• Micron Technology, Inc. v. Yangtze Memory Technologies Company, Ltd.No claims unpatentable
  PTAB · Jan 5, 2026 · IPR2024-00911 · APJ Kimberly Mcgraw · IPR · Final written decision

  Claim 10 was not shown unpatentable under § 103 over Toyama because the challenge did not remedy the deficiencies in its nonobvious base claim 8.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner’s proposed definition appears to be consistent with the cited prior art and the disclosure of the ’806 patent, and we adopt it for purposes definition of a POSITA.” slip op. at 8

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

    “In our Decision on Institution, we noted that the parties disputed construction of “each local contact” found in dependent claim 10, and “dielectric structure” recited in independent claim 8. Inst. Dec. 8–9. We determine that no express construction of “each local contact” recited in claim 10, or any other claim term, is required to resolve the issues in dispute in this proceeding.” slip op. at 9

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

    “independent claim 8 would have been obvious for the reasons set forth in its petition in the 791-IPR. See id. at 1 (stating the present Petition maintains the same grounds set forth in IPR2024-00791). As explained in our Final Written Decision (Ex. 3001) in the 791-IPR issued concurrently, Petitioner did not show by a preponderance of the evidence that independent claim 8 would have been obvious over Toyama under any of Petitioner’s three alternative arguments. None of Petitioner’s arguments set forth in the present Petition, including the arguments directed to claim 10, remedy the deficiencies regarding its base claim 8. See Pet. 53–31, 98–101, 124–125; see also Reply. Accordingly, for the same reasons set forth in the Final Written Decision in the 791-IPR issued concurrently, Petitioner has not shown by a preponderance of the evidence that independent claim 8, and therefore dependent claim 10, would have been obvious over Toyama. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (“Dependent claims are nonobvious under section 103 if the independent claims from which they depend are nonobvious.”); Ex. 3001.” slip op. at 14

  • Expert testimonyNot reached

    “Petitioner relies on the Declaration of Jack C. Lee, Ph. D. (Ex. 1003) and the Reply Declaration of Jack C. Lee, Ph.D. (Ex. 1043) in support of its 2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011), revised 35 U.S.C. §§ 102 and 103 effective March 16, 2013. Because the ’806 patent has an effective filing date after March 16, 2013 (Ex. 1001, codes (22), (63)), we refer to the AIA version of Sections 102 and 103. 3 Toyama, US Pub. No. 2017/0179026 A1, published June 22, 2017 (Ex. 1005). 4 Petitioner characterizes its alternative arguments of unpatentability of claim 10 as based on three “grounds.” See Pet. 15. Because each of Petitioner’s arguments are based on the same reference, albeit different embodiments, we characterize Petitioner’s challenges as three alternative arguments based on a single ground because each argument relies on the same reference. Ph.D. (Ex. 2005). Transcripts of the depositions of Dr. Lee (Exs. 2006, 2010) and of Dr. Yang (Ex. 1044) have also been submitted into the record.” slip op. at 7

  Patent outcomesUS 10,937,806 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,937,806
• Eve Energy Co., Ltd. v. Varta Microbattery GmbHNo claims unpatentable
  PTAB · Aug 8, 2022 · IPR2021-00474 · APJ Christopher L Crumbley · IPR · Final written decision

  Claim 13 was not shown unpatentable because Petitioner did not establish a reason to modify Brown; challenges to claims 1–12 and the contingent motion to amend were dismissed as moot.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “In the Decision on Institution, we determined that a person of ordinary skill in the art at the time of the invention of the ’581 patent is a person holding a bachelor’s degree in engineering (mechanical, electrical or chemical), general science, materials science or the equivalent and 3-4 years of work experience with electrochemical cell packaging systems. DI 8 (adopting Petitioner’s proposed definition). For purposes of this Final Written Decision, we maintain our determination from the Decision on Institution because neither party disputes that determination and because the level of skill is consistent with the record. See PO Resp. 5 (stating that “[t]he claims are patentable regardless of which definition is used.”); see generally Pet. Reply.” slip op. at 12

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

    “Petitioner contends that the terms of the challenged claims should be given their ordinary and customary meaning, but does not state with specificity what the ordinary and customary meaning of any term may be. Pet. 17. In our Decision on Institution, we interpreted Petitioner’s position to be that no claim term of the ’581 patent requires express construction, and Petitioner did not disagree with this understanding during trial. Patent Owner agreed that no claim term required construction beyond its plain and ordinary meaning. PO Resp. 6. We agree that no claim terms require express construction for purposes of resolving the dispute between the parties. See Nidec Motor,868 F.3d at 1017; Vivid Techs., 200 F.3d at 803 (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 13

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

    “the output conductor of a battery cell appears “simple” and that the proposed modification to Brown may be one of a small set of possible options. But that does not remove Petitioner’s obligation to explain why a person of ordinary skill in the art would have had some reason to make the modification to the prior art that has been proposed. Requiring a petitioner to articulate a reason to modify the prior art guards against hindsight evaluation of a modification which may only appear obvious after the fact. For this reason, the Supreme Court has noted that “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness,” and that “[t]o facilitate review, this analysis should be made explicit.” See KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Here, after evaluating the entirety of the factual record adduced at trial, we cannot conclude that Petitioner has set forth a sufficiently supported reason why a person of ordinary skill in the art would have modified Brown. First, we agree with Patent Owner that Petitioner’s articulated goal of maximizing the volume of active material in the cell is undercut by the modification it proposes. As Petitioner’s expert Mr. Juzkow admitted, relocating Brown’s output conductor to the bottom of the cell would reduce the volume available for active material by approximately one percent. While we do not disregard Mr. Juzkow’s subsequent testimony that other modifications to Brown’s cell (such as removal of the central screw cavity) could compensate for this loss in volume, the fact remains that Petitioner did not propose these additional modifications in the Petition. It is incumbent on Petitioner to set forth all modifications to the prior art it plans to rely on, and justify why a person of ordinary skill in the art would have had reason to make them, so that we may fully evaluate whether it would have been obvious to do so. In any event, even if we were to accept Mr. Juzkow’s late assertion of other modifications that could be used to compensate for the loss in volume of active material, the fact remains that it is these other modifications that would be serving the motivation proposed by Petitioner of maximizing the volume of active material; relocating the output conductor would have no positive effect towards this modification. Thus, we conclude that Petitioner’s expressed motivation of maximizing active material volume has no rational relationship to the modification of Brown that is central to its Petition, of relocating the output conductor from the side of the casing to the bottom.” slip op. at 24

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “propose substitute claims 26–38 in the event that we determined original claims 1–13 to be unpatentable. MTA 4. Original claims 1–12 are no longer at issue in this proceeding, having been canceled and replaced by substitute claims 14–25 via a granted Motion to Amend in IPR2020-01211. And we have found that Petitioner has not established by a preponderance of 13 Although not raised in briefing by either party, we have also evaluated whether estoppel under 37 C.F.R. § 42.73(d)(3)(i) would require a finding of unpatentability of claim 13 in light of our prior determination in IPR2020- 01211 that claims 1–12 are unpatentable. See 37 C.F.R. § 42.73(d)(3)(i) (“A patent applicant or owner is precluded from . . . obtaining in any patent: A claim that is not patentably distinct from a finally refused or canceled claim.”). We conclude that it does not. The Board has previously held that defending the patentability of a previously-issued claim in an inter partes review does not qualify as “obtaining in a patent” that claim, and therefore patent owner estoppel does not apply in this situation. See Apple Inc. v. ContentGuard Holdings, Inc., IPR2015-00458, Paper 9, 8 (PTAB July 15, 2015). the evidence that claim 13 is unpatentable. The contingency on which Patent Owner’s Motion to Amend is based, therefore, has not occurred. We dismiss the Motion to Amend as moot.” slip op. at 27

  Patent outcomesUS 9,496,581 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,496,581
• Qiagen North American Holdings, Inc. v. Handylab, Inc.No claims unpatentable
  PTAB · Jul 14, 2020 · IPR2019-00488 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claims 1–33 were not shown unpatentable because the asserted combinations did not establish the claimed multi-lane cartridge or a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “We agree with the parties that a POSA would have had an engineering background and experience with microfluidic devices, which is 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 Petitioner’s and Patent under either assessment.” slip op. at 9

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

    “We also agree with Patent Owner that the specification defines the structure of the sample lane. PO Resp. 12. The specification states: A sample lane is an independently controllable set of elements by which a sample can be analyzed, according to methods described herein as well as others known in the art. A sample lane comprises at least a sample inlet, and a microfluidic network having one or more microfluidic components as further described herein.” slip op. at 13

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

    “In an obviousness analysis, a sufficient reason must be shown as to why a POSA would have thought of combining or modifying the prior art to achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008). Here, Petitioner offers only the general proposition that drilling access holes into the glass cover of Zou I’s microfluidic chip was a “common technique,” but this does not provide a reason why a POSA would have been motivated to modify Zou I’s microfluidic chip. Pet. Reply 7. Petitioner’s argument and Dr. Gale’s that does not apprise us of why a POSA would have modified Zou I with access holes that would operate as separate sample inlets for each sample lane as required by the claims of the ’708 patent. Here, Petitioner attempts to imbue a POSA with the knowledge of the claimed invention, when no prior art reference, references of record, or other evidence conveys or suggests that knowledge. Petitioner’s argument that a POSA would have modified Zou I in this way appears to be premised on Petitioner’s knowledge of the ’708 patent disclosure. This is improper hindsight reasoning. Petitioner needed to explain what would have led a POSA at the time of the invention to consider modifying Zou I to include a separate sample inlet with each sample lane. Petitioner failed to provide such an explanation. See W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) (In an obviousness analysis, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then-accepted wisdom in the art.”).” slip op. at 31

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

    “Petitioner has failed to sufficiently demonstrate that the combination of Zou I and McNeely or Pease teaches multi-lane microfluidic cartridges, because Petitioner has failed to establish by a preponderance of the evidence that a POSA would reasonably have expected to be successful in combining Zou I’s microfluidic chip with a cartridge as taught by McNeely or Pease. In order to demonstrate that the challenged claims are obvious, a petitioner must demonstrate “that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). A petitioner must combination(s) of elements in specific references would yield a predictable result, or [3] how any specific combination would operate or read on the asserted claims.” Id. at 1327–28. Focusing on the parties’ arguments pertaining to how Zou I and McNeely or Pease could be combined, which combination of elements in the references would yield a predictable result, and how the combination would operate or read on the challenged claims, we determine that the evidence on this record is not sufficient to show that a POSA could have had a reasonable expectation of success in attempting to combine the teachings of Zou I with McNeely or Pease. Although the Petition sets forth various rationales for why a person of ordinary skill would have had reason to combine the teachings of Zou I and McNeely or Pease, the rationales are general in nature and do not address any specific modification to either of the references. Pet. 28–33. The Petition includes a single reference to reasonable expectation of success, in a conclusory statement that “a POSA would have been motivated to combine the multiplexing PCR unit of Zou I with a conventional integrated machine such as in McNeely or Pease, with a high expectation of success.” Id. at 28–29. The First Gale Declaration is similarly conclusory as to how Zou I and McNeely or Pease could be combined and does not elaborate on reasonable expectation of success. See Ex. 1001 ¶¶ 116–127. Such conclusory assertions, lacking factual substantiation, are insufficient for evaluating reasonable expectation of success as part of an obviousness determination. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017).” slip op. at 35

  Patent outcomesUS 7,998,708 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,998,708
• Qiagen North American Holdings, Inc. v. Handylab, Inc.No claims unpatentable
  PTAB · Jul 14, 2020 · IPR2019-00490 · APJ Julia Heaney · IPR · Final written decision

  Claims 1–22 were not shown unpatentable because the asserted combinations failed to establish the required multi-lane cartridges and a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “year of related experience.” Pet. 7. Patent Owner argues that Petitioner’s proposed definition “is not narrowly drawn to experience in ‘microfluidic systems that carry out PCR,’” and contends that a POSA “would have had a degree in Mechanical Engineering, Bioengineering, or a similar field, and three years of experience with microfluidic devices that carry out PCR, or would have an advanced degree in a similar field with at least one year of related experience.” PO Resp. 8 (citing Ex. 2036 ¶¶ 25–26). Patent Owner’s declarant Dr. Northrup states that, although he disagrees with Petitioner’s proposed definition of a POSA, his “opinions would not change under” that definition. Ex. 2036 ¶ 28. We agree with the parties that a POSA would have had an engineering background and experience with microfluidic devices, which is 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 Petitioner’s and Patent Owner’s definitions, and we note that our conclusions would be the same under either assessment.” slip op. at 9

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

    “We agree with Patent Owner that the specification defines the structure of the sample lane. PO Resp. 12. The specification states: A sample lane is an independently controllable set of elements by which a sample can be analyzed, according to methods described herein as well as others known in the art. A sample lane comprises at least a sample inlet, and a microfluidic network having one or more microfluidic components as further described herein. Ex. 1003, 13:4–9. The embodiments described in the specification include sample inlets associated with each of the sample lanes. See, e.g., id. at 14:41–52, Figs. 10A, 10B (describing an exemplary microfluidic cartridge depicted in Figures 10A and 10B as showing “[m]ore than one inlet 202 . . . wherein one inlet operates in conjunction with a single sample lane”), 17:60–64, Fig. 13 (describing and depicting a 48-sample cartridge with separate inlets 602 for each sample lane). In contrast, when describing other elements (such as inlet ports and valves) that may be included in a sample lane, the specification clearly conveys that these other elements are optional. Id. at 13:10–13 (“In various embodiments, a sample lane can include a sample inlet port or valve, and a microfluidic network that comprises, in fluidic communication one or more components selected from the group consisting of” specified valves, vents, pumps, and chambers. (emphasis added)).” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner

    “In an obviousness analysis, a sufficient reason must be shown as to why a person of ordinary skill in the art would have thought of combining or modifying the prior art to achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008). Here, Petitioner offers only the general proposition that drilling access holes into the glass cover of Zou I’s microfluidic chip would have been a common technique Pet. Reply 7. Petitioner’s argument and Dr. Gale’s testimony with respect to the modification of Zou I leaves an analytical gap that does not apprise us of why a person of ordinary skill would have modified Zou I with access holes that would operate as separate sample inlets for each sample lane as required by the claims of the ’900 patent. Here, Petitioner attempts to imbue a person of ordinary skill with the knowledge of the claimed invention, when no prior art reference of record or other evidence conveys or suggests that knowledge. Without such evidence, Petitioner’s argument that a person of ordinary skill would have modified Zou I in this way appears to be premised on Petitioner’s knowledge of the ’900 patent disclosure. This is improper hindsight reasoning. Petitioner needed to explain what would have led a person of ordinary skill at the time of the invention to consider modifying Zou I to include a separate sample inlet with each sample lane. Petitioner failed to provide such an explanation. See W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) (In an obviousness analysis, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then-accepted wisdom in the art.”).” slip op. at 31

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

    “Petitioner has failed to sufficiently demonstrate that the combination of Zou I and McNeely or Pourahmadi teaches multi-lane microfluidic cartridges, because Petitioner has failed to establish by a preponderance of the evidence that a person of ordinary skill in the art would reasonably have expected to be successful in combining Zou I’s microfluidic chip with a cartridge as taught by McNeely or Pourahmadi. In order to demonstrate that the challenged claims are obvious, a petitioner must demonstrate “that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327–28 (Fed. Cir. 2012) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007). A petitioner must articulate “[1] how specific references could be combined, [2] which combination(s) of elements in specific references would yield a predictable result, or [3] how any specific combination would operate or read on the asserted claims.” Id. Focusing on the parties’ arguments pertaining to how Zou I and McNeely or Pourahmadi could be combined, which combination of elements in the references would yield a predictable result, and how the combination would operate or read on the challenged claims, we determine that the evidence on this record is not sufficient to show that a person having ordinary skill in the art would have had a reasonable expectation of success in attempting to combine the teachings of Zou I with McNeely or Pourahmadi. Although the Petition sets forth various rationales for why a Zou I and McNeely or Pourahmadi (Pet. 27–32), the rationales are general in nature and do not address any specific modification to either of the references. Further, the Petition includes a single reference to reasonable expectation of success, in a conclusory statement that “a POSA would have been motivated to combine the PCR unit of Zou I with a multi-cartridge integrated machine such as in McNeely or Pourahmadi, with a high expectation of success.” Pet. 27. The Gale Declaration is similarly conclusory as to how Zou I and McNeely or Pourahmadi could have been combined by the ordinary artisan, and does not elaborate on the artisan’s reasonable expectation of success. Such conclusory assertions, lacking factual substantiation, are insufficient for evaluating reasonable expectation of success as part of an obviousness determination. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017). Thus, Petitioner did not make out its obviousness case based on combining Zou I and McNeely or Pourahmadi, in the Petition. 35 U.S.C. § 312(a)(3).” slip op. at 36

  Patent outcomesUS 8,323,900 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,323,900
• Fujifilm Corporation v. Sony CorporationNo claims unpatentable
  PTAB · Oct 22, 2018 · IPR2017-01267 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  The Board held claims 1–13 and 15–20 not shown unpatentable over Law and Sasaki because the evidence did not establish the claimed surface properties.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “degree in materials science, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience” in industry or academic research relating to magnetic tape, or “a master’s degree or higher” in the same fields and at least three years of experience relating to magnetic tape. Pet. 17–18 (citing Ex. 1003 ¶ 65). Patent Owner does not dispute Petitioner’s assessment in its Response, and Dr. Talke agrees that it “is reasonable.” Ex. 2026 ¶¶ 25–26. Petitioner’s assessment appears 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))). Accordingly, we adopt Petitioner’s assessment of the level of ordinary skill in the art. B.” slip op. at 8

  • 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). 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)). For the purposes of the Institution Decision, we determined that, based on the record at that time, no claim term required express construction (Dec. on Inst. 7), and we see no reason to modify that determination in light of the record developed during trial. C.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “The evidence, however, does not establish that a backside surface having a skew less than about 0.5 and a kurtosis less than about 4.0 necessarily results from reducing the size and prevalence of the protrusions on the backside surface of Law’s magnetic tape. As Petitioner agrees, Law and Sasaki do not discuss skew and kurtosis values. See Pet. 29 (stating that Law does not expressly disclose skew or kurtosis values); Reply 23 (recognizing that neither Law nor Sasaki contain express disclosures of skew and kurtosis); Tr. 18:22–23 (Petitioner’s counsel noting that there are no reported skew and kurtosis values in Law or Sasaki). Thus, Petitioner relies on Mr. Isobe’s testimony to establish that reducing the protrusions on Law’s backside surface would result in a skew less than about 0.5 and a kurtosis less than about 4.0. See Pet. 45–49; Ex. 1003 ¶¶ 79–81, 170–174. In that regard, Mr. Isobe testified as follows:” slip op. at 17

  • Obviousness (§103) › KSR rationalesNot shown unpatentableNot shown unpatentable

    “At best, the evidence establishes that reducing protrusions in Law’s backside coating may result in the surface approaching a Gaussian distribution (namely, a skew of 0 and a kurtosis of 3). See Ex. 1003 ¶ 171 (“By reducing the number of peaks the overall surface may become closer to a Gaussian distribution, which by definition has a skew of zero.” (emphasis added)), ¶ 174 (“As the frequency of large protrusions is reduced, the skew of the backcoat surface approaches 0 and the kurtosis becomes closer to 3.” (emphases added)). There is no evidence of record, however, that establishes the skew and kurtosis values of Law’s backside coating before reducing the protrusions as Petitioner proposes. While it is possible that reducing Law’s protrusions could result in skew and kurtosis values within the claimed range, it is also possible that reducing the protrusions could result in a surface that approaches a Gaussian distribution but still has a skew above 0.5 and a kurtosis above 4.0. See Ex. 2026 ¶¶ 36–60, 77–83, 90; see also PAR Pharm., 773 F.3d at 1195 (Inherency “may not be established by probabilities or possibilities.”). Thus, even if reducing the protrusions on Law’s backside coating caused the surface to approach a Gaussian distribution, that is not sufficient to establish that it necessarily results in a skew less than about 0.5 and a kurtosis less than about 4.0 as claimed. The skew and kurtosis values recited in claims 1 and 20 are not simply properties possessed by any backside coating that otherwise satisfies the structural limitations. Instead, they are recited as limitations on which magnetic recording media fall within the scope of the claims. The evidence of record does not establish that reducing the protrusions in Law’s backside coating, as taught by Sasaki, “would have naturally led to a backside surface having a skew less than about 0.5 and a kurtosis less than about 4.0” as Petitioner contends. Pet. 45. Accordingly, on the record before us, we find that Petitioner has not established that claims 1 and 20 would have been obvious over the combined teachings of Law and Sasaki.” slip op. at 21

  Patent outcomesUS 7,029,774 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,029,774
• R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V.No claims unpatentable
  PTAB · Mar 2, 2018 · IPR2016-01692 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1–14 were not shown unpatentable because Petitioner did not establish a motivation to combine Hon ’043 and Whittemore.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Petitioner and Patent Owner each propose a particular level of ordinary skill in the art. Pet. 15; PO Resp. 15. In light of the evidence before us, we find that the references themselves represent the level of ordinary skill in the art, and that we need not explicate it further. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art usually is evidenced by the references themselves); In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). C. Principles of Law” slip op. at 7

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

    “interpreted according to their broadest reasonable constructions in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). Under the broadest reasonable construction standard, claim terms are presumed to have their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms which are 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)).” slip op. at 6

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “thermal inefficiencies of the Hon ’043 atomizer are based on Dr. Sturges’s hypothesis “that a ‘large majority of the spray would . . . never touch the heating wire,’” noting that Dr. Sturges assumes an insignificant amount of liquid would contact the heating element based on the dimensions of the figures in Hon ’043. PO Resp. 23 (citing Ex. 2015 ¶ 62 n.2). Petitioner, however, does not provide adequate explanation as to why a person having ordinary skill in the art would think that to be the case. In reaching that determination, we credit Mr. Meyst’s testimony over that of Dr. Sturges. For example, Mr. Meyst identified a number of factors that would affect the determination of the percentage of entrained droplets that contact the wire in the Hon ’043 atomizer, stating that, [w]hile it is true that some liquid droplets will not touch the heater, there is no way to know what percentage will come into direct contact without knowing a number of other factors, such as the heater’s dimensions, the cavity’s dimensions, the size of the ejection holes, and the spray pattern. A person of ordinary skill would have understood these factors, and would have made selections that would result in most of the liquid coming into direct contact with the heating element. For example, Hon ’043 discloses that the ejection holes may be “long” or [“]short,” may employ a “slot structure” or a “circular hole structure” ranging from 0.1 mm to 1.3 mm, and that “single” or “multiple” holes may be used. A skilled person could have calculated or used commercially available Computational Fluid Dynamics software such as FLUENT to model the path of droplets ejected from the ejection holes and focus them at the heating element. Ex. 2030 ¶ 99 (internal citations omitted). We are unable to discern, from any of the portions of Dr. Sturges’s testimony cited by Petitioner, any calculations to determine how factors such as the speed and pressure of the airstream, and the rate of change of pressure of the airstream as it travels through the ejection holes and into the atomization chamber, would affect the dispersion of the droplets ejected from the ejection holes towards the heating wire in Hon ’043. Reply 7–8 (citing Ex. 1026 ¶¶ 7–11; Ex. 1039 ¶ 52). Dr. Sturges also presents a slip stream example to argue that the vast majority of the flow slips past the heating wire (Ex. 1026 ¶ 10), but Patent Owner argues that this example is not applicable to the ejected liquid droplets disclosed in Hon ’043 (citing Ex. 2030 ¶¶102–106), and that Dr. Sturges confirmed this in his deposition (citing Ex. 2031, 106:14–107:10). PO Resp. 26. In light of the variables that can affect how the droplets could disperse upon ejection from the ejection holes, Petitioner has not explained adequately why a person having ordinary skill in the art would understand that only a small amount of droplets would contact Hon ’043’s heating wire and that the atomization described in Hon ’043 is inefficient.” slip op. at 16

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

    “modification of Hon ’043 leave an analytical gap that does not sufficiently apprise us of why one of ordinary skill in the art would have modified Hon ’043 with Whittemore’s wire-wrapped wick. Petitioner’s and Dr. Sturges’s assertions that a person having ordinary skill in the art would have been motivated to modify Hon ’043 based on thermodynamics principles do not adequately address why a person having ordinary skill would have wanted to provide more efficient heating in the Hon ’043 electronic cigarette. In an obviousness determination, we must avoid analyzing the prior art through the prism of hindsight. Instead, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented with only the references, and who is normally guided by then-accepted wisdom in the art.” W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983); see also Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012) (quoting Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008) (“We must still be careful not to allow hindsight reconstruction of the references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.”)). Here, we interpret Petitioner’s position as an attempt to imbue one of ordinary skill in the art with knowledge of the claimed invention, without adequately demonstrating that a prior art reference, references of record, or other evidence conveys or suggests that knowledge. Petitioner’s proposed rationale relies upon general and conclusory statements from Dr. Sturges regarding thermodynamics that are not sufficiently supported in the record, and instead appear to be based on impermissible use of hindsight after review of the ’548 patent, rather than on a supported reason to modify the heating configuration in Hon ’043’s atomizer. See KSR, 550 U.S. at 421 (stating that the fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”). In order to establish a motivation to combine the references, Petitioner needed to explain sufficiently what would have led a person of ordinary skill in the art at the time of the invention to consider modifying the Hon ’043 atomizer to include a “heating wire coil wound on” the porous component, on the first section of the porous component, or on the fiber member as recited in claims 1–14, and Petitioner failed to provide such an explanation.” slip op. at 18

  Patent outcomesUS 9,326,548 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,326,548
• R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V.No claims unpatentable
  PTAB · Dec 19, 2017 · IPR2016-01268 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claims 2 and 3 were not shown unpatentable as obvious over Hon ’043 and Whittemore because the petitioner did not establish a sufficient motivation to combine them.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “ordinary skill in the art. Pet. 11; PO Resp. 7–8. In light of the evidence before us, we find that the references themselves represent the level of ordinary skill in the art, and that we need not explicate it further. See Okajima v. Bourdeau, 261 F.3d 12350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art usually is evidenced by the references themselves); In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). C.” slip op. at 7

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Ex. 2016, 61:8–19. Petitioner, however, does not provide adequate explanation as to why a person having ordinary skill in the art would think that to be the case. In reaching that determination, we credit Mr. Meyst’s testimony over that of Dr. Sturges.” slip op. at 14

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

    “Ex. 2015 ¶ 98 (internal citations omitted). Dr. Sturges, however, stated at his deposition that he did not do any calculations to determine how factors such as the speed and pressure of the airstream, and the rate of change of the pressure of the airstream as it travels through the ejection holes and into the atomization chamber, would affect the dispersion of the droplets ejected from the ejection holes towards the heating wire in Hon ’043. Ex. 2016, 64:5–66:4. In light of the variables that can affect how the droplets could disperse upon ejection from the ejection holes, Petitioner has not explained adequately why a person having ordinary skill in the art would understand that only a small amount of droplets would contact Hon ’043’s heating wire and that the atomization described in Hon ’043 is inefficient.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner

    “art through the prism of hindsight. Instead, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented with only the references, and who is normally guided by then-accepted wisdom in the art.” W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983); see also Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012) (quoting Innogenetics, 512 F.3d at 1374 n.3 (“We must still be careful not to allow hindsight reconstruction of the references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.”)). Here, Petitioner attempts to imbue one of ordinary skill in the art with knowledge of the claimed invention, when no prior art reference, references of record, or other evidence conveys or suggests that knowledge. Petitioner’s proposed rationale relies upon general and conclusory statements from Dr. Sturges regarding thermal dynamics that are not sufficiently supported in the record, and instead appear to be based on impermissible use of hindsight after review of the ’742 patent, rather than on a supported reason to modify the heating configuration in Hon ’043’s atomizer. See KSR, 550 U.S. at 421 (stating that the fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”). In order to establish a motivation to combine the references, Petitioner needed to explain sufficiently what would have led a person of ordinary skill in the art at the time of the invention to consider modifying the Hon ’043 atomizer to include a “heating wire wound on a part of the porous component” as recited in claims 2 and 3. Petitioner failed to provide such an explanation.” slip op. at 16

  Patent outcomesUS 8,365,742 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 8,365,742
• Johnson Matthey Inc. / Johnson Matthey PLC v. BASF CorporationNo claims unpatentable
  PTAB · Nov 30, 2016 · IPR2015-01267 · APJ Jeffrey W Abraham · IPR · Final written decision

  Claims 1–7, 10–15, and 18–24 were not shown unpatentable under §103 because the evidence did not establish a reasonable expectation of success combining the references.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “occurs in Hüthwohl’s SCR-coated filter, we are not persuaded that Petitioner has shown, by a preponderance of the evidence, a reasonable expectation of successfully achieving the claimed invention, which requires substantial NOx reduction and integrated NOx and particulate removal while catalyzing the oxidation of soot using a specific type of SCR catalyst and wall flow filter having specific characteristics. As Patent Owner points out, Hüthwohl does not provide details regarding the SCR catalyst or the wall-flow filter used in its system. PO Resp. 36–37. In that regard, Dr. Harold characterized Hüthwohl as a “proof of concept” that would lead a person of ordinary skill in the art to conduct testing. PO Resp. 37; Ex. 2025, 205:5–9. Given the vague nature of Hüthwohl’s disclosure, we view Hüthwohl as simply providing incentive “to explore a new technology or general approach that seemed to be a promising field of experimentation,” and agree with Patent Owner that Hüthwohl, at best, provides “only general guidance as to the particular form of the claimed invention or how to achieve it.” Procter & Gamble, 566 F.3d at 997; PO Resp. 37. Thus, upon reviewing Hüthwohl, a person of ordinary skill in the art would still have had to identify an acceptable combination of an SCR catalyst and wall flow filter, decide how much SCR catalyst to apply to the filter, and determine if the wall flow filter coated with the SCR catalyst provided substantial NOx reduction and integrated NOx and particulate removal efficiency while also catalyzing the oxidation of soot.” slip op. at 30

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “We credit Dr. Crocker’s explanation of the competing reactions that can take place when an SCR catalyst using NH3 as a reductant is placed in an oxidizing environment, namely NH3 oxidation and the SCR reaction itself. Ex. 2013 ¶¶ 65–66. Dr. Harold considered these competing reactions to be complications (Ex. 2025, 116:8–14), stating that “whenever you combine two things together, you don’t really know what the outcome is going to be because of all the synergies and couplings” (id. at 117:6–21). Dr. Harold also testified that the only way to know how much of each reaction will occur is by “throwing everything together and measuring the outcome.” Id. As such, the evidence of record suggests that a person of ordinary skill in the art would not have known the result of introducing Speronello’s catalyst and NH3 into the highly oxidizing environment of any soot filter, but instead would have had to conduct testing to understand how such a system would perform. We view this as evidence of more than “some degree of unpredictability.” Pfizer, 480 F.3d at 1364.” slip op. at 31

  • ExcludeMotion to exclude, deniedNot reached

    “IV. MOTION TO EXCLUDE Patent Owner filed a Motion to Exclude paragraphs 26–30 of the Tennent Declaration. Paper 27, 1. We do not reach the merits of Patent Owner’s Motion because, as explained above, even if the disputed evidence is considered, Petitioner has failed to show by a preponderance of evidence that claims 1–7, 10–15, and 18–24 are unpatentable as obvious. Accordingly, Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 36

  Patent outcomesUS 9,032,709 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,032,709
• Johnson Matthey Inc. / Johnson Matthey PLC v. BASF CorporationNo claims unpatentable
  PTAB · Nov 30, 2016 · IPR2015-01265 · APJ Jeffrey W Abraham · IPR · Final written decision

  Petitioner failed to prove claims 1–27 unpatentable as obvious over Hüthwohl, Speronello, Hashimoto, and Teraoka because the record did not establish a reasonable expectation of success.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Ex. 1008, 7:30–41. Although Dr. Tennent states that “a specific catalyst composition known to work when applied to a flow-through substrate would be expected to work in a similar manner when applied to a wall-flow filter,” he does not provide any underlying facts or data to support this conclusion. Ex. 1003 ¶ 23. Pursuant to 37 C.F.R. § 42.65(a), such testimony is entitled to little or no weight. Dr. Tennent also fails to address whether this statement holds true when the flow through substrate and the wall flow substrate are subjected to distinct environmental conditions.” slip op. at 33

  • Skill levelSkill level board ownOther

    “Thus, at a minimum, the parties agree that a person of ordinary skill in the art would be a person with a bachelor’s degree in chemical engineering or a related field, and some experience or training in diesel exhaust systems. We find additional consistency between Petitioner’s position that a person of ordinary skill in the art would have at least three years of experience or training in researching, studying, designing, or manufacturing diesel exhaust treatment systems, and Patent Owner’s position that a person of ordinary skill in the art would have knowledge of certain “skills and beliefs as a result of his/her training and experience, and what was known in the art at the time of the BASF patents.” Accordingly, we hold that one of skill in the art would possess at least a bachelor’s degree in chemical engineering or a related discipline, and would have at least three years of experience or training in researching, studying, designing, or manufacturing diesel exhaust treatment systems. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 11

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

    “interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). In the Decision on Institution, we determined that the terms in the challenged claims did not need to be construed expressly, and we see no reason to modify that determination in light of the record developed at trial. See 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 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “In this regard, even if a person of ordinary skill in the art would have been motivated to coat Hashimoto’s filter with Speronello’s catalyst for use in Hüthwohl’s system, we are not persuaded that Petitioner has shown by a preponderance of the evidence that a person of ordinary skill in the art would have had a reasonable expectation of successfully arriving at a coated filter that would provide integrated NOx and particulate removal efficiency, and act as a catalyst for the oxidation of soot, as required by the claims.” slip op. at 30

  Patent outcomesUS 8,899,023 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,899,023
• Johnson Matthey Inc. / Johnson Matthey PLC v. BASF CorporationNo claims unpatentable
  PTAB · Nov 30, 2016 · IPR2015-01266 · APJ Jeffrey W Abraham · IPR · Final written decision

  Claims 1–27 were not shown unpatentable under § 103 because the evidence did not establish a reasonable expectation of success in achieving the claimed combined filter and catalyst performance.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Thus, at a minimum, the parties agree that a person of ordinary skill in the art would be a person with a bachelor’s degree in chemical engineering or a related field, and some experience or training in diesel exhaust systems. We find additional consistency between Petitioner’s position that a person of ordinary skill in the art would have at least three years of experience or training in researching, studying, designing, or manufacturing diesel exhaust treatment systems, and Patent Owner’s position that a person of ordinary skill in the art would have knowledge of certain “skills and beliefs as a result of his/her training and experience, and what was known in the art at the time of the BASF patents.” Accordingly, we hold that one of skill in the art would possess at least a bachelor’s degree in chemical engineering or a related discipline, and would have at least three years of experience or training in researching, studying, designing, or manufacturing diesel exhaust treatment systems. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 11

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

    “interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). In the Decision on Institution, we determined that the terms in the challenged claims did not need to be construed expressly, and we see no reason to modify that determination in light of the record developed at trial. See 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 8

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

    “reduction occurs in the SCR-coated filter, and Dr. Crocker cites no evidence to support a conclusion of zero SCR activity. Reply 10. It is Petitioner’s burden to prove that a person of ordinary skill in the art would have had a reasonable expectation that NOx reduction occurs on Hüthwohl’s SCR-coated filter. Petitioner provides no data supporting this contention, and Petitioner’s own declarant testified that the absence of NOx reduction “can’t be ruled out.” Ex. 2025, 196:11–197:6. Thus, although it appears that Hüthwohl intended for the volume of the SCR filter to be used for NOx reduction, the evidence of record does not establish, by a preponderance of evidence, that it actually occurred at that stage, or that a person of ordinary skill in the art would have had a reasonable expectation that it would. Nevertheless, even if we were to infer that some NOx reduction occurs in Hüthwohl’s SCR-coated filter, we are not persuaded that Petitioner has shown, by a preponderance of the evidence, a reasonable expectation of successfully achieving the claimed invention, which requires integrated NOx and particulate reduction while catalyzing the oxidation of soot using a specific type of SCR catalyst and wall flow filter having specific characteristics. As Patent Owner points out, Hüthwohl does not provide details regarding the SCR catalyst or the wall-flow filter used in its system. PO Resp. 36–37. In that regard, Dr. Harold characterized Hüthwohl as a “proof of concept” that would lead a person of ordinary skill in the art to conduct testing. PO Resp. 37; Ex. 2025, 205:5–9. Given the vague nature of Hüthwohl’s disclosure, we view Hüthwohl as simply providing incentive “to explore a new technology or general approach that seemed to be a promising field of experimentation,” and agree with Patent Owner that Hüthwohl, at best, provides “only general guidance as to the particular form of the claimed invention or how to achieve it.” Procter & Gamble, 566 F.3d at 997; PO Resp. 37. Thus, upon reviewing Hüthwohl, a person of ordinary skill in the art would still have had to identify an acceptable combination of an SCR catalyst and wall flow filter, decide how much SCR catalyst to apply to the filter, and determine if the wall flow filter coated with the SCR catalyst provided integrated NOx and particulate removal efficiency while also catalyzing the oxidation of soot.” slip op. at 29

  • ExcludeNot reached

    “Dr. Tennent’s Declaration. Paper 30, 1. We do not reach the merits of Patent Owner’s Motion because, as explained above, even if the disputed evidence is considered, Petitioner has failed to show by a preponderance of evidence that claims 1–27 are unpatentable as obvious. Accordingly, Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 35

  Patent outcomesUS 9,039,982 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,039,982

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.