• Njoy, LLC / Njoy Holdings, Inc. v. Juul Labs, Inc.No claims unpatentable
  PTAB · Jun 10, 2025 · IPR2024-00231 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 14–16, 18, 27–29, 31, and 32 were not proven unpatentable because the asserted references failed to establish the claimed airflow path or a reason to make the proposed combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s and Patent Owner’s proposed levels of skill are similar and differ in that Petitioner’s relevant degrees and corresponding two years of experience additionally includes “industrial design” and “product design” and familiarity with “electrically powered vaporizing articles, their components or the underlying technologies” where Patent Owner requires two years of experience “designing electro-mechanical consumer products or an advanced degree.” Compare Pet. 7, with PO Resp. 2. Patent Owner alleges that “Petitioner has failed to establish unpatentability under either standard,” indicating that the level of skill in the art is not a dispositive issue. PO Resp. 3. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’123 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’123 patent and the prior art. We note that the outcome of this Decision would be the same under Patent Owner’s proposed definition.” slip op. at 11

  • Expert testimonyPetitioner expert creditedOther

    “In this case, Mr. McAlexander meets both Petitioner’s and Patent Owner’s proposed level of skill in the art. As a result, we are persuaded Mr. McAlexander has the requisite skill and relevant expertise to offer testimony in this matter. For example, Mr. McAlexander has a Bachelor’s Degree in Electrical Engineering and far more than 2 years of experience in the electrical engineering field. Ex. 1027, 3–6, 7. In addition, Mr. McAlexander has provided expert consulting services in a wide range of technology areas involving the process and design of electro-mechanical consumer products. Ex. 1003 ¶ 5. Through one of Mr. McAlexander’s business ventures, his laboratory has “performed detailed airflow analyses, designing and constructing specialized apparatuses to emulate human breath, allowing for precise activation testing of ENDS devices.” Ex. 1043 ¶ 16. That said, a declarant’s expertise, even clothed as a skilled artisan, does not entitle a naked opinion persuasive weight. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985). Here, Patent Owner had the opportunity to, and in fact did, thoroughly cross examine Mr. McAlexander about the purported deficiencies in his testimony. See, e.g., Exs. 2052, 2054; Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 595 (1993) (“Vigorous cross examination [and] presentation of contrary evidence . . . are the traditional and appropriate means of attacking shaky but admissible evidence.”). Therefore, to the extent Patent Owner credibly identifies deficiencies in Mr. McAlexander’s testimony or that testimony lacks factual support or is based on broad, conclusory assertions, we will assign appropriate weight. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (explaining that it is within the Board’s discretion, as the trier of fact, to accord appropriate weight to the evidence presented).” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Petitioner contends that the parties proposed a construction for “pressure valve,” a limitation appearing in claims 18 and 31, during the ITC investigation. Pet. 7 (citing Ex. 1001, 41:58–65). Patent Owner contends that the terms of the ’123 patent should be given their plain and ordinary meaning. PO Resp. 4. Because resolution of the issues presented in this case do not require construction of the term “pressure valve,” we do not expressly construe this claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner. To anticipate a claim, a reference “must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, 545 F.3d at 1369. “The requirement that the prior art elements themselves be arranged as in the claim means that the claims cannot be treated . . . as mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). Indeed, the prior art reference “must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” Net MoneyIN, 545 F.3d at 1371 (citation omitted). “[D]ifferences between the prior art reference and the claimed invention, however slight, invoke the question of obviousness, not anticipation.” Id.” slip op. at 20

  Patent outcomesUS 10,130,123 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,130,123
• Juul Labs, Inc. v. Njoy, LLCNo claims unpatentable
  PTAB · May 21, 2025 · IPR2024-00161 · APJ Christopher M Kaiser · IPR · Final written decision

  Claims 1–27 were not shown unpatentable because the asserted obviousness grounds failed to establish the claimed central airflow passageway or a reason to combine the references.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Relying on the testimony of Patent Owner’s declarant Dr. Singhose, Petitioner argues that a person of ordinary skill in the art “would have known a central straight path has less airflow resistance than a circuitous one.” Reply 22–23 (citing Ex. 1035, 127:15–128:9). But the same witness also testified that higher airflow resistance might be desirable and explained that providing more resistance to airflow might result in improved mixing. Ex. 1035, 21:21–22:12, 127:20–24, 170:10–14. In addition, Dr. Singhose testifies that the complicated design of the airflow passageway in Xia “serves important functions,” including “allow[ing] large droplets to be reabsorbed by the liquid-guiding mechanism,” allowing “excessive liquid in the airflow [to] condense,” and “prevent[ing] the chemical liquid from being sucked into the mouth.” Ex. 2022 ¶ 183 (citing Ex. 1004, 11, 13–14, 16). Although Petitioner’s declarant Dr. Sturges testifies that a straight airflow passageway “would provide improved, smoother air flow,” he does not provide any evidence supporting the view that the air flow would be improved. Ex. 1007 ¶ 118. We credit the testimony of Dr. Singhose that using a straight passageway in Xia would have been detrimental rather than beneficial. Ex. 2022 ¶ 183. Petitioner also argues that the inventors’ use of a straight path is evidence that the use of a straight passageway was “merely common-sense obviousness.” Reply 22–23. This is hindsight. Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d 1280, 1296 (Fed. Cir. 2012) (“The inventor’s own path itself never leads to a conclusion of obviousness; that is hindsight.”). Moreover, it does not address the testimony of Dr. Singhose that the use of a complicated passageway like that in Xia had benefits not present in a straight central passageway.” slip op. at 29

  • Skill levelSkill level petitioner adoptedOther

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art (“POSITA”) “would have had a mechanical or electrical engineering degree, industrial design degree, or a similar technical degree, or equivalent work experience, and 5 to 10 years of experience in electromechanical devices.” Pet. 10 (citing Ex. 1007 ¶ 16). Prior to institution, Patent Owner stated that, for “the limited purpose of this Preliminary Response,” it “does not challenge the definition of a POSITA set forth in the Petition.” Prelim. Resp. 9. We adopted Petitioner’s proposed definition in our Decision granting institution. During trial, neither party disputed this definition. Upon a complete record, we see no reason to change the adopted definition.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “Patent Owner argues, however, that this presumption is overcome in the present case, and we agree. PO Resp. 28–32. We note that, although the claims require the first aperture to be “on the first end,” the claims still require that the “housing hav[e] a first aperture.” Thus, the issue is whether the aperture must be on the housing itself or part of the housing, as well as whether the aperture is on the first end of the housing. Although “having” and “includes” are used with respect to the solution holding medium to refer to elements located inside the housing, the specification of the ’881 patent suggests that the ends of the housing are part of the housing itself, rather than located inside the housing. First, “the first end . . . can be integrated into a single assembly as part of the housing.” Ex. 1001, 6:16–17. Second, “the housing . . . may comprise the cylindrical wall and two end-caps,” or “the housing . . . may comprise the cartridge wall and a single end-cap.” Id. at 3:55–59. The only figures of the ’881 patent that depict first end 206 show it at the end of the housing rather than located within the interior of housing 202. Id. at Figs. 2, 3. Moreover, there is no requirement to construe a claim term uniformly across multiple uses in the claims when doing so would be nonsensical. Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008). Here, construing a first element that is recited as “having” or “includ[ing]” a second element always as encompassing not only second elements that are part of the first element, but also second elements that are located within the interior of the first element, would lead to nonsensical results. Claim 2 recites an airflow passageway “having a length having a circular cross section.” Ex. 1001, 17:59–60. It would be nonsensical to interpret this claim as encompassing an airflow passageway of non-circular cross section that contains another object that has a circular cross section, and neither party argues in favor of such a reading. Similarly, claim 16 recites an “airflow passageway having an interior having a uniform cross-sectional area,” and there is no reason to interpret this claim as encompassing an airflow passageway of non-uniform cross-sectional area that contains another object that itself has uniform cross-sectional area. Id. at 19:47–48. Thus, the claims do not use “having” or “includes” consistently to refer to elements located within the interior of an object; instead, they sometimes use these terms to refer to elements that are a part of an object. See Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1030–31 (Fed. Cir. 2002) (terms should be construed based on the context of how the terms are used in the claims).” slip op. at 13

  • Prior constructionPrior construction not adoptedDecided for patent owner

    “When we instituted trial, we preliminarily construed this phrase to encompass apertures that are located within the first end of the housing, determining on the record available at that time that “[t]he term does not require that the first aperture be located in the housing itself.” Inst. Dec. 16. We invited the parties to “address [the] construction of this term during trial,” id., and, on the full record developed during trial, we reach a different conclusion.” slip op. at 10

  Patent outcomesUS 10,334,881 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,334,881
• Hanwha Solutions Corporation / Hanwha Q Cells USA, Inc. v. Rec Solar Pte. Ltd.No claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,749,060
• Hengdian Group Dmegc Magnetics Co., Ltd. / Zhejiang Innuovo Magnetics Co., Ltd. et al. v. Hitachi Metals, Ltd.No claims unpatentable
  PTAB · Nov 2, 2018 · IPR2017-01312 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Petitioner did not prove claims 1–12 unpatentable: Zhou-based combinations lacked a supported motivation to combine, and Ren did not anticipate or render the claims obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not observe meaningful differences between the parties’ assessment of a person having ordinary skill in the art. We further note that both assessments appear consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). Our determination regarding the patentability of the challenged claims does not turn on the differences between these definitions. We adopt Petitioner’s assessment, but note that our conclusions would be the same under Dr. Moran’s assessment. B.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “reasonable construction in light of the specification of the patent in which [the claims] appear[].” 37 C.F.R. § 42.100(b) (May 2, 2016); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016).9 Consistent with the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). 9 The revised claim construction standard for interpreting claims in inter partes review proceedings as set forth in the final rule published October 11, 2018 does not apply to this proceeding, because the new “rule is effective on November 13, 2018 and applies to all IPR, PGR and CBM petitions filed on or after the effective date.” Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51340 (Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42). For purposes of the Institution Decision, we construed “controlled environment” as set forth in independent claims 1 and 2 to mean “an air environment in which one or more conditions are controlled.” Dec. on Inst. 10. The parties do not contest our construction of the term “controlled environment” (see PO Resp. 3; Pet. Reply 1; Supp. PO Resp. 3–5; Supp. Pet. Reply 2), and we see no reason to modify that construction in light of the record developed at trial. C.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “that Zhou is unclear as to whether its test atmosphere is an air or inert environment. Much of the evidence, as described above, could support either interpretation. It is Petitioner’s burden, however, to establish facts supporting its challenge that claims 1, 2, 6, and 8–12 would have been obvious over the combined teachings of Zhou and Young by a preponderance of the evidence. 35 U.S.C. § 316(e); see also Harmonic, 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”)). “Failure to prove the matter as required by the applicable standards means that the party with the burden of persuasion loses on that point—thus, if the fact trier of the issue is left uncertain, the party with the burden loses.” Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008). Because Petitioner’s argument that a POSA would have been motivated to apply the environmental conditions of Zhou’s retention step to Young’s open-to-the air pressing step is based on its contention that Zhou’s test atmosphere was air, and because Petitioner has not established that Zhou’s test atmosphere was air, we are not persuaded that Petitioner has made a sufficient showing that a POSA would have combined the teachings of Zhou and Young in the manner proposed. Accordingly, we find that Petitioner has not shown by a preponderance of the evidence that claims 1, 2, 6, and 8–12 of the ’565 patent are unpatentable under 35 U.S.C. § 103 as obvious over the combined teachings of Zhou and Young. F.” slip op. at 23

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner. As set forth above, we interpreted “controlled environment” to mean “an air environment in which one or more conditions are controlled.” See supra Section II.B. Ren discloses controlling the conditions of an isolated, inert gas environment. See, e.g., Ex. 1003, 2:48–54 (“The isolated environment generally comprises . . . means for supplying inert gas into the enclosure and desiccating agents disposed between the inert gas supply means and the enclosure, along with desiccating agents within the enclosure.”), 7:53–57 (“Pumping an inert gas, such as nitrogen, into a sealed environment is an effective means for reducing the oxygen content from in [sic] the surrounding environment, but this does not reduce or eliminate H2O from the surrounding environmental humidity.”), 9:16–20 (“After placing the individually-wrapped packages of magnetic powder into the isolated environment, a flow of inert gas” into the isolated environment is activated, and “[t]he inert gas purges humidity and/or oxygen from the isolated environment.”). Consequently, we are not persuaded that Petitioner has established that Ren teaches “providing a controlled environment having a temperature ranging from 5° C. to 30° C. and a relative humidity ranging from 40% to 65%” as recited in independent claims 1 and 2. Therefore, based on our review of the record, we find that Petitioner has not established by a preponderance of the evidence that claims 1 and 2, and claims 6 and 8 that depend directly therefrom, are anticipated by Ren. H.” slip op. at 26

  Patent outcomesUS 6,461,565 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,461,565
• Pungkuk Wire Manufacturing Company v. Seong, Ki ChulNo claims unpatentable
  PTAB · Aug 16, 2017 · IPR2016-00763 · APJ Kristina M Kalan · IPR · Final written decision

  Petitioner did not prove claims 1–4, 6, 9–11, and 14–18 unpatentable as anticipated by Mukherjee because cracks in both required layers were not shown to be inevitable.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “A reference inherently discloses an element of a claim “if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citation omitted) (emphasis added). “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.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (citing Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)). “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.” Cont’l Can, 948 F.2d at 1269 (emphasis added). Thus, the question we must answer to determine the inherency of a claim limitation in the prior art is whether the disclosure of the prior art shows that the limitation necessarily would result from following the express disclosure of the prior art, as opposed to showing that the limitation only might result from following the express disclosure of the prior art. Here, Petitioner has not directed us to sufficient evidence of record for us to find that this question should be answered affirmatively.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “A reference inherently discloses an element of a claim “if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citation omitted) (emphasis added). “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.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (citing Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)). “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.” Cont’l Can, 948 F.2d at 1269 (emphasis added). Thus, the question we must answer to determine the inherency of a claim limitation in the prior art is whether the disclosure of the prior art shows that the limitation necessarily would result from following the express disclosure of the prior art, as opposed to showing that the limitation only might result from following the express disclosure of the prior art. Here, Petitioner has not directed us to sufficient evidence of record for us to find that this question should be answered affirmatively.” slip op. at 7

  • Expert testimonyPetitioner expert discountedOther

    “Neither is Dr. Misiolek’s testimony sufficient to support a finding that the Mukherjee process necessarily creates cracks in the alloy layer or in the coating layer. In his initial declaration, Dr. Misiolek states that “[t]he wire drawing process disclosed by Mukherjee would crack the outside beta and gamma brass alloy layer and the outer zinc layer of the coated wire.” Ex. 1008 ¶ 8 (emphasis added). As support for this statement, Dr. Misiolek testifies that “beta brass, gamma brass, and zinc each have a lower ductility compared to alpha brass and these layers are exposed to the highest strain.” Id. Dr. Misiolek does not sufficiently explain, however, why the lower ductility of beta brass, gamma brass, and zinc means that the alloy layer and the coating layer necessarily would crack as a result of the Mukherjee drawing process. The presence of a relatively brittle alloy layer and zinc layer, and the application of a relatively large amount of strain to those layers, seem to make the formation of cracks more likely, but it is not clear from Dr. Misiolek’s testimony why the presence of such circumstances makes the formation of cracks completely certain. The testimony in Dr. Misiolek’s third declaration does not make the reasoning any more clear. Ex. 1019 ¶ 9 (testifying that “the drawing process in column 6 of Mukherjee would cause cracks to form on the surface of the wire” without explaining why). Thus, Dr. Misiolek’s testimony is conclusory and entitled to little weight. 37 C.F.R. § 42.65(a). Moreover, there is evidence of record that, in any given wire drawing process, “whether cracks actually occur depends on multiple factors, including . . . the temperature used during the [drawing] process, and . . . the speed of the drawing.” Ex. 2002 ¶ 14. Dr. Misiolek does not dispute this testimony, and Petitioner does not direct us to any evidence to the contrary. Ex. 1019 ¶¶ 14–18; Reply 16–28. Mukherjee does not disclose either the speed of its wire drawing process or the temperature at which that process takes place. Ex. 1002, 6:58–65. Accordingly, there is insufficient evidence of record to find that wires produced using the Mukherjee process always and inevitably must have cracks in the alloy layer and in the coating layer.” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s Motion to Exclude Patent Owner moves to exclude Exhibits 1020, 1021, 1022, 1023, 1025, and 1026. Paper 63. We do not consider the merits of Patent Owner’s Motion to Exclude because, as explained above, even if the disputed evidence is considered, Petitioner has not shown by a preponderance of the evidence that claims 1–4, 6, 9–11, and 14–18 of the ’523 patent are unpatentable as anticipated by Mukherjee. Accordingly, Patent Owner’s Motion to Exclude is dismissed as moot. CONCLUSION For the reasons given, we are not persuaded that Petitioner has shown by a preponderance of the evidence that claims 1–4, 6, 9–11, and 14–18 of the ’523 patent are anticipated by Mukherjee. In addition, Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 13

  Patent outcomesUS 6,306,523 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 6,306,523
• Pungkuk Wire Manufacturing Company v. Seong, Ki ChulNo claims unpatentable
  PTAB · Aug 16, 2017 · IPR2016-00762 · APJ Christopher M Kaiser · IPR · Final written decision

  Claims 1–5 were not shown unpatentable because Mukherjee did not necessarily disclose a crack structure on the alloy layer.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “Cir. 2003) (citation omitted) (emphasis added). “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.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (citing Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)). “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.” Cont’l Can, 948 F.2d at 1269 (emphasis added). Thus, the question we must answer to determine the inherency of a claim limitation in the prior art is whether the disclosure of the prior art shows that the limitation necessarily would result from following the express disclosure of the prior art, as opposed to showing that the limitation only might result from following the express disclosure of the prior art. Here, Petitioner has not directed us to sufficient evidence of record for us to find that this question should be answered affirmatively.” slip op. at 7

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Dr. Misiolek’s testimony also is not sufficient to support a finding that the Mukherjee process necessarily creates a crack structure in the surface of the alloy layer. In his initial declaration, Dr. Misiolek states that “[t]he wire drawing process disclosed by Mukherjee would crack the outside beta and gamma brass alloy layer.” Ex. 1008 ¶ 8 (emphasis added). As support for this statement, Dr. Misiolek testifies that “beta brass, gamma brass, and zinc each have a lower ductility compared to alpha brass and these layers are exposed to the highest strain.” Id. Dr. Misiolek does not explain why the first statement necessarily follows from the second. The presence of a relatively brittle alloy layer and the application of a relatively large amount of strain to that layer seem to make the formation of cracks more likely, but it is not clear from Dr. Misiolek’s testimony why the presence of such circumstances makes the formation of cracks completely certain. The testimony in Dr. Misiolek’s second declaration does not make the reasoning any more clear. Ex. 1013 ¶ 9 (testifying that “the drawing process in column 6 of Mukherjee would cause cracks to form” without explaining why). Thus, Dr. Misiolek’s testimony is conclusory and entitled to little weight. 37 C.F.R. § 42.65(a). Moreover, there is evidence of record that “whether cracks actually occur [in any given wire drawing process] depends on multiple factors, including . . . the temperature used during the [drawing] process, and . . . the speed of the drawing.” Ex. 2003 ¶ 14. Dr. Misiolek does not dispute this testimony, and Petitioner does not direct us to any evidence to the contrary. Ex. 1013 ¶¶ 14–18; Reply 12–22. Mukherjee does not disclose either the speed of its wire drawing process or the temperature at which that process takes place. Ex. 1002, 6:58–65. Accordingly, there is insufficient evidence of record to find that wires produced using the Mukherjee process always and inevitably must have a crack structure on the surface of their alloy layers. Therefore, we cannot find that Mukherjee anticipates claim 1 of the ’535 patent.” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied

    “1019, and 1020. Paper 48. We do not consider the merits of Patent Owner’s Motion to Exclude because, as explained above, even if the disputed evidence is considered, Petitioner has not shown by a preponderance of the evidence that claims 1–5 of the ’535 patent are unpatentable as anticipated by Mukherjee. Accordingly, Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 11

  Patent outcomesUS 6,482,535 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 6,482,535
• Parrot S.A. / Parrot, Inc. v. Drone Technologies, Inc.No claims unpatentable
  PTAB · Oct 20, 2015 · IPR2014-00732 · APJ Howard B Blankenship · IPR · Final written decision

  Claims 1–12 were not shown unpatentable as obvious because Petitioner did not establish that Shkolnikov was analogous art.

  RulingsFinal written decision

  • Expert testimonyOther

    “Owner Response in support of why Shkolnikov is non-analogous art, other than the unfounded reliance on the Decision on Institution, is the observation that the fact Dr. D’Andrea had not heard of Bathiche or Shkolnikov prior to this case is irrelevant to the analogous-art inquiry. Pet. Reply 6; PO Resp. 12. We agree with Petitioner to the extent that the fact Dr. D’Andrea was not aware of the Bathiche and the Shkolnikov references prior to this case has little relevance to the question of whether the references are analogous art. “The issue of obviousness is determined entirely with reference to a hypothetical ‘person having ordinary skill in the art.’ It is only that hypothetical person who is presumed to be aware of all the pertinent prior art.” Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985).” slip op. at 11

  • Obviousness (§103) › Analogous artNon analogous artNot shown unpatentableNot shown unpatentable

    “Owner Response, it was incumbent upon Petitioner to demonstrate that Shkolnikov is analogous art. The grounds for unpatentability in this proceeding are asserted by Petitioner, not grounds entered by the Board as permitted, for example, in reexamination proceedings. In an inter partes review, the burden of persuasion is on the petitioner to prove unpatentability by a preponderance of the evidence (35 U.S.C. § 316(e)), and that burden never shifts to the patentee. Dynamic Drinkware, LLC v Nat’l Graphics, Inc., No. 2015-1214, 2015 WL 5166366, at *2 (Fed. Cir. Sept. 4, 2015). Petitioner has not met its burden in showing that Shkolnikov is analogous art. Moreover, Petitioner cannot rely on the Board to make new findings regarding analogous art in a final written decision.” slip op. at 11

  • ExcludeMotion to exclude, deniedDenied

    “1011). Paper 19. Because consideration of Dr. D’Andrea’s Declaration does not change the outcome in favor of Patent Owner in this final written decision, the motion to exclude is dismissed as moot.” slip op. at 14

  Patent outcomesUS 8,106,748 not shown unpatentable
  § 103 obviousnesscites Graham
  Patents in suitUS 8,106,748

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.