- PTAB · Mar 24, 2025 · IPR2024-01235 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR of claims 1–3, 6–11, and 14–16 on all proposed grounds after finding a reasonable likelihood of prevailing on the §103 ground over Mañosa and Patel.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016), 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedPrinted publication not establishedMixed
“[T]here is no presumption in favor of institution or in favor of finding a reference to be a printed publication under § 42.108(c) or any other authority. . . . [T]he burden is on the petitioner to identify with particularity evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent, and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“May” expresses a possibility. The Specification reflects this interpretation of “may” when it states that “[i]n one embodiment, the organic material is not lyotropic. Thus, the organic material may not be a phospholipid.” Ex. 1001, 8:27–28 (emphasis added). One of ordinary skill would understand from this that the organic material “may not be” a phospholipid if the organic material is not lyotropic. It follows that if the organic material is lyotropic, then the organic material may be a phospholipid. Reading the statement “[t]he organic material may not be . . . a phospholipid” (id. at 8:59–63) in light of the earlier stated possibility that the organic material may be a phospholipid if the organic material is lyotropic, one of ordinary skill in the art would interpret “may not be” as excluding phospholipids under some conditions, not under all conditions. Taking the Specification’s discussion about phospholipids as exemplifying the permissive nature of the word “may,” we are unpersuaded that in stating that “[t]he organic material may not be [PMMA], a polyvinylidene difluoride-containing polymer, such as [PVDF] or PVDF- TrFE-CTFE, or a phospholipid, such as [DHPE]’” (Ex. 1001, 8:59–63), the specification “contains a clear and unmistakable disavowal of the compounds PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE” and “disclaims the listed compounds” from the “organic material” of the claims under all conditions, as Patent Owner argues. Prelim. Resp. 6–7. Moreover, the claims themselves limit the “organic material” only to the extent that it is “barocaloric cooling or heating agent” and can perform in the manner claimed. See Ex. 1001, claim 1, supra. As broadly worded, the claims do not exclude PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE per se from the group of organic materials employed by the claimed method. Adopting Patent Owner’s construction would impermissibly import a limitation (i.e., not exclude PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE) into the claims. For the reasons stated, at this stage of the proceeding, we agree with Petitioner’s broad construction of “organic material.” We do not adopt Patent Owner’s proposed construction whereby PMMA, PVDF, PVDF- TrFE-CTFE, and DHPE are excluded from the scope of the claim term “organic material.” The parties are invited to address this issue further during trial, if desired. slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner shows that (a) Mañosa (i.e., inorganic compounds such as Ni-Mn-In, Gd5Si2Ge2, and La-Fe-Co-Si) and (b) Patel (i.e., PVDF-TrFE- CTFE) teach materials exhibiting inverse BCEs. Pet. 59 (citing, inter alia, Ex. 1007, pages 4–8; Ex. 1009, 1, 4–5; Ex. 1004 ¶ 108). In our view, at this stage, Petitioner sufficiently shows (via the five reasons listed supra) why it would have been obvious to one of ordinary skill in the art to substitute the barocaloric cooling or heating agent of Patel for that taught in Mañosa, thereby reaching the claimed method with a reasonable expectation of success. Cf. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (U.S., 2007) (“The Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”)” slip op. at 32
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,230,656 - Brycer, LLC / Brycer Management, Inc. v. Tegris, Inc.All claims unpatentablePTAB · Jan 16, 2025 · IPR2023-01196 · APJ Hubert C Lorin · IPR · Final written decision
Claims 8–16 are unpatentable under §103 over Key, Chauhan, Sweeney, and McKinney; Patent Owner’s motion to exclude is denied.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“patentable weight. See II.C.4.b. Accordingly, it is sufficient that Petitioner has shown that Key discloses a management software that meets the claim but for processing information about, for example, pressure vessels rather than fire hydrants. Ex. 1005 ¶ 15. Even if we assume arguendo that “fire hydrant” should be given patentable weight, Petitioner shows that Chauhan discloses software for managing information about assets such as fire hydrants. “Chauhan discloses a ‘UtilityCenterTM [that] is an integrated GIS [geographic information system] suite of applications that manages information across the entire utility.’” Pet. 24 (citing Ex. 1016 ¶¶ 39–42, Fig. 1; Ex. 1003 ¶¶ 84–86, 128–129) (alterations in original). Petitioner contends that Chauhan is intended for “‘fire hydrant inspections’” and that there is a “‘HYDRANT Theme’ that allows an inspector to ‘edit and view inspection fields.’” Id. at 24–25 (citing Ex. 1016 ¶ 207; Ex. 1003 ¶¶ 85, 127). According to Petitioner, “Chauhan discloses that its UtilityCenter has wide applicability and that the ‘same technology’ can be used for various other assets and applications including . . . ‘fire and police departments . . . .’” Id. at 25 (citing Ex. 1016 ¶¶ 42, 218; Ex. 1003 ¶¶ 114–115, 130). According to Petitioner, this renders obvious the use of management software to manage information concerning fire hydrant assets. This discussion sufficiently addresses the “fire hydrant management software” limitation consistent with Petitioner’s (and our) view that the phrase “fire hydrant” relates to the content of the data the software processes. See supra § II.C.4.a. In regards to Chauhan, Patent Owner argues that it “relates to a different technical field.” PO Resp. 49. While Mr. MacInnes notes Chauhan states that the same technology “has been tailored to the specific needs of public agencies, such as fire and police departments” (see EX1003, ¶130), Chauhan nowhere explains the needs of the fire department or how the utility outage management system was modified, or why a fire department would need a power outage management system, as described in Chauhan. Id. at 49–50. We are unpersuaded. Given that Key and Chauhan both teach” slip op. at 54
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusObjective indicia outweighedDecided for petitioner
“Accordingly, we do not apply a presumption of nexus that the ’966 patent’s claims are linked to the objective indicia of nonobviousness, because Patent Owner has not shown that TegrisFire and Brycer products embody and are coextensive with the claims. Nexus may still be shown if the evidence of secondary considerations is the direct result of the unique characteristics of the claimed invention. See Fox Factory, 944 F.3d at 1373–74 (“[T]he patent owner is still afforded an opportunity to prove nexus by showing that the evidence of secondary considerations is the direct result of the unique characteristics of the claimed invention.” (emphasis added)). However, for the following reasons, that, too, has not been sufficiently established. 2. Unexpected Results Regarding unexpected results, Patent Owner relies on two case studies, one of Lynwood, WA Fire Department (Ex. 2004) and the other of Richland, WA Fire Department (Ex. 2025). According to Patent Owner a number of benefits were seen from using the TegrisFire product, such as the number of licensed inspectors increased. Ex. 2004 (9 (“147.5%”)); Ex. 2025 (9 (“200%)”). Other improvements were seen in the decreased number of impaired assets and in the increased communication between owners and inspectors. PO Resp. 63–64 (citing Ex. 2004, 9–11; Ex. 2015 ¶ 128; Ex. 2025; Ex. 2015 ¶ 155). But there is insufficient evidence suggesting that any of these” slip op. at 72
- ExcludeMotion to exclude, deniedDenied
“We have not discussed the provisional applications from which the ‘966 patent claims priority and therefore have not relied Mr. MacInnes’s testimony about said priority. For the foregoing reasons, the Motion to Exclude is denied.” slip op. at 85
Patent outcomesUS 11,126,966 unpatentable§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,126,966 - PTAB · Dec 13, 2024 · IPR2024-00990 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR of claims 1–12 and 14–23 on all petitioned grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner, we are persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we grant Petitioner’s request and institute an inter partes review of claims 1–12 and 14–23 of the ’007 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“near the heel in a 5,000-feet horizontal wellbore, than the shunt tubes in the lower-pressure side.” Id. (citing Ex. 1005, 28:17–24, 30:16–20; Ex. 1003 ¶ 292). Petitioner points out that Yeh “express disclos[es] that a ‘certain surrounding wall thickness is required’ ‘to stay within the burst, bending, and collapse ratings.” Id. at 42 (quoting Ex. 1005, 28:20–23; citing Ex. 1017, 24 (Equation (14) showing burst pressure roughly directly proportional to wall thickness), Ex. 1003 ¶ 295). Mr. Chambers provides support, explaining that Yeh “expressly taught that ‘to maintain the mechanical integrity (that is, to stay within the burst, bending, and collapse ratings) of the secondary flow paths, a certain surrounding wall thickness is required.’” Ex. 1003 ¶ 291 (quoting Ex. 1005, 28:20–24). According to Mr. Chambers, “a POSITA understood that containing internal pressure within tubing required a certain wall thickness, wall thickness being one of three parameters (wall thickness, tubing material, and tubing outside diameter) that could be adjusted to meet pressure containment requirements.” Id. “[A] POSITA would understand that the tubing wall thickness in the eccentric screens would be less than the tubing wall thickness in the concentric screens due to the lower pressure requirement.” Id. at ¶ 295. Given said disclosures and supporting testimony, at this stage, Petitioner sufficiently shows on this record that Yeh suggests limitation 1[e].” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: [at] the time of the alleged invention in 2018, a POSITA[3] would have had a B.S. degree in mechanical or petroleum engineering or a similar technical discipline, with at least five years of experience in oil or gas well drilling, completion, and/or subsurface production operations or in technical support of such operations including at least some experience in unconsolidated formations utilizing sand control methods and means. Also, additional education in a relevant technical discipline could compensate for less experience in the relevant field, and vice versa. Pet. 31–32 (citing Ex. 1003 ¶¶ 36–40). Petitioner’s proposed definition of a person of ordinary skill in the art appears reasonable, and we adopt that definition for our analysis in this decision.” slip op. at 10
§ 103 obviousnesscites GrahamPatents in suitUS 11,333,007 - Profrac Holding Corporation / U.S. Well Services, LLC v. Halliburton Energy Services, Inc.All claims unpatentablePTAB · Oct 29, 2024 · PGR2023-00023 · APJ Brent M Dougal · PGR · Final written decision
Claims 1–20 are unpatentable under §101 as directed to an abstract idea without significantly more; the Board did not reach the asserted §103 grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a B.S. in Chemical Engineering, Mechanical Engineering, Materials Science, or Metallurgical Engineering or an equivalent field and at least two years of academic or industry experience in the oil and gas industry, including experience with process control systems. Further, a person with additional education but less professional experience, and vice-versa, may qualify. Pet. 23–24 (citing Ex. 1003 ¶ 4). Patent Owner adopts Petitioner’s definition. PO Resp. 6. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’058 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In post-grant review, we construe claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.200(b) (2022). Neither Petitioner, nor Patent Owner, provides constructions of any claim terms. Pet. 25; PO Resp 6–7. We determine that no terms need to be construed. See 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 5
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“formation response data comprising data from one or more downhole sensors or surface sensors” and “selecting a representative system model based on the received formation response data and sequence of stimuli” are mental processes. We determine that the record supports that they are. The Background of the ’058 patent supports our finding that these steps are mental processes. In particular, the ’058 patent teaches that it was known that “a technician may review sensor data” and that “a representative system model may be used for determining pump settings based on sensor information; however, the representative system model is typically manually selected by a technician based on observed sensor data.” Id. at 22 (quoting Ex. 1001, 1:9–26); see also Dec. 23–24 (preliminarily finding these claimed patent). Regarding the claimed step of “controlling an electrical fracturing pump based on the representative system model,” Patent Owner does argue, and we agree, that it is not a mental process in that one of ordinary skill in the art would not have performed it in the human mind. PO Resp. 27. We also agree that the Petition does not expressly argue that the step of “generating a sequence of stimuli for application to a well environment” is a mental process. However, the ’058 patent explains that these two steps may be performed via a generic computer. Ex. 1001, 6:6–36, 6:65–7:33, 8:56–9:28. Requiring the use of a computer does not change the focus of the claim away from being directed towards an abstract idea. “[T]he inability for the human mind to perform each claim step does not alone confer patentability.” FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1098 (Fed. Cir. 2016) (“As we have explained, ‘the fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.’” (quoting Bancorp Servs. v. Sun Life Assur. Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012)). See also Miller Mendel, Inc. v. City of Anna, Texas, 107 F.4th 1345, 1353 (Fed. Cir. 2024). (“We are not persuaded that claim 1 cannot be directed to an abstract idea even if certain steps cannot be completed in the mind or by pen and paper. . . . [R]equiring the use of a computer alone does not change the focus of a claim directed towards an abstract idea into one directed towards ‘a specific improvement to computer functionality.’ In re TLI Commc'ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016).”” slip op. at 10
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“4. Step 2B Under Step 2B, only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, [and] conventional” in the field; or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 56. applying the … abstract idea using techniques that are, whether considered individually or as an ordered combination, well-understood, routine, and conventional.’ cxLoyalty Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1377 (Fed. Cir. 2021).” Pet. 97. The Petition cites the Background of the ’058 patent to support its argument that the specification admits that many of the claimed steps were known. Id. at 91. In the oil and gas industry, electric frac pumps are often controlled in order to achieve certain downhole environment responses. However, typically settings are performed manually based on manually appraised information retrieved from the downhole environment. For example, a technician may review sensor data and, based on experience, adjust various settings such as flow rate, pressure values, chemical compositions, etc., on an electric frac pump. In some cases, a representative system model may be used for determining pump settings based on sensor information; however, the representative system model is typically manually selected by a technician based on observed sensor data. Additionally, the representative system model may be a static construct and may not accurately reflect the well to which it has been deployed. Ex. 1001, 1:9–26 (emphasis added). From the above, it will be understood that much of claim 1 was well-understood, routine, and conventional, whether considered individually or as an ordered combination. The above paragraph makes clear that “controlling an electrical fracturing pump based on the representative system model” was known and conventional. In addition, adjusting settings on an electrical fracturing pump is also how the ’058 patent teaches to generate a sequence of stimuli. Ex. 1001, 2:25–33 (“A given stimulus of the sequence of stimuli can be achieved by adjusting . . . flow rates . . . . In some examples, a sequence can include a various amplitudes (e.g., high, medium, low, etc.).”). Thus, generating a sequence of stimuli is also acknowledged as being known in the Background. See also Dec. 22–23 (preliminarily finding that these limitations were known). Petitioner provides additional argument that other references also show that these limitations were known. See e.g., Pet. 94. However, it is not necessary for us to review these in view of the express acknowledgement of the state of the art in ’058 patent. Based on the record, we determine that claim 1 does not include any specific limitation beyond the judicial exception that is not “well-understood, routine, [and] conventional” in the field.” slip op. at 15
Patent outcomesUS 11,373,058 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Enfish · GrahamPatents in suitUS 11,373,058 - Mito Red Light, Inc. v. Joovv, Inc.Institution deniedPTAB · Sep 19, 2024 · IPR2024-00621 · APJ Hubert C Lorin · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 3, 9, 10, 11, 16, 17, and 19 were unpatentable under either obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For at least the foregoing reasons, Petitioner has not met its burden of showing, with particularity, that Dijkstra teaches a plurality of lights as claimed. The evidence Petitioner presents does not sufficiently support Petitioner’s contention that Dijkstra shows a light therapy device comprising a plurality of lights as claimed. Furthermore, Petitioner provides no discussion as to why it would have been obvious to one of ordinary skill in the art, given Dijkstra, to provide a light therapy device with a plurality of lights with reasonable expectation of success. Pet. 8–10. Accordingly, the Petition does not establish a reasonable likelihood that independent claim 1 is unpatentable over Dijkstra.” slip op. at 18
- Obviousness (§103) › Analogous artNon analogous artDecided for patent owner
“A reference qualifies as prior art for an obviousness determination under 35 U.S.C. § 103 only when it is analogous to the claimed invention. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011); see also Innovention Toys, LLC, v. MGA Entertainment, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed or (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. Klein, 647 F.3d at 1348.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the above, and on this record, the parties do not assert terms that are in controversy. Only those 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). Therefore, we determine that no express construction of any term is necessary. C. Level of Ordinary Skill in the Art” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner agrees with Petitioner’s proposed definition of the level of ordinary skill. Prelim. Resp. 14 (citing Ex. 2014 ¶¶ 40–42). We apply Petitioner’s description of the qualifications of a POSITA in our analysis as it appears consistent with the problems addressed in the ’719 patent and the prior art. D. Overview of the Prior Art References” slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,253,719 - Stodge, Inc. D/B/A Postscript v. Attentive Mobile Inc.Institution deniedPTAB · May 8, 2024 · IPR2024-00129 · APJ Lynne H Browne · IPR · Institution
Institution was denied for claims 1–30 because the petition did not show a reasonable likelihood of prevailing on either obviousness ground.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties propose similar definitions of a person of ordinary skill in the art. Petitioner’s definition appears reasonable, and we determine that the level reflected in the prior art is consistent with Petitioner’s definition. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundInstitution denied
“Petitioner, however, does not explain how Agrawal’s web advertising system for identifying illegitimate advertising link request activity would have enhanced the reach of Oliver’s promotions. Oliver’s lead generation tool presents promotions to users via passive entities such as QR codes and enables users to respond to these promotions via text message. As Petitioner notes, Oliver discloses that its “passive entities can be incorporated into advertising” and “can be incorporated into ‘electronic visual media’ on the Internet.” Pet. 29 (citing Ex. 1011 ¶ 34). Petitioner does not adequately explain why Agrawal’s web advertising system is better that Oliver’s use of passive entities. Pet 28 (citing Ex. 1005, 5:45–63; Ex. 1002 ¶ 92). Petitioner argues that Agrawal “allows ads to be targeted at users likely to find the subject matter appealing.” Id. at 28–29. Yet the fact that Agrawal discloses retrieving advertising links relevant to a user’s search query, does not explain how or why that user is more “targeted” than another user who scans a passive entity such as a QR code as in Oliver. See Ex. 1005, 5:57– 58 (Agrawal discloses “using the keyword to select the appropriate advertising links.”), see also Ex. 1011 (Oliver teaching to “create a passive entity, such as a QR code or NFC tag associated with a promotion.”). In addition, Petitioner does not adequately explain how Agrawal’s method of determining if advertising activity is legitimate, i.e., only an interested or “real” user as compared to a “click” bot, could be used with Oliver’s method, let alone how extrapolating site data that results in more accurate advertising fees would enhance the reach of Oliver’s promotions to more users. See id. at 1:47–54 (Agrawal explaining that “click-bots can be configured to mimic real network traffic by specifying parameters . . . Petitioner’s reliance on Dr. Houh’s testimony doesn’t cure these deficiencies in Petitioner’s reasoning as that testimony simply repeats the assertions in the Petition without further elaboration. Cf. Pet. 28–29, with Ex. 1002 ¶ 92). Moreover, Oliver’s promotions are already targeted to users who are interested in Oliver’s products be virtue of the fact that the users are responding to passive entities in advertisements for those products by opting in.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundInstitution denied
“d) Conclusion Re Petitioner’s Reasoning in Support of the Proposed Combination For the reasons discussed above, we determine that Petitioner’s reasoning in support of the proposed combination lacks rational underpinning. Specifically, we find that Petitioner has not adequately explained why one skill in the art would be motivated to combine Oliver, Agrawal, and Khanna as proposed. We further find that Petitioner’s reasoning is based on improper hindsight reasoning and that Petitioner’s reasoning is not supported by the concept that applying known techniques for their known functions —per KSR— provides sufficient rationale for the proposed combination.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,553,074 - Stodge, Inc. D/B/A Postscript v. Attentive Mobile Inc.Institution deniedPTAB · May 8, 2024 · IPR2024-00069 · APJ Lynne H Browne · IPR · Institution
Institution was denied for claims 15–30 because Petitioner did not show a reasonable likelihood of prevailing on either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“reasoning in support of the proposed combination lacks rational underpinning. Specifically, we find that Petitioner has not adequately explained why one skill in the art would be motivated to combine Oliver, Agrawal, and Molinet as proposed. We further find that Petitioner’s reasoning is based on improper hindsight reasoning and that Petitioner’s reasoning is not supported by the concept that applying known techniques for their known functions —per KSR— provides sufficient rationale for the proposed combination.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“method of determining if advertising activity is legitimate, i.e., only an interested or “real” user as compared to a “click” bot, could be used with Oliver’s method, let alone how extrapolating site data that results in more accurate advertising fees would enhance the reach of Oliver’s promotions to more users. See id. at 1:47–54 (Agrawal explaining that “click-bots can be configured to mimic real network traffic by specifying parameters . . . result[ing] in inaccurate fees being charged for advertising services.”). Petitioner’s reliance on Dr. Houh’s testimony doesn’t cure these deficiencies in Petitioner’s reasoning as that testimony simply repeats the assertions in the Petition without further elaboration. Cf. Pet. 28–29, with Ex. 1002 ¶ 92). Moreover, Oliver’s promotions are already targeted to users who are interested in Oliver’s products be virtue of the fact that the users are” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“the server-based software techniques of Oliver and Molinet at Agrawal’s Advertising System 120” “to obtain the benefits of each system.” Pet. 31 (citing Ex. 1002 ¶ 95). Petitioner’s reasoning does not adequately explain why a person of ordinary skill in the art would make the proposed modifications and instead appears to be based on improper hindsight reasoning. Specifically, Petitioner does not adequately address which benefits of each system a person of skill in the art would be motivated to combine and what the advantages of combining functionalities of the references into a single server would be.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (in the context of an inter partes review, applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,416,897 - Profrac Holding Corporation / U.S. Well Services, LLC v. Halliburton Energy Services, Inc.InstitutedPTAB · Apr 15, 2024 · IPR2023-01318 · APJ Brent M Dougal · IPR · Institution
The Board instituted inter partes review of claims 1–15 and 17–31, finding a reasonable likelihood that at least one challenged claim would be shown obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage, and based on the current record and claim scope, we disagree that a reasonable expectation of success cannot be inferred from Petitioner’s arguments. Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th 1368, 1375–76 (Fed. Cir. 2023) (“To be clear, an obviousness determination requires finding that a person of ordinary skill in the art would have had a reasonable expectation of success. Reasonable expectation of success refers to the likelihood of success in combining references to meet the limitations of the claimed invention. Unlike a motivation to combine determination, which requires an explicit analysis, a finding of reasonable expectation of success can be implicit.” (internal citations omitted)). After review of the evidence and arguments, including those summarized above, we determine that a reasonable likelihood of prevailing has been shown that the combination of Tolman, Means, and Crawford teaches or suggests the limitations of claim 1.” slip op. at 21
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Patent Owner requests that we exercise discretion to deny the Petition under 35 U.S.C. § 325(d). Prelim. Resp. 15–28. We decline. As noted in the Petition, “the Examiner did not consider Tolman in combination with any other reference.” Pet. 98 (citing Ex. 1002, 777–778). For this reason, we find that the same or substantially the same prior art or arguments previously were presented to the Office. Even considering that the Examiner considered Crawford “pertinent to applicant’s disclosure (Ex. 1002, 550), the Examiner did not apply Crawford in a rejection, nor did the Examiner consider Means. We further agree with Petitioner that “the Examiner’s analysis mapped different elements of Tolman to satisfy the claim elements of the ’082 patent from Dr. Nikolous’ analysis, such as Tolman’s production system 100 to the claimed ‘centralized well treatment fluid center.’” Id. at 98–99. Thus, the art and arguments as a whole are not the same as considered in prosecution. Thus, Patent Owner does not persuade us that exercising our § 325(d) discretion is appropriate.” slip op. at 23
- Expert testimonyPetitioner expert creditedDecided for petitioner
“The paragraphs highlighted by Patent Owner include extensive citations in support of the statements made by Petitioner’s declarant, Dr. Nikolaou. For example, paragraph 69 of Dr. Nikolaou’s declaration includes three citations to two different documents and includes extensive explanation. The noted paragraphs all appear to include support in the evidence of record. Further, Patent Owner only provides a general allegation without discussing any particular paragraph or opinion. Thus, it is unclear which opinions Patent Owner considers conclusory. Further, whether the declaration and Petition include similar or even identical statements is not a reason, by itself, to give the declaration little to no weight. As noted by Patent Owner (Prelim. Resp. 56–58), it is only when these statements are conclusory that they should be given little to no weight. See, e.g., TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (“conclusory expert testimony is inadequate to support an obviousness determination”). For these reasons, and at this stage, we decline Patent Owner’s invitation to give little to no weight to Dr. Nikolaou’s testimony as a whole.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art (“POSITA”) would have had: at least a bachelor of science in chemical engineering, mechanical engineering, materials science, or metallurgical engineering or an equivalent field and at least two years of academic or industry experience in the oil and gas industry, including experience with process control systems. A person having [more] education but less professional experience, and vice versa, may . . . also qualify as a POSITA. Pet. 3–4 (citing Ex. 1003 ¶ 4). Patent Owner does not dispute this. Prelim. Resp. 2. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’082 patent and prior art purposes of this Decision.” slip op. at 5
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,931,082 - Medit Corporation v. 3shape A/SInstitution deniedPTAB · Mar 29, 2024 · IPR2023-01317 · APJ Hubert C Lorin · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–3, 5–8, 13–16, 18–20, 22, 26, 28, and 29 were unpatentable under § 103 over Orametrix, Faul, Breton, and Knighton.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Conclusion as to claim 1 After reviewing the record, we find Petitioner has not adequately explained with sufficient evidence that “Orametrix and Faul, further in view of Breton, teach” the limitation at [Claim 1h]. Pet. 29 (citing Ex. 1013 ¶ 100). We find Petitioner has not provided sufficient reasoning with rational underpinnings in support of its contention that a person of ordinary skill in the art would have been motivated to modify Orametrix and Faul in view of Breton and thereby reach an intraoral scanner comprising [Claim 1h] with a reasonable expectation of success. On this record, for the above reasons, we are unpersuaded that the Petition establishes a reasonable likelihood that claim 1 is unpatentable over the combination of Orametrix, Faul, Breton, and Knighton.” slip op. at 31
- BurdenDecided for patent owner
“Petitioner does not address whether switching Orametrix’s color features, as encoding features, illuminates the object with different colors at different times ([Claim 1h]). Petitioner states that “Orametrix describes changing the color of projected encoded features . . . .” Pet. 26. But Petitioner does not explain how that satisfies what [Claim 1h] calls for. Petitioner does not explain, for example, how changing the encoding features of Orametrix’s digital image projection (i.e., probe light (see discussion supra regarding [Claim 1c])) yields an illuminated object with different colors at different times. Even assuming arguendo that Orametrix’s color features, as encoding features, corresponds to the illuminating “color of the probe light” ([Claim 1h]), Petitioner does not adequately explain how Orametrix’s processor (e.g., data processor 952 (see Ex. 1005, 16:20, Figure 11 ( reproduced in § II.D.1)) is configured to “selectively switch” the encoding features so that the object is illuminated with different colors at different times as [Claim 1h] requires. Petitioner relies on Dr. Liang’s testimony as support for its contention that Orametrix teaches a processor configured to “change the color of projected encoding features” but the testimony simply repeats what is said in the Petition without any discussion of objective facts. Compare Pet. 28, with Ex. 1013 ¶ 100 (“the processor of Orametrix is already configured to change the color of projected encoding features, and is configured to introduce color information from photo data into the three-dimensional model”). The cited evidence does not adequately show that Orametrix’s processor “selectively switch[es]” the color of Orametrix’s digital image projection to illuminate an object with different colors at different times and thereby teach [Claim 1h]. We agree with Patent Owner that Orametrix does not teach a hardware processor “configured to: selectively switch a color of the probe light to illuminate the object with different colors at different times” ([Claim 1h]). Prelim. Resp. 19.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“A principal difficulty with Petitioner’s position is that Petitioner does not sufficiently explain why one of ordinary skill in the art would have configured the Orametrix and Faul processors as claimed given that, unlike Orametrix and Faul, Breton is not drawn to transmitting a “probe light towards [an] object along an optical path thereby illuminating at least a part of the object with the time-varying illumination pattern” ([Claim 1c]) based on which, in part, a 3D geometry of at least a part of the surface of an object in an oral cavity is determined ([Claim 1 pre]). As Patent Owner points out, “[b]oth Orametrix and Faul disclose methodologies to process the obtained data and construct three-dimensional representations of the scanned object.” Prelim. Resp. 26 (citing Ex. 1005, 30:7–34:11, Ex. 1004, 13:28–16:6. We agree with Patent Owner that “Breton is silent on this aspect.” Id. Patent Owner quotes various passages from Breton to show that “[a]t best, Breton discusses two-dimensional mapping and measurement of tooth color for the purposes of ensuring the accurate color shade of replacement teeth.” Id. at 25–26 (quoting Ex. 1003, Abstract, 2:43-47, 2:60-64; also citing Title, 1:7– 18, 2:50–52, Figure 3). We agree that the cited passages do not provide adequate support for determining a 3D geometry as Petitioner has shown for Orametrix and Faul. For example, the passage at 2:43-47 discloses: “[a] general drawback of the prior art lies in that the notion of comparison between the measured tooth and a duplicate is limited to a single point to point comparison. Thus, area defects cannot be detected where no measurement has been taken.” Id. at 2:43-47. There is no mention or suggestion of determining a 3D geometry for a tooth. Another difficulty with Petitioner’s position is that Petitioner does not sufficiently explain why one of ordinary skill in the art would have configured the Orametrix and Faul processors as claimed given that, unlike Orametrix and Faul, Breton is not drawn to drawn to “[a] handheld intraoral scanner for determining the 3D geometry and color of at least a part of the surface of an object in an oral cavity” ([Claim 1 pre]). We agree with Patent Owner that Breton “is silent on this aspect.” Prelim. Resp. 27 (citing Ex. 1005, Figure 16; Ex. 1004, Abstract). “At most, Breton employs the use [of] square glass integrator rods, integrating spheres, optic fibers, and custom-made lenses.” Id. at 27 (citing Ex. 1003, 3:52–57, 11:35–38, 11:40-41, 11:47-49; referring to Figure 2 (“square glass integrator rods 20, 20”), Figure 4 (“integrating sphere 152”). “None of these light sources result in an ‘illumination pattern,’ much less a ‘time-varying illumination pattern.’” Id. Petitioner does not address these differences between the Breton apparatus and those of Orametrix and Faul. Petitioner does not explain why a person of ordinary skill in the art would have been led to modify Orametrix or Faul in light of Breton given these differences. Instead, to support its contention that a person of ordinary skill in the art “would understand that the processors described by Orametrix and Faul would be configured to implement the color changing scheme as taught by Breton,” Petitioner relies on Dr. Liang’s testimony. Pet. 28 (citing Ex. 1013 ¶ 100). But the testimony simply repeats what the Petition says without any discussion addressing the differences between the Breton apparatus and those of Orametrix and Faul. See Ex. 1013 ¶ 100. For the foregoing reasons, Petitioner provides insufficient reasoning with rational underpinnings in support of its contention that a person of ordinary skill in the art would have been motivated to modify Orametrix and Faul in view of Breton and thereby reach an intraoral scanner comprising [Claim 1h].” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “[a]s of June of 2009, the priority date of the ’667 patent,” “would have had a bachelor’s degree in computer engineering, computer science, electrical engineering, physics, or an equivalent field, as well as at least one or two years of design experience, or alternatively, at least five years of comparable industry experience.” Pet. 4–5 (citing Ex. 1013 ¶¶ 57–59). Petitioner also asserts that a person of ordinary skill in the art “would have had experience with and knowledge of, 3D imaging systems and 3D modeling techniques.” Id. Patent Owner does not address Petitioner’s characterization of a person of ordinary skill in the art. See generally Prelim. Resp. Based on the record before us, we adopt Petitioner’s undisputed proposal as reasonable and consistent with the prior art and apply that definition for our analysis in this Decision. C. Claim Construction” slip op. at 9
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,368,667 - Medit Corporation v. 3shape A/SInstitutedPTAB · Mar 28, 2024 · IPR2023-01315 · APJ James J Mayberry · IPR · Institution
The Board instituted review of claims 1, 2, 4, 5, 9, 10, and 12–17 on all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For institution, “[t]he ‘reasonable likelihood’ standard is a somewhat flexible standard that allows the Board room to exercise judgment.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 53 (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In inter partes reviews, we interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundInstituted
“We understand Petitioner to rely on an inherent disclosure of the certainty score in contending that Korten anticipates claim 1. See, e.g., ABS Glob., Inc. v. Cytonome/St, LLC, 84 F.4th 1034, 1042–43 (Fed. Cir. 2023) (“A claim is anticipated if ‘each and every element as set forth in the claim is found, either expressly or inherently, in a single prior art reference.’” (emphasis added). And inherency is a high standard. See, e.g., Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient.”). We determine, on the limited record before us, that Petitioner has made a sufficient showing for institution that a certainty score would naturally flow from Korten’s validity and error determinations. Accordingly, upon review of the information in the Petition and corresponding evidence, including Patent Owner’s counter arguments, we determine Petitioner has sufficiently demonstrated, at this stage of the proceeding, that Korten discloses the subject matter of limitation 1[c].” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“teachings of Korten with either Lehmann I or Lehmann II. Prelim. Resp. 22–26, 29 (referencing arguments for Ground 2), 35–36 (referencing arguments for Ground 2 directed to motivation to combine references). Patent Owner argues that, contrary to Petitioner’s assertion, the technology of Korten does not overlap with Lehmann II. Id. at 23. Specifically, Patent Owner argues that Petitioner and Dr. Foroosh fail to address how a person having ordinary skill in the art could have successfully combined the two-dimensional imaging of Lehmann II with the three-dimensional imaging of Korten. See id.; see, e.g., Pet. 31 (“Lehmann II is directed towards the analysis of [two-dimensional] images, whereas Korten is directed towards rendering and displaying [three-dimensional] models.”). Patent Owner argues that Petitioner should have been aware of this issue given the Board’s prior decision denying institution in IPR2023-00400. Prelim. Resp. 23. Patent Owner then itemizes a list of technical challenges with respect to combining a two-dimensional system with a three-dimensional system. Id. at 24. These challenges include that Petitioner does not explain “how one might associate a Z-coordinate of Korten with the color data obtained by the Lehmann II camera,” how a person having ordinary skill in the art “would have Korten’s processor align the [two-dimensional] color image areas obtained by the Lehmann II camera with the [three-dimensional] entity previously created by Korten, and then provide color values to the entity at aligned X-Y-Z points,” and “how to implement Lehmann II’s [two-dimensional] image into Korten’s [three-dimensional] model.” Id.; see also id. at 24–26 (discussing difficulties in using spectrophotometers to collect color data and associating two-dimensional color data with three-dimensional representations). Petitioner, concentrating on Lehmann II’s best fit technology, contends that “[a]lthough Lehmann II is directed towards the analysis of [two-dimensional] images, whereas Korten is directed towards rendering and displaying [three-dimensional] models, this difference is immaterial as it relates to determining the certainty score of the selected tooth shade value.” Pet. 31 (referencing Ex. 1015 ¶ 141); cf. Ex. 1015 ¶ 141 (providing the same testimony as is in the Petition). We have reviewed Patent Owner’s argument and determine, on the limited record before us, that Patent Owner identifies a weakness in Petitioner’s position. Petitioner’s contentions concerning motivation to combine Korten and Lehmann II seem to focus on a motivation for using Lehmann’s teachings of the subject matter of limitation 1[c], and does not address Petitioner’s reliance on Lehmann II for the subject matter of limitation 1[b], which recites the step of “determining a tooth shade value for at least one point on the tooth based on the texture data of the corresponding point of the digital 3D representation and on known texture values of one or more reference tooth shade values.” See Pet. 30 (mapping the requirements of limitation 1[b] to disclosures in Lehmann II); Ex. 1001, 21:33–37 (providing limitation 1[b]). Limitation 1[b] seems to require implementing teachings concerning two-dimensional color data from Lehmann II with three-dimensional color data collected at the step of limitation 1[a] by Korten’s system. As such, Petitioner’s reasoning may not be adequately supported by a rational underpinning. Cf. KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). The parties may develop the record concerning this dispute at trial.” slip op. at 30
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,695,151
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.