- PTAB · Feb 18, 2025 · IPR2024-01187 · APJ Michael G Mcmanus · IPR · Institution
The Board instituted IPR on claims 1–3, 5, 6, 8–11, and 16 on all asserted grounds, finding a reasonable likelihood that Hanamura renders claim 16 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Statute provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. §314(a). For the reasons explained below, we determine that Petitioner has shown that there is a reasonable likelihood of prevailing with respect to at least one challenged claim.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“district court proceeding. See supra § I.C. In its Preliminary Response, Patent Owner presents argument regarding the Fintiv factors and urges the Board to exercise its discretion under 35 U.S.C. § 314(a) to deny institution. Prelim. Resp. 43–46. Subsequent to the Preliminary Response, Petitioner filed its Preliminary Reply as well as a stipulation. The Preliminary Reply provides that “[i]f the Board institutes this IPR, Defendants in Pictiva Displays Int’l Ltd. v. Samsung Elecs. Co., No. 2:23-cv-0495 (E.D. Tex.), stipulate not to pursue invalidity defenses based on grounds that were raised or reasonably could have been raised in this IPR.” Reply 1. Similarly, the stipulation provides as follows: Defendants hereby stipulate that, if the Patent Trial and Appeal Board institutes an inter partes review proceeding for U.S. Patent No. 9,257,492 on the grounds presented in the petition in IPR2024-01187, then Defendants will not pursue an invalidity defense in this case that the patent claims subject to the instituted IPR are invalid based on grounds that were raised or reasonably could have been raised in the IPR.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating requests for discretionary denial, the Board must determine whether § 325(d) is sufficiently implicated that its statutory purpose would be undermined by instituting on both grounds. See SAS Q&As, D1 (USPTO June 5, 2018)6 (cited with approval in Boehringer Ingelheim Animal Health Usa Inc., v. Kansas State University Research Foundation, PGR2022-00021, Paper 11 (Feb. 24, 2023) (Director Review) at 7–8 n. 3). “At bottom, this [§ 325(d)] framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Advanced Bionics at 9. Here, § 325(d) is not sufficiently implicated that its statutory purpose would be undermined. While prior art similar to one reference presently relied upon in Ground I was considered during prosecution, Patent Owner does not contend that the asserted references in Grounds II or III are the same or cumulative of art that was considered during prosecution. Because it 6 www.uspto.gov/sites/default/files/documents/sas_qas_20180605.pdf is undisputed that two of the three asserted grounds do not implicate § 325(d), on balance, we determine that the Petition does not raise the same or substantially the same prior art previously presented to the Office. See Asetek Danmark a/s v. Coolit Sys., Inc., No. IPR2020-00825, Paper 12 at 15 (PTAB Oct. 13, 2020) (Decision on Institution) (determining to institute where, “viewing the Petition as a whole, we find that only two of the six asserted grounds . . . implicate § 325(d).”). As a result, we decline to exercise our discretion under section 325(d) to deny institution.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in Electrical Engineering, Physics, or a comparable field of study, and at least three years of research or industrial experience with semiconductor (organic or inorganic) optoelectronic devices and/or lighting or displays. An individual with additional education could have less research or industrial experience and vice-versa. Pet. 9. For purposes of institution, Patent Owner does not dispute Petitioner’s proposed definition of a person of ordinary skill in the art. Prelim. Resp. 6 (“Solely for purposes of this Preliminary Response, Pictiva applies the skill level proposed by Petitioner.”). Accordingly, for purposes of institution, we adopt Petitioner’s proposed level of ordinary skill in the art.” slip op. at 10
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,257,492 - PTAB · Jan 23, 2025 · IPR2024-01095 · APJ Michael G Mcmanus · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds, finding a reasonable likelihood that claim 9 is unpatentable over Suzuki and Caldwell.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We agree with Patent Owner that this second factor favors denial based on the trial date set for the District Court action, as well as the District Court’s median time-to-trial data.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. REASONABLE LIKELIHOOD OF PREVAILING Although we have closely reviewed each asserted ground, in evaluating Petitioner’s reasonable likelihood of prevailing, we focus our discussion on Ground IX, which concerns the asserted unpatentability of claim 9. As claim 9 depends from claim 1, we additionally discuss that claim. We determine that Petitioner’s arguments regarding claim 9 demonstrate a reasonable likelihood of prevailing with respect to at least one claim.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Caldwell teaches that “[b]ecause backlighting can be advantageously aligned with an operative touch surface, it is sometimes desirable to locate a touch sensor in close proximity to and/or atop a light emitting device.” Ex. 1011 ¶ 6; see Pet. 74. Petitioner argues that integrating a touch sensor into a light emitting device can “greatly reduce the cost and complexity of using backlighting with touch sensors” and can “reduce or eliminate the extra material and manufacturing cost associated with the separate touch sensor and lighting assemblies known in the art, which must be electrically coupled and aligned.” Pet. 74 (quoting Ex. 1011 ¶ 7). Petitioner argues that such reduction of cost and complexity, as well as a desire for a thinner OLED profile, would have motivated one of skill in the art to combine touch sensor functionality into the device of claim 1. Id.; see also Ex. 1003 ¶¶ 241, 242.” slip op. at 22
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,828,425 - PTAB · Jan 23, 2025 · IPR2024-01094 · APJ Grace Karaffa Obermann · IPR · Institution
Instituted review of claims 1–4, 6, and 8–14 on all asserted grounds; Petitioner showed a reasonable likelihood that claim 1 is obvious over Ma.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We apply a two-part framework when assessing whether to exercise our discretion to deny a petition under Section 325(d). First, we consider whether the same or substantially the same prior art or arguments previously were presented to the Office. Second, if either condition is satisfied, we assess whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (setting forth twopart framework that guides the Board’s decision whether to exercise its discretion to deny review under Section 325(d)).” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“In Sotera Wireless, Inc. v. Massimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential), the Board declined to exercise its discretion to deny review under Fintiv where the patent owner stipulated “if IPR is instituted, they will not pursue in the District Court Litigation any ground raised or that could have been reasonably raised in an IPR.” Sotera Wireless, Paper 12 at 18. Importantly, moreover, on June 21, 2022, the Director of the United States Patent and Trademark Office issued a Memorandum setting forth an “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Guidance Memo”).6 The Guidance Memo states that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3 (footnote and emphasis omitted).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A person of ordinary skill in the art (“POSA”) at the time of the alleged invention of the ’223 patent would have had a university degree in chemistry and additional expertise or a second university degree in the field of electrical engineering, particularly optoelectronics, or alternatively a university degree in electrical engineering and additional expertise or a second university degree in the field of chemistry. The person of ordinary skill in the art has spent several years studying the structure and function of organic optoelectronic components, in particular OLEDs, and has detailed knowledge of the chemical structure of light-emitting organic layers and the transport of charge carriers to these layers. In this respect, the person of ordinary skill in the art works at the interface between electrical engineering/physics (charge carrier transport and light emission processes in optoelectronic components) and chemistry, in particular organic chemistry (materials and layer stack combinations suitable). Pet. 14 (citing Ex. 1003 ¶¶ 46–47). Patent Owner does not dispute Petitioner’s argument. See generally Prelim. Resp. Neither party indicates that the result on institution would change depending on the definition selected. Accordingly, for the sole purpose of deciding whether to institute review, we adopt Petitioner’s uncontested proposed definition, because, on this record, it is consistent with the disclosures of the asserted prior art. See Ex. 1005, (code 57); Ex. 1007, 8107 (abstracts of the references asserted in the patentability challenges).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid 7 Following the parties’ convention, when citing Exhibit 1007, we refer to original page numbers, not page numbers added by Petitioner. Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party indicates that an express construction for any claim term is necessary to our decision whether to institute review. Pet. 15; see generally Prelim. Resp. On this record, we determine that no claim term requires express construction for purposes of this Decision.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,558,223 - PTAB · Jan 23, 2025 · IPR2024-01093 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted IPR of claims 1–16 on all petition grounds, finding a reasonable likelihood that claim 1 is anticipated by Choulis.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We apply a two-part framework when assessing whether to exercise our discretion to deny a petition under Section 325(d). First, we consider whether the same or substantially the same prior art or arguments previously were presented to the Office. Second, if either condition is satisfied, we assess whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (setting forth twopart framework that guides the Board’s decision whether to exercise its discretion to deny review under Section 325(d)).” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Importantly, moreover, on June 21, 2022, the Director of the United States Patent and Trademark Office issued a Memorandum setting forth an “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Guidance Memo”).8 The Guidance Memo states that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3 (footnote and emphasis omitted).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A person of ordinary skill in the art (“POSITA”) at the time of the alleged invention of the ’164 patent would have had a Bachelor’s degree in chemistry, physics, or a comparable field of study, and at least three years of research or industrial experience with organic optoelectronic light-emitting devices. An individual with additional education could have less research or industrial experience and vice versa. Pet. 12. Patent Owner does not dispute Petitioner’s argument. See generally Prelim. Resp. Neither party indicates that the result on institution would change depending on the definition selected. Accordingly, for the sole purpose of deciding whether to institute review, we adopt Petitioner’s uncontested proposed definition, because, on this record, it is consistent with the disclosures of the asserted prior art. See Ex. 1004, (code 57); Ex. 1006, code (57); Ex. 1008, code (57); Ex. 1009, code (57) (abstracts of the references asserted in the patentability challenges).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“to the meaning of particular claim terms.”). Claim 1 recites first, second, and third matrix materials but, aside from reciting relationships between the LUMOs and HOMOs of the matrix material, does not require any particular composition or any particular amount for any of the three matrix materials. Ex. 1001, 9:4–22. Nor does claim 1 recite that any of the matrix materials must be present in a continuous phase. Id. Claim 1 does recite that the organic functional layer, which includes the three matrix materials, is doped with at least one emitter material. Id. at 9:21–22. On this record, no words in claim 1 limit a “matrix material” to the meaning advanced by Patent Owner.” slip op. at 24
Claim construction§ 102 anticipationDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,723,164 - Samsung Display Co., Ltd. v. Pictiva Displays Internaltional Ltd.Institution deniedPTAB · Nov 19, 2024 · IPR2024-00855 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution of IPR challenging claims 1–5 and 8–14, exercising § 314(a) discretion under Fintiv because the factors favored denial and the merits were not compelling.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 5–6.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“We have authority to institute an inter partes review where a petitioner shows a reasonable likelihood of prevailing with respect to at least one challenged claim. 35 U.S.C. § 314(a); 37 C.F.R. § 42.4(a). Under appropriate circumstances, however, we may exercise our discretion under Section 314(a) and deny review without regard to whether the petitioner has met that threshold. Trial Practice Guide,3 64; see 84 Fed. Reg. 64,280 (Nov. 21, 2019). For reasons that follow, we exercise our discretion under Section 314(a) and do not institute an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“On this record, we discern a genuinely-disputed issue surrounding the correct construction of the first wavelength spectrum limitation. Specifically, a question arises whether the first wavelength spectrum limitation can be 13 Neither party identifies the litigation involving Petitioner’s real parties-ininterest as related to this proceeding. Pet. 1; Paper 5, 1. That litigation, however, involves assertions of the ’547 patent claims against Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc. Ex. 2053, 1, 8; see Pet. 1 (identifying those entities as Petitioner’s real parties-in-interest). met by a portion of the radiation emitted by the organic layer (as argued by Petitioner); or instead, the first wavelength spectrum limitation refers to the entirety of the radiation emitted by the organic layer (as argued by Patent Owner). Compare Pet. 23–25, 57–58, with Prelim. Resp. 64–74. To be clear, we need not and, therefore, do not resolve the correct construction of the first wavelength spectrum limitation. It is enough for us to observe, on this record, that a genuinely-disputed issue surrounds this issue of claim construction. As explained in the next section, that dispute casts doubt upon whether Petitioner shows sufficiently, for purposes of trial institution, that the prior art suggests the filter transparency limitation.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“14 Petitioner belatedly suggests that an ordinarily skilled artisan would have been prompted to replace the emitter material employed by the prior art (namely, BCzVBi in DPvBi) with a different, but undisclosed, emitter material having “no significant emission at wavelengths above 500 nm.” Opp. Supp. Br. 2 (citing Ex. 2010 ¶ 43); see Reply 3–4 (same). That argument is not presented in the Petition, much less supported in the Petition by a rationale to combine. See Pet. 16–17, 48–50 (mapping the organic layer sequence of claim 1 to the organic layer sequence of Igarashi or Shiotani, which both employ BCzVBi in DPvBi as the emitter material (Ex. 1004 ¶ 88; Ex. 1005, 5/12)).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 8,314,547 - PTAB · Oct 22, 2024 · IPR2024-00758 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted IPR on claims 1–24 on all petitioned grounds and granted Qorvo’s motion to join IPR2024-00609, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv. See USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Fintiv Memo”).9 The Fintiv Memo instructs that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Id. at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)); see id. at 7, 9. The Fintiv Memo also explains that such a stipulation (a Sotera stipulation) “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. at 7. Petitioner presents a Sotera stipulation in the present Petition. See Pet. 70. Specifically, Petitioner stipulates that it will not pursue invalidity of the Challenged Claims (i.e., all claims of the ’360 patent) in the Akoustis- Qorvo litigation on the grounds raised, or that reasonably could have been raised, in this IPR Petition. Id.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the same reasons stated in our Decision on Institution in the IQE IPR, we determine that institution is warranted here. See IPR2024- 00609, Paper 9 at 41–44. With respect to Patent Owner’s additional argument that Petitioner failed to provide a reason to combine Guo and Ashby to arrive at the claimed invention of claim 10 for the same reasons set forth with respect claims 5 and 17 (Prelim. Resp. 61), we note that, as stated in our Decision on Institution, Petitioner provides argument and declaratory testimony that a person of ordinary skill in the art would have had reason to 11 In Ground 6, Petitioner asserts that dependent claims 5, 10, and 17 would have been obvious over the combination of Guo and Ashby. Pet. 60–66. sufficient to show a reason to combine the references is best resolved on a full record. IPR2024-00609, Paper 9 at 43. For the above reasons, we determine Petitioner has set forth a reasonable likelihood that it would prevail with respect to at least one challenged claim, and we, therefore, institute an inter partes review on all grounds raised in the Petition.” slip op. at 12
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). In deciding whether to grant joinder, we consider: (1) the reasons why joinder is appropriate, (2) whether the petition raises any new grounds of unpatentability, (3) any impact that joinder would have on the cost and trial schedule for the existing review, and (4) whether joinder will add to the complexity of briefing or discovery. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15, 4 (PTAB Apr. 24, 2013); Trial Practice Guide at 76. Petitioner contends that joinder with the IQE IPR is appropriate because Qorvo’s Petition (Paper 1) is substantially the same as the IQE Petition. Mot. 2, 4–5. Petitioner states that its Petition challenges the same claims on the same grounds, relies on the same art, and is supported by substantially the same expert declaration by the same expert as the IQE Petition. Id. at 2, 4. Petitioner states that no additional burden would be created and that joinder would lead to an efficient resolution of the asserted invalidity of the ’360 patent. Id. at 2, 5–6. Petitioner further stipulates that if joinder is granted, that it will act as an “understudy” unless IQE ceases to participate in the proceeding and that joinder will not unduly complicate the IQE IPR or delay its schedule. Id. at 2, 5–8.” slip op. at 14
Discretionary denialPatents in suitUS 7,250,360 - PTAB · Sep 13, 2024 · IPR2024-00609 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted IPR on claims 1–24 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“action is a factor that may weigh in favor of denying a petition under § 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 58 & n.2, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice Guide”). We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 8
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner proposes a slightly different formulation of the level of skill in the art, namely, that a POSITA “would have a bachelor’s degree in electrical engineering, materials science, chemical engineering, or an equivalent field, and such a person would have at least 3 years of academic or industry experience in nucleation and epitaxial growth processes, or other comparable industry experience,” where “[t]his level of skill is approximate and more experience would compensate for less formal education, and vice versa.” Prelim. Resp. 7. Nevertheless, Patent Owner asserts that “the result here does not depend on which of the two articulations that the Board chooses.” Id. at 8. For the purposes of this Decision, we adopt Patent Owner’s proposal because we find Patent Owner’s statement of the level of ordinary skill in the art adequate and supported on this record. The level of ordinary skill in the art also appears to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We also note that the outcome of this Decision would be the same under Petitioner’s proposed definition.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree with Patent Owner’s arguments. The plain language of claim 1 does not recite any limitation regarding whether or not a group III/II reactant must continue to flow or must stop after the pretreatment step. Claim step [1b] simply recites “pre-treating a surface of the substrate with at least one group III reactant or at least one group II reactant at an elevated growth temperature prior to introducing a group V reactant or a group VI reactant.” Claim steps [1c] and [1d] simply recite “introducing a group V reactant or a group VI reactant to grow a nucleation layer on the surface of the substrate” ([1c]) and “growing a buffer layer on said nucleation layer, said buffer layer providing a surface upon which said epitaxial layer is grown” ([1d]). None of these steps contain any language either requiring or prohibiting the flow of the at least one group III/II reactant recited in step [1b]. Similarly, none of the cited portions of the Specification requires that at least one of the group III/II reactant must continue to flow after the pretreatment steps.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’360 patent. Thus, we institute an inter partes review of all challenged claims of the ’360 patent on all grounds asserted in the Petition. PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,250,360 - PTAB · Aug 19, 2024 · IPR2024-00611 · APJ Michael G Mcmanus · IPR · Institution
The Board instituted review of claims 1–23 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Ungerank and Scholz.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“3. Whether Petitioner has Demonstrated a Reasonable Likelihood of Prevailing “In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Further, Petitioner bears the “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention[s], and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools, Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (citation and internal quotation omitted). Having reviewed the parties’ arguments and evidence of record, we are persuaded that Petitioner demonstrates sufficiently that Ungerank and Scholz teach or suggest each limitation in claim 1. Petitioner also sets forth sufficient reasoning with a rational underpinning as to why one of ordinary skill in the art would have combined the teachings of Ungerank and Scholz in the manner recited in claim 1, with a reasonable expectation of success, so as to show a reasonable likelihood of prevailing.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Further, Petitioner bears the “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention[s], and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools, Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (citation and internal quotation omitted). Having reviewed the parties’ arguments and evidence of record, we are persuaded that Petitioner demonstrates sufficiently that Ungerank and Scholz teach or suggest each limitation in claim 1. Petitioner also sets forth sufficient reasoning with a rational underpinning as to why one of ordinary skill in the art would have combined the teachings of Ungerank and Scholz in the manner recited in claim 1, with a reasonable expectation of success, so as to show a reasonable likelihood of prevailing.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“A reference does not teach away if it “does not criticize, discredit, or otherwise discourage investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (cleaned up). The Federal Circuit has explained that “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). “The fact that the motivating benefit comes at the expense of another benefit ... should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be” slip op. at 21
- PTAB / AIA Trials › Discretionary denialInstituted
“Petitioner argues that the Board should not exercise its discretion to deny institution under 35 U.S.C §§ 314(a) or 325(d). Pet. 62–69. Patent Owner does not address discretionary denial. In view of the absence of argument from Patent Owner and minimal evidence bearing upon discretionary denial, we determine that there is no basis for discretionary denial.” slip op. at 29
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,471,380 - Hoya Optical Labs Of America, Inc. v. Inland Diamond Products Co.Some claims unpatentablePTAB · May 23, 2019 · IPR2018-00178 · APJ Michael G Mcmanus · IPR · Final written decision
Claims 1, 3, 7, 8, and 12 are unpatentable as obvious; claims 2, 4–6, and 9–11 were not proven unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“The claims at issue are apparatus claims rather than process claims. Accordingly, no specific means of achieving the interference fit is required. We construe “interference fit” as a structural limitation specifying the relationship of the bevel and frame. Even if construed as a product-by-process limitation (with the process being the insertion of a lens within a frame of lesser size), “determination of patentability is based on the product itself.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). Patent Owner frames its proposed construction in terms of the process by which the fit comes about, but says little about the structural characteristics of the interference fit upon assembly. The Specification teaches that pressure upon the lens would lead to compression of the vertex. Ex. 1001, 4:40–55. That the vertex is in a compressed state is separately required in all claims by the “in compression” limitation. Id. at 8:54, 9:24. In view of the foregoing and in light of the parties’ arguments following institution, we modify our preliminary construction to recognize that an interference fit in this context implicates associated compressive forces. We, therefore, construe “interference fit” to mean “a relationship of the bevel of the lens and the receiving channel bottom of the eyeglass frame where such parts are in contact so as to exert frictional and compressive forces that secure the lens in place.”” slip op. at 17
- Expert testimonyNot reached
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Petitioner sets forth a rationale to combine the teachings of Gottschald and Schaeffer. Id. at 20. Petitioner argues that the teachings of Gottschald are applicable to the prescription lenses of Schaeffer as follows: POSITA would have been motivated by these teachings to use the method and device of Gottschald, with no change in its function, to edge the prescription plastic lens blank described by Schaeffer “so that the spectacle lens edge machining directly delivers a spectacle lens which is suitable for the selected spectacle frame, which has been ground to shape and which is provided with a bevel” (Gottschald, p. 6), and thereby to obtain the expected result of a “prescription plastic lens for use in an eyeglass frame” as recited in claim 1. Id. at 20. Patent Owner does not challenge the adequacy of Petitioner’s rationale with specificity. See PO Resp. 48–54. Rather, Patent Owner argues that Petitioner relies on “mere conclusory statements” throughout the Petition. Id. at 49. Such a generalized argument has little force. Having reviewed the evidence as a whole, we find that a person of ordinary skill in the art would have had reason to combine the teachings of Gottschald (regarding lens edging) and Schaeffer (regarding prescription lenses) in the manner Petitioner proposes.” slip op. at 28
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
Patent outcomesUS 8,636,360 mixedClaim construction§ 103 obviousnessPatents in suitUS 8,636,360
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.