- PTAB · Dec 21, 2022 · IPR2022-01088 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–4, 6–15, and 17–21 on all petitioned grounds after finding a reasonable likelihood that Brochure and Blunt rendered the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any [preliminary] response . . . 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). For the reasons below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in physics or engineering and experience with the installation of cable,” and that “[a]dditional education could substitute for professional experience and vice versa.” Pet. 4 (citing Ex. 1002 ¶ 15). At this stage of the proceeding and on the current record, we find that Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the ’771 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt it in our consideration of the issues presently before us.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. 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)). Petitioner contends that “no terms need construction and the plain and ordinary meaning of each term can be applied.” Pet. 4 (citing Phillips, 415 F.3d at 1312–13). On the present record at this stage of the proceeding, we need not construe any claim terms expressly because the meaning of the terms is not in dispute. See Realtime Data, 912 F.3d at 1375.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends that one of ordinary skill in the art would have been motivated to “modify Brochure’s cable reel with Blunt’s reel structure or substitute Brochure’s reel with Blunt’s reel 34" to . . . replenish the supply of cable in Brochure’s reel when it is exhausted in an environmentally friendly way.” Pet. 27 (citing Ex. 1002 ¶¶ 51–56; Ex. 1004 ¶ 107). Additionally, Petitioner asserts that one of ordinary skill in the art “would have expected success in modifying Brochure’s cable reel with the reel structure of Blunt’s reel 34" or substituting Brochure’s reel with Blunt’s reel 34" because the modification would merely involve using a known technique to improve similar devices in the same way taught.” Id. at 28 (citing Ex. 1002 ¶ 53). We have reviewed Petitioner’s detailed arguments challenging claims 1–4, 6–15, and 17–21 and the evidence on which Petitioner relies (see Pet. 16–83), and we find, on the preliminary record before us, that Petitioner has shown sufficiently that the combination of Brochure and Blunt satisfies the elements of claims 1–4, 6–15, and 17–21, and that one of ordinary skill in the art would have been motivated to combine the teachings as proposed by Petitioner with a reasonable expectation of success.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,906,771 - PTAB · Dec 19, 2022 · IPR2022-01087 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–8 and 10–19 on all grounds, finding a reasonable likelihood that claims 1–8 and 10–19 would be obvious over Brochure and Blunt.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . 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). For the reasons below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. 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 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“G. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Eldering’s testimony, proposes that a person of ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in physics or engineering and experience with the installation of cable,” and that “[a]dditional education could substitute for professional experience and vice versa.” Pet. 4 (citing Ex. 1002 ¶ 15). At this stage of the proceeding and on the current record, we find that Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the ’016 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt it in our consideration of the issues presently before us.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends that one of ordinary skill in the art would have been motivated to “modify Brochure’s cable reel with Blunt’s reel structure or substitute Brochure’s cable reel with Blunt’s reel 34" to . . . replenish the supply of cable in the cable reel installed in the Tote bag when it is exhausted in an environmentally friendly way.” Pet. 26 (citing Ex. 1002 ¶¶ 58–63; Ex. 1004 ¶ 107). Additionally, Petitioner asserts that one of ordinary skill in the art “would have expected success in modifying Brochure’s cable reel with the reel structure of Blunt’s reel 34" or substituting Brochure’s cable reel with Blunt’s reel 34" because the modification would merely involve using a known technique to improve similar devices in the same way taught.” Id. at 27 (citing Ex. 1002 ¶ 60). We have reviewed Petitioner’s detailed arguments challenging claims 1–8 and 10–19 and the evidence on which Petitioner relies (see Pet. 17–92), and we find, on the preliminary record before us, that Petitioner has shown sufficiently that the combination of Brochure and Blunt satisfies the elements of claims 1–8 and 10–19, and that one of ordinary skill in the art would have been motivated to combine the teachings as proposed by Petitioner with a reasonable expectation of success.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,941,016 - Hanwha Solutions Corporation / Hanwha Q Cells USA, Inc. v. Rec Solar Pte. Ltd.No claims unpatentablePTAB · Dec 9, 2022 · IPR2021-00989 · APJ Brian D Range · IPR · Final written decision
Claims 1–6, 11, and 13 were not shown unpatentable under either obviousness ground because Petitioner did not establish a motivation to combine Yagiura and Shimasaki.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Petitioner’s position is persuasive. We agree that documents from the Japanese Patent Office are self-authenticating official government documents. The technical issues regarding missing pages in the originally filed version of the document do not cause us to question authenticity. We also agree that Petitioner uses the documents to establish what the documents teach rather than establishing the truth of what the documents teach. In Reply, Patent Owner argues that Petitioner relies on the date printed on the document to prove up the truth of when the document was published. Mot. Excl. Reply 1–2. To the extent this is the case, an exception to hearsay applies because the document is a record of a public office. Fed. R. Evid. 803(8)(B) (a record of public office is an exception to the hearsay rule if the opponent does not show that the source of information or other circumstances “indicate a lack of trustworthiness”). Here, Patent Owner does not persuasively demonstrate a lack of trustworthiness; Patent Owner does not identify any substantively meaningful distinction in the missing pages of the originally filed document and does not identify any evidence to suggest that the missing pages were anything more than a harmless clerical error. For the reasons above, Patent Owner’s motion to exclude is denied with respect to these documents. B.” slip op. at 8
- Skill levelSkill level board ownOther
“Petitioner’s proposal is too broad. PO Resp. 8. For example, a person who merely installs solar panels for three years (satisfying “professional experience in solar energy”) while having some familiarity with module manufacturing would not be of ordinary skill in the design aspects of the ’060 patent as, for example, reflected by the claims at issue and the ’060 patent’s text and figures. See, e.g., Ex. 1101, Figs. 2a, 2b, 3a, 3b, 4a, 4b, 3:22–7:44. On the other hand, we also determine that Patent Owner’s proposal is too narrow. A person could, for example, have ordinary skill in the art of the ’060 patent by virtue of non-professional experience (for example, academic experience). When assessing relevant experience, research work done for a university (beyond mere classroom study) would have been just as valuable as research work done for a corporation. Also, ordinary skill in the art could be demonstrated by work that requires understanding of the ’060 patent’s field even if not “designing, developing, and/or researching” in the field itself We, thus, determine that a person of ordinary skill in the art of the ’060 patent would have been someone with a bachelor’s degree in electrical engineering, applied physics, or the like, and at least two years of (a) experience designing, developing, and/or researching in the field or (b) experience in solar energy that required an understanding of the ’060 patent’s field. Alternatively, that person would have had an advanced degree in electrical engineering, applied physics, or the like and at least one year of” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“qualifies as evidence in this matter. The Federal Circuit has held that expert testimony about the perspective of person of ordinary skill in the art (as Dr. Kimball provides here) must come from a person having at least ordinary skill in the art. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022) (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)) (holding that ITC Administrative Law Judge abused discretion by admitting expert testimony of witness who lacked the experience of a person having ordinary skill in the art); see Mot. Excl. 6–7 (arguing this point). Patent Owner, however, cites no authority that expert testimony on such matters come from a person having ordinary skill in the art at the time of the invention. Cf. Scentair Tech., LLC v. Prolitiec Inc., IPR2021-00012, Paper 22 at 61 (PTAB Apr. 22, 2022) (similarly noting a party’s lack of authority on this point). Beyond needing to come from a person of ordinary skill in the art, expert testimony is admissible if the expert has the “scientific, technical, or other specialized knowledge [that] will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702. Furthermore, “[t]here is … no requirement of a perfect match between the expert’s experience and the relevant field.” USPTO, Patent Trial and Appeal Board Consolidated Trial Practice Guide, 34 (Nov. 2019). Here, Petitioner adequately establishes that Dr. Kimball qualifies as a” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Petition argues that all claim terms should be given their plain and ordinary meaning. Pet. 18. Patent Owner does not dispute this. PO Resp. 13. We determine that no claim term requires express construction for purposes of this Final Written Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms that are in controversy, and only to the” slip op. at 15
Patent outcomesUS 10,749,060 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,749,060 - Hanwha Solutions Corporation / Hanwha Q Cells USA, Inc. v. Rec Solar Pte. Ltd.All claims unpatentablePTAB · Dec 9, 2022 · IPR2021-00988 · APJ Brian D Range · IPR · Final written decision
Claims 1–6, 11, and 13 are unpatentable as obvious over Huang and Wu; claims 1, 2, and 4 are also anticipated by Zhang.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Petitioner’s position is persuasive. We agree that documents from the Japanese Patent Office are self-authenticating official government documents. The technical issues regarding missing pages in the originally filed version of the document do not cause us to question authenticity. We also agree that Petitioner uses the documents to establish what the documents teach rather than establishing the truth of what the documents teach. In Reply, Patent Owner argues that Petitioner relies on the date printed on the document to prove up the truth of when the document was published. Mot. Excl. Reply 1–2. To the extent this is the case, an exception to hearsay applies because the document is a record of a public office. Fed. R. Evid. 803(8)(B) (a record of public office is an exception to the hearsay rule if the opponent does not show that the source of information or other circumstances “indicate a lack of trustworthiness”). Here, Patent Owner does not persuasively demonstrate a lack of trustworthiness; Patent Owner does not identify any substantively meaningful distinction in the missing pages of the originally filed document and does not identify any evidence to suggest that the missing pages were anything more than a harmless technical error. For the reasons above, Patent Owner’s motion to exclude is denied with respect to these documents. B.” slip op. at 8
- Skill levelSkill level board ownOther
“Petitioner’s proposal is too broad. PO Resp. 8. For example, a person who merely installs solar panels for three years (satisfying “professional experience in solar energy”) while having some familiarity with module manufacturing would not be of ordinary skill in the design aspects of the ’060 patent as, for example, reflected by the claims at issue and the ’060 patent’s text and figures. See, e.g., Ex. 1001, Figs. 2a, 2b, 3a, 3b, 4a, 4b, 3:22–7:44. On the other hand, we also determine that Patent Owner’s proposal is too narrow. A person could, for example, have ordinary skill in the art of the ’060 patent by virtue of non-professional experience (for example, academic experience). When assessing relevant experience, research work done for a university (beyond mere classroom study) would have been just as valuable as research work done for a corporation. Also, ordinary skill in the art could be demonstrated by work that requires understanding of the ’060 patent’s field even if not “designing, developing, and/or researching” in the field itself. We, thus, determine that a person of ordinary skill in the art of the ’060 patent would have been someone with a bachelor’s degree in electrical engineering, applied physics, or the like, and at least two years of (a) experience designing, developing, and/or researching in the field or (b) experience in solar energy that required an understanding of the ’060 patent’s field. Alternatively, that person would have had an advanced degree in electrical engineering, applied physics, or the like and at least one year of (a) experience designing, developing, and/or researching in the field or 7 Our analysis is constrained to the extent neither party addresses the Best Medical factors with particularity. For example, the briefing does not address the educational level of the inventor. patent’s field.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We next assess whether or not Dr. Kimball’s testimony properly qualifies as evidence in this matter. The Federal Circuit has held that expert testimony about the perspective of a person of ordinary skill in the art (as Dr. Kimball provides here) must come from a person having at least ordinary skill in the art. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022) (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)) (holding that ITC Administrative Law Judge abused discretion by admitting expert testimony of witness who lacked the experience of a person having ordinary skill in the art); see Mot. Excl. 6–7 (arguing this point). Patent Owner, however, cites no authority that expert testimony on such matters come from a person having ordinary skill in the art at the time of the invention. Cf. Scentair Tech., LLC v. Prolitiec Inc., IPR2021-00012, Paper 22 at 61 (PTAB Apr. 22, 2022) (similarly noting a party’s lack of authority on this point). Beyond needing to come from a person of ordinary skill in the art, expert testimony is admissible if the expert has the “scientific, technical, or other specialized knowledge [that] will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702. Furthermore, “[t]here is … no requirement of a perfect match between the expert’s experience and the relevant field.” USPTO, Patent Trial and Appeal Board Consolidated Trial Practice Guide, 34 (Nov. 2019). Here, Petitioner adequately establishes that Dr. Kimball qualifies as a” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner argues, however, that where claim 4 recites “the first and second solar cell series are coupled with the bypass diode of the first solar cell unit via a first cross-connector, and the third and fourth solar series are coupled with the bypass diode of the second solar cell unit via a second cross-connector,” the word “a” means “one.” PO Resp. 13–14. In particular, Patent Owner argues that a person of ordinary skill in the art via one or more cross-connectors” and that “a” meaning “one” in claim 4 is necessary for claim 4 to further limit claim 1. Id. Petitioner argues that “a” means “one or more.” Pet. Reply 2–4. We agree with Petitioner. The ’040 patent explicitly defines “a” consistently with Petitioner’s position by stating that “it should be noted that the term ‘comprising’ does not exclude other elements or steps and the ‘a’ or ‘an’ does not exclude a plurality.” Ex. 1001, 7:62–63. The ’040 patent’s explicit definition is consistent with typical usage of “a” in this patent law context. See, e.g., KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) (explaining that “a” in patent parlance means “one or more” for open-ended claims reciting the transitional phrase “comprising”). Patent Owner’s argument regarding claim construction is unpersuasive because Claim 4 further limits claim 1 by explicitly requiring first and second crossconnectors; claim 1 does not recite a “cross-connector.” Ex. 1001, 8:2–22. Thus, we construe “a” in this context as meaning “one or more.”” slip op. at 15
Patent outcomesUS 10,749,060 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,749,060 - PTAB · Dec 7, 2022 · IPR2022-00946 · APJ Frances L Ippolito · IPR · Institution
The Board instituted IPR of claims 1–12 and 14–22 on all petition grounds, finding a reasonable likelihood that PPC would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented in the Petition, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–12 and 14–22 of the ’342 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“In addition, Petitioner contends that a POSITA would understand that Brochure in combination with Blunt teaches the “first flange configured to engage the first frame” and the “second flange configured to engage the second frame.” Pet. 42–44 (citing Ex. 1002 ¶¶ 65–75; Ex. 1004 ¶¶ 96–97, Figs. 3, 11; Ex. 1006; Ex. 1001, 10:50–53). Specifically, Petitioner argues that a POSITA would understand that when the separable cable reel disclosed in Blunt is inserted into the bag in Brochure, “the ‘first flange’ is ‘configured to engage’ the ‘first frame’ in the base of the bag and the outer engaged with the ‘first frame.’” Id. at 40. Petitioner reasons that a POSITA would understand that the cable reels of Brochure and Blunt are similarly configured when the cable reel in Blunt is assembled. Pet. 40 (citing Ex. 1002 ¶ 68). According to Petitioner, a POSITA would know that when the Blunt cable reel is inserted into the Brochure bag, the outer side of the flange first inserted into the bag (i.e., the “first flange”) is configured to engage with the first frame at the base of the bag in Brochure. Id. Petitioner explains the same is true for the outer side of the second flange, which is the flange facing out of the bag cover. Id. At this stage, we note that the preliminary evidence supports Petitioner’s contentions that Blunt teaches reel 34", flange 42", core 36", and separate flange 40". Ex. 1004 ¶ 96, Fig. 11. Further, Dr. Eldering’s unrebutted testimony supports Petitioner’s position that a POSITA would have been motivated to implement a two-component reel structure, such as Blunt’s cable reel 34", within Brochure’s cable reel apparatus. See Ex. 1002 ¶ 57. Dr. Eldering also testifies a POSITA would understand the environmentally friendly advantages of replenishing the supply of cable in the cable reel installed in the Tote bag. Id. ¶ 53 (citing Ex. 1004 ¶ 107). Upon review of the preliminary record and based on the evidence and” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes “the plain meaning of each claim term can be applied.” Pet. 5. For purposes of this Decision, we do not expressly construe any terms. 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 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,988,342 - PTAB · Dec 7, 2022 · IPR2022-00947 · APJ George R Hoskins · IPR · Institution
Instituted IPR of claims 1–8 on all petitioned grounds; the Board found a reasonable likelihood of prevailing on at least claim 1 over Brochure and Blunt.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For reasons provided below, we determine, on behalf of the Director (see 37 C.F.R. § 42.4(a)), that the Petition demonstrates a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. See 35 U.S.C. § 314(a). We therefore institute the petitioned inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“to the ’471 patent “would have at least a bachelor’s degree in physics or engineering and experience with the installation of cable,” and “[a]dditional education could substitute for professional experience and vice versa.” Pet. 4; Ex. 1002 ¶ 15. At this stage of the proceeding, we find Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the ’471 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt it in our consideration of the issues presently before us.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“terms need construction and the plain meaning can be applied.” Pet. 5. Petitioner asserts claim 4’s “means for releasably coupling” limitation (Ex. 1001, 12:21–27, pg. 20 (Cert. of Correction)) is a means-plus-function limitation under 35 U.S.C. § 112(f), and Petitioner provides a corresponding construction. See Pet. 5–6. For reasons provided below, we determine Petitioner’s challenge to claim 1 provides a sufficient basis to justify institution of review regardless of claim 4, so we do not reach this claim construction issue at the present time. See 35 U.S.C. § 314(a) (authorizing institution of inter partes review if there is a reasonable likelihood Petitioner would prevail with respect to at least one of the challenged claims). Based on our review of the record at this preliminary stage, we determine no explicit construction of any claim term is needed to decide whether to institute review. 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“have been motivated to implement a two-component reel structure, such as Blunt’s cable reel 34ʹʹ, within Brochure’s cable reel apparatus. See Pet. 28–34, 36–38, 49–52. This would have been done, according to Petitioner, in order to permit the user to “replenish the supply of cable in Brochure’s cable reel when it is exhausted in an environmentally friendly way.” Id. at 28 (emphasis added); Ex. 1002 ¶ 57. Petitioner points out that Brochure describes its system as being “Environmentally-Friendly,” and alleges that Blunt similarly describes how its two-component reel 34ʹʹ can “be replenished with a new supply of cable when the cable supply in the reel is exhausted such that the reel would be reused in ‘an environmentally friendly manner.’” Pet. 28–29 (quoting Ex. 1006; Ex. 1004 ¶ 107) (citing Ex. 1004 ¶¶ 19, 73, 89); Ex. 1002 ¶ 58. Specifically, according to Petitioner, using Blunt’s replenishable two-component reel in Brochure “would be environmentally friendly because it would save cost and reduce waste since the entire cable reel does not have to be disposed.” Pet. 29 (citing Ex. 1004 ¶ 19; Ex. 1005, 1:21–25, 4:33–57, Fig. 6); Ex. 1002 ¶ 58. Petitioner also asserts this modification could have been achieved with a reasonable expectation of success, given various similarities between Brochure’s and Blunt’s rotatable mounting of a cable reel, and related teachings in those and other prior art references. See Pet. 29–32; Ex. 1002 ¶¶ 59–61. Petitioner further provides illustrations of how a person of ordinary skill in the art might have implemented this combination. See Pet. 32–34; Ex. 1002 ¶ 62. Upon review of the foregoing, we determine Petitioner’s contentions regarding the motivations that would have led a person of ordinary skill in the art to use, with a reasonable expectation of success, Blunt’s two-component cable reel structure within Brochure’s cable dispensing apparatus, are sufficiently articulated and supported by the evidence of record to justify institution of review.” slip op. at 21
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,001,471 - Globalfoundries Inc. / Globalfoundries U.S. Inc. et al. v. Katana Silicon Technologies LLCInstitution deniedPTAB · Dec 6, 2022 · IPR2022-01083 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claims on any ground asserted in the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“it is used consistently throughout. First, in describing related prior art, the ’903 patent states that “[t]he through plug is constituted of an insulating material covering a sidewall of a through hole and a low electrical resistance metal material . . . in a columnar shape that is positioned so as to be surrounded by the insulating material and that serves as a conductive member.” Ex. 1001, 1:35–40. In describing its own drawings, reference numeral 15 consistently is used to refer to the “through plug.” Id. at 2:37– 52. Figures 1A and 1B “are views schematically showing the structure of a semiconductor device (semiconductor chip) according to an embodiment of the present invention.” Id. at 5:46–48, Figs. 1A, 1B. In these figures, reference numeral 15 refers to “[a] through plug.” Id. at 6:16. This through plug “is constituted of a columnar electric conductor 15a . . . and an insulation layer 15b . . . surrounding the electric conductor 15a.” Id. at 6:21–25. Similarly, reference numeral 15 refers to the “through plug” in Figures 1C, 2A, 2B, 3, 4, 5, 6, 7A, and 7B. Id. at 6:35–40, 7:10–38, 8:10– 17, 8:32–38, 8:65–9:43. Where it is referred to in these same parts of the ’903 patent, the conductive core is discussed as merely a portion of the through plug and is referred to by the reference numeral 15a. Id. Thus, the ’903 patent consistently defines the through plug as having two portions: both a conductive core and a surrounding insulation layer. This is true whether the patent is referring to either of its disclosed embodiments or the prior art. Based on this unambiguous usage, we determine that the ’903 patent defines the term “through plug” as including both a conductive core and a surrounding insulating layer. See Phillips, 415 F.3d at 1320–21 (“the specification ‘acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication’” (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996))).” slip op. at 5
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“We are not persuaded that the Petition adequately identifies how Christensen teaches or suggests a through plug as that term is used in the ’903 patent. As noted above, the ’903 patent requires a through plug to have both a conductive core and a surrounding insulating layer. It is clear on the current record that Christensen’s “conductive stud” could correspond to the conductive portion of such a through plug. Ex. 1033, 4:66–5:1 (“the stud 34 may comprise any number of conductive materials”). But Petitioner does not show sufficiently that Christensen teaches or suggests the surrounding insulating layer necessary to turn the conductive core into a through plug. First, Petitioner does not allege that Christensen teaches or suggests such a layer. Pet. 33–34. Second, Christensen discloses the use of “conductive materials” and “material[s] which promote[] adhesion to the surrounding oxide such as titanium or titanium nitride.” Ex. 1033, 4:66–5:1, 5:15–20. None of these materials are identified by Christensen as insulators. Id. Accordingly, we are not persuaded on the current record that Petitioner has shown sufficiently that Christensen alone teaches or suggests the through plug of the challenged claims. b. Christensen and Lin Petitioner also argues that the combination of Christensen and Lin teaches or suggests the through plug of the challenged claims. Pet. 34–36. Specifically, Petitioner argues that “[t]o the extent [it is determined] that Christensen alone is not sufficient because the conductive stud 34 does not extend all the way through wafer 12, Christensen in view of Lin renders obvious a ‘through plug.’” Id. at 34. According to this argument, “Lin teaches a backside process for forming ‘a conductive plug through a silicon’ wafer and an insulation layer,” and it would have been obvious to form such a plug “from the backside of the wafer 12 below [Christensen’s] conductive stud 34,” such that the combination of the two structures would form a conductive path all the way through the structure of Christensen’s Figures 8B and 9. Id. at 34–35 (emphasis omitted). As with the argument based on Christensen alone, however, this argument does not show sufficiently that the combination of Christensen and Lin teaches or suggests a through plug that has both a conductive core and a surrounding insulating layer. Lin describes its structure as a “conductive plug” and does not describe any insulation surrounding that structure. Ex. 1054, 1:60–64, 3:2– 34, 4:23–32, Fig. 7. “The conductive plugs” of Lin “typically compris[e] metal,” which Lin does not describe as an insulator. Id. at 3:21–25. Nor does Petitioner allege the presence of a conductive core surrounded by insulation either in Lin itself or in the combination of Lin and Christensen. Pet. 34–36. Accordingly, we are not persuaded on the current record that Petitioner has shown sufficiently that the combination of Christensen and Lin teaches or suggests the through plug of the challenged claims.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“An invention is not obvious just ‘because all of the elements that comprise the invention were known in the prior art.’” Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1335 (Fed. Cir. 2013) (quoting Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1351 (Fed. Cir. 2010)). Instead, “a finding of obviousness at the time of invention requires a ‘plausible rational[e] as to why the prior art references would have worked together.’” Id. (quoting Power-One, 599 F.3d at 1352). This rationale requires “some articulated reasoning with some rational underpinning” to combine the known elements in the manner required in the claim at issue. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[I]t can be important to” include within this reasoning “a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. Here, Petitioner offers two reasons to combine the teachings of Shim and Shirakawa. First, Petitioner argues that “Shim’s diffusion teachings would facilitate the formation of” Shirakawa’s collector layer. Pet. 65–66. On the present record, we do not find this reason sufficiently persuasive. Even though Shim does teach a way to make the n-GaAs that Shirakawa uses, Shirakawa teaches a different way to make the same material, and other prior-art references agree with Shirakawa. Ex. 1022, 1:34–40 (“silicon ions of a silicon layer formed on a GaAs substrate are diffused by means of ion-implantation method using little energy and annealing treatment”); Ex. 1005, 9:36–42 (first embodiment “collector layer” is “laminated on top of a semi-insulating GaAs substrate . . . by epitaxial growth process”), 12:47–48 (fourth embodiment made in same way as first embodiment); Ex. 1016, 8:7–19 (“a highly doped n type GaAs subcollector layer . . . [and other layers] are made to grow above a semiinsulating GaAs substrate . . . by a metal organic vapor phase epitaxial growth method”); Ex. 1025, 4:40–45 (teaching “[f]orming two flat epitaxial layers of gallium arsenide to obtain [a] collector,” including “a layer . . . of the n+ conductivity type and a layer . . . of the n -conductivity type” by “epitaxial growth . . . from the vapour phase or from the liquid phase”). The mere fact that Shim offers an alternative process does not, in the absence of a reason to adopt that alternative process, provide a reason for a person of ordinary skill in the art to make Shirakawa’s n-GaAs via Shim’s method rather than via Shirakawa’s own method. In addition, Patent Owner’s declarant, Dr. Peter Elenius, testifies that the ion implantation involved in Shim’s diffusion process would damage Shirakawa’s gallium arsenide in a way that would dissuade a person of ordinary skill in the art from using that process to produce the HBT of Shirakawa. Ex. 2001 ¶¶ 52–57. The other reason that Petitioner provides to combine the teachings of Shim and Shirakawa is that Shim’s diffusion “method us[es] little energy and annealing treatment.” Pet. 66 (quoting Ex. 1022, 1:34–40). Shim’s method is described as “diffus[ion] by means of ion-implantation method using little energy and annealing treatment,” which Shim distinguishes from earlier methods “widely used in the art,” which involved “ion-implantation . . . using high energy.” Ex. 1022, 1:12–40. Shim teaches that its lower-energy ion implantation does not suffer from the “problem” of the earlier method, “damaging of ohmic contacts of metal electrodes” due to the injection of “lots of impurity ions.” Id. at 1:17–22; see id. at 3:37–40 (“the manufacturing method of the present invention can prevent damage to be generated in ohmic contacts of source/drain electrodes due to ion-injecting of high density”). Thus, the lower energy of Shim’s process is a benefit of that process over earlier ion implantation processes, which use higher energy. Shim does not teach that its use of lower-energy ion implantation is an improvement over other processes, such as the epitaxial growth taught by Shirakawa and the other references cited by Petitioner. Thus, Petitioner does not explain sufficiently why lower energy would be a benefit of the Shim- Shirakawa combination over Shirakawa alone. Accordingly, we are not persuaded on the current record that Petitioner has shown sufficiently that a person of ordinary skill in the art would have had a reason to combine the teachings of Shirakawa and Shim to arrive at a combination that teaches or suggests the “diffusion layer patterns” of the challenged claims. slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,402,903 - Resmed, Inc. v. New York UniversityInstitutedPTAB · Dec 5, 2022 · IPR2022-00989 · APJ James A Tartal · IPR · Institution
The Board instituted IPR on all challenged claims and all petition grounds, finding a reasonable likelihood of success on obviousness over Sullivan995 and Sullivan460.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“§ 315(b) is unavailing. Rule 42.104(b) requires a petitioner to state in its petition “[h]ow the challenged claim is to be construed” and “specify where each element of the claim is found in the prior art.” 37 C.F.R. §§ 42.104(b)(3), (b)(4). The Petition states “[t]he Board construes the claims ‘using the same claim construction standard that would be used’ in district courts.” Pet. 20. We disagree that Rule 42.104(b) or the CTPG requires Petitioner to make any specific statement if it takes the position that no express construction of claim terms is required. Rather, the CTPG states that “a petitioner may include a statement that the claim terms require no express construction.” CTPG 44.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“We use a two-part framework to analyze a request to exercise discretion to deny institution under § 325(d). First, we determine “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, Paper 6 at 8. Second, if either condition of the first part of the framework is satisfied, then we consider “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of [the] challenged claims.” Id. In applying this framework, we refer to the non-exclusive factors delineated in Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph). These factors are: a) the similarities and material differences between the asserted art and the prior art involved during examination; b) the cumulative nature of asserted art and the prior art evaluated during examination; c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; d) the extent of overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Id. at 17–18.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner contends that a person of ordinary skill in the art “in 2003 would have had at least a bachelor’s degree in mechanical engineering, biomedical engineering, or a similar technical field, with at least two years of relevant product design experience” and “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” Pet. 19 (citing Ex. 1003 ¶ 77). Petitioner further states that the “Petition does not turn on this precise definition, and the challenged claims would be unpatentable from the perspective of any reasonable person of ordinary skill in the art at the relevant time.” Id. (citing Ex. 1003 ¶ 78). Patent Owner, at this stage of the proceeding, does not dispute Petitioner’s definition of the person of ordinary skill in the art. Prelim. Resp. 9. We find, on the current record, that the ’539 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’539 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Accordingly, we adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner propose no express construction for any claim term, at least with regard to the alleged obviousness grounds of unpatentability. See Pet. 20. In regard to the alleged anticipation grounds, Petitioner contends “the patient is in an awake state when there is an absence of obstructions or other breathing patterns indicative of sleep,” and asserts this is an “implied construction of ‘an awake state’ based on [Patent Owner’s] infringement allegations” in district court. Id. at 68, 70. Patent Owner proposes no express construction of any claim term and states “no claim terms are in controversy.” Prelim. Resp. 10. In light of our determinations below, we find that an express construction of any claim term is not necessary for purposes of rendering this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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 20
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,427,539 - Johnson & Johnson Surgical Vision, Inc. v. Alcon Inc.No claims unpatentablePTAB · Dec 5, 2022 · IPR2021-01053 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1 and 2 were not shown unpatentable: Grounds 2 and 4 lacked motivation and a reasonable expectation of success, while Grounds 1 and 3 relied on a rejected construction.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“under which “the ‘curvature of the focal plane’ must ‘track the natural curvature of the lens.’” Pet. 12. Petitioner asserts that this second “construction is the basis for Grounds 2 and 4 in [the] Petition.” Id. Petitioner’s second proposed construction repeats, word-for-word, language that appears in claim 1. Compare id. (“‘curvature of the focal plane’ must ‘track the natural curvature of the lens’”), with Ex. 1001, 12:17–18 (“curvature of the focal plane” will “track the natural curvature of the lens”). That suggests to us that Petitioner, in advancing this alternative construction, agrees with Patent Owner that those words can, and should, “be given their plain and ordinary meaning.” Resp. 19. We agree with the parties’ suggestions that those words, as they appear in the full claim limitation at hand, are clear and unambiguous. The challenged claims require multiple “layers of photodisrupted bubbles,” which “form a regular array of cells in the target region” defining “cell boundaries,” and wherein those “layers are created by scanning the pulsed laser with the optics module according to a curvature of the focal plane of the optics module to track the natural curvature of the lens.” Ex. 1001, 12:13–18 (Board’s emphasis). Where the same word, “curvature,” appears in two phrases within claim 1, namely, “curvature of the focal plane” and “curvature of the lens,” we determine that the phrases relate to one another and that the word should be assigned a single, cohesive meaning. Id. Read fairly, this limitation indicates that the layers of photodisrupted bubbles that form the cell boundaries are generated by scanning a pulsed laser according to a single curvature – a curvature that characterizes both the focal plane of the optics module and the natural bend of the lens. Id. Accordingly, on this record, we determine that the “curvature of the focal plane” itself must “track the natural curvature of the lens.” Id. Other evidence of record supports that determination. Most notably, the record of examination includes this unequivocal statement: “It was Applicant’s inventive idea to design the laser surgical system such that the curvature of its focal plane tracks the curvature of the eye.” Ex. 1002, 133.7” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“The problem of mismatch simply “is not present in flat-field corrected systems that are imaging a flat surface because there is no mismatch. As a result, Frey and Blumenkranz do not have the blurriness problem Koschmieder describes.” Resp. 15 (citing Ex. 2030, 88:21–89:7; Ex. 2033 ¶ 104). Furthermore, the proposed modification of Frey’s system would have been expected to “cause blurring or defocusing” to occur “when used with a pulsed laser source” system, such as Frey’s, that employs a laser-shot-by-laser-shot scan pattern to generate, point-by-point, layers of photodisrupted tissue in the eye. Ex. 2033 ¶ 122. Accordingly, on this record, we find that an ordinarily skilled artisan would not “have been motivated to modify Frey with Koschmieder’s solution to address a problem of laser focus that is nonexistent in Frey.” Id.” slip op. at 38
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“opinions regarding whether there would have been a reasonable expectation of success for Petitioner’s combination” of prior art references. Sur-reply 8 (citing cases). We agree with Patent Owner that, based on the record presented, Dr. Bentley “has no experience designing laser-based systems for eye surgery” and, further, that a question arises as to whether Dr. Bentley “even understand[s] what photodisruption is” within the context of claim 1. Id. at 7–8 (and citations therein to Exs. 1004, 1046, 1047, and 2051). Although Dr. Bentley possesses excellent credentials in optics generally, this witness reports no experience with surgical optics, much less optics for laser surgery of the eye. Ex. 1046 ¶¶ 3–9; see generally Ex. 1047 (curriculum vitae). Dr. Bentley currently advises students working on optics for “microscope objectives, digital and film camera lenses, zoom lenses, fisheye lens, riflescopes,” and other devices––but none, on this record, is 6 The record also includes a declaration of Edward A. DeHoog, Ph.D. (Ex. 2001), which Patent Owner filed with the Preliminary Response but does not advance in the Response. See generally Resp. demonstrated by Petitioner as applicable to laser surgery, much less a method of laser surgery whereby layers of photodisrupted bubbles are generated within eye tissue. Ex. 1047, 1; see Ex. 2051, 45:8–21 (Dr. Bentley’s deposition transcript). Dr. Bentley’s prior experience includes, for example, working on optics related to “broadband zoom lens for cancer screening, several high-resolution broadband infrared cameras,” and “a multi-photon endoscope objective,” but includes no work, on this record, that relates to optics for laser surgery of the eye. Id. We recognize that Dr. Bentley is named on four patents and frequently lectures and publishes articles on optical imaging in general, but the list of patents and publications persuades us that Dr. Bentley possesses little, if any, experience with surgical optics. Id. ¶¶ 3, 5–9. We agree with Patent Owner, moreover, that during Dr. Bentley’s deposition, it became clear that this witness “is not an expert in laser-based systems for photodisrupted surgery” and has no experience with, or specific knowledge about, optics that perform “photodisruption” of lens tissue. Sur-reply 8 (citing Ex. 2051, 61:17–62:17, 65:12–17, 66:18–68:21, 72:4–72:20, 73:10– 73:19, 75:11–76:13, 80:9–16, 81:13–83:25, 85:13–86:3, 89:25–92:7, 94:25– 95:23, 121:3–121:12 (deposition transcript)). By contrast, Patent Owner’s witness, Dr. Dhalla, has “many years of” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on the information presented, we find that the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we adopt Petitioner’s definition because, on this record, it appears consistent with the disclosures of the asserted prior art and the written description of the invention provided in the ’356 patent. Pet. 10 (Petitioner’s asserted definition of the ordinarily skilled artisan). Neither party, however, advances information explaining how or why the result in this case would change based on the definition selected by the Board.” slip op. at 12
Patent outcomesUS 9,427,356 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,427,356 - FTC Solar, Inc. v. FCX Solar, LLCInstitution deniedPTAB · Nov 28, 2022 · IPR2022-01101 · APJ Donna M Praiss · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least an undergraduate degree in mechanical engineering, physics, or a similar discipline, and at least three to five years of work experience designing, analyzing, or evaluating solar trackers.” Pet. 6 (citing Ex. 1003 ¶¶ 35–39). Patent Owner supplements Petitioner’s description of a POSITA to include as similar disciplines “applied aerodynamics, aerospace engineering, fluid dynamics, photovoltaic systems engineering” and asserts that a POSITA in the field of solar trackers would “enlist the expertise of a damper expert in designing the dampers to provide desired characteristics to trackers.” Prelim. Resp. 14. For the purposes of this Decision, we adopt Petitioner’s description of the level of one of ordinary skill in the art, as modified by Patent Owner; any differences between the parties’ descriptions do not affect our analysis. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). slip op. at 6
- Prior constructionPrior construction adoptedDecided for patent owner
“In the litigation, the District Court determined that a person having ordinary skill in the art would understand “damping ratio” to refer to “the damper providing the photovoltaic system with different damping ratios depending on the conditions.” Ex. 2005, 6:15–20. The District Court noted that intrinsic evidence supports “references to a damper having a [damping] ratio are made in the context of a damper installed in a system and are not about a damper in isolation.” Id. at 6:21–25. The District Court also noted that FTC’s7 expert, Dr. Codd, recognized that “pluck testing is the primary tool for determining a damping ratio, and that a person of ordinary skill in the art would be familiar with how to perform pluck testing.” Id. at 8:4–7. In view of the parties’ agreed-upon definition of the term “damping ratio” and the District Court’s claim construction analysis, we construe “damping ratio” to mean “a ratio determined by dividing the actual damping coefficient of a system by the critical damping coefficient of the system.”” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“parameter that is used imprecisely in the claims of the ’782 Patent to signify the damping force provided by the damper to the system.” Pet. 7 n.4 (citing Ex. 1003 ¶ 40 n.7). Thus, the Petition acknowledges a difference between the terms “damping ratio” and “damping force.” The footnote concludes “[h]ere, Petitioner has adopted Patent Owner’s interpretation of ‘damping ratio’ to signify the damping force provided by the damper to the invariant system.” Id. Petitioner cites to paragraph 40 n.7 of the Codd Declaration to support its assertion, but that paragraph parrots the language in the Petition, and Dr. Codd does not provide the underlying facts supporting his testimony.9 See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,903,782
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.