022 · IPR2022-00686 · APJ Scott B Howard · IPR · Institution
The Board instituted inter partes review of claims 1–20 based on the same grounds as the Google IPR and granted Ecobee’s motion to join that proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. 42.108(a) (2021).” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition asserts the same unpatentability grounds on which we instituted review in the Google IPR. See Mot. 1, 4–5. Petitioner presents “the same arguments and the same grounds raised in the existing Google IPR (i.e., challenges the same claims of the same patent, relies on the same expert declaration, and is based on the same grounds and combinations of prior art submitted in the granted Google Petition).” Id. at 4. Indeed, the Petition is nearly a “carbon copy” of the petition filed by the petitioner in the Google IPR. See id. Thus, this inter partes review does not present any ground or matter not already at issue in the Google IPR. If joinder is granted, Petitioner anticipates participating in the proceeding in a limited capacity absent termination of the Google IPR petitioner as a party. Mot. 1–2; see also id. at 6–8. Petitioner states that it Google ceases to participate in the instituted IPR.” Id. at 1. Because Petitioner expects to participate only in a limited capacity, Petitioner submits that “the proposed joinder will not unduly complicate the Google IPR nor adversely impact its schedule. As such, the requested joinder will promote judicial efficiency in determining the patentability of the ‘567 patent without prejudice to Patent Owner.” Id. at 1–2. Petitioner further indicates that Google does not oppose the request joinder. Id. at 2. Patent Owner did not file an opposition to the motion for joinder. We agree with Petitioner that joinder with the Google IPR is appropriate under the circumstances. Accordingly, we grant Petitioner’s Motion for Joinder.” slip op. at 5
NonePatents in suitUS 8,019,567 - Duke Manufacturing Co. v. Low Temp Industries, Inc.All claims unpatentablePTAB · Jul 6, 2022 · IPR2021-00414 · APJ Kristina M Kalan · IPR · Final written decision
Claims 1–26 are unpatentable: claims 1, 6, 7, 10, 12, 14, 16–20, and 22–26 as anticipated by Finegan; claims 1–26 as obvious over Finegan, Safyan, and Hansen; and claims 3–5 as obvious over Finegan and …
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. On this record, we find that the differences in the parties’ contentions as to the level of ordinary skill are not consequential, in part because the levels of skill both Petitioner and Patent Owner set forth are based on an engineering degree and a length and type of experience that overlap. Accordingly, we adopt Patent Owner’s definition, because it is consistent with the cited prior art. We further note that the prior art itself demonstrates 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 on the level of skill in the art . . . [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))).” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“On this record, we determine that the control system limitations sufficiently connote structure and are not subject to means-plus-function construction. See Williamson, 792 F.3d at 1349 (stating the determination of whether a limitation is a means-plus-function term “subject to the strictures of § 112, para. 6” is not based merely on the presence or absence of the word “means” but on whether “the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure”). As to Petitioner’s argument that Patent Owner only demonstrates support for “controls” and “controllers” being known in the art and not for a “system,” as the claims recite (Reply 11–12), we determine that there is no meaningful distinction because the controls or controllers disclosed in the ’970 patent are necessarily included in systems with other known elements to control temperature. Further, the disclosure of exemplary apparatus in the specification, including disclosure incorporated by reference (Ex. 1101, 1:58–61), supports that temperature control systems are known structures/apparatuses, and Petitioner fails to establish that they are not (see generally Pet.; Reply). In sum, we determine the control system limitations are terms that persons of ordinary skill in the art would have understood to have a sufficiently definite meaning as the name for structures of a broad category of systems known to those of skill in the art. The breadth and diversity of the structures/apparatuses ordinarily skilled artisans would have understood to be included within the meaning of the terms do not subject the terms to means-plus-function construction. Further construction of the terms is not necessary.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Regarding Patent Owner’s first argument, we find that Finegan sufficiently discloses thermally isolated wells and insulative gaps. Finegan’s wells are either thermally isolated as a result of their relative orientation (Pet. 31 (citing annotated Finegan Fig. 7)), or as a result of the insulation or insulative air gap (Pet. 29–31 (citing annotated Finegan Figs. 4, 7)). Finegan’s flanges, whether frosted or not, are “part of the well and must themselves be thermally isolated from their surroundings to facilitate frost formation,” and “the inclusion of the flanges does not defeat the well’s thermal isolation.” Reply 13; Ex. 1103 ¶¶ 294–297 (Dr. Homan’s testimony). Petitioner also demonstrates that Finegan’s insulation material would reduce heat transfer. Ex. 1149 ¶¶ 84–85 (Dr. Homan’s testimony that Finegan’s insulation material and insulation tape reduce heat transfer). Finegan’s insulation “extends over most of the well and the thermally-conductive material (38), to insulate the well.” Reply 13 (citing Ex. 1149 ¶ 84; Ex. 1105, 7:22–26, Fig. 4). Although we agree with Patent Owner that Finegan states that there is a “need to provide for a food service table or buffet that employs a shallow pan for use in both hot and cold service conditions while still providing sufficient frosting of the top surface” (Ex. 1105, 2:11–13), Petitioner has demonstrated that Finegan’s thermal isolation and insulation would not defeat this objective. Reply 13–14. Regarding Patent Owner’s second argument, we refer to our claim construction to find that Finegan teaches wells in a single frame. Because, under our construction, a well includes at least the interior well walls and exterior well walls (if present), and a frame refers to a “rigid supporting structure,” we find that Petitioner persuasively demonstrates that Finegan teaches wells in a single frame. Pet. 26–27, 29–31. We disagree that “skilled artisans would view the two apparatuses (10) in Figure 7 of Finegan to be independent pieces of equipment and thus not a module with wells bound by a single frame” and that “Finegan does not teach wells in a single frame” because the pans are separated by what Patent Owner argues is an “indeterminate distance of countertop.” PO Resp. 32. As discussed above, we decline to adopt Patent Owner’s claim construction for “a frame.” Accordingly, we find that, under our claim constructions, Petitioner demonstrates that Finegan’s countertop 14 and side walls housing its wells 18 meet the limitations of the challenged claims, particularly those that require an arrangement between the frame and the wells (i.e. claims 14, 23, and 25). Reply 14–15, 17 (citing Ex. 1105, annotated Figs. 1, 7; Ex. 1149 ¶ 101); see also Ex. 2050, 10–11 (finding unfounded the district court’s determination “that Finegan’s Figure 7 only discloses a single pan in each of two separate modules” and determining that Figure 7 “discloses a single ‘apparatus 10’ with two wells 18A and 18B . . . . Those wells are shown within a single countertop 14.”). Additionally, we disagree with Patent Owner’s characterization of Dr. Homan’s testimony as admitting that Finegan’s pans/wells are separate modules. PO Resp. 30–32 (citing Ex. 1130, 241:24–242:3, 217:20–24, 240:5–14). A fair reading of Dr. Homan’s testimony indicates that he was referring to “wells,” despite counsel using the term “modules,” ultimately supporting Petitioner’s position that Finegan discloses two wells in a single frame. Reply 15–16 (citing Ex. 1130, 241:15–242:2). Regarding Patent Owner’s third argument, and referring to our claim construction, we find that Finegan teaches the control system limitations. Although we do not find these terms to be subject to means-plus-function construction, we nevertheless find sufficient Petitioner’s mapping of these limitations to the structures in Finegan performing the functions of the control system limitations. See, e.g., Pet. 31–32 (regarding claim 1.c.1, referring to Finegan Fig. 7 to map PLC 80 connected to heating elements 78 (via switches 94) and valving 90 for controlling refrigerant flow from condensing unit 118 to cooling coils 32, and using user interface 96 and temperature sensors 82A). Petitioner persuasively argues that Finegan’s PLC (programmable logic controller) 80 and user interface 96 meet the control system limitations: “Both Finegan’s global control and the ‘970 patent’s individual controls perform this function [of independently controlling the wells’ temperatures] in the same way, by connecting the electrical resistance heating elements to an electrical power source and by operating valving to control the flow of refrigerant.” Reply 20 (citing Ex. 1101: 4:49–52, 4:56–63; Ex. 1105, 9:27–11:28); Pet. 32–33.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“sufficiently discloses insulative gaps. The Petition shows that Finegan’s wells are “individually insulated and thermally isolated by thermal insulation (40) between exterior and interior wall (44, 20 (identifiable by opposed surfaces (36, 46))).” Pet. 50 (citing Ex. 1103 ¶ 273; Ex. 1105, Fig. 4). Safyan teaches air gaps (i.e., an unfilled insulating space) as an alternative to foam. Id. at 51 (citing Ex. 1103 ¶¶ 276–277, Ex. 1106, Fig. 2, 4:36–46). Petitioner argues with evidentiary support that one of ordinary skill in the art would have had reasons to omit Finegan’s insulating material to leave an insulative gap, as in Safyan, to reduce material and labor costs, as a matter of simple substitution, with a reasonable expectation of success. Id. at 52 (citing Ex. 1103 ¶¶ 279–282). Patent Owner’s argument that Finegan does not disclose an insulative gap and that its insulation does not meet the limitations of the challenged claims argues against Finegan individually, rather than against the Finegan-Safyan combination. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”). Petitioner also provides adequate motivation to combine Finegan and Safyan, not limited to arguing that the two references are in the same field of endeavor. Pet. 51–53 (relying on Ex. 1103 ¶¶ 276–282); Reply 22–23. Regarding claim 9, we find that Petitioner provides adequate motivation as to why one of ordinary skill in the art “would have minimized the distance between wells.” Pet. 53–54; Ex. 1149 ¶ 124–126. We credit Petitioner’s reliance on references and evidence supporting its assertion that one of ordinary skill in the art “would have located Finegan’s wells as close together as needed (e.g., three inches or less)” to “meet size restrictions for a compact space-saving design.” Pet. 56 (citing Ex. 1103 ¶¶ 298–299). We disagree that “Finegan’s frost top would be destroyed” (PO Resp. 43) by this combination, because spacing “as small as a fraction of an inch between the flanges of adjacent wells would ensure thermal isolation of the wells and that a cooled flange would form frost.” Pet. 56 (citing Ex. 1103 ¶297).” slip op. at 36
Patent outcomesUS 8,661,970 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,661,970 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Scramoge Technology Ltd.InstitutedPTAB · Jun 13, 2022 · IPR2022-00241 · APJ Wesley B Derrick · IPR · Institution
The Board instituted review of claims 1–21 on all petition grounds, finding a reasonable likelihood of prevailing on the Kim–Mizutani obviousness challenge to claims 1 and 11.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“parallel district court litigation’s trial date and the Board’s projected statutory deadline for issuing the final written decision. This inquiry addresses the likelihood that the district court will reach a decision on validity issues before the Board reaches a final decision. In this circumstance, on this record, where the trial date is currently scheduled more than three months prior to the expected final written decision due date, this factor weighs slightly in favor of exercising discretion to deny institution.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”1 Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Further, we are unpersuaded that we should exercise our discretion to deny institution. Accordingly, we institute an inter partes review of the challenged claims. slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had a bachelor’s degree in electrical engineering, computer engineering, applied physics, or a related field, and at least one year of experience in the research, design, development, and/or testing of wireless charging systems, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 9 (citing Ex. 1002 ¶¶ 46–49). Patent Owner declined to address the level of ordinary skill in its Preliminary Response. See Prelim. Resp. Petitioner’s contended level of ordinary skill, thus, stands uncontested. On this record, we find Petitioner’s definition of the level of ordinary skill reasonable and, therefore, adopt it for the purposes of this Decision.” slip op. at 15
Discretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,825,482 - PTAB · May 31, 2022 · IPR2022-00153 · APJ Wesley B Derrick · IPR · Institution
The Board instituted IPR on claims 1–11 and all petition grounds, finding a reasonable likelihood of prevailing on the Hunaidi Patent obviousness challenge to claims 1 and 8.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Conclusion On this record, and in the absence of argument to the contrary by Patent Owner, we find Petitioner’s contentions that the Hunaidi Patent renders claims 1 and 8 obvious well-supported. Petitioner has directed us to portions of the Hunaidi Patent that teach or suggest all of the limitations in claims 1 and 8, and has provided a sufficiently persuasive reason why a person of ordinary skill in the art would have had reason to modify the disclosed apparatus and method to arrive at the subject matter of both independent claims. Thus, we are persuaded Petitioner has established a reasonable likelihood of prevailing on this challenge with respect to both claim 1 and claim 8. Having determined that Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’596 patent is unpatentable, the statutory threshold for instituting trial as to all challenged claims on all grounds has been met. See SAS Inst. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“in the art having a motivation to combine the teachings of the Hunaidi Patent and the Hunaidi Article. The clearest expression of a motivation to combine set forth in association with the ground, as applied to the independent claims, is that “a [person of ordinary skill in the art] would have been guided to look at leak detection systems, such as that disclosed in the Hunaidi Article,” because “[t]he Hunaidi Patent explains that ‘[t]he proposed method is easy to implement, for example, in conjunction with routine leak detection surveys.’” Pet. 38 (citing Ex. 1003, 3:35–36; Ex. 1004, Abstract, 7; Ex. 1002 ¶ 77). The difficulty with this is that the Hunaidi Patent itself already discloses what appears to be routine leak detection surveys, and it is thus not apparent what benefit would be obtained by this combination to motivate the skilled artisan to combine the teachings. Cf. Belden v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness 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.”). As to further reasons set forth for the combination, as applied to claims 1 and 8, these are grounded on shortcomings in “the Hunaidi Article . . . not disclos[ing] an equation for velocity” or go to the obviousness of modifications to the Hunaidi Patent itself independent of the Hunaidi Article’s teachings. Id. at 38–40 (citing Ex. 1001, 7:1–12; Ex. 1002 ¶¶ 63–71, 80–86; Ex. 1003, 2:57–3:11, 1:8–11, claims 1& 11).” slip op. at 19
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“1. Printed Publication Status of the Hunaidi Article In an inter partes review, the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication. Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1375 (Fed. Cir. 2018) (citing Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)). Whether a reference qualifies as a “printed publication” is a legal conclusion based on underlying factual findings, including whether the reference was publicly accessible. Id.; see also In re Wyer, 655 F.2d 221, 227 (CCPA 1981) (a party asserting a reference as a prior art printed publication should provide sufficient proof of accessibility). Petitioner contends that the Hunaidi Article is prior art under 35 U.S.C. § 102(a) and (b). Pet. 35. Petitioner fails, however, to set forth any basis for the document to be a printed publication, that is, for its public accessibility. See Pet. Similarly, there is no testimony by Dr. Wilkens relevant to this issue. See Ex. 1002. Further, on this record, there is neither argument nor testimony as to the authenticity of what Petitioner has filed as the Hunaidi Article (Exhibit 1004).” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “is a person with a degree in mechanical engineering, chemical engineering, or physics, and approximately three to five years of combined work experience and/or graduate work in fluid dynamics.” Pet. 10 (citing Ex. 1002 ¶¶ 24– 25). As Patent Owner has waived its preliminary response, Petitioner’s contended level of ordinary skill stands uncontested. On this record, we find Petitioner’s definition of the level of ordinary skill reasonable and, therefore, adopt it for the purposes of this Decision.” slip op. at 8
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,475,596 - PTAB · Apr 8, 2022 · IPR2021-01443 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR of claims 1–5 because Petitioner showed a reasonable likelihood of prevailing on both asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“non-exclusive factors, known as the Fintiv factors. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv I”). Recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor,” the Board “takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. We have considered Patent Owner’s arguments in light of the Fintiv factors, together with Petitioner’s opposition, and we decline to exercise our discretion to deny the Petition as explained further below.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the information presented in the Petition and the Preliminary Response, we determine that Petitioner has shown a reasonable likelihood that it will prevail with respect to at least one claim challenged in the Petition, and we do not exercise our discretion to deny institution. Therefore, we grant institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art (“POSITA”) would have had “at least a bachelor’s degree in chemistry, chemical engineering, or materials science, as well as five or more years of experience in the field of batteries and battery materials.” Pet. 8 (citing Ex. 1003 ¶ 11). Petitioner adds that “[i]ndividuals with different education and additional experience could still be of ordinary skill in the art if that additional experience compensates for a deficit in their education.” Id. Petitioner states that “[a]dditional education might substitute for some experience, and substantial experience might substitute for some educational background.” Id. at 8–9.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,350,019 - PTAB · Apr 8, 2022 · IPR2021-01441 · APJ Wesley B Derrick · IPR · Institution
The Board instituted IPR on claims 1–11 and all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We find that Petitioner’s stipulation is the same as the stipulation in Sotera. Sotera at 18 (the petitioner stipulating that, “if IPR is instituted, they will not pursue in the District Court Litigation any ground raised or that could have been reasonably raised in an IPR.”). Petitioner’s stipulation invokes our Sotera precedent, “mitigates any concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions,” and “ensures that an inter partes review is a ‘true alternative’ to the district court proceeding.” Sotera at 19. Accordingly, we find that this factor weighs strongly against exercising discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Based on the evidence before us, we determine Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one claim of the ’035 patent is unpatentable. Accordingly, we institute an inter partes review on all the challenged claims and all of the grounds presented in the Petition. See 37 C.F.R.§ 42.108(a). At this stage of the proceeding, we have not made a final determination as to the patentability of the challenged claims. Our final decision will be based on the record as fully developed during trial. IV. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review is hereby instituted as to claims 1–11 of the ’035 patent with respect to all grounds set forth in the Petition; and FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4(b), notice is hereby given of the institution of a trial commencing on the entry date of this decision.” slip op. at 49
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had at least a bachelor’s degree in chemistry, chemical engineering, or materials science and five or more years of experience in the field of batteries and battery materials.” Pet. 5 (citing Ex. 1003 ¶ 11). Patent Owner does not contest Petitioner’s asserted level of ordinary skill in the art in its Preliminary Response. See Prelim. Resp. On this record, we find Petitioner’s definition of the level of ordinary skill reasonable and, therefore, adopt it for the purposes of this Decision, except to the extent that the phrases “at least” and “or more” might be taken to imply that one of with significantly greater education or experience than that explicitly set forth would be considered to be merely one of ordinary skill in the art.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“On this record, for purposes of institution, we find Petitioner has sufficiently established the similarity of the cathodes in Choi and Noh to support the motivation to combine. Petitioner has reasonably established that both references are directed to similar secondary batteries that include lithium-cobalt oxide-based cathodes and nonaqueous electrolytes with a goal of providing improved thermal stability and discharge characteristics. Despite Patent Owner and Dr. Lucht contending that Choi and Noh are so dissimilar that a skilled artisan would not have combined them for the for this contention. Id.; Ex. 2008 ¶ 31. The purported silence of Noh as to the size of cathode active material particles is not, on its face, contrary to the combination. The materials used are otherwise similar, i.e., lithium-cobaltbased oxides, and Petitioner is relying on Noh to teach the electrolyte additives, not the specifics of the cathode active material. As to Patent Owner’s argument based on Choi’s materials including doping with other transition metals, this, likewise, is not on its face contrary to there being a motivation for the combination because these materials, despite the doping with small amounts of other transition metals, appear similar to the undoped materials with respect to structure and function, and there is no evidence to the contrary on this record. See Ex. 2008 ¶ 31. Patent Owner also contends that Petitioner provides no motivation to combine Choi and Noh for its disclosure of the claimed particle sizes. Prelim. Resp. 16–17. Patent Owner and Dr. Lucht focus on Choi teaching preferable ratios of large particle size to small particle size to increase fractional density that are higher than the particle size ratios that are preferred in the ’035 patent. Id. (citing Ex. 1005 ¶¶ 27, 31, code (57) (Abstract)); Ex. 1001 4:35–37, 4:41–63). Patent Owner calculates a maximum ratio of 12.5:1 based on the recited large and small particle sizes in claim 1, contends that this maximum ratio is much less than the ratio of 100:1 disclosed in Choi, and argues that, based on this lower preferred maximum ratio for the ’035 patent, there is no motivation set forth to combine Choi and Noh for the claimed largest and smallest average particle sizes. Id. at 17 (citing Ex. 2008 ¶ 33). Patent Owner’s arguments about particle size do not identify an insufficiency in Petitioner’s rationale for combining Choi and Noh, which size. Even assuming that there is a difference in the preferred maximum ratio set forth in Choi and in the ’035 patent, this has no apparent bearing on Petitioner’s proposed combination of Choi and Noh, which relies on Noh for its teaching of an electrolyte additive, not particle size, and Choi teaches including large and small particle sizes in the same type of cathodes as used in both Choi and Noh. Further, Patent Owner’s emphasis on the maximum ratio in Choi differing from that according to the ’035 patent appears to be misdirected because Choi teaches a range of ratios that encompass those claimed.” slip op. at 16
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,077,035
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.