- Amperex Technology Limited v. Maxell, Ltd.All claims unpatentablePTAB · Mar 28, 2023 · IPR2021-01441 · APJ Elizabeth M Roesel · IPR · Final written decision
Claims 1–11 are unpatentable as obvious over Choi and Noh; the Board did not reach the alternative Negishi-based grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a 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. 5 (citing Ex. 1003 ¶ 11). Patent Owner does not address the level of ordinary skill in the art. See generally PO Resp. We find that Petitioner’s articulation of the level of ordinary skill in the art is consistent with the scope and content of the ’035 Patent and the asserted prior art. We apply Petitioner’s definition of a POSITA, with the caveat that the phrases “at least” and “or more” do not require significantly more education or experience than is explicitly set forth in Petitioner’s definition.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party seeks express construction of any claim term. See Pet. 3–4; PO Resp. We determine that no claim term requires express construction for purposes of resolving the controversy. 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.’” (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 successMotivation foundReasonable expectation foundDecided for petitioner
“Additionally, the obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“There is no dispute that Choi discloses Mg and Al as possible constituents of a cathode active material. PO Resp. 14–15; Ex. 1005 ¶¶ 10, 11 (disclosing Formula 2, LixCo1-y-zNiyMzO2-αXα, where “M is selected from the group consisting of Al, Ni, Mn, Cr, Fe, Mg, Sr, V, rare earth elements and mixtures thereof”). Undisputed evidence shows that a POSITA would have had several reasons to select Mg and Al from the options Choi discloses for element M. 17 S. Madhavi et al., Cathodic properties of (Al, Mg) co-doped LiNi0.7Co0.3O2, Solid State Ionics 152–153, 199–205 (2002) (“Madhavi”). material’s electronic conductivity; (2) that Al would provide structural enhancement to the cathode; (3) that Mg and Al would be less likely to disrupt the structure of the cathode material because they are the smallest elements in Choi’s list; and (4) that Mg and Al would not be oxidized or reduced because they each have singular oxidation states. Pet. 15–16 (citing Ex. 1003 ¶¶ 178–180; Ex. 1024). We credit the following unrebutted testimony of Dr. van Schalkwijk: First, each doping element (e.g., Mg, Al, etc.) plays a different role in modifying the material properties of the host material (e.g., lithium cobalt oxide). . . . Mg atoms were first successfully doped into the LiCoO2 lattice, the result being an increase in the electronic conductivity of the material. . . . Mg doping also altered the phase transition behavior of the delithiation process, which is the removal of lithium ions from the cathode during battery charging. . . . Mg’s effect was to increase the charge voltage available to the cathode; however, this was not a large effect because the solubility of Mg in the cathode was quite small, i.e. only small amounts of Mg could be doped into LiCoO2. . . . Al was another dopant that was used at the time of Choi and the ’035 Patent. . . . However, it did not enhance the conductivity of the cathode as much as the effect from Mg doping. The strength of Al was that it was able to affect the same structural enhancements to the cathode, and it was much more soluble in the cathode, i.e. more aluminum could be doped into the cathode. . . . The motivation to use two dopants (and Mg and Al were common co-dopants) was the structural enhancement of the larger concentration of Al and the electronic conductivity enhancement due to the Mg. . . .” slip op. at 26
Patent outcomesUS 9,077,035 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,077,035 - Google LLC / Ecobee Technologies Ulc v. Ecofactor, Inc.Some claims unpatentablePTAB · Feb 6, 2023 · IPR2022-00686 · APJ Scott B Howard · IPR · Final written decision
Claims 1–3, 7, and 15–20 are unpatentable: claims 15, 19, and 20 as obvious over Hildebrand and Van Ostrand; claims 1–3, 7, 16, and 17 over those references and Rosen; and claim 18 over those …
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“the art would have combined the relevant teachings of Hildebrand and Van Ostrand with a reasonable expectation of success. As discussed above, Hildebrand is directed to a system for monitoring the efficiency of an HVAC system to determine when there is a fault. See Section II.E.1, supra; Ex. 1002 ¶ 60. Using much of the same data as Hildebrand, Van Ostrand teaches a method to determine which stage in a multiple stage HVAC system failed. See Section II.E.2; Ex. 1002 ¶¶ 60–61. Van Ostrand further teaches that the “[typical] HVAC system include[s] multiple stages of heating and/or cooling capacity.” Ex. 1007 ¶ 4. Because Hildebrand is silent as to which stage of the typical system—which has multiple stages— has failed, a person having ordinary skill in the art would have turned to Van Ostrand for that determination. Ex. 1002 ¶¶ 61–62. This modification would allow the Hildebrand system to detect which specific stage has failed. See Ex. 1007 ¶¶ 29–33. And because Van Ostrand represents a known method of detecting fault, it would have been obvious to use it to improve Hildebrand in a predictable way with a reasonable expectation of success. Ex. 1002 ¶ 63; see also KSR, 550 U.S. 398, 416–21. Petitioner has also sufficiently shown that a person having ordinary skill in the art would have added Rosen’s use of internet weather to the Hildebrand-Van Ostrand combination. See Ex. 1002 ¶ 115 (“Hildebrand and Van Ostrand are applied as I describe above with respect to Ground 1, with outside temperature over the Internet from a weather data provider. In my opinion, it would have been obvious to obtain outside temperature measurements from the Internet, thus replacing Hildebrand’s use of outside temperature sensors.”). Specifically, a person having ordinary skill in the art would have seen an advantage in avoiding the expense of obtaining, wiring and servicing an extra outside temperature sensor by obtaining weather information from the Internet as taught by Rosen. Ex. 1002 ¶ 120; see also Section II.F.1 (describing Rosen). Because it is undisputed that Rosen teaches using computer programming and network communications that were well-known and established at the relevant time period, there was a reasonable expectation of success. See Ex. 1002 ¶¶ 120–121.” slip op. at 35
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“There is also no dispute that ym is the output from a computer model. See Pet. 69; PO Resp. 32. Again, that is consistent with Spalink, which defines item 310—which generates ym—as a reference model. Ex. 1008 Fig. 3; ¶ 75 (describing ym as the output of the refence model). Thus, there is no meaningful dispute that the comparison shown in Figure 3—which the Petition relies on—is a comparison between a first HVAC system and a model, not a second HVAC system as recited in claim 8. Accordingly, that comparison does not teach or suggest “compar[ing] the relative efficiency of the first HVAC system and the second HVAC system” as recited in claim 8. Petitioner’s arguments that the data in the reference model comes from other buildings is inapposite. Although Petitioner accurately describes how reference model 310 is based on “data 367 collected from different buildings” (Ex. 1008 ¶ 77), Petitioner has not shown that a computer model is a second HVAC system. Therefore, comparing the output of a building to a model based on buildings does not teach or suggest the necessary comparison between the first HVAC system and the second HVAC system recited in claim 8.” slip op. at 57
- BurdenNot shown unpatentable
“claims 5 and 6. See Pet. 7 (listing of grounds), 45 (Ground 2 heading). However, the “Claim Mapping” section only discusses claims 1–3, 7, 15–17, and 20. Pet. 49–50. We noted this lack of mapping in the Institution Decision. Inst. Dec. 20. In its Reply, Petitioner argues as follows: The Institution Decision states “that the Petition omits any particular mapping for claim 5, 6, and 19” in the context of this Ground. (See Institution Decision, 20). Petitioner respectfully submits that the Petition makes clear that the claim mapping for these dependent claims is the same as in Ground 1, “with the exception that the outside temperature measurements, first recited in claim elements [1c] and [15c], come from an Internet weather data source.” (See Pet., 49). Pet. Reply 21–22 n.3. However, the Petition does not support that argument. Instead, page 49 of the Petition—which is all Petitioner cites to—does not mention claims 5 and 6. Instead, the page Petitioner cites shows that Petitioner misleadingly cropped the quotation. The full quotation below shows that page 49 of the Petition does not list claims 5 and 6: CLAIMS 1, 7, 15 AND 20 Independent claims 1 and 15, and their respective dependent claims 7 and 20, are obvious in the same manner discussed in Ground 1, with the exception that the outside temperature measurements, first recited in claim elements [1c] and [15c], come from an Internet weather data source. Pet. 49 (bold in original) (italics added to emphasize cropped language). Our rules require that “[t]he petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Petitioner did not do that with respect to” slip op. at 39
- Expert testimonyPetitioner expert discountedDecided for patent owner
“b) Our Analysis We agree with Patent Owner that Petitioner has not sufficiently shown that Hildebrand teaches or suggests limitation [1c]. The gravamen of Petitioner’s argument is that Hildebrand’s HVAC system is limited to HVAC system 12—the heating system, cooling system, and fan. See Pet. 12 (“The HVAC system is ‘HVAC system 12’ . . . .”); Ex. 1004, 4:1–10 (describing HVAC system 12). Although nominally supported by Mr. Shah’s testimony, that testimony is conclusory, parrots the Petition, and provides no corroborating evidence to show that a person having ordinary skill in the art would have understood that an HVAC system was limited to the heating and cooling systems. We give Mr. Shah’s testimony on that point no weight. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); Verlander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (Board has discretion to accord little weight to broad conclusory statements from expert witness); 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Moreover, Petitioner’s argument is inconsistent with Mr. Shahs’ direct testimony that clearly states that the HVAC system is broader then just the heating and cooling system and fan and includes other elements, such as thermostats and HVAC control systems. See Ex. 1002 ¶ 65 (“HVAC communications, and software, were widely known and understood.”). Applying Mr. Shah’s definition, the HVAC system as recited in claim 1 includes more than Hildebrand’s heating and cooling systems. Indeed, when discussing dependent claim 5, Petitioner argues that Hildebrand’s HVAC system also includes a thermostat. See Pet. 39. We do not find the Administrative Law Judge’s (“ALJ”) finding in an ITC proceeding involving a different record (and different patent) to be persuasive. Although the ALJ considered Hildebrand, there is nothing in the excerpt of the opinion to conclude that he considered Mr. Shah’s definition of an HVAC system. See Ex. 1010, 475–76. Nor is it clear from the record that the ALJ considered contrary testimony from Patent Owner’s expert. Id. Hildebrand Figure 1 shows an HVAC system including heating and” slip op. at 18
Patent outcomesUS 8,019,567 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,019,567 - Google LLC / Ecobee Technologies Ulc v. Ecofactor, Inc.Some claims unpatentablePTAB · Feb 6, 2023 · IPR2021-01218 · APJ Scott B Howard · IPR · Final written decision
Claims 1–3, 7, and 15–20 are unpatentable on specified §103 grounds; claims 4–6 and 8–14 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The ’567 patent is directed to a using a thermostat to detect faults in the HVAC system. See Ex. 1001, code (57). That aligns more closely with and HVAC control systems—than the one proposed by Petitioner—which focuses on energy controls. Compare Ex. 2002 ¶ 27, with Ex. 1002 ¶¶ 31– 33. Accordingly, we adopt Patent Owner’s propose definition. However, we consider the parties’ positions to be substantially similar, and note that neither party argues that the level of skill is determinative to the outcome of the case. Accordingly, we would have reached the same factual findings and conclusions of law had we adopted Petitioner’s proposed definition.” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We decline to find Dr. Palmer less credible based solely on his experience. In judging the credibility of experts, we focus on whether the witness offers corroboration for his opinions, provides opinions that are consistent with the prior art, and the witness’ cross-examination testimony. Moreover, we note that Mr. Shah and Dr. Palmer substantially parrot the Petition and Patent Owner Response, respectively. Such testimony is generally unhelpful. Testimony which goes into more detail and expands on the points made in the papers (but not going beyond the points made in the papers) is more helpful and, as a general matter, given more weight so long as it is consistent with, and supported by, the other evidence in the record.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Because no express construction is needed for our decision, we do not construe any of the claim limitations. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- BurdenNot shown unpatentable
“that Hildebrand teaches or suggests limitation [1c]. The gravamen of Petitioner’s argument is that Hildebrand’s HVAC system is limited to HVAC system 12—the heating system, cooling system, and fan. See Pet. 12 (“The HVAC system is ‘HVAC system 12’ . . . .”); Ex. 1004, 4:1–10 (describing HVAC system 12). Although nominally supported by Mr. Shah’s testimony, that testimony is conclusory, parrots the Petition, and provides no corroborating evidence to show that a person having ordinary skill in the art would have understood that an HVAC system was limited to the heating and cooling systems. We give Mr. Shah’s testimony on that point no weight. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); Verlander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (Board has discretion to accord little weight to broad conclusory statements from expert witness); 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 18
Patent outcomesUS 8,019,567 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,019,567 - Google LLC v. Ecofactor Inc.Some claims unpatentablePTAB · Nov 17, 2022 · IPR2021-00982 · APJ Jeffrey W Abraham · IPR · Final written decision
Claims 1–7 and 10–19 are unpatentable: claims 1–7 and 11–19 as obvious over Wedekind and Ehlers, and claim 10 as obvious over Wedekind, Ehlers, and Jenkins; claims 20–30 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We note that the parties agree on the educational background of a person of ordinary skill in the art. And although the parties offer different levels of experience for a person of ordinary skill in the art, there is some overlap, as both parties require experience with HVAC systems. Pet. 15 (requiring experience with “building energy management”); PO Resp. 5–6 (requiring experience with HVAC controls, and acknowledging that “building energy management” includes controlling HVAC systems). Accordingly, we do not consider the difference between the parties’ proposals to be material. Moreover, neither party asserts that its positions or the outcome depends on which definition we apply in this proceeding.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction In an inter partes review, we construe claim terms according to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2020). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the 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 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id.” slip op. at 11
- Strike new argumentNew argument consideredDecided for petitioner
“Reply ignore the express statement in the Petition characterizing sensors 36 in Wedekind as “a source external to the building.” Sur-reply 2 (quoting Pet. 28), 3. Patent Owner also argues this is a new argument that we should disregard. Sur-Reply 2. We disagree. Although Patent Owner is correct that Petitioner contends Wedekind’s outside air temperature sensors 36 are a source external to the building, that is not the only argument Petitioner presents. In the Petition, Petitioner contends more generally that Wedekind’s outside air temperature sensors 36 “measure the outside air temperature.” Pet. 28. Petitioner also argues that Ehlers provides weather data including outside temperatures, and that the source of the data is a weather service provider that is external to the building. Pet. 32 (citing Ex. 1008, 9:53–54, 35:13–17). Petitioner further argues that it would have been obvious “to replace Wedekind’s outside temperature sensors 36 with receiving outside temperature data from a network connection,” as Ehlers teaches. Pet. 32. In view of this, we agree with, and are persuaded by, Petitioner’s argument that it does not rely only on Wedekind to meet the limitation that “the second data from the network connection is collected from a source external to the building.” Reply 10. Additionally, the presence of these arguments in the Petition undermines Patent Owner’s assertion that Petitioner is attempting to present new arguments in the Reply. Similarly, Petitioner acknowledges in the Petition that Wedekind does not expressly teach the second data is received from a network connection, and, therefore, relies on Ehlers’ disclosure of receiving data from a network connection. Pet. 30; Reply 11. Patent Owner does not dispute that Ehlers discloses receiving weather data from a network connection. See PO Resp. 15–28; Sur-reply 3–8. In view of the foregoing, Petitioner has demonstrated persuasively that the combined disclosures of Wedekind and Ehlers teach or suggest “the one or more processors further configured to receive a second data from a network connection, wherein the second data from the network connection is collected from a source external to the building” claim 1 requires.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find Petitioner’s arguments to be persuasive. Petitioner presents undisputed evidence, based on the disclosure of Wedekind and Ehlers, that obtaining outside temperatures either from local sensors or over a network was known in the art. Pet. 28–32; Ex. 1006, 4:45–47; Ex. 1008, 9:50–63. Petitioner also directs us to evidence, including in Ehlers itself, supporting Petitioner’s reasoning that replacing Wedekind’s outside air temperature sensors with a network-based weather data service would have saved the cost and effort of installing multiple sensors. Pet. 32; Ex. 1002 ¶ 103; Ex. 1008, 39:54–57; Reply 13. As Petitioner points out, Patent Owner does not directly challenge Petitioner’s argument and evidence that a person of ordinary skill in the art would have had reason to modify Wedekind in view of Ehlers to avoid the cost and effort of installing multiple sensors. Reply 13.5 Indeed, Patent Owner acknowledges that Wedekind “expressly indicates that there must be multiple sensors of outdoor temperature for sufficient accuracy in Wedekind’s complex computational model.” PO Resp. 26; Ex. 1006, 3:62–67. The need for multiple sensors in Wedekind 5 We recognize Patent Owner argues that a person of ordinary skill in the art would not have been motivated to connect Wedekind’s outside air temperature sensors 36 to a network because it would “increase costs.” PO Resp. 23–24. Patent Owner, however, presents this argument before it addresses Petitioner’s proposed combination of Wedekind and Ehlers. See PO Resp. 23–24 (referring to cost increases first, and addressing the proposed combination of Wedekind and Ehlers in the next paragraph). Thus, Patent Owner’s cost argument does not appear to address Petitioner’s assertion regarding cost savings in view of the proposed combination. Nor does Patent Owner present evidence regarding, or explain adequately, what costs it is referring to, or how those costs would increase. PO Resp. 23–24; Ex. 2005 ¶ 61. By way of contrast, Petitioner’s arguments regarding cost savings are supported by the disclosure of Ehlers itself. Ex. 1008, 39:54–57. strengthens Petitioner’s argument that a person of ordinary skill in the art, in view of Ehlers’ teaching regarding avoiding the cost and effort of installing multiple sensors, would have had reason to modify Wedekind in view of Ehlers. Additionally, Patent Owner’s own declarant characterized Ehlers’ discussion of “lowering the cost of installation and ongoing maintenance” as “teach[ing] away from external sensors.” Ex. 1023, 58:7–18. These arguments and evidence undermine Patent Owner’s assertion that Petitioner failed to provide any analysis as to why a person of ordinary skill in the art would have modified Wedekind in view of Ehlers. Sur-reply 3–4; PO Resp. 25–28. Petitioner also argues, and provides evidence in the form of testimony from Dr. Shah demonstrating, that a person of ordinary skill in the art would have been able to modify Wedekind’s system by connecting Wedekind’s processing means to a network connection such as Ehlers’ phone input or communications link, and would have obtained predictable results. Pet. 33; Ex. 1002 ¶ 104. Patent Owner does not dispute this evidence. To the contrary, Patent Owner appears to concede that the proposed combination would work, although not as reliably as Wedekind’s hardwired system. PO Resp. 25–26. As a result, and in the absence of any evidence or argument suggesting otherwise, we credit Dr. Shah’s testimony. Furthermore, Ehlers teaches, in connection with providing data obtained from a weather service provider over a network, that “[t]he data may be provided at regular intervals and be sufficiently localized for acceptable accuracy.” Ex. 1008, 9:58–60. This statement from Ehlers itself undermines Patent Owner’s arguments regarding alleged problems with transmitting data over networks and insufficient accuracy, including Patent Owner’s argument that Wedekind teaches away from the approach used by Ehlers. PO Resp. 25–28. Nevertheless, even if we were to give Patent Owner the full credit of its arguments regarding unreliable transmission of data over networks and data obtained from weather service providers being less useful than data obtained from sensors at a specific structure, obviousness “does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away.” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1197-98 (Fed. Cir. 2014). As discussed above, Petitioner’s evidence and arguments demonstrate that using Ehlers’ network to transmit temperature data was at least a suitable option. For all of the foregoing reasons, we determine Petitioner has demonstrated persuasively that a person of ordinary skill in the art would have had reason to modify Wedekind in view of Ehlers, and would have had a reasonable expectation of success in doing so. iii.” slip op. at 25
Patent outcomesUS 10,612,983 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,612,983 - 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 - Duke Manufacturing Co. v. Low Temp Industries, Inc.All claims unpatentablePTAB · Jul 15, 2022 · IPR2021-00415 · APJ Wesley B Derrick · IPR · Final written decision
Claims 1–5, 11, 12, and 14–19 are unpatentable as obvious over Finegan and Tipton; the Board did not reach the remaining instituted grounds.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“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 both Petitioner’s and Patent Owner’s proposed level of skill are grounded on a relevant engineering degree and/or significant experience designing food service equipment, both of which reasonably also indicate some understanding of heat transfer concepts.9 Accordingly, we adopt Patent Owner’s proposed definition, which overlaps that proposed by Petitioner, particularly that of a person with a mechanical engineering degree and/or four years of experience designing food service equipment who also has an understanding of heat transfer concepts. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. Cf. Okajima, 261 F.3d at 1355 (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself 9 We note that neither Patent Owner nor Dr. Mayor provide any particular definition of an understanding of heat transfer concepts, and it is not apparent that more than a rudimentary understanding is required.” slip op. at 11
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Dr. Mayor’s testimony as to the meaning of “well” (Ex. 2027 ¶¶ 29– 32) is entitled to little weight because it fails to explain how the cited portions of the specification and file history support his position, and it is not otherwise apparent that it does. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); cf. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”). In sum, we determine that the meaning of “well,” as used in the ’253 patent, includes the interior walls and exterior walls (if present).” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededMixed
“On this record, we determine that “well” includes at least the well bottom (or floor), the interior well walls, and the exterior well walls (if present). The specification discloses that “[w]ell 18 may comprise generally vertically-extending interior walls 22 connected by bottom or floor 26 . . . [that] [w]ell 18 additionally may comprise four exterior walls 30,” and that “well 18 preferably . . . is formed of stainless steel,” which by the plain meaning of the words indicates that the bottom (or floor), the interior walls, and the exterior walls are part of the well. See Ex. 1201, 4:3–17. Further, the disclosure that “well 18 preferably . . . is formed of stainless steel” indicates that a well includes physical structure(s), such as the walls and the bottom (or floor). Id. at 4:15–17. Also, each independent claim requires” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Further, as depicted in the figures, including Figures 1 and 4, the exterior walls are not shown to be in contact, as there is no well structure depicted in the region spanned by D1, despite Figure 5, depicting a cross-sectional view of the same embodiment, showing an exterior wall 30. In sum, the depicted structure in the relied-on figures appears wholly consistent with D1 being the distance between the exterior walls 30 of adjacent wells 18, where wells are defined as including the interior walls 22 and exterior walls 30. Having a space D1 between exterior walls 30 of adjacent wells 18 is also consistent with claim 1 reciting “at least one exterior wall of one well is spaced an insulative distance from an exterior wall of an adjacent well.” Ex. 1201, 5:46–48. inconsistencies identified above between their positions and what is actually disclosed and depicted in the ’253 patent. Having considered the parties’ arguments and evidence, as well as the related District Court proceeding and Federal Circuit proceeding,14 we adopt Petitioner’s construction of “adjacent” as “next to.” We are not directed to anything in the record that requires the wells to be “immediately next to or abutting,” as Patent Owner contends. Rather, as the ’253 patent discloses a distance D1 between wells, the proper meaning is simply “next to.”” slip op. at 18
Patent outcomesUS 9,795,253 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,795,253 - 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 · IPR2021-00413 · APJ Kristina M Kalan · IPR · Final written decision
Claims 1–4 and 9–16 are unpatentable as obvious over Finegan and Safyan; claims 17 and 18 are unpatentable as obvious over Finegan, Safyan, and Tipton.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“have had “a mechanical engineering or equivalent degree and/or approximately four years of experience designing food service equipment,” as well as “an understanding of heat transfer concepts.” PO Resp. 10 (citing Ex. 2027 ¶ 71) Patent Owner also contends: “Additional education may substitute for experience and significant experience in the food service equipment industry may substitute for formal education.” Id. 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 › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the 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 1313. Only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The parties did not provide us with an express claim construction of “adjacent” from the district court (see Ex. 2019, 10 (district court expressly construing only the term “insulative air gap”)), but the Federal Circuit’s opinion characterized the district court’s understanding of “adjacent” as follows: “the district court appeared to understand the claims as requiring Finegan, for anticipation purposes, to teach ‘two immediately adjacent pans within a single module that can be maintained at different temperatures.’” Ex. 2050, 10. As such, the Federal Circuit explained, “both parties state that the district court adopted [Patent Owner’s] argument that the adjacency limitation requires the wells to touch.” Id. The Federal Circuit determined that the district court “clearly erred” in finding no substantial merit as to whether Finegan discloses the adjacent wells limitation because, in part, the district court relied on an “overly narrow understanding of ‘adjacent.’” Id.; see also id. at 2 (“the district court relied on an erroneous claim construction and misread the Finegan reference”). The Federal Circuit also did not explicitly construe the term “adjacent,” but stated that the district court’s “constricted understanding of ‘adjacent’ is at odds with the patents’ disclosure, which describes a ‘distance D1’ ‘between adjacent wells,’ ‘with D1 preferably being approximately three inches.’” Id. at 10 (citing Ex. 1001, 3:46–52). “Given the specification explicitly states that adjacent wells preferably have a distance between them,” the Federal Circuit held that the district court’s “finding that Finegan’s pans 18A and 18B are not adjacent, or next to, each other” “cannot be sustained.” Id. (citing Ex. 1001, 3:46–52). Having considered the parties’ arguments and evidence, the district court’s approach, and the Federal Circuit opinion, we adopt Petitioner’s construction of “adjacent” as “next to.” Patent Owner’s position is grounded in part on a calculation that “only works if the space between adjacent wells is measured from the interior walls of adjacent wells, and the exterior walls of the adjacent wells are abutting.” PO Resp. 20–21. As discussed above, the meaning of “wells” in the context of the ’761 patent includes both interior walls 22 and, if present, exterior walls 30. Patent Owner does not direct us to anything in the record that requires the wells to be “immediately next to or abutting” as Patent Owner urges. Sur-Reply 3. Rather, we find persuasive the specification’s disclosure of a distance D1 between adjacent wells as supporting a construction of “adjacent” as “next to.” Ex. 1001, 3:46–52; see Ex. 2050, 10.” slip op. at 14
- 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 recited “temperature-control system” or “temperature-controlling system” sufficiently connotes structure and is 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”). Further, the disclosure of exemplary apparatus in the specification, including disclosure incorporated by reference (Ex. 1001, 1:51–54), 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 terms “temperature-control system” or “temperature-controlling system” 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 21
Patent outcomesUS 8,307,761 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,307,761
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.