• Aurobindo Pharma USA, Inc.No claims unpatentable
  PTAB · Dec 28, 2018 · IPR2017-01648 · APJ Devon Zastrow Newman · IPR · Final written decision

  Claims 1–25 were not shown unpatentable over Timmins and Cheng because Petitioner did not establish that the combination would have targeted the claimed mean Tmax range.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “In the Patent Owner Response, Patent Owner acknowledged the Board’s characterization of the knowledge of an ordinarily skilled artisan as consistent with the proposals of both parties (PO Resp. 12–13), and neither party further addressed the proper level of ordinary skill in the art or disagreed with our characterization from the Institution Decision. See PO Resp., Reply. Our determination regarding the patentability of the challenged claims does not turn on the differences between the parties’ definitions. We adopt Petitioner’s assessment, but note that our conclusions would be the same under Patent Owner’s assessment. C. Testimony of Dr. Akhlaghi” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We agree with Petitioner that Dr. Akhlaghi’s qualifications and deposition testimony, when read in context, indicate that Dr. Akhlaghi is sufficiently experienced to opine on the knowledge of one of skill in the art at the time of the ’866 patent. As noted in the August 13, 2018 update to our Trial Practice Guide: An expert witness must be qualified as an expert by knowledge, skill, experience, training, or education to testify in the form of an opinion. Fed. R. Evid. 702. There is, however, no requirement of a perfect match between the expert’s experience and the relevant field. SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). A person may not need to be a person of ordinary skill in the art in order to testify as an expert under Rule 702, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008). See Notice of Update to Office Patent Trial Practice Guide, 83 Fed. Reg. 156, (Aug. 13, 2018) (text of update available at https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Pr actice_Guide.pdf). In addition, we are well able to consider the value of an expert opinion and afford it appropriate weight. Perreira v. Secretary of the Dept. of HHS, 33 F.3d 1375, 1377 n.6 (Fed. Cir. 1994) (“An expert opinion is no better than the soundness of the reasons supporting it.”) D. Claim Interpretation” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for patent owner

    “Tmax” In our Institution Decision, we noted that the term “Tmax” appears in each of the challenged claims, and that both parties agreed that Tmax should be construed as stated in the Specification: “the time period which elapses after administration of the dosage form at which the plasma concentration of the drug attains the highest plasma concentration of drug attained within the dosing interval (i.e., about 24 hours).” Inst. Dec. 7 (citing Pet. 24; Prelim Resp. 18; Ex. 1001, col. 7, ll. 49–53). We concluded that the proposed definition was consistent with the Specification and defined the claim term with reasonable clarity, deliberateness, and precision, and we adopted the parties’ construction. Neither party addressed the issue of construction of Tmax in further briefing, but the parties disagree about how Dr. Akhlaghi applied the definition in her testimony. See, eg., Pet. Reply 9–10. For purposes of analyzing the patentability of the challenged claims, we continue to interpret the term as “the time period which elapses after administration of the dosage form at which the plasma concentration of the drug attains the highest plasma concentration of drug attained within the dosing interval (i.e., about 24 hours),” because that definition is consistent with the Specification, and because the parties themselves agreed to the definition of Tmax. Inst. Dec. 7. E. Overview of the Prior Art slip op. at 11

  • BurdenNot shown unpatentable

    “Based on our review of the record, we determine that Petitioner has not shown sufficiently that combining the teachings of Timmins and Cheng as Petitioner contends would have resulted in a dosage form that provides a mean Tmax of metformin from 5.5 to 7.5 hours after administration.” slip op. at 19

  Patent outcomesUS 6,866,866 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,866,866
• Fujifilm Corporation v. Sony CorporationSome claims unpatentable
  PTAB · Nov 7, 2018 · IPR2017-01268 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claims 15 and 17 are unpatentable as anticipated by Ishikawa; the petitioner did not show claims 1–11, 16, and 18–20 unpatentable over Aonuma or Aonuma and Abe.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA”) at the time of the ’774 patent would have had “a bachelor’s 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. 13 (citing Ex. 1003 ¶ 65; Ex. 1018 ¶ 60). 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, 163–64 (Fed. Cir. 1985))). Accordingly, we adopt Petitioner’s assessment of the level of ordinary skill in the art.” slip op. at 8

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

    “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 Decision on Institution, 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 9

  • Expert testimonyPetitioner expert creditedMixed

    “considerably greater than Ishikawa’s stylus load of 50–300 μN (Ex. 1015 ¶ 45). The Talke Declaration does not address this discrepancy, and Dr. Talke stated during his deposition that reducing the stylus load would reduce scratching of the magnetic tape surface. Ex. 1030, 108:14–19 (“Q: Would reducing the contact pressure for the stylus instrument reduce the scratching of the magnetic tape surface by the stylus? A: Yes, it would, but you have to remember the other problem is the diameter and size of the stylus.”). Moreover, Petitioner provides evidence that it was not uncommon to use stylus-type profilometers to measure the properties of magnetic tape, even after Bhushan was published in 1996. See Reply 6. In particular, Petitioner points to Saliba,6 which describes using a stylus-type profilometer, under identical conditions to those used in Ishikawa, to measure the surface characteristics (including peak-to-valley roughness) of the backcoating of magnetic tape. Ex. 1027, 7:28–40, 57–60. Petitioner further points to Ohno,7 which also describes using “a stylus type 3D profilometer in accordance with JIS B0601” to measure the surface roughness characteristics of magnetic tape. Ex. 1028 ¶ 36; see also Ex. 1015 ¶ 45 (Ishikawa explaining that surface roughness characteristics were measured “in accordance with JIS-B0601-1994”); Ex. 1027, 7:28–39 (Saliba explaining that surface roughness characteristics where measured “in accordance with JIS-B0601-1994”). Accordingly, we are persuaded that the 6 US Patent No. 6,558,774 B1, issued May 6, 2003 (Ex. 1027). 7 U.S. Patent App. Pub. No. US 2005/0175866 A1, published Aug. 11, 2005 (Ex. 1028). evidence establishes that a stylus-type profilometer is a suitable device for measuring the surface characteristics of magnetic tape.” slip op. at 19

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We agree with Petitioner that Ishikawa teaches “peak-to-valley roughness less than about 325 nm” as recited in claim 15. Pet. 24–25; Reply 5–8; Ex. 1003 ¶ 216. In particular, Ishikawa teaches a backcoating layer of a magnetic tape that has a peak-to-valley roughness “Rz of 40 to 250 nm, particularly 50 to 200 nm.” Ex. 1015 ¶ 44. Ishikawa provides five example embodiments of its magnetic tape, and reports the measurements of a number of characteristics of the backcoat layer for each example, including peak-to-valley roughness Rz. Id. ¶¶ 120–134, Table 1. Ishikawa discloses that peak-to-valley roughness Rz was measured using a stylus-type profilometer under the following conditions: Stylus: diameter: 1.5 to 2.5 μm; curvature: 60º Contact pressure: 50 to 300 μN Cut-off length: 80 μm Sampling length: 80 μm Assessment length: 400 μm Id. ¶¶ 45, 49. The reported peak-to-valley roughness Rz values for the five examples ranged from 58 to 87 nm, as shown in the annotated portion of Ishikawa Table 1 from the Petition, reproduced below: Pet. 24 (citing Ex. 1015, Table 1). The annotated portion of Ishikawa Table 1 shows the results for the measured characteristics of the backcoat layer of Examples 1–5, with the peak-to-valley roughness Rz values highlighted by a red box. Id. Because Ishikawa teaches that the backcoating layer of its magnetic tape should have a peak-to-valley roughness “Rz of 40 to 250 nm, particularly 50 to 200 nm,” and because Ishikawa presents examples of magnetic tape with backside surfaces having a peak-to-valley roughness of 87 nm or less, Ishikawa discloses “a peak-to-valley roughness less than about 325 nm” as recited in claim 15.” slip op. at 16

  Patent outcomesUS 7,029,774 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,029,774
• Hengdian Group Dmegc Magnetics Co., Ltd. / Zhejiang Innuovo Magnetics Co., Ltd. et al. v. Hitachi Metals, Ltd.No claims unpatentable
  PTAB · Nov 2, 2018 · IPR2017-01312 · APJ Jo-Anne M Kokoski · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

    “that Zhou is unclear as to whether its test atmosphere is an air or inert environment. Much of the evidence, as described above, could support either interpretation. It is Petitioner’s burden, however, to establish facts supporting its challenge that claims 1, 2, 6, and 8–12 would have been obvious over the combined teachings of Zhou and Young by a preponderance of the evidence. 35 U.S.C. § 316(e); see also Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). “Failure to prove the matter as required by the applicable standards means that the party with the burden of persuasion loses on that point—thus, if the fact trier of the issue is left uncertain, the party with the burden loses.” Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008). Because Petitioner’s argument that a POSA would have been motivated to apply the environmental conditions of Zhou’s retention step to Young’s open-to-the air pressing step is based on its contention that Zhou’s test atmosphere was air, and because Petitioner has not established that Zhou’s test atmosphere was air, we are not persuaded that Petitioner has made a sufficient showing that a POSA would have combined the teachings of Zhou and Young in the manner proposed. Accordingly, we find that Petitioner has not shown by a preponderance of the evidence that claims 1, 2, 6, and 8–12 of the ’565 patent are unpatentable under 35 U.S.C. § 103 as obvious over the combined teachings of Zhou and Young. F.” slip op. at 23

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

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

  Patent outcomesUS 6,461,565 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,461,565
• 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
• Bedra, Inc. / Berkenhoff GmbH et al. v. Seong, Ki ChulInstitution denied
  PTAB · Aug 29, 2018 · IPR2018-00667 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–5 were unpatentable over Tomalin or Mukherjee and Briffod I.

  RulingsInstitution decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “On the present record, we are persuaded that Patent Owner’s construction is correct. Although it is true that the ’535 patent describes “produc[ing] uniform cracks in the coating layer and the alloy layer to form a porous structure on the surface,” Ex. 1002, 6:51–52, it is not clear on the present record that this necessarily means the cracks themselves are the surface pores. Instead, “the porous nature of the wire” merely “arises from the cracks in the alloy layer and the coating layer.” Id. at 4:32–33 (emphasis added). Thus, the ’535 patent does not necessarily treat the cracks as synonymous with the pores; it also may allow the creation of pores merely as a result of the creation of separate cracks. In addition, the ’535 patent places restrictions on the shape of cracks that are more consistent with Patent Owner’s proposed construction than with that proposed by Petitioner. The ’535 patent consistently describes the cracks as directional and oriented perpendicular to the length of the wire. Id. at 4:43–45 (“the alloy layer includes cracks having a direction perpendicular to the longitudinal direction of the wire”), 5:35–37 (“the cracks have a direction approximately perpendicular to the longitudinal direction of the wire”), 6:53–55 (“These cracks are propagated through the grain boundary of the coating layer and the direction of the propagation is perpendicular to the longitudinal direction of the wire”). Interpreting “crack” as synonymous with “pore,” which refers to any small hole or opening without any limit on shape, Ex. 2004, is inconsistent with the description of cracks in the ’535 patent as directional. Far more consistent with this description is Patent Owner’s proposed construction of “crack” as “narrow break.” Accordingly, on the present record, we construe “crack structure” as “an arrangement of narrow breaks.”” slip op. at 6

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “evidence currently of record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “In other words, for the ’535 patent to be entitled to the priority date of the Korean application, the Korean application must “contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.” 35 U.S.C. § 112(a). The question Petitioner presents here is whether the Korean application adequately describes the presence of an alloy layer with the “crack structure on its surface” that is recited in the challenged claims.” slip op. at 8

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedReference not prior artDecided for patent owner

    “application are entitled to the benefit of a foreign priority date if the corresponding foreign application supports the claims in the manner required by [35 U.S.C. §] 112.” In re Gosteli, 872 F.2d 1008, 1010 (Fed. Cir. 1989).” slip op. at 7

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosure
  Patents in suitUS 6,482,535
• LG Electronics, Inc. / LG Electronics U.S.A. Inc. et al. v. Fundamental Innovation Systems International LLCInstitution denied
  PTAB · Jun 28, 2018 · IPR2018-00460 · APJ Jon B Tornquist · IPR · Institution

  The Board denied institution on all challenged claims because the same challenge had already been denied in the ZTE/Samsung IPR, and dismissed LG’s joinder motion as moot.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “grounds, arguments, and supporting evidence as the petition in the ZTE/Samsung IPR. Pet. 2 (“This petition is substantially identical to IPR2018-00110.”); Mot. 1 (“[Petitioner’s] Petition is substantively identical to the petition in the ZTE/Samsung IPR—challenging the same claims of the ’550 Patent on the same grounds while relying on the same prior art, arguments, and evidence.”). On May 8, 2018, we denied institution in the ZTE/Samsung IPR. ZTE/Samsung IPR, Paper 12, 13. In view of the identity of the challenge between the present Petition and that filed in the ZTE/Samsung IPR, and for the reasons set forth in the decision denying institution in the ZTE/Samsung IPR, which we hereby incorporate by reference, we likewise do not institute inter partes review in this proceeding. See id. at 7–13.” slip op. at 2

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “III. DISMISSING MOTION FOR JOINDER As noted above, Petitioner seeks to join, as a Petitioner, in the ZTE/Samsung IPR. Mot. 1. Because the ZTE/Samsung petition was denied, however, Petitioner’s Motion for Joinder is moot. See 35 U.S.C. § 315(c).” slip op. at 3

  None
  Patents in suitUS 8,624,550
• Micron Technology, Inc. / Intel Corporation et al. v. Daniel L. FlammAll claims unpatentable
  PTAB · Jun 22, 2018 · IPR2017-00391 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claims 1–7 are unpatentable as obvious: claims 1 and 5–7 over Lieberman-based or Qian grounds, claims 2–3 over grounds adding Hanawa, and claim 4 over grounds adding Collins.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art at the time of the ’221 patent would have had “a Bachelor’s degree in electrical, mechanical, or chemical engineering, physics, chemistry, or a similar field, and three to four years of work experience in semiconductor manufacturing or related fields,” a Master’s degree in the same fields “and two to three years of work experience in semiconductor manufacturing or related fields,” or “a PhD in electrical, mechanical, or chemical engineering, physics, chemistry, or a similar field.” Pet. 16 (citing Ex. 1003 ¶¶ 48–51). Patent Owner does not dispute Petitioner’s assessment in its Response. 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 6

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

    “May 30, 1997); see Pet. 16. For claims of an expired patent, the Board’s claim interpretation is similar to that of a district court, i.e., consistent with Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). Under the Phillips standard, claim terms are given their ordinary and customary meaning as would be understood by a person of ordinary skill in the art at the time of the invention, and in the context of the entire patent disclosure and prosecution history. Phillips, 415 F.3d at 1312–14. 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 purposes of the Decision on Institution, we determined that, based on the record at the time, no claim term required express construction (Dec. on Inst. 6–7), and we see no reason to modify that determination in light of the record developed at trial. C.” slip op. at 7

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “We have considered Patent Owner’s arguments to the contrary and do not agree with them for the following reasons. Patent Owner contends that Lieberman’s capacitive currents “are not the same thing as the capacitive currents referenced in the ’221 patent” (PO Resp. 4), but does not provide sufficient objective analysis or evidence demonstrating why that is the case. As Petitioner notes, claim 1 does not limit the claimed capacitive currents coupled from the inductive coupling structure to a specific type of capacitive current, the ’221 patent does not provide a definition of “capacitive current,” and Patent Owner “has not provided any proposed construction for the term.” Reply 6 (citing Ex. 1034 ¶ 6). Moreover, we do not credit Dr. Flamm’s supporting testimony on this issue because it is conclusory in nature. Ex. 2003 ¶ 11; see 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (stating a lack of objective support for an expert opinion “may render the testimony of little probative value in [a patentability] determination”). In particular, Dr. Flamm’s testimony is identical to Patent Owner’s argument as it appears in the Patent Owner Response, and does not provide objective support for his statements. Absent underlying facts or data to support Dr. Flamm’s opinion, we are not convinced that Lieberman’s capacitive currents are different than those encompassed by claim 1 of the ’221 patent. See Reply 6 (“Lieberman expressly contradicts [Patent Owner’s] argument by teaching that the transformer ‘reduces the undesired capacitively coupled rf current flowing from coil to plasma by a factor of two.’” (citing Ex. 1006, 56; emphasis omitted)).” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Patent Owner also argues that Petitioner’s contention “that the systems described by Lieberman and Dible ‘have a high degree of similarity in structure, purpose, and operation’ that ‘would render modification of the former with aspects of the latter straightforward and well within the skill of a person having ordinary skill in the art’” is “purely conclusory,” and, therefore, Petitioner fails to establish a motivation to combine Dible with Lieberman. PO Resp. 27. We disagree. Petitioner provides a number of reasons, supported by rational underpinnings, as to why a person having ordinary skill in the art would have been prompted to combine or modify the teachings of Lieberman and Dible. Pet. 47–48 (citing Ex. 1003 ¶¶ 132– 135); see In re Kahn, 441 F.3d 911, 988 (Fed. Cir. 2006) (stating that the relevant inquiry is whether there is “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). With respect to degree of similarity between the systems disclosed in Lieberman and Dible, Petitioner persuasively argues, with citations to evidence of record, that both references “are directed to inductively-coupled plasma generation for semiconductor processing, specifically including etching and deposition,” and “also discuss the manipulation of phase and anti-phase portions of an RF field.” Pet. 48 (citing Ex. 1006, 5, 56; Ex. 1007, 1:15–19, 2:42–56, Fig. 5(a)–5(b)); Ex. 1003 ¶ 135. Petitioner also argues that “Dible offers user control” that “would allow for fine-tuning of the phase and anti-phase portions, e.g., to render the device a capacitive coupling device, inductive coupling device, or a combination thereof” that a person having ordinary skill in the art would have recognized “would augment Lieberman’s design.” Pet. 47 (citing Ex. 1007, Abs., 2:39–46; Ex. 1003 ¶ 133). Specifically, Petitioner points to Dible’s teaching that “inductively coupled plasma generates higher plasma density that is more suitable for certain low pressure processes.” Id. (citing Ex. 1007, 1:52–54). Dr. Graves further testifies that “capacitively coupled plasma has known uses, e.g., for relatively high pressure applications,” which “can result in faster etch rates,” and, “[a]ccordingly, Dible’s user control provides greater flexibility for different processes and fabrication techniques.” Ex. 1003 ¶ 133 (citing Ex. 1025, 1:15–23; Ex. 1026, 1:5–50, 2:42–57). Additionally, Petitioner notes that “Lieberman specifically describes, for certain applications, the desirability for reducing capacitively coupled radio frequency currents flowing from the coil to the plasma,” and that Dible similarly “describes the possibility of adjusting relative proportions of inductive and capacitive coupling components of the coil to the plasma by adjusting the relative phases on the ends of the coil.” Pet. 47 (citing Ex. 1006, 56; Ex. 1007, 2:39–42). Based on these disclosures, we find Petitioner’s argument that a person having ordinary skill in the art “would have been motivated to improve Lieberman’s system with Dible by including Dible’s control circuit to enable adjustment of the phase and anti- phase portions to control the proportions of inductive and capacitive coupling currents, e.g., to minimize the capacitive coupling and apply power only by inductive coupling” to be persuasive. Id. at 47–48; Ex. 1003 ¶ 134. Accordingly, we find that a person having ordinary skill in the art would have looked to Dible when determining how to control the adjustment of the phase difference in Lieberman’s system. We also have reviewed the evidence and arguments presented in the Petition and find that Petitioner has shown sufficiently that all of the elements of independent claim 1, and claims 5–7 that depend, directly or indirectly, therefrom, are disclosed in the combined teachings of Lieberman and Dible. Pet. 41–45. After considering Petitioner’s and Patent Owner’s positions, as well as their supporting evidence, we determine that Petitioner has shown by a preponderance of the evidence that independent claim 1, and claims 5–7 that depend, directly or indirectly, therefrom, would have been obvious over the combined teachings of Lieberman and Dible. G.” slip op. at 33

  Patent outcomesUS 6,017,221 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,017,221
• Samsung Sdi Co., Ltd. / Samsung Sdi America, Inc. et al. v. Ube Industries, Inc.Rehearing denied
  PTAB · Apr 24, 2018 · IPR2017-02115 · APJ Jo-Anne M Kokoski · IPR · Rehearing

  The Board denied Samsung’s rehearing request, leaving in place its § 325(d) denial of institution because substantially the same prior art or arguments had been presented to the Office.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of the law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)). The request must identify, with specificity, all matters that the requesting party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. 37 C.F.R. § 42.71(d). Additionally, Petitioner, as the party challenging the Decision, has the burden of showing it should be modified. Id.” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “Decision (Dec. 7–8), concluded that the disclosures in Simon-161 and Simon-93 are substantially similar to, and cumulative of, the disclosures in Yamahira the Examiner considered during the ex parte reexamination, and further concluded that the manner in which Petitioner relies on Simon-161” slip op. at 6

  Discretionary denial
  Patents in suitUS 6,033,809
• Samsung Electronics Co., Ltd. v. Promos Technologies, Inc.All claims unpatentable
  PTAB · Apr 11, 2018 · IPR2017-00037 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claims 1–6, 8–15, and 17–20 are unpatentable under the stated § 102 and § 103 grounds; the motion to amend is denied for lack of written-description support and because the substitute claims are obvious.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “We do not find that there has been an unambiguous disclaimer or disavowal of claim scope as suggested by Patent Owner. With respect to claims 1 and 10, the first sentence of applicants’ statement about Endo is a general allegation that Endo does not disclose the claim element “introducing an inert gas into the titanium nitride sputtering chamber to cool the wafer by fanning the wafer with the inert gas to a temperature sufficiently low to reduce thermal stresses between the titanium nitride layer and the Al-Cu layer.” Ex. 1003, 66. This statement cannot be read to disclaim cooling processes where gas is blown under the rear surface of the wafer.” slip op. at 11

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

    “3. “fanning the wafer” The claim term “fanning the wafer” is not expressly defined in the Specification. The Specification, however, does describe “the metallization process according to an embodiment of the present invention” as including a step of fanning the wafer: Next, at step 34, the wafer 100 is transferred to the titanium nitride sputtering chamber 16 and inert gases are injected into the chamber 16 for fanning the high-temperature wafer 100 until the temperature of the wafer 100 is reduced to about 60– 80º C. The inert gas is introduced into the chamber 16 at a temperature of substantially less than 260–280º C., and is typically provided at about room temperature. The inert gas may be nitrogen or argon. In specific embodiments, the flow rate is about 80–120 sccm, and the flow time is about 20–30 seconds. The inert gas may be injected directly onto the wafer 100 or near the wafer to fan the wafer until it is cooled to the desired temperature. Ex. 1001, 3:20–31 (emphasis added). The Specification also teaches that, “[i]n some embodiments,” “[t]he inert gas is injected into the titanium nitride sputtering chamber to fan the wafer until the wafer is cooled to a temperature of about 60–80º C.” Id. at 2:10–16; see also id. at 2:48–52 (“The wafer may be cooled after transferring the wafer to the titanium nitride sputtering chamber, for instance, by introducing the inert gas into the titanium nitride sputtering chamber to fan the wafer with the inert gas.”). Accordingly, we determine based on the Specification, claim language, and evidence from the complete record before us that, under the broadest reasonable interpretation and giving the words their plain and ordinary meaning consistent with the Specification, “fanning the wafer” means “injecting gas directly onto or near the wafer.” B.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not observe meaningful differences between the parties’ assessments of a person having ordinary skill in the art. We further note that both assessments appear consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). Our determination regarding the patentability of the challenged claims does not turn on the minor differences between these definitions. We adopt Petitioner’s assessment, but note that our conclusions would be the same under Mr. Brahmbhatt’s assessment. C.” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We agree with Petitioner that Yamada teaches “fanning the wafer” as recited in claims 1 and 18. In particular, Yamada describes an embodiment where silicon substrate 1 is cooled by releasing argon gas “over the rear face of the silicon substrate 1.” Ex. 1004 ¶ 28; see also id. ¶ 32 (“[I]t is also possible, after moving the substrate to the processing chamber for forming the TiN film 6, to release just the room-temperature Ar gas across the rear face of the silicon substrate 1 prior to forming the TiN film 6.”). Yamada further describes its method as “proactively cool[ing] the substrate by blowing a low-temperature inert gas against it.” Id. ¶ 35. Accordingly, we determine that Yamada discloses “fanning the wafer” as recited in independent claims 1 and 18.” slip op. at 24

  Patent outcomesUS 6,699,789 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,699,789
• 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

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.