- Gce Gas Control Equipment Inc. v. Vbox, Inc.Some claims unpatentablePTAB · Jun 18, 2024 · IPR2023-00326 · APJ Jane E Inglese · IPR · Final written decision
Claims 12–14 and 16 are unpatentable under § 103 over Deane alone and Deane, Dubois, and Berntson; claims 1–11 and 15 were not shown unpatentable.
In the decision…Patent 11,389,614 B2 Petitioner’s reliance on axial movement of Deane’s housing 602/adsorbent bed columns 508a, 508b (separation cartridge) as teaching the removal direction limitation, therefore, is contrary to the requirement of the removal direction limitation that the separation cartridge…
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“III. ANALYSIS A. Level of Ordinary Skill in the Art The level of ordinary skill in the art at the time of the invention is a factual determination that provides a primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Based on Petitioner’s contention, which Patent Owner does not dispute, we find that a person of ordinary skill in the art would have had a bachelor’s degree in mechanical engineering, chemical engineering, or a related field, and two years of experience in the research, design, or development of POCs and related hardware, software, and firmware. Compare Pet. 21, with Resp. 11. Our finding is supported by Dr. Knaebel’s testimony. Ex. 1003 ¶¶ 226–228. The level of ordinary skill in the art, as defined above, appears consistent with the disclosures of the asserted prior art and the written description of the invention provided in the ’614 patent.” slip op. at 8
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Deane thus teaches that adsorbent housing 602 and adsorbent bed columns 508a, 508b—the asserted separation cartridge—are part of an apparatus that rests on a support surface such as a table or floor. Based on Deane’s disclosure, we find persuasive Patent Owner’s contention, and Patent Owner’s witness’s opinion, that Deane’s housing 602/adsorbent bed columns 508a, 508b (separation cartridge) cannot be removed from the receptacle by movement of the separation cartridge vertically downward. Resp. 37–38; Ex. 2001 ¶¶ 118–131. Neither Petitioner nor Petitioner’s witness, Dr. Knaebel, points to any evidence of record showing that one of ordinary skill in the art would have understood that Deane’s housing 602/adsorbent bed columns 508a, 508b (separation cartridge) could be removed from manifold 512 (receptacle) by moving housing 602/adsorbent bed columns 508a, 508b (separation cartridge) downward when the apparatus is resting on a table or floor, as taught by Deane. Pet. 42–43; Ex. 1078 ¶¶ 121–161. Petitioner fails to show that Deane’s housing 602/adsorbent bed columns 508a, 508b (separation cartridge) could be removed from the receptacle by movement of the separation cartridge in the downward (second) direction, as required by the removal direction limitation of claim 1. Petitioner, therefore, does not establish unpatentability under its axial movement theory.” slip op. at 26
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Giving effect to “by movement relative to the receptacle,” when interpreting this phrase in combination with “a separation cartridge selectively removable from a receptacle,” requires that the separation cartridge is removable from the receptacle by movement of the separation cartridge itself. Interpreting the removal direction limitation to encompass a stationary separation cartridge, as Petitioner proposes, would render “by movement relative to the receptacle” superfluous. Specifically, Petitioner’s interpretation of “relative movement” does not accord weight to the recitation “movement relative to the receptacle,” which requires something other than the receptacle—the separation cartridge—to move in order for movement to occur with reference to or in comparison with the receptacle. Petitioner’s interpretation of “relative movement” as permitting removal of the separation cartridge from the receptacle when the separation cartridge remains stationary, is inconsistent with the plain language of removal direction limitation as a whole. The plain language of the removal direction limitation indicates that the separation cartridge must be removable from the receptacle by movement of the separation cartridge in a specified (first) direction. Claim 1 defines the first direction as a direction opposite the (second) direction in which the inlet and outlet are oriented. The plain language of the removal direction limitation, therefore, requires that the separation cartridge is removable from a receptacle by movement of the separation cartridge in comparison to the receptacle in a direction opposite the direction in which the separation cartridge’s inlet and outlet are oriented.” slip op. at 15
- Strike new argumentNew argument disregardedDecided for patent owner
“(a) Untimely new theory of unpatentability We agree with Patent Owner (Sur-Reply 4) that Petitioner’s relative movement theory is an impermissible new theory of unpatentability improperly presented for the first time in the Reply. Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1008–09 (Fed. Cir. 2023) (A petitioner may not raise in a reply “‘an entirely new theory of prima facie obviousness absent from the petition,’ even if the new theory is responsive to the patent owner’s response or the Board’s institution decision.”) (quoting Wasica Finance GmbH v. Continental Automotive Systems, Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017); see also Henny Penny Corp. v. Frymaster LLC, 938 F. 3d 1324, 1330–31 (Fed. Cir. 2019) (“We conclude that the Board did not abuse its discretion in . . . disregarding its [petitioner’s] new theory first raised in reply.”). Petitioner does not present the relative movement theory in the Petition, and instead presents it for the first time in the Reply. Pet. 42–43. Far from fairly meeting any argument introduced by Patent Owner in the Response, this new theory unfairly changes the thrust of the challenge.” slip op. at 27
Patent outcomesUS 11,389,614 mixedClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,389,614 - PTAB · Aug 30, 2023 · IPR2023-00521 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR on claims 19–61 and 63–81 on all petitioned grounds, finding a reasonable likelihood that Doud anticipates claims 19–61 and 63–75.
In the decision…asserts, however, that one of ordinary skill in the art would have restricted the size of the microparticles to no more than 50 µm in view of Xu’s teaching that additive particles within this size range “provide for strengthening of the metal composite.” Id. at 67 (citing Ex. 1007 ¶ 38). Patent…
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one claim of the ’740 patent. Accordingly, we grant institution of an inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“the application describe the claim limitations exactly,” the application must demonstrate to persons of ordinary skill in the art that the applicants invented a composition including those limitations. Wertheim, 541 F.2d at 262. On its face, the range of “at least 0.01 wt. %” encompasses a range that is broader than 0.01–35 wt. %, and Patent Owner does not sufficiently explain why a person of ordinary skill in the art would understand from merely a disclosure of 35 wt.% that the inventors were in possession of the entire claimed range for copper, cobalt, or nickel in the magnesium composition.” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedOther
“On this record, the term “at least 0.01 wt. %” in the ’740 patent encompasses values for nickel, copper, and cobalt that are higher than the 35 wt. % (nickel and copper) and 20 wt. % (cobalt) limits outlined in the parent and grandparent applications. Accordingly, we determine that there is a reasonable likelihood that claim 19 of the ’740 patent is not entitled to the benefit of the filing dates of its priority applications. Challenged claims 20–61 and 63–75 depend from claim 19 and there is no argument presented that these claims have independent written description support in Doud. For example, there is no evidence presented that any of these dependent claims narrow the ranges for each of copper, nickel, and cobalt recited in in the ’295 application for these claims.7 Accordingly, for purposes of this Decision, we apply Doud as prior art to challenged claims 19–61 and 63–75.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“as the ’740 patent. For example, Doud and the ’740 patent both disclose a method of forming a novel magnesium composite that includes melting an AZ91D magnesium alloy containing 90 wt. % magnesium, 9 wt. % aluminum, and 1 wt. % zinc. Ex. 1005 ¶¶ 45, 47; Ex. 1001, 21:43–51, 22:48–53, 33:32–43, 34:9–12. To this alloy is added either 7 wt. % nickel or 10 wt. % copper. Ex. 1005 ¶¶ 45, 47, 53, 57; Ex. 1001, 21:48–51, 22:53–56, 33:35–36, 34:12–13. These additives are mixed in the magnesium alloy at a temperature that is less than the melting point of copper or nickel, and the casting is then cooled. Ex. 1005 ¶¶ 45, 47, 53, 57; Ex. 1001, 21:51–54, 22:56–58, 33:35, 34:12-13. Doud reports that nickel and copper, when added to molten magnesium, will form Mg2Ni and CuMg2 intermetallic, galvanically-active, in situ precipitates. Ex. 1005 ¶¶ 12–13. Doud discloses that the dissolution rate of the resulting casting material is either 325 mg/cm2-hr (nickel) or 50 mg/cm2-hr (copper) in a 3% KCl solution at 90° C. Ex. 1005 ¶¶ 45, 47, 53, 57; Ex. 1001, 21:60–62, 22:61–63, 33:41–43, 34:15–17. Doud also discloses that the average particle diameter of the additives used in the invention is generally “at least about 0.1 microns” and “typically no more than about 500 microns.” Ex. 1005 ¶ 6. Petitioner explains how the identified disclosures of Doud anticipate independent claim 19. Pet. 39–40. Petitioner also identifies where the limitations of dependent claims 20–61 and 63–75 are disclosed in Doud. Id. at 41–45. Patent Owner does not address Petitioner’s anticipation arguments with respect to claims 19–61 and 63–75, apart from arguing that Doud is not prior art to these claims. Prelim. Resp. 27–39. demonstrates a reasonable likelihood that claims 19–61 and 63–75 are anticipated by Doud.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 10,689,740
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.