• Canadian Solar Inc. v. Maxeon Solar Pte. Ltd.No claims unpatentable
  PTAB · Jan 12, 2026 · IPR2024-01038 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claims 10–16 and 19 were not shown unpatentable because Petitioner did not establish a motivation to combine the cited references to meet the claimed dopant concentration.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Artisan”) would have had “an advanced degree involving the discipline of electrical engineering, applied physics, chemistry, or materials science, and at least two years of experience designing, developing, or researching in the field,” or “a bachelor’s degree in electrical engineering, applied physics, or materials science, and at least three years of experience designing, developing, or researching in the field.” Pet. 5–6 (citing Ex. 1003 ¶ 47); 1194IPR Pet. 11 (citing Ex. 1100 ¶ 47). Patent Owner states that it “accepts the level of ordinary skill in the art that is proposed in the Petition.” PO Resp. 11. In the Institution Decisions, we adopted the assessment offered by Petitioner. 1038IPR Dec. 5–6; 1194IPR Dec. 8. Because Petitioner’s definition of the level of skill in the art is consistent with the ’315 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir 2001).” slip op. at 8

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

    “B. Claim Construction We construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Based on our review of the complete trial record, we determine that it is not necessary to expressly construe any claim terms to resolve the parties’ dispute. Realtime Data, 912 F.3d at 1375.” slip op. at 8

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

    “Petitioner fails to sufficiently demonstrate that the combination of Li and King, Swanson-352, or Marvin teaches “a portion of the silicon substrate has a dopant concentration of approximately less than or equal to 2x1018 cm-3” as recited in claim 10 because Petitioner fails to establish by a preponderance of the evidence that a Skilled Artisan would have been motivated to look to the dopant concentrations in King, Swanson-352, or Marvin to determine the concentration of dopants for use in Li’s silicon substrate.” slip op. at 17

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Our rules provide that a petitioner must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a). Our rules also state that “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response.” Id. § 42.23(b). “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” PTAB Consolidated Trial Practice Guide, 74 (Dec. 2025) (“CTPG”). Our Trial argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.” Id. at 73; see also id. at 74 (“Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or unpatentability of an original or proposed substitute claim, such as newly raised rationale to combine the prior art references that was not expressed in the petition.”). In the Petition, Petitioner argues that a Skilled Artisan would have been motivated to combine Li’s back contact cell with the front portion doping concentration disclosed in King, Swanson-352, or Marvin, because Li, King, Swanson-352, and Marvin are analogous art. Pet. 30–32. Petitioner also points to Li’s acknowledgement that techniques for increasing efficiency are generally desired because efficiency is an important characteristic of a solar cell. Id. at 32. As Patent Owner notes, however, the Petition does not include the phrase “finite number” or “obvious to try.” PO Sur-reply 20. Petitioner’s “obvious to try” argument is a newly raised rationale to combine the prior art references necessary to make out a prima facie case of unpatentability. See CTPG 74. Accordingly, we do not consider Petitioner’s untimely new argument.” slip op. at 21

  Patent outcomesUS 11,251,315 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 11,251,315
• Hope Medical Enterprises, Inc. v. Fennec Pharmaceuticals, Inc.No claims unpatentable
  PTAB · Sep 1, 2023 · IPR2022-00125 · APJ Julia Heaney · IPR · Final written decision

  The Board granted the revised noncontingent motion to amend, canceled claims 18 and 20, and entered substitute claims 28 and 29, which were not proven obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, relying on the testimony of Dr. Rogers, contends that a person of ordinary skill in the art would have [had] a bachelor’s degree or equivalent in any of the pharmaceutical sciences with at least 5 years of experience in solid state chemistry; a master’s degree in any of the pharmaceutical sciences with at least 3 years of experience in solid state chemistry; or a Ph.D. in any of the pharmaceutical sciences with 1 year of experience in solid state chemistry. Pet. 8 (citing Ex. 1008 ¶¶ 24–28). Petitioner further states that such “[a] person could also have qualified as a [person of ordinary skill in the art] with some combination of (1) more formal education and less technical or professional experience or (2) less formal education and more technical or professional experience.” Id. Patent Owner does not dispute Petitioner’s proposed definition of a person of ordinary skill. See generally MTA, RMTA. Having considered the parties’ arguments and evidence, we adopt the level of ordinary skill in the art proposed by Petitioner, because it is consistent with the disclosures of the ’363 patent and the prior art of record. We note, however, that neither party contends that the outcome of this case would differ based on our adoption of any particular definition of a person of ordinary skill in the art.” slip op. at 12

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

    “In our Preliminary Guidance, we construed “for a pharmaceutical composition” to mean “in combination with pharmaceutically acceptable excipients,” based on the ’363 patent’s definition providing that “[t]he terms ‘formulation’ or ‘pharmaceutical composition’ as used herein refers to the drug in combination with pharmaceutically acceptable excipients.” Prelim. Guid. 5–6 (citing Ex. 1001, 12:26–28; Ex. 2010, 17:11–12; Ex. 2011, 26:26– 27). We also encouraged the parties to address whether “for a pharmaceutical composition,” which appears in the preamble of substitute claims 28 and 29, is limiting, as opposed to a statement of intended use or purpose. Id. at 6. Following our Preliminary Guidance, the parties submitted further arguments concerning the term “for a pharmaceutical composition.” Patent Owner argues the term requires that the claimed process provide STS that is sufficiently pure for use in a pediatric patient (see RMTA 8–11) and that the word “drug” in the ’363 patent’s definition of “pharmaceutical composition” requires that the anhydrous STS is of sufficient purity for pharmaceutical use. Reply RMTA 3. Petitioner argues that the construction set forth in our Preliminary Guidance was correct. See Sur-reply RMTA 2–3. Having considered the arguments and evidence, we do not further construe the term “for a pharmaceutical composition” in this Decision because, as discussed in our analysis of obviousness below, it is not necessary to construe the term in order to determine whether Petitioner has met its burden of demonstrating by a preponderance of the evidence that proposed substitute claims 28 and 29 are unpatentable. 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))).” slip op. at 13

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “1. Reasonable Number of Substitute Claims A motion to amend must “propose a reasonable number of substitute claims.” 35 U.S.C. § 316(d)(1)(B); see 37 C.F.R. § 42.121(a)(3) (“A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims.”). Patent Owner proposes the same number of substitute claims as the original challenged claims that are cancelled, i.e., a one-to-one substitution for a total of two substitute claims. MTA 2; RMTA. “There is a rebuttable presumption that a reasonable number of substitute claims per challenged claim is one (1) substitute claim.” Lectrosonics, Paper 15 at 4; see 37 C.F.R. § 42.121(a)(3). Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner proposes a reasonable number of substitute claims. 2. Support in the Original Disclosure Patent Owner has identified written description support in the originally filed disclosure of the ’363 patent for the new limitations added for the proposed substitute claims. See RMTA 5–8. We have reviewed Patent Owner’s assertions of support in the original disclosure for the proposed revised substitute claims and determine that sufficient support exists. Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner has met this requirement. 3. Respond to a Ground of Unpatentability “A motion to amend may be denied where . . . [t]he amendment does not respond to a ground of unpatentability involved in the trial.” 37 C.F.R. § 42.121(a)(2)(i). Patent Owner asserts that the proposed revised substitute claims are patentable over the combination of references that forms the basis of the obviousness ground on which we instituted trial. RMTA 12–13. Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner has met this requirement. 4. Scope of the Claims Patent Owner asserts that the proposed revised substitute claims do not enlarge the scope of original claims 18 and 20. RMTA 5. We have reviewed Patent Owner’s assertion that the purity amendments of proposed revised substitute claims 28 and 29 narrow the claims’ scope. Id. Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner has met this requirement.” slip op. at 17

  • BurdenNot shown unpatentable

    “determine the evidence relied on by Petitioner does not support Petitioner’s position that a person of ordinary skill in the art would have been motivated to combine Levenson, Sherman, Edwards, and USP. Petitioner’s contention that it would have been obvious to a person of ordinary skill in the art to combine the teachings of Levenson with Sherman is based on Dr. Rogers’s testimony that “[b]oth references disclose synthesis of sodium thiosulfate pentahydrate.” Ex. 1008 ¶ 151; see Pet. 36, 38. Dr. Rogers further testified it would have been obvious to add Edwards’s dehydrating step to the preparation of STS pentahydrate “which is obtained following the teachings of Levenson and Sherman” because “Edwards itself discloses dehydrating [STS] pentahydrate.” Id. ¶ 154. The Petition included these arguments even though they were inconsistent with Petitioner’s previous statement, during the Sherman prosecution, that Levenson taught STS heptahydrate, and therefore “does not provide any teaching with respect to [STS] pentahydrate.” Ex. 2013, 97. This prior inconsistent statement undercuts Petitioner’s rationale for combining Levenson, Sherman, and Edwards in this proceeding. Moreover, Petitioner’s rationale for combining the references in this proceeding is inconsistent with its statements about Levenson during the Sherman prosecution. Recognizing this inconsistency, Petitioner now takes the position that the Petition and Dr. Rogers’s testimony were incorrect. Paper 32; see Tr. 21:14–22:7, 59:1–2 (reemphasizing that “Petitioner maintains the statements that it made in the Sherman prosecution regarding Levenson”). Petitioner attempts to rationalize the inconsistency between its statements in the Sherman prosecution (including that “Levenson does not provide any teaching with respect to [STS] pentahydrate”) and its position in this proceeding by arguing that Dr. Rogers relies on Levenson as teaching surface activation “regardless of any particular hydrates Levenson discloses.” Tr. 22:8–9. That argument is not persuasive, because Dr. Rogers’s declaration clearly states the primary reason for his opinion that it would have been obvious to a person of ordinary skill in the art to combine the teachings of Levenson with Sherman: “[b]oth references disclose synthesis of sodium thiosulfate pentahydrate.” Ex. 1008 ¶ 151. Contrary to Petitioner’s argument, Dr. Roger’s reliance on the surface activation teachings of Levenson is because he believes that both references pertain to STS pentahydrate; the surface activation teachings are not stated as an independent reason to combine the references. Id. Petitioner provides no further explanation of how a person of ordinary skill in the art would have been motivated to combine Levenson’s teachings regarding manufacture of STS heptahydrate with Sherman’s and Edwards’s teachings regarding STS pentahydrate, or how a person of ordinary skill would have regarded the difference between STS hydrates. Dr. Rogers’s acknowledgement of stability differences among STS hydrates highlights the insufficiency of Petitioner’s showing in this regard. See Ex. 2005, 35, 39. Having changed its position at the close of trial and having effectively withdrawn Dr. Rogers’s testimony as to similarities between Levenson and” slip op. at 24

  Patent outcomesUS 10,792,363 not shown unpatentable
  Claim constructioncites KSR · Graham
  Patents in suitUS 10,792,363
• Sunspec Alliance v. Tigo Energy, Inc.No claims unpatentable
  PTAB · Jan 26, 2023 · IPR2021-01286 · APJ Julia Heaney · IPR · Final written decision

  The Board held that claims 1, 5–7, 12, and 13 were not shown unpatentable because the cited art did not disclose the required predetermined number of allowed skips.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree or similar degree in electrical engineering and one year of experience in the design of solar power systems, power control systems, and/or power safety systems.” Pet. 3–4 (citing Ex. 1002 ¶ 17). Patent Owner does not challenge Petitioner’s proposed level of skill for a person of ordinary skill in the art. Ex. 2003 ¶ 25. Having considered the parties’ arguments and evidence, we adopt the level of ordinary skill in the art proposed by Petitioner, because it is consistent with the disclosures of the ’321 patent and the prior art of record.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “Having considered the parties’ positions as to construction of the term “skips” and applicability of the definition of “skips” set forth in the ’321 specification (Ex. 1001, 9:36–37), we construe the term “skips” to mean “the event of missing a communication or pulse.” We adopt the definition set forth in the ’321 specification because patentee acted as its own lexicographer. Cont’l Cirs. LLC v. Intel Corp., 915 F.3d 788, 796 (Fed. Cir. 2019) (citing Phillips, 415 F.3d at 1316) (“When the patentee acts as its own lexicographer, that definition governs.”). We determine that, for purposes of this Decision, no other claim term requires express construction. See, e.g., Vivid Techs., 200 F.3d at 803.” slip op. at 10

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

    “Having considered the record as a whole, we find that Moine does not disclose the “predetermined number of allowed skips” limitation. We do not agree with Petitioner that Moine’s disclosure of determining whether a “skip” (i.e., the event of missing a communication or pulse, as we have construed that term supra) has occurred, meets the challenged claims’ requirement of determining communication has been interrupted “for a time period longer than the predetermined number of allowed skips.” See Pet. Reply 14–15. As explained below, we determine that the “predetermined number of allowed skips” limitation does not encompass zero skips, or a mere interruption in communication from the controller, as described in Moine.” slip op. at 15

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

    “2. Analysis Petitioner argues that to the extent the Board finds Moine’s receiver 5 is not a “watchdog unit,” Kronberg discloses a watchdog unit, as embodied in Figure 1. Pet. 25 (citing Ex. 1006, 2:30–32, Fig. 1). Petitioner contends a person of ordinary skill in the art would have been motivated to use Kronberg’s watchdog to implement Moine’s receiver to achieve a predictable outcome, because watchdog timers were a well-known technique for detecting malfunctions, and the output of Kronberg’s watchdog could be provided to the switch 4 of Moine, to open and power down Moine’s circuit. Id. at 26–28 (citing Ex. 1002 ¶¶ 79–85; Ex. 1006, 1:53–55, 3:38–42, 4:9–12; Ex. 1013, 1269). Petitioner “does not rely on Kronberg to remedy any failure of Moine to disclose the ‘skips’ limitations.” Pet. Reply 19. As discussed above, we find that Petitioner fails to adequately demonstrate that Moine discloses the “predetermined number of allowed skips” limitation of claims 1 and 12. See supra § II.D.2. Accordingly, because Petitioner does not rely on Kronberg to remedy this deficiency in Moine, Petitioner has not demonstrated by a preponderance of the evidence that claims 1 and 12 would have been unpatentable over the combination of Moine and Kronberg.” slip op. at 23

  Patent outcomesUS 8,933,321 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,933,321
• Berkeley Lights, Inc. v. The University Of British ColumbiaNo claims unpatentable
  PTAB · Jan 19, 2023 · IPR2021-01249 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1, 6, 11, 16, 19, 24, 26, 27, and 30 were not shown unpatentable because the asserted references did not establish selective recovery or a sufficient motivation to combine.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on Dr. Meinhart’s testimony, Petitioner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering, chemical engineering, biomedical engineering, molecular biology, (bio)chemistry, or an equivalent degree relevant to microfluidic biological cell analysis, and three to five years of experience with the construction of and application of microfluidic devices to cell culture and analysis.” Pet. 8–9 (citing Ex. 1002 ¶ 40). Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See PO Resp. 3–4 (citing Ex. 2012 ¶¶ 19–20). We find Petitioner’s uncontested articulation to be reasonable in light of the subject matter involved in the ’408 patent and its description of the relevant prior-art background. See, e.g., Ex. 1001, 1:15–2:54 (describing the field and related art as relating to the construction and use of microfluidic devices in cell culture and analysis). Thus, we adopt it for our decision.” slip op. at 9

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

    “Petitioner contends that “no terms require express construction for purposes of resolving the challenges in this proceeding.” Pet. 9; accord Pet. 12. Petitioner also notes that in the parallel district court proceedings, Patent Owner has proposed constructions for the terms chamber and retaining position that differ from Petitioner’s proposed constructions. Pet. 9–10 (citing Ex. 1013 App’x A, 1, 3 (Patent Owner’s proposed constructions); Ex. 1021, 7, 8 (Petitioner’s proposed constructions); Ex. 1002 ¶ 44). In those proceedings, Patent Owner’s proposed construction for chamber is “an enclosed space within a microfluidic device,” and its proposed construction for retaining position is “a location in the chamber at which a cell is maintained during cell culture and media exchange.” Ex. 1013, 6, 8. Although Petitioner does not contend that its arguments rely on the choice of construction for these terms, Petitioner adopts Patent Owner’s constructions for this proceeding. Pet. 11. Patent Owner does not contest these proposed constructions, or propose any other explicit constructions. See generally PO Resp. We agree with Petitioner that we do not need to construe the terms chamber and retaining position to decide the issues presented in this proceeding, and to the extent we need to interpret the meaning of any claim language, we address the interpretations below in the context of the prior art. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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))).” slip op. at 11

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “selectively recovering a cell based on the response in the monitoring step. Although Dimov discloses non-selective recovery and briefly lists a few general techniques that might be used for either mixing or recovery, Dimov does not specifically indicate which of the techniques would be useful for recovery rather than just mixing, and Dimov does not explicitly disclose that any cell recovery would be selective. Nor has Petitioner shown that Dimov inherently discloses selectively recovering any particular cell that has been cultured and monitored, because, as Dr. Gale persuasively testifies, Dimov’s removal techniques could, as far as a person of ordinary skill in the art would have known based on Dimov’s disclosure, be merely for “removing . . . unwanted particles out of the capture chamber/trench.” Ex. 2012 ¶ 64; see also id. ¶ 63 (“Dimov . . . may suggest removing cellular materials (rather than intact cells) after capture . . . .”). In other words, given Dimov’s general focus on performing experiments within the trenches and the lack of any specific disclosure about how or why to remove cells, Petitioner has not met its burden to show that Dimov’s potential cell-removal techniques would have necessarily been based on a response of a specific cell being cultured and monitored in limitation 1D. We also agree with Patent Owner that Dimov does not disclose any specifics about how to carry out a selective cell removal based on one of Dimov’s listed techniques, such as laser tweezers. See PO Resp. 8–9. Nor does Petitioner meet its burden of showing that such a technique would have been within the ordinary skill in the art at the time of the claimed invention. “In order to anticipate, a prior art disclosure must also be enabling, such that one of ordinary skill in the art could practice the invention without undue experimentation.” Novo Nordisk Pharms., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1355 (Fed. Cir. 2005) (citing SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1342 (Fed. Cir. 2005)). Given the labyrinthine outlet channels leading from Dimov’s chambers to the common waste stream and Dimov’s lack of any disclosure of a way to identify and extract cells in the outlet streams, we credit Dr. Gale’s testimony that there would have been substantial obstacles to recovering any specific cells that had been liberated from a trench in Dimov’s device. See Ex. 2012 ¶ 63. Petitioner has not shown that a person of ordinary skill in the art would have overcome those obstacles without undue experimentation.” slip op. at 23

  • Strike new argumentNew argument disregardedOther

    “18 Patent Owner contends that these arguments are untimely, and we agree at least as to certain of the arguments. See Paper 27, Nos. 6, 9, 10; see Paper 28, Nos. 6, 9, 10 (Petitioner’s responses). The new arguments introduce new theories as to how to combine Park and Kovac, including additional steps or new modifications necessary for a successful combination, which could have been presented in the Petition but were not. Nevertheless, as we discuss below, we find these arguments unpersuasive. Petitioner also contends, for the first time, that a person of ordinary skill in the art would have addressed the problem of Park’s downward-forcing circulation patterns19 by starting with flow turned off and then turning on flow “after levitation begins, including after the cell has been pushed up out of a well high enough to be clear of recirculating flow lines created once it is turned on.” Pet. Reply 19–20 (citing Ex. 1039 ¶¶ 175– 177); see also id. at 22 (citing Ex. 1039 ¶ 193).” slip op. at 64

  Patent outcomesUS 10,087,408 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,087,408
• Tennant Company v. Oxygenator Water Technologies, Inc.No claims unpatentable
  PTAB · Aug 17, 2022 · IPR2021-00625 · APJ Kristina M Kalan · IPR · Final written decision

  The Board found that Tennant did not prove claims 13, 14, and 17–27 unpatentable because the asserted references did not establish the claimed microbubbles and nanobubbles, and the obviousness combinations were inadequately supported.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner states, for “purposes of this proceeding, PO does not challenge Petitioner’s proposed level of ordinary skill.” PO Resp. 53 n.6. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Accordingly, we adopt Petitioner’s definition, because it is consistent with the cited prior art. We further note that the prior art itself demonstrates 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) (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “Because patentee has acted as its own lexicographer, and because Petitioner agrees that the definition provided in the specification is the preferred construction, we adopt the construction of “nanobubble” provided in the specification. Cont’l Cirs. LLC v. Intel Corp., 915 F.3d 788, 796 (Fed. Cir. 2019) (citing Phillips, 415 F.3d at 1316) (“When the patentee acts as its own lexicographer, that definition governs.”). Namely, we construe “nanobubble” as “a bubble with a diameter less than that necessary to break the surface tension of water.” Ex. 1101, 4:12–13. We decline to add any additional language to our construction, as proposed by Petitioner, because the additional quoted sentence in the specification appears to describe an effect of nanobubbles on the appearance of water when nanobubbles are present, rather than define the nanobubbles themselves. On this record, we determine that no other claim terms require express construction.” slip op. at 14

  • BurdenDecided for patent owner

    “We disagree that our Institution Decision established a prima facie case that Petitioner met its burden at the Final Written Decision stage. An affirmative decision on institution is a determination that Petitioner has shown, on the record at that stage in the proceeding, that Petitioner has a reasonable likelihood of prevailing on its arguments as to at least one challenged claim. Dec. 40; 35 U.S.C. § 314(a). To prevail in an instituted inter partes review, however, 35 U.S.C. § 316(e) requires Petitioner to meet “the burden of proving a proposition of unpatentability by a preponderance of the evidence.” See TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (“[T]here is a significant difference between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at institution, and actually proving invalidity by a preponderance of the evidence at trial . . . . The Board’s findings in its Final Written Decision were thus not inconsistent with those in its Institution Decision; they were made under a qualitatively different standard.”). To state that our Institution Decision established a prima facie case that Petitioner was correct would be erroneous, as such a position conflates different burdens required of Petitioner and, in doing so, would have us improperly give Petitioner an advantage in the actual trial culminating in a final written decision. Fan Duel, 966 F.3d at 1341–42.” slip op. at 25

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

    “On this complete record, we find that Petitioner’s testing does not sufficiently demonstrate that Wikey inherently discloses nanobubbles. Pet. 22–29. Petitioner apparently had the ability to test for the express disclosure of nanobubbles in its Wikey-based apparatus, but did not do so. Sur-Reply 2–3. Patent Owner points out that nanobubbles, which Petitioner’s expert indicated were on the order of 0.1 microns, are detectable using available technology that Petitioner knew of and had used in the past. Id. However, Petitioner’s expert acknowledged that he did not do any testing that would determine whether nanobubbles were formed. Id. at 7 (citing Ex. 2172, 70:1–4). Petitioner’s reliance on milkiness and supersaturation to demonstrate the presence of nanobubbles is also unsupported. Petitioner argues that milky appearance equals supersaturation (Reply 9 (citing Ex. 1101, 9:38– 50)), and also that milky appearance equals nanobubbles (id. (citing Ex. 1101, 4:14–15)); the inference Petitioner apparently wants us to draw is that supersaturation equals nanobubbles. Patent Owner, however, persuasively argues that dissolved oxygen content over 100% does not prove the water is milky. PO Resp. 25–26; Sur-Reply 6–7; see also Tr. 13:24–26 (Petitioner’s counsel agreeing that “you can have supersaturation without milkiness”). Patent Owner also demonstrates that supersaturation does not necessarily mean that nanobubbles are present. PO Resp. 26; Sur-Reply 7; Ex. 2172, 76:9–14, 77:23–78:21. Thus, Petitioner’s argument based on supersaturation equaling nanobubbles because milkiness equals both breaks down because milkiness does not necessarily equal either. Accordingly, we determine that Petitioner’s arguments and testing fail to show that Wikey inherently discloses nanobubbles.” slip op. at 28

  Patent outcomesUS RE45,415 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
• Fluid Energy Group Ltd. v. Green Products And Technologies, LLCNo claims unpatentable
  PTAB · Jul 5, 2022 · IPR2021-00357 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1–8 were not shown unpatentable: the asserted obviousness combinations failed to establish claim 1’s required removal of cementitious material from a distinct surface, and the precise limitations of claims 5 and 6.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Accordingly, we agree with Petitioner that Patent Owner’s argument, that “[p]roviding a composition does not require understanding the nuances of each chemical contained therein,” is flawed. Sur-reply 1. To determine whether a claim is unpatentable for obviousness to one of ordinary skill in the pertinent art, we consider “the differences between the subject matter sought to be patented and the prior art.” 35 U.S.C. § 103(a) (2006); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Here, Patent Owner acknowledges that “[t]he primary difference between known methods and the claimed invention of the ’912 Patent is a novel composition that solved problems associated with the previously used prior art compositions.” Sur-reply 11. Further, the specification informs that “[o]ne of skill in the art will recognize that these compositions are not intended to be limiting, and variations in ingredients and proportions can be made without departing from the spirit of the invention.” Ex. 1001, 3:13–16. Accordingly, Patent Owner’s view that an ordinarily skilled artisan would only need to rely on pre-formulated cleaning compositions and reported safety information, without “their own chemical knowledge,” is inconsistent with the disclosure of the ’912 patent. Sur-reply 2–3. An ordinarily skilled artisan, as required by the ’912 patent, would understand the nuances of the chemicals required by the terms of the claims. Therefore, we find that Petitioner’s definition, on this record, is representative of the level of ordinary skill in the art and consistent with the disclosures of the ’912 patent. See Ex. 1001, 3:13–16.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “of intended purpose or use, “can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim” as drafted, taking care to avoid importing “‘extraneous’ limitations from the specification.” MPEP § 2111.02 (9th ed. rev. 10.2019 June 2020) (quoting Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989)). Particularly, the MPEP explains that: If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Based on the information presented on this record, we determine that nothing in the body of claim 1 supports a determination that the “cleaning” clause of the preamble represents an additional method step of the claimed invention. Ex. 1001, 3:23–24. To the contrary, the body of the claim fully and completely sets forth all of the required method steps of the invention, as well as the components of the required composition. See id. at 3:25–4:2. Specifically, independent claim 1 comprises three method-step limitations, namely, “providing a composition,” “applying the composition to a surface,” and “removing the composition . . . from the surface.” Id. Those limitations, taken together, indicate that the preamble’s mention of “cleaning” is a non-limiting intended use of the composition specified in the body of the claim.” slip op. at 12

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

    “To be clear, claim 1 requires removing a “released cementitious material” from “a surface.” Id. at 3:28–4:2. Petitioner provides no persuasive reason why an ordinarily skilled artisan would have understood the term “cementitious material” to include “an efflorescence”—indeed, as just noted, the ’912 patent expressly distinguishes those two materials. Id. at 2:59–61. Claim 1 does not broadly encompass a step of removing a released efflorescence from a cementitious material, but is limited to by its plain terms to removing a “released cementitious material” from “a surface.” Id. at 3:28–4:2; see also id. at 2:61–62 (distinguishing “an efflorescence” from “cementitious materials”). In a nutshell, the claim language does not explicitly or implicitly support a construction that broadly encompasses a method of “applying the composition to a surface” of a cementitious material to “release” an efflorescense (id. at 3:28–29), even though one embodiment seems to allow for such use (id. at 2:38–39, 2:59–61). Taking account of the totality of the information presented, we determine that construing “surface” and “cementitious material” using the examples in the majority of the embodiments provided in the ’912 patent specification is necessary to “tether the claims to what the specification[] indicate[s] the inventor actually invented.” Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011). In doing so, we adopt “[t]he construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention . . . [which] in the end, [is] the correct construction.” Phillips, 415 F.3d at 1312. Accordingly, on this record, we construe claim 1, and each other challenged claim through dependence from claim 1, to require a step of applying a composition to “a surface” structurally separate and distinct from the “cementitious material” that is released and removed “from the surface.” Id. at 3:28–4:2.” slip op. at 18

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Sargent discloses “that urea hydrochloride is an inexpensive and useful agent for the removal of the build-up of water-insoluble metal salts on surfaces, and the dissolution of water-insoluble metal salt dispersions or suspensions.” Resp. 21–22 (quoting Ex. 1006, 2:3–6). Although the background section of the ’912 patent describes the “removal of water-insoluble cementitious and lime materials” as “a difficult process,” Petitioner directs us to no evidence sufficient to establish that calcium carbonate is “a cementitious material” within the meaning of claim 1. Ex. 1001, 1:13–14, 3:28–29; see Pet. 22; Reply 14 (totality of Petitioner’s information on point). Instead, in conclusory fashion, Petitioner simply assumes that Sargent’s disclosure of “water-insoluble metal salt dispersions or suspensions” and “calcium carbonate” constitute “cementitious material” within the scope of claim 1. Reply 14; see Pet. 22 (relying on Sargent’s disclosure of the removal of “calcium carbonate”); see also Ex. 1003 ¶ 103 (conclusory opinion cited at Pet. 22 and Reply 14). Further, Petitioner assumes that the “applying” and “removing” steps of claim 1 are satisfied by Sargent’s application of a composition “to a surface of a cementitious material to release a portion of the cementitious material therefrom.” Pet. 16 (Petitioner’s emphasis). Specifically, Petitioner argues that Sargent teaches the removal of released cementitious material from the surface because an ordinarily skilled artisan “would understand that a result of Sargent’s rinsing process is to remove the composition by rinsing with water, which will also release at least a portion of any cementitious material, such as calcium carbonate, dissolved from the surface.” Id. at 22 (citing Ex. 1006, 6:57–7:2; Ex. 1003 ¶ 103). For reasons explained above in our claim construction analysis, however, we construe claim 1 to require application of the composition to a surface distinct from the cementitious material being removed from the surface. See supra II.C.2. As Patent Owner contends, “It would be absurd to hold that cleaning a surface involves removing the surface from the surface,” because “[t]he background section of the ’912 Patent clearly contemplates that surfaces to be cleaned include surfaces of vehicles and that it is undesirable to ‘damage the target surface.’” Resp. 7 (citing Ex. 1001, 1:46). As explained above, we do not give limiting effect to the preamble of” slip op. at 25

  Patent outcomesUS 7,938,912 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,938,912
• Applied Materials, Inc. / Intel Corporation et al. v. Demaray LLCNo claims unpatentable
  PTAB · Jun 29, 2022 · IPR2021-01091 · APJ Kimberly Mcgraw · IPR · Final written decision

  Claims 1–21 were not shown unpatentable because the petitioner failed to establish the claimed narrow band-rejection filter or a sufficient reason to add one to Barber’s system.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Decision on Institution, we adopted Petitioner’s proposal regarding the level of one of ordinary skill in the art, except that we deleted the qualifier “at least” to eliminate vagueness as to the appropriate amount of relevant experience. Inst. Dec. 10 (noting that the qualifier expands the range without an upper bound, i.e., encompassing an unlimited amount of years of experience, and thus, does not meaningfully indicate the level of ordinary skill in the art).” slip op. at 10

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

    “Neither Petitioner nor Patent Owner assert that construction of any claim term is required to resolve any issues in dispute. See Pet. 11 (citing Ex. 1002 ¶ 54); PO Resp. 10–11. In our Decision on Institution we invited the parties to address whether the claim term “providing an RF bias that corresponds to the narrow band rejection filter to the substrate” requires that (1) the frequency of the RF bias be the same as the frequency at which the filter operates or whether (2) the frequency of the RF bias could be a shift from the frequency at which the filter operates. Inst. Dec. 37–38. Patent Owner states the term should be construed according to its plain and ordinary meaning, which the parties in the copending litigation allegedly agreed requires the claimed filter “to have a rejection band set at a frequency of the RF bias power supply.” PO Resp. 10 (citing Ex. 2021; Ex. 2022, 7–10). Petitioner “disputes PO’s suggestion of ‘agree[ment] (EX 2022, 10)” but argues that Patent Owner’s “positions are not dispositive because they do not distinguish the prior art.” Reply 1. On the full record now before us, we agree that express construction of this term is not necessary as resolution of the present dispute does not turn on whether the frequency of the RF bias is the same as, or a shift from, the frequency at which the filter operates. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “narrow band-rejection filter (aka notch filter).” Pet. 22–23. Petitioner’s expert, Dr. Subramanian, testified that the difference between a narrow band-rejection filter and a band-rejection filter depends on the relationship between the bandwidth and the center frequency. See, e.g., Ex. 2030, 95:15– 21 (explaining that the bandwidth is “much, much, much smaller than the center frequency”). There is inadequate evidence that the bandwidth of Hirose’s filter is sufficiently narrow to constitute a narrow band-rejection filter. Rather, the evidence of record shows that Hirose’s filter is a band-rejection filter, not a narrow band-rejection filter.” slip op. at 29

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Not reached

    “Petitioner met its burden of production to demonstrate that Hirose, which has a filing date prior to the filing date of the ’657 patent, was prior art by asserting Hirose was prior art under § 102(e). See Dynamic Drinkware, 800 F.3d at 1379. Hirose’s earlier filing date shifts the burden of production to Patent Owner to produce evidence supporting a date of invention before Hirose’s filing date. See id. With its Response, Patent Owner presents evidence it contends shows a date of conception of claims 1–8 and 10–21 prior to July 18, 2001, followed by reasonably continuous diligence. For the purposes of this decision, we need not determine whether Hirose qualifies as prior art, because, as explained below, even if Hirose qualifies as prior art, Petitioner has not sufficiently shown that all of the asserted claims would have been obvious over the grounds asserting Hirose.” slip op. at 18

  Patent outcomesUS 7,381,657 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,381,657
• Applied Materials, Inc. / Intel Corporation et al. v. Demaray LLCNo claims unpatentable
  PTAB · Jun 29, 2022 · IPR2021-01030 · APJ Kristina M Kalan · IPR · Final written decision

  Petitioner did not prove claims 1–13 unpatentable because the grounds failed to establish the claimed filter limitations or a reason to combine Barber and Hirose.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 9 (citing Ex. 1001, 1:10–14, 2:45–47; Ex. 1002 ¶¶ 18–19). In our Institution Decision, we adopted Petitioner’s proposal regarding the level of one of ordinary skill in the art, except that we deleted the qualifier “at least” to eliminate vagueness as to the appropriate amount of relevant experience. Inst. Dec. 10.” slip op. at 9

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

    “AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 10

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached

    “An inventor may antedate a § 102(e) reference by showing that the invention was conceived before the effective date of the reference, followed by reasonably continuous diligence until the constructive reduction to practice. Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356, 1362 (Fed. Cir. 2001).” slip op. at 17

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

    “Just the knowledge, however, that a filter can be used to protect or isolate one power supply from another in various types of plasma systems is not sufficient to show that one of ordinary skill in the art would have been motivated to use a filter in Barber’s system to protect Barber’s pulsed DC power source from its RF power supply. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”). In an inter partes review, “the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363. In support of its challenge, Petitioner and Petitioner’s expert may rely on general knowledge, supported by evidence, to argue that a challenged claim would be obvious in light of the general knowledge of a skilled artisan. Koninklijke Philips v. Google, 948 F.3d 1330, 1337 (Fed. Cir. 2020) (stating that although the prior art that can be considered in inter partes review is limited to patents and printed publications, “it does not follow that we ignore the skilled artisan’s knowledge when determining whether it would have been obvious to modify the prior art”). Although the Petition on its face relies on Barber and Hirose to meet the limitations of claim 1[f] (Pet. 24–36), Petitioner’s arguments rely not only on Barber and Hirose, but on numerous additional references, ostensibly to demonstrate the general knowledge of a skilled artisan. Id. For example, Petitioner cites to a number of references (i.e., Licata (Ex. 1010), Joo (Ex. 1014), Celestino (Ex. 1016), Quon (Ex. 1017), Johnson (Ex. 1018), Hong (Ex. 1019), Ohmi (Ex. 1020), and Keller (Ex. 1021)) that use different types of filters in various plasma systems for the “known use and benefits of filters in plasma systems for blocking interference/current of one power supply from another.” Pet. 32–33. Petitioner asserts that a POSITA would have understood that choosing to reject a narrow band of frequencies depending on the bandwidth of Barber’s RF supply, was a known way to achieve “the benefits” of Hirose. Id. at 31–32 (citing Ex. 1023 (Miller), 7:51–61; Ex. 1057 (Sill), 7:23–34; Ex. 1058 (Zennamo), 1:63–2:1). Petitioner also relies on a number of manuals (i.e. Exs. 1025, 1026, 1062, 1067, 1024, 1065, 1066) that illustrate “design concepts/guidance associated with use of such supplies in a plasma system with an RF power source.” Id. at 34–35. Even considering all the references in the Petition and the declaration, Petitioner does not adequately explain how the filters and principles in these relied-upon references and manuals would lead one of ordinary skill in the art to use a filter, let alone a narrow-band rejection filter, in Barber’s system.” slip op. at 36

  Patent outcomesUS 7,544,276 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,544,276
• Applied Materials, Inc. / Intel Corporation et al. v. Demaray LLCNo claims unpatentable
  PTAB · Jun 29, 2022 · IPR2021-01090 · APJ Kristina M Kalan · IPR · Final written decision

  The Board held claims 1–13 not unpatentable because Petitioner failed to show the asserted combinations disclosed or motivated use of the claimed narrow band-rejection filter.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 9 (citing Ex. 1001, 1:10–14, 2:45–47; Ex. 1002 ¶¶ 18–19). In our Institution Decision, we adopted Petitioner’s proposal regarding the level of one of ordinary skill in the art, except that we deleted the qualifier “at least” to eliminate vagueness as to the appropriate amount of relevant experience. Inst. Dec. 10. 14 Because we determine Petitioner has not sufficiently shown the challenged claims would have been obvious, we do not reach Patent Owner’s asserted objective evidence of non-obviousness. PO Resp. 70–72. Patent Owner does not appear to dispute this definition. See generally PO Resp. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Accordingly, we retain our modified adoption of Petitioner’s definition. We further note that the prior art itself demonstrates 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) (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 9

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

    “On the full record now before us, we determine it is not necessary to construe any claim term expressly, because resolution of the present dispute does not turn on whether the frequency of the RF bias power supply is the same as, or offset from, the frequency at which the filter operates. Vivid Techs., 200 F.3d at 803; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in an inter partes review).” slip op. at 11

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artNot reached

    “Petitioner met its burden of production to demonstrate that Hirose, which has a filing date prior to the filing date of the ’276 patent, was prior art by asserting Hirose was prior art under § 102(e). See Dynamic Drinkware, 800 F.3d at 1379. Hirose’s earlier filing date shifts the burden of production to Patent Owner to produce evidence supporting a date of invention before Hirose’s filing date. See id. With its Response, Patent Owner presented evidence it contends shows a date of conception prior to July 18, 2001, followed by reasonably continuous diligence. PO Resp. 11– 41. For the purposes of this decision, we do not determine whether Hirose qualifies as prior art to claims 1–13, because, as explained below, even if Hirose qualifies as prior art, Petitioner has not sufficiently shown that any of the asserted claims would have been obvious over the grounds asserting Hirose.” slip op. at 17

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “frequency response and that a POSITA would have understood that Hirose’s filter is “tuned to reject a narrow band of frequency,” which operates “like a narrow band-rejection filter (aka notch filter).” Pet. 28–29. Petitioner’s argument that Hirose discloses or suggests a narrow band-rejection filter is contained in this short portion of the Petition and relies on an inference that a V-shaped curve necessarily signifies a narrow band-rejection filter. Any such inference that a V-shaped curve is sufficient to characterize a filter as a narrow band-rejection filter, however, is belied by Dr. Subramanian’s own testimony. Indeed, Dr. Subramanian explains that the shape of a curve alone, including the shape of the curves of Figures 2–9(G) and (H) of Gibilisco, is not sufficient on its own to determine whether a filter corresponding to that curve is a narrow band-rejection filter or a broad bandrejection filter. See, e.g., Ex. 2030, 69:13–18 (stating, just looking Figure 2– 9(H), he could not tell if the figure corresponds to a narrow band-rejection filter because “I don’t have enough information”). Dr. Subramanian further testified that additional information beyond the mere shape of the curve is required to determine if the curve represents a narrow band-rejection filter; for example, Dr. Subramanian states that it was Gibilisco’s characterization of Figure 2–9(G) as having a sharp band rejection response that led him to conclude it was a narrow band-rejection filter. See Ex. 2030, 68:20–69:4 (Dr. Subramanian testifying that he would not “characterize the figure depicted in G as a narrow band” based just on the figures, but “on all the information that’s given,” which includes “this reference specifically [stating] at G, ‘sharp band rejection response’”); see also id. at 60:24–61:23, 62:7–63:11. Significantly, Petitioner does not point to statements in Hirose itself” slip op. at 32

  Patent outcomesUS 7,544,276 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,544,276
• Favored Tech Corporation v. P2i LtdNo claims unpatentable
  PTAB · Aug 23, 2021 · IPR2020-00478 · APJ Jeffrey W Abraham · IPR · Final written decision

  Favored Tech did not prove claims 1–17 unpatentable: Baalmann did not anticipate the asserted claims, and the obviousness grounds lacked adequate disclosure or motivation with a reasonable expectation of success.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededGranted

    “After considering Petitioner’s arguments regarding claim 9, Patent Owner’s silence regarding claim 9, and the language in the ’070 patent itself (e.g., Ex. 1001, 11:45–52, 12:60–61), we agree with Petitioner that the term “1H, 1H, 2H, 3H-heptadecafluorodecylacylate” in claim 9 should be construed to correctly recite HDFDA (1H, 1H, 2H, 2H-heptadecafluorodecylacrylate). The error Petitioner identifies is conspicuous and undisputed, and the intrinsic record does not suggest a different interpretation. Fitbit, Inc. v. Valencell, Inc., 964 F.3d 1112, 1119–20 (Fed. Cir. 2020); Novo Industries, L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003). Additionally, after reviewing the parties’ remaining claim construction arguments and evidence, we determine that we do not need to expressly construe any other terms for purposes of this Decision because, as addressed in detail below, we find Petitioner’s showings deficient for reasons that do not depend on the construction of any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art in the field of the ’070 patent would have had “at least a bachelor’s degree in a field such as chemistry, physics, or chemical engineering, as well as at least two years of experience with plasma-polymerization techniques.” Pet. 14 (citing Ex. 1002 ¶¶ 26–31). Patent Owner agrees with this proposed definition “with the understanding that ‘experience with plasma-polymerization techniques’ includes plasma-enhanced chemical vapor deposition (PECVD) techniques.” PO Resp. 9 (citing Ex. 2010 ¶ 20; Ex. 1002 ¶¶ 12, 63). In light of the record before us, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art. As Patent Owner points out, Dr. Gleason states that PECVD is a form of plasma polymerization, and thus the parties agree that experience with plasma-polymerization techniques would include PECVD. PO Resp. 9; Ex. 1002 ¶ 63. 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 7

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

    “We agree with Patent Owner. Petitioner has failed to demonstrate adequately that each and every element in claim 1, arranged as recited in the claim, is found in a single prior art reference. NetMoneyIN, 545 F.3d at 1369; Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Here, Petitioner combines several different teachings from Baalmann to support its anticipation argument. For example, Petitioner relies on the “evacuable chamber with a volume of 1 m3” from Baalmann’s Example 1, but not the power (2kW) expressly disclosed as being used with that reactor of Example 1. Ex. 1004 ¶ 47. With regard to power density, Petitioner relies on Baalmann’s general disclosure that “[t]he electrical power input per chamber volume is set between 0.5 kilowatt/m3 and 5 kilowatt/m3.” Ex. 1004 ¶ 20. As Patent Owner points out, however, that power density range is not tied to any particular reactor volume or plasma zone volume. PO Resp. 19. Baalmann also fails to expressly disclose the plasma zone volume of the reactor in Example 1. See Ex. 1004 ¶¶ 47–48. To attempt to overcome this absence of an express disclosure, Petitioner argues that, for the reactor used in Example 1, the plasma zone volume and reactor volume are the same based on the configuration of the electrodes in the reactor. Pet. 24–25. Baalmann, however, does not expressly disclose the electrode configuration of the reactor in Example 1. See Ex. 1004 ¶¶ 47–48. Instead, Petitioner relies on Baalmann’s general disclosure of an embodiment wherein one electrode is formed by the chamber wall itself. Pet. 24–25; Ex. 1004 ¶¶ 35, 61. In so doing, Petitioner ignores the fact that Baalmann also states that “[t]wo opposite rod-shaped electrodes may also be used.” Ex. 1004 ¶ 35. In view of this, we disagree with Petitioner’s conclusion that a person of ordinary skill in the art “would have understood that chamber to be configured as described throughout the rest of the specification: with the chamber wall serving as one of the electrodes.” Pet. 24. Even if we were persuaded by Petitioner’s argument, the fact remains that Petitioner’s anticipation challenge is based on the combination of different features disclosed in separate portions of Baalmann. “Such picking and choosing . . . has no place in the making of a 102, anticipation rejection.” In re Arkley, 455 F.2d 586, 587–88 (CCPA 1972) (cited with approval in Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083 (Fed. Cir. 2008)); see also Microsoft Corp. v. Biscotti, Inc., 878 F.3d 1052, 1069 (Fed. Cir. 2017) (stating that anticipation is not proven by multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention).” slip op. at 12

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

    “For all of the foregoing reasons, we are not persuaded by Petitioner’s argument that a person of ordinary skill in the art would have inferred the volume of the plasma zone10 in Coulson is 470 cm3 based on Coulson’s disclosure of a “glow discharge reactor” having a volume of 470 cm3. Pet. 38; Reply 15–16. In view of this, we are likewise not persuaded that Coulson discloses a power density of 85.1 W/m3, because Petitioner’s 9 Dr. Gleason confirmed that she did not perform any experiments to verify her opinions regarding Coulson’s plasma zone. Ex. 2017, 80:10–18. 10 As noted above, Petitioner presented its argument in the context of its proposed construction of plasma zone. Petitioner did not present an alternative argument supported by sufficient evidence addressing the volume of Coulson’s plasma zone based on Patent Owner’s proposed construction of plasma zone. Accordingly, we agree with Patent Owner’s assertion that we do not need to expressly construe the term plasma zone to resolve this issue. Sur-reply 1. argument that Coulson discloses this power density is based on its assertion that Coulson has a plasma zone volume of 470 cm3. Pet. 38. This finding is fatal to Petitioner’s obviousness challenge of claim 1 based on the combined teachings of Baalmann and Coulson because Coulson’s purported disclosure of using a power density of 85.1 W/m3 is an essential component of Petitioner’s obviousness challenge. An obviousness determination requires finding both “that a skilled artisan would have been motivated to combine the teachings of the prior art . . . and that the skilled artisan would have had a reasonable expectation of success in doing so.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367-68 (Fed. Cir. 2016). In attempting to establish a person of ordinary skill in the art would have had reason to combine the teachings of Baalmann and Coulson, and would have had a reasonable expectation of success in doing so, Petitioner repeatedly refers to using Coulson’s optimized reaction conditions, including power density, in Baalmann’s larger reactor. Pet. 48 (stating that a person of ordinary skill in the art “would have been motivated to maintain the same or similar reaction conditions within a larger reaction chamber that were present in Coulson’s chamber during Coulson’s reported plasma polymerization reactions, including power density and pressure, to preserve the same effective results.”), 48–49 (“That would have included motivation to maintain Coulson’s disclosed power density when scaling up to a larger reaction volume to preserve the beneficial results Coulson reported at that optimized power density.”); Reply 23 (referring to the “straightforward, compelling obviousness case set forth in the petition” that a person of ordinary skill in the art “would have expected to succeed performing Coulson’s reactions on a larger scale in view of Baalmann”); 23 (“The petition explained why a POSA would have modified Baalmann to use Coulson’s HDFDA monomer and reaction conditions to produce coatings with a reasonable expectation of success” ), 24 (stating the Petition “explained why a POSA would have expected success using known parameters from Coulson in an established large-scale apparatus”). During the oral hearing, counsel for Petitioner confirmed its obviousness positions depend on using Coulson’s power density. Tr. 20:10–21:16. Accordingly, Petitioner’s failure to demonstrate adequately that Coulson discloses or suggests a power density of 85.1 W/m3 undermines its reason to combine and reasonable expectation of success arguments. Petitioner’s argument that Baalmann discloses the claimed power” slip op. at 26

  Patent outcomesUS 8,389,070 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,389,070

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.