- 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 - Sunspec Alliance v. Tigo Energy, Inc.No claims unpatentablePTAB · Jan 26, 2023 · IPR2021-01286 · APJ Julia Heaney · IPR · Final written decision
The Board held that claims 1, 5–7, 12, and 13 were not shown unpatentable because the cited art did not disclose the required predetermined number of allowed skips.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree or similar degree in electrical engineering and one year of experience in the design of solar power systems, power control systems, and/or power safety systems.” Pet. 3–4 (citing Ex. 1002 ¶ 17). Patent Owner does not challenge Petitioner’s proposed level of skill for a person of ordinary skill in the art. Ex. 2003 ¶ 25. Having considered the parties’ arguments and evidence, we adopt the level of ordinary skill in the art proposed by Petitioner, because it is consistent with the disclosures of the ’321 patent and the prior art of record.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“Having considered the parties’ positions as to construction of the term “skips” and applicability of the definition of “skips” set forth in the ’321 specification (Ex. 1001, 9:36–37), we construe the term “skips” to mean “the event of missing a communication or pulse.” We adopt the definition set forth in the ’321 specification because patentee acted as its own lexicographer. Cont’l Cirs. LLC v. Intel Corp., 915 F.3d 788, 796 (Fed. Cir. 2019) (citing Phillips, 415 F.3d at 1316) (“When the patentee acts as its own lexicographer, that definition governs.”). We determine that, for purposes of this Decision, no other claim term requires express construction. See, e.g., Vivid Techs., 200 F.3d at 803.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Having considered the record as a whole, we find that Moine does not disclose the “predetermined number of allowed skips” limitation. We do not agree with Petitioner that Moine’s disclosure of determining whether a “skip” (i.e., the event of missing a communication or pulse, as we have construed that term supra) has occurred, meets the challenged claims’ requirement of determining communication has been interrupted “for a time period longer than the predetermined number of allowed skips.” See Pet. Reply 14–15. As explained below, we determine that the “predetermined number of allowed skips” limitation does not encompass zero skips, or a mere interruption in communication from the controller, as described in Moine.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“2. Analysis Petitioner argues that to the extent the Board finds Moine’s receiver 5 is not a “watchdog unit,” Kronberg discloses a watchdog unit, as embodied in Figure 1. Pet. 25 (citing Ex. 1006, 2:30–32, Fig. 1). Petitioner contends a person of ordinary skill in the art would have been motivated to use Kronberg’s watchdog to implement Moine’s receiver to achieve a predictable outcome, because watchdog timers were a well-known technique for detecting malfunctions, and the output of Kronberg’s watchdog could be provided to the switch 4 of Moine, to open and power down Moine’s circuit. Id. at 26–28 (citing Ex. 1002 ¶¶ 79–85; Ex. 1006, 1:53–55, 3:38–42, 4:9–12; Ex. 1013, 1269). Petitioner “does not rely on Kronberg to remedy any failure of Moine to disclose the ‘skips’ limitations.” Pet. Reply 19. As discussed above, we find that Petitioner fails to adequately demonstrate that Moine discloses the “predetermined number of allowed skips” limitation of claims 1 and 12. See supra § II.D.2. Accordingly, because Petitioner does not rely on Kronberg to remedy this deficiency in Moine, Petitioner has not demonstrated by a preponderance of the evidence that claims 1 and 12 would have been unpatentable over the combination of Moine and Kronberg.” slip op. at 23
Patent outcomesUS 8,933,321 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,933,321 - 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 - Tennant Company v. Oxygenator Water Technologies, Inc.No claims unpatentablePTAB · Aug 17, 2022 · IPR2021-00625 · APJ Kristina M Kalan · IPR · Final written decision
The Board found that Tennant did not prove claims 13, 14, and 17–27 unpatentable because the asserted references did not establish the claimed microbubbles and nanobubbles, and the obviousness combinations were inadequately supported.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states, for “purposes of this proceeding, PO does not challenge Petitioner’s proposed level of ordinary skill.” PO Resp. 53 n.6. 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. Accordingly, we adopt Petitioner’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 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“Because patentee has acted as its own lexicographer, and because Petitioner agrees that the definition provided in the specification is the preferred construction, we adopt the construction of “nanobubble” provided in the specification. Cont’l Cirs. LLC v. Intel Corp., 915 F.3d 788, 796 (Fed. Cir. 2019) (citing Phillips, 415 F.3d at 1316) (“When the patentee acts as its own lexicographer, that definition governs.”). Namely, we construe “nanobubble” as “a bubble with a diameter less than that necessary to break the surface tension of water.” Ex. 1101, 4:12–13. We decline to add any additional language to our construction, as proposed by Petitioner, because the additional quoted sentence in the specification appears to describe an effect of nanobubbles on the appearance of water when nanobubbles are present, rather than define the nanobubbles themselves. On this record, we determine that no other claim terms require express construction.” slip op. at 14
- BurdenDecided for patent owner
“We disagree that our Institution Decision established a prima facie case that Petitioner met its burden at the Final Written Decision stage. An affirmative decision on institution is a determination that Petitioner has shown, on the record at that stage in the proceeding, that Petitioner has a reasonable likelihood of prevailing on its arguments as to at least one challenged claim. Dec. 40; 35 U.S.C. § 314(a). To prevail in an instituted inter partes review, however, 35 U.S.C. § 316(e) requires Petitioner to meet “the burden of proving a proposition of unpatentability by a preponderance of the evidence.” See TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (“[T]here is a significant difference between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at institution, and actually proving invalidity by a preponderance of the evidence at trial . . . . The Board’s findings in its Final Written Decision were thus not inconsistent with those in its Institution Decision; they were made under a qualitatively different standard.”). To state that our Institution Decision established a prima facie case that Petitioner was correct would be erroneous, as such a position conflates different burdens required of Petitioner and, in doing so, would have us improperly give Petitioner an advantage in the actual trial culminating in a final written decision. Fan Duel, 966 F.3d at 1341–42.” slip op. at 25
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“On this complete record, we find that Petitioner’s testing does not sufficiently demonstrate that Wikey inherently discloses nanobubbles. Pet. 22–29. Petitioner apparently had the ability to test for the express disclosure of nanobubbles in its Wikey-based apparatus, but did not do so. Sur-Reply 2–3. Patent Owner points out that nanobubbles, which Petitioner’s expert indicated were on the order of 0.1 microns, are detectable using available technology that Petitioner knew of and had used in the past. Id. However, Petitioner’s expert acknowledged that he did not do any testing that would determine whether nanobubbles were formed. Id. at 7 (citing Ex. 2172, 70:1–4). Petitioner’s reliance on milkiness and supersaturation to demonstrate the presence of nanobubbles is also unsupported. Petitioner argues that milky appearance equals supersaturation (Reply 9 (citing Ex. 1101, 9:38– 50)), and also that milky appearance equals nanobubbles (id. (citing Ex. 1101, 4:14–15)); the inference Petitioner apparently wants us to draw is that supersaturation equals nanobubbles. Patent Owner, however, persuasively argues that dissolved oxygen content over 100% does not prove the water is milky. PO Resp. 25–26; Sur-Reply 6–7; see also Tr. 13:24–26 (Petitioner’s counsel agreeing that “you can have supersaturation without milkiness”). Patent Owner also demonstrates that supersaturation does not necessarily mean that nanobubbles are present. PO Resp. 26; Sur-Reply 7; Ex. 2172, 76:9–14, 77:23–78:21. Thus, Petitioner’s argument based on supersaturation equaling nanobubbles because milkiness equals both breaks down because milkiness does not necessarily equal either. Accordingly, we determine that Petitioner’s arguments and testing fail to show that Wikey inherently discloses nanobubbles.” slip op. at 28
Patent outcomesUS RE45,415 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham - 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
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.