- Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Molecular Rebar Design, LLCInstitutedPTAB · Jul 17, 2025 · IPR2025-00359 · APJ Avelyn M Ross · IPR · Institution
The Board instituted review of claims 1–4 and 7–17 on all petition grounds and granted Samsung’s unopposed motion for joinder in IPR2024-01013.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We instituted review of claims 1–4 and 7–18 of the ’483 patent in IPR2024- 01013 after a review of all arguments and evidence presented by the parties, including Patent Owner’s arguments in its preliminary response. For the reasons discussed in the Institution Decision in IPR2024-01013, we determine that Petitioner demonstrates a reasonable likelihood of showing at least one claim of the ’483 patent is unpatentable. Thus, we find that the Petition warrants institution of inter partes review on all claims and grounds set forth in the Petition.” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Upon consideration of Petitioner’s arguments, we are persuaded that it is appropriate under these circumstances to join Petitioner to the proceeding in IPR2024-01013. Petitioner’s agreement to accept an “understudy” role and to not actively participate in IPR2024-01013 unless the current petitioner ceases to participate will limit any potential impact on the trial schedule and will avoid increasing the costs or complexity of the proceeding. Therefore, joinder of Petitioner to IPR2025-00359 will further the goals of a just, speedy, and inexpensive resolution of Petitioner’s challenge. 37 C.F.R. § 42.1(b).” slip op. at 10
Nonecites Phillips · KSR · GrahamPatents in suitUS 10,153,483 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Molecular Rebar Design, LLCInstitutedPTAB · Jul 17, 2025 · IPR2025-00358 · APJ Julia Heaney · IPR · Institution
The Board instituted review of claims 1–16 on all petition grounds and granted Samsung’s motion to join IPR2024-01012 as an understudy petitioner.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A. Whether the Petition Warrants Institution As we note above, the Petition challenges the same claims on the same grounds of unpatentability, and relies on the same evidence, including the same declarant testimony, as presented in the 1012 IPR. Pet. 1; Mot. 6– 7. In other words, the Petition is virtually identical to the petition filed in the 1012 IPR. We incorporate our analysis from the 1012 IPR regarding the asserted grounds of unpatentability and determine that Petitioner has demonstrated sufficiently under 35 U.S.C. § 315(c) that institution of an inter partes review is warranted under 35 U.S.C. § 314(a).” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Based on the facts and circumstances discussed above, we determine Petitioner has established good cause for joining the 1012 IPR. Specifically, we find that joining Petitioner to the 1012 IPR is unlikely to require any delay or modification to the scheduling order already in place for the 1012 IPR. We also determine that Patent Owner will not be prejudiced unduly by the joinder of this proceeding. Thus, we determine that granting the Motion for Joinder under these circumstances would help “secure the just, speedy, and inexpensive resolution” of these proceedings. See 37 C.F.R. § 42.1(b). For the above reasons, we grant Petitioner’s Motion for Joinder and join Petitioner as a party to the 1012 IPR.” slip op. at 6
NonePatents in suitUS 10,608,282 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Molecular Rebar Design, LLCInstitutedPTAB · Jul 17, 2025 · IPR2025-00355 · APJ Julia Heaney · IPR · Institution
The Board instituted inter partes review of claims 1–23 on the petition’s grounds and granted Samsung’s motion to join the LGES IPR in an understudy role.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A. Whether the Petition Warrants Institution As we note above, the Petition challenges the same claims on the same grounds of unpatentability, and relies on the same evidence, including the same declarant testimony, as presented in the 1005 IPR. Pet. 1; Mot. 5. In other words, the Petition is virtually identical to the petition filed in the 1005 IPR. We incorporate our analysis from the 1005 IPR regarding the asserted grounds of unpatentability and determine that Petitioner has demonstrated sufficiently under 35 U.S.C. § 315(c) that institution of an inter partes review is warranted under 35 U.S.C. § 314(a).” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Based on the facts and circumstances discussed above, we determine Petitioner has established good cause for joining the 1005 IPR. Specifically, we find that joining Petitioner to the 1005 IPR is unlikely to require any delay or modification to the scheduling order already in place for the 1005 IPR. We also determine that Patent Owner will not be prejudiced unduly by the joinder of this proceeding. Thus, we determine that granting the Motion for Joinder under these circumstances would help “secure the just, speedy, and inexpensive resolution” of these proceedings. See 37 C.F.R. § 42.1(b). For the above reasons, we grant Petitioner’s Motion for Joinder and join Petitioner as a party to the 1005 IPR.” slip op. at 6
NonePatents in suitUS 9,636,649 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Molecular Rebar Design, LLCInstitutedPTAB · Jul 17, 2025 · IPR2025-00356 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted review of claims 1–8 on all petition grounds and granted Samsung’s unopposed motion to join IPR2024-01006.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We agree with the parties that the Samsung Petition “involves the same patent, challenges the same claims, relies on the same expert declaration, and is based on the same grounds and combinations of prior art.” Id. (Patent Owner’s admission); see Mot. 3 (Petitioner, averring that the Samsung Petition and the Petition filed in IPR1006 are “substantively identical”). Under these circumstances, our reasons for instituting review based on LG Energy Solution’s Petition apply with equal force to the “substantively identical” Samsung Petition. Id. Accordingly, for the same reasons set forth in the Institution Decision filed in IPR1006, we institute review on all claims and all grounds asserted in the Samsung Petition. See generally IPR1006, Paper 8 (Institution Decision in IPR1006).” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“(1) the Motion for Joinder is timely, having been “filed within one month of the institution decision” in IPR1006; (2) the Samsung Petition “is substantially identical to the” Petition filed in IPR1006; (3) “joinder will have minimal, if any, impact on the trial schedule, as all issues are substantively identical”; (4) Petitioner agrees to “accept an ‘understudy role’” in the joined proceeding, unless LG Energy Solution, Ltd. “is terminated from” IPR1006; and (4) joinder will simplify “briefing and discovery” as all issues will be resolved “in a single proceeding.” Mot. 3–4. Patent Owner contests none of those facts. To the contrary, Patent Owner does “not oppose” the Motion for Joinder and “fully expects this proceeding to be joined with” IPR1006. Waiver 1. Having considered Petitioner’s Motion for Joinder, as well as Patent Owner’s Waiver, we determine that joinder of the instant proceeding with IPR1006 is appropriate. Accordingly, we grant Petitioner’s unopposed Motion for Joinder, subject to the requirements set forth in the Order below.” slip op. at 4
NonePatents in suitUS 8,808,909 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Molecular Rebar Design, LLCInstitutedPTAB · Jul 17, 2025 · IPR2025-00357 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted review of claims 1–5 on all grounds in the Petition and granted Samsung’s unopposed motion to join IPR2024-01011.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We agree with the parties that the Samsung Petition “involves the same patent, challenges the same claims, relies on the same expert declaration, and is based on the same grounds and combinations of prior art.” Id. (Patent Owner’s admission); see Mot. 3 (Petitioner, averring that the Samsung Petition and the Petition filed in IPR1011 are “substantively identical”). Under these circumstances, our reasons for instituting review based on LG Energy Solution’s Petition apply with equal force to the “substantively identical” Samsung Petition. Id. Accordingly, for the same reasons set forth in the Institution Decision filed in IPR1011, we institute review on all claims and all grounds asserted in the Samsung Petition. See generally IPR1011, Paper 9 (Institution Decision in IPR1011).” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Having considered Petitioner’s Motion for Joinder, as well as Patent Owner’s Waiver, we determine that joinder of the instant proceeding with IPR1011 is appropriate. Accordingly, we grant Petitioner’s unopposed Motion for Joinder, subject to the requirements set forth in the Order below.” slip op. at 4
NonePatents in suitUS 8,968,924 - PTAB · May 16, 2025 · IPR2024-01487 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claim 1 would have been obvious over Nakazawa and Glaug.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . 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). Upon consideration of the Petition in view of the record at this stage, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. We also determine that the arguments and evidence of record do not support discretionary denial of the Petition under 35 U.S.C. § 314(a). Accordingly, we grant institution of an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“person of ordinary skill would modify either Nakazawa’s diffusion sheet or Glaug’s fluid acquisition system, but rather Petitioner argues “various layers in absorbent articles are invariably interchangeable.” Prelim. Resp. 41–42. Contrary to Patent Owner’s argument, as discussed above, Petitioner explains why and how a person of ordinary skill would modify Nakazawa’s diffusion sheet, and provides reasons for doing so. On this record, we find Petitioner’s reasoning sufficient.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Patent Owner further argues Nakazawa teaches away from Petitioner’s asserted modification in which Glaug’s lower non-perforated layer is added to Nakazawa’s diffusion sheet. Prelim. Resp. 42. Specifically, Patent Owner argues Nakazawa teaches that its embodiment in which the second absorbent material is wrapped in a hydrophilic sheet has the advantage of preventing leakage of super absorbent polymer (“SAP”) from the second absorbent material without impeding permeation of excretory fluid through the hydrophilic sheet. Id. at 43 (citing Ex. 1008 ¶ 85, Fig. 15). Patent Owner further relies on Petitioner’s argument that Nakazawa’s hydrophilic layer is analogous to the lower non-perforated layer in Glaug. Id. (citing Pet. 93–94). Therefore, Patent Owner argues, Nakazawa teaches that Glaug’s fluid acquisition system would impede permeation of fluid rather than promote it. Id. Patent Owner’s teaching away argument is unavailing based on the current record. Patent Owner improperly relies on Petitioner’s contention in its anticipation challenge based on Nakazawa, and characterizes it as an argument about Glaug. As further discussed in Section II.G below, Petitioner’s anticipation challenge is based on analogizing Nakazawa’s hydrophilic sheet to a core wrap feature identified in Patent Owner’s infringement contention in parallel district court litigation. See Pet. 92–93. Contrary to Patent Owner’s argument, Petitioner’s obviousness contention does not argue Nakazawa’s hydrophilic layer is analogous to Glaug’s nonperforated fibrous layer. Because Patent Owner is not properly characterizing Petitioner’s obviousness contention, Patent Owner’s teaching away argument is not persuasive.” slip op. at 24
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Under Fintiv, we consider the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv at 5–6.” slip op. at 35
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,308,138 - Uatp IP LLC v. Slick Slide LLCInstitutedPTAB · Apr 8, 2025 · PGR2024-00054 · APJ Julia Heaney · PGR · Institution
The Board instituted PGR on claims 1–17 and 22–28 and all asserted grounds, finding a sufficient likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of a post-grant review is authorized by statute when “the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). Upon consideration of the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated that it is more likely than not that at least one claim challenged in the Petition is unpatentable. Further, Patent Owner has not persuaded us that it is appropriate to exercise our discretion not to institute review. Accordingly, we institute a post-grant review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Skill levelSkill level patent owner adoptedOther
“On this record, we do not find Patent Owner’s proposed experience level of at least five years in measurement and analysis of coefficient of friction to be supported. As to the necessity of experience in textile engineering and fiber science, Patent Owner’s position, although not supported by declarant analysis of the factors listed above, is consistent with the disclosure of the ’854 patent, which describes features of a mesh layer in textile and fiber terms. See e.g., Ex. 1001, 10:17–11:14, 12:65–13:8, 14:20–24. On the whole, however, we do not discern on this record how specific experience in textile engineering and fiber science of a person of ordinary skill would materially alter the outcome at this stage of the proceeding. For purposes of this decision only, we apply Patent Owner’s proposed definition of a person of ordinary skill in the art, except for the requirement of five years of experience in measurement and analysis of coefficient of friction. The level of skill in the art remains an open issue in this proceeding. Further submissions by the parties may include argument and evidence that would assist in the resolution of this issue at the close of trial.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends “no formal claim construction is necessary in this proceeding.” Pet. 10; Reply 1, 4. Patent Owner contends the terms “mesh layer” and “coefficient of friction” require construction. Prelim. Resp. 14–16; Sur-reply 2–5. We have considered the parties’ arguments and discuss them below with regard to each of the terms Patent Owner contends should be construed. Because our determination that Petitioner demonstrates at least one challenged claim meets the threshold for institution (see SAS Inst., 138 S. Ct. at 1359–60) is not based on construing the term “mesh layer” or “coefficient of friction,” we determine we need not construe either claim term at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). As further discussed below, we invite the parties to address claim construction at trial.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“We agree with Petitioner that the ’854 patent specification does not include clear and explicit lexicography or a disclaimer that would support requiring “coefficient of friction” to be determined by a specific ASTM test method. The portion of the specification Patent Owner asserts as a definition of “coefficient of friction” (see Ex. 1001, 11:31–42) is a description of an embodiment; we find it does not express patentee intent to redefine the term. Further, the statement that “the coefficient of friction … may be determined using the … ASTM D1894 standard test method” (id. at 11:32–35) indicates that use of that specific test method is optional. Accordingly, in the absence of patentee lexicography or disavowal, we do not limit the scope of the term “coefficient of friction” to require that it be measured by a specific ASTM standard. Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (“Absent lexicography or disavowal, we do not depart from the plain meaning of the claims.”); In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). We note that the ’854 patent specification sets forth a definition for the coefficient of friction between the surfaces of the mesh material and the slide surface. Ex. 1001, 4:38–46. As stated above, however, we do not expressly construe any claim term at this stage of the proceeding. Should the parties address the construction of “coefficient of friction” at trial, we will make a determination after the close of evidence and any hearing.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,998,854 - Encube Ethicals PTV. Ltd. v. Dermavant Sciences GmbHAdverse judgmentPTAB · Mar 7, 2025 · IPR2024-00834 · APJ Tawen Chang · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on all challenged claims, 1–4, 6–10, 16, 18, 21, and 22, following their disclaimer.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Terminate Proceeding and Parties’ Joint Motion for Entry of Adverse Judgment (collectively “Motion”). The parties jointly request that the Board enter adverse judgment in light of the disclaimer filed by Patent Owner disclaiming all challenged claims. Mot. 1 (citing 37 C.F.R. § 42.73(b)(2)). The Motion attaches as an exhibit a disclaimer under 37 C.F.R. § 1.321(a), filed January 28, 2025, of claims 1–4, 6–10, 16, 18, 21, and 22 of the ’088 patent, which constitute all of the claims challenged in the inter partes review. Ex. 2001; Paper 1, 3.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Accordingly, we grant the Parties’ Joint Motion for Entry of Adverse Judgment. This Adverse Judgment is sufficient to dispose of this proceeding and Patent Owner’s Motion to Terminate is denied as moot.1” slip op. at 3
NonePatents in suitUS 11,590,088 - PTAB · Dec 16, 2024 · IPR2024-01005 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on claims 1–23 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . 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). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. We also determine that the arguments and evidence of record do not support discretionary denial under 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“under the sixth Fintiv factor only after a determination that the first five Fintiv factors favor discretionary denial. CommScope, 4–5. Here, we do not find the first five factors cumulatively weigh in favor of discretionary denial. Therefore, we determine that the circumstances here do not warrant an analysis of whether the Petition presents compelling merits, and the considerations of the sixth Fintiv factor weigh against exercising discretionary denial. F. Conclusion Having considered the parties’ arguments in view of the Fintiv factors, and taking into account Petitioner’s stipulation, we determine that the circumstances here do not warrant exercising discretion under § 314(a) to deny institution. IV.” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Thus, although both parties indicate that no claim construction is necessary at this stage of the proceeding, it is apparent that they disagree as to the meaning of “discrete carbon nanotubes.” While Petitioner appears to construe “discrete carbon nanotubes” as “nanotubes that are generally individually distinct” (Pet. 13), Patent Owner argues a more restricted construction requiring that “discrete carbon nanotubes” not be reacted with other components. Prelim. Resp. 3. The evidence relating to claim 10 In quotations from the Preliminary Response throughout this Decision, we have retained bolding and underlining added to the text by Patent Owner. construction that Patent Owner offers on the current record, however, does not address its proposed restriction. See id. at 9, n. 4, citing Ex. 1001, 3:9, 5:39–40 (“The ’649 Patent describes the ‘discrete carbon nanotubes’ as, for example, ‘individually dispersed’, ‘individualized carbon nanotubes’, ‘dispersed as individual nanotubes’, and ‘essentially discrete individual fibers, not entangled as a mass.’”). As discussed in Section II.D.2 below, we determine based on the record at this stage of the proceeding that Petitioner demonstrates sufficiently for purposes of institution that Sun discloses or suggests “discrete carbon nanotubes.” Therefore, we do not explicitly construe any claim terms in this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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))). If either party intends to argue a claim construction at trial, however, including what is the ordinary meaning of a term, they should do so in a clearly designated section of their briefing. See Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 21, 2019) (“CTPG”), 46, 49 (available at https://www.uspto.gov/TrialPracticeGuideConsolidated); O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (“A determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ meaning does not resolve the parties’ dispute.”). Claim construction arguments should not be relegated to patentability arguments on the facts.” slip op. at 7
- 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 at least [a] Master’s degree in materials science, chemistry, chemical engineering, a field relevant to polymer science and engineering, or the equivalent, and at least three years of experience in nanomaterials, electrochemistry, batteries, or polymer related activities.” Pet. 5 (citing Ex. 1003 ¶ 19). Petitioner further argues that “[a]dditional work experience can compensate for less formal education, and vice versa.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 4. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’649 patent and the asserted prior art.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,636,649 - Symrise AG / Symrise Inc. v. Inolex Investment CorporationAll claims unpatentablePTAB · Nov 1, 2024 · IPR2023-01035 · APJ Tina E Hulse · IPR · Final written decision
The Board granted cancellation of claims 1–6, 8–10, and 22–28, and denied substitute claims 29–44 because Wright ’451 rendered them obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the invention (“POSA” or “POSITA”) would have had “a bachelor’s degree and two or more years of experience or a master’s degree in organic synthesis or chemical engineering, with education substituting for experience and vice versa.” Pet. 15 (citing Ex. 1002 ¶ 16). Patent Owner took no position on the level of ordinary skill in the art in its Preliminary Response. Prelim. Resp. 8. In our Institution Decision, we adopted Petitioner’s definition. Dec. Inst. 6–7. In its Motion to Amend, Patent Owner states that it accepts the Board’s definition for purposes of this proceeding. MTA 24. We, therefore, see no reason to disturb our definition of the level of ordinary skill in the art as it appears to be consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Although neither party expressly proposes a construction for the term “conversion,” the parties appear to differ in their interpretations of that term. Petitioner interprets “conversion” to mean the percent conversion of the 1- alcohol. See Pet. Opp. RMTA 6–7 (interpreting “conversion” as percentage of remaining 1-alcohol); Ex. 1040, 109:2–11. Patent Owner, on the other hand, interprets “conversion” to mean the total percentage of alkenes that have been produced. Ex. 2010 ¶ 123 (interpreting “conversion” as percentage of total alkenes). During oral argument, counsel for Patent Owner conceded that “conversion can mean either.” Tr. 27:18–28:13. Without the benefit of briefing by the parties, we decline to expressly construe the term “conversion,” as our Decision would be the same under either interpretation, as discussed further below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (finding only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy). Moreover, we do not find it necessary to expressly construe any other claim terms for purposes of this Decision. Id.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“2. Analysis A patent claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which said claimed invention pertains. See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Objective evidence of nonobviousness may include” slip op. at 13
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedDecided for petitioner
“We are not persuaded. “[A]ny superior property must be unexpected to be considered as evidence of non-obviousness.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007). We must, therefore, first consider what results were expected to determine what a POSA would have considered to be unexpected. Id. As seen by the table below, Wright ’451’s disclosure fully encompasses the temperature ranges and purported unexpected results recited by substitute claim 29 and shown in Table 2 of the ’048 Patent: Reference Reaction Calcination Conversion Regioselectivity Rate13 Temperature Temperature Wright ’451 about 220 °C about 200 °C greater than about 90% to to about to 600 °C about 95% about 99% 440 °C Substitute 240 °C to about 420 °C at least 95% to about Claim 29” slip op. at 23
Patent outcomesUS 10,995,048 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,995,048
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.