- PTAB · Dec 14, 2021 · IPR2021-01029 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board instituted IPR on claims 1–7 and 12–14, finding a reasonable likelihood that Atarashiya anticipates them because the claims likely lack the parent application's written-description support.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that 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 (2018); see also 37 C.F.R. § 42.4 (2021). Upon consideration of the Petition, the Preliminary Response, the Reply, the Sur-reply, and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’654 patent, and we decline to exercise our discretion to deny institution. Accordingly, for the reasons that follow, we institute an inter partes review of claims 1–7 and 12–14 of the ’654 patent.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“on the current record, we find that Petitioner has sufficiently met its burden to show, for purposes of institution, that the Parent Application does not reasonably convey to a person of ordinary skill in the art that the inventor was in possession of a liquid crystal device that has both (1) a pixel electrode as the second electrode and a common electrode as the first electrode, and (2) a light shielding film configured to overlap with the second electrode (i.e., the pixel electrode) which is bent in plan view, as required by independent claims 1 and 14.” slip op. at 14
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner
“On the present record, we are persuaded that Petitioner has made a sufficient threshold showing that limitations [1.12] and [1.13] in independent claim 1 (and the similar limitations in independent claim 14) lack written description support in the Parent Application. Accordingly, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that the challenged claims in the ’654 patent are not entitled to the benefit of the March 4, 2009 filing date of the Parent Application. This determination is preliminary in nature and based on the record at this stage of the proceeding. We invite the parties to develop these arguments further at trial, to the extent permitted under our rules. D. Anticipation by Atarashiya Petitioner contends that claims 1–7 and 12–14 are unpatentable under 35 U.S.C. § 102 as anticipated by Atarashiya. Pet. 14, 26–64. Atarashiya published on September 10, 2009. Ex. 1004, code (43). As set forth above, we determine that Petitioner establishes a reasonable likelihood of prevailing in showing that the ’654 patent is not entitled to the March 4, 2009 filing date of the Parent Application. Accordingly, on the present record, there appears to be a reasonable likelihood that Atarashiya qualifies as prior art because it was published more than one year before the November 20, 2014 filing date of the ’654 patent. See Ex. 1001, code (22).” slip op. at 18
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“On the present record, we are persuaded that Petitioner has made a sufficient threshold showing that limitations [1.12] and [1.13] in independent claim 1 (and the similar limitations in independent claim 14) lack written description support in the Parent Application. Accordingly, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that the challenged claims in the ’654 patent are not entitled to the benefit of the March 4, 2009 filing date of the Parent Application. This determination is preliminary in nature and based on the record at this stage of the proceeding. We invite the parties to develop these arguments further at trial, to the extent permitted under our rules.” slip op. at 18
Claim construction§ 102 anticipation§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 9,310,654 - PTAB · Dec 14, 2021 · IPR2021-01028 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board instituted IPR on claims 1–11, 15, and 16 on all asserted grounds, finding a reasonable likelihood that at least one claim would have been shown obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential), which was found to mitigate concerns of duplicative efforts and possibly conflicting decisions between the Board and the district court, thus ensuring that the inter partes review is a “true alternative” to the district court proceeding. We also note that Patent Owner recently narrowed the claims of the ’299 patent that it is asserting in the District Court action to include only claims 6, 7, and 16. Ex. 2026, 1; see also Ex. 2025, 2–3 (ordering Patent Owner to narrow the number of patents and claims asserted in the District Action). Because the District Court Action will not address all of the claims challenged in this proceeding, and Petitioner agrees to be bound by a stipulation substantively similar to that in Sotera, we find that this factor weighs strongly against exercising discretion to deny institution.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Although Maekawa was considered by the Office during prosecution and is relied upon by Petitioner as the primary reference in the Petition (Advanced Bionics, Paper 6 at 8), there is not complete overlap between the arguments made during examination and the manner in which Petitioner relies on Maekawa here (id.). Petitioner argues that Takahata, in combination with Maekawa, discloses “an adhesive member” and “wherein the thickness of the protective member is at least 0.2 mm and no greater than 1.0 mm.” Pet. 24–35, 44–49; Section II.E.3, infra. As Patent Owner recognizes, the Examiner allowed the claims because “[a] thickness of a protective member at least 0.2 mm and no greater 1.0 mm was not found in the prior art because rejection relied on a protective member as a hard coat.” Prelim. Resp. 19–20 (quoting Ex. 1004, 2). Patent Owner does not contend that Petitioner’s arguments regarding how the combined teachings of Maekawa and Takahata disclose the thickness of the protective member were previously considered by the Office. Id. Accordingly, although Petitioner’s contentions that the challenged claims would have been obvious over the combined teachings of Maekawa and Takahata includes some cumulative art and arguments (Becton, Dickinson Factor (a)), Petitioner’s contentions also include art and arguments that are not cumulative of those previously considered by the Office (Becton, Dickinson Factor (b)). Because Petitioner relies on Takahata with respect to a limitation that the Examiner determined was not found in the art, there are material differences between the asserted art here and the prior art involved during examination. Thus, overall, we find that substantially the same art and arguments were not previously presented. When considering the Petition as a whole, we find that it does not sufficiently implicate the concerns addressed by § 325(d) to warrant discretionary denial, and we decline to exercise our discretion to deny institution under § 325(d).” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having reviewed the arguments in the Petition and the Preliminary Response, as well as the evidence of record, we are persuaded that Petitioner’s discussions of the particular structures in Maekawa and Takahata, and the explanation in the Petition and the Flasck Declaration, are sufficient to establish a reasonable likelihood that Petitioner would prevail in showing that the subject matter of independent claim 1 would have been obvious over the combined teachings of Maekawa and Takahata. We also have considered the parties’ arguments and evidence with respect to claims 3–5 (which depend from claim 1), 6, and 8–11 (which depend from claim 6) and are persuaded, on the current record, that Petitioner has established a reasonable likelihood that it would prevail as to those claims as well.” slip op. at 32
- Skill levelOther
“have had “at least a four-year undergraduate degree in electrical engineering or physics or a closely related field and four years of experience in the design and implementation of flat panel display devices or components thereof.” Pet. 6 (citing Ex. 1002 ¶ 41). Patent Owner’s declarant, Mr. Credelle, testifies that a person having ordinary skill in the art “would have had the equivalent of an undergraduate degree in electrical engineering, materials science, physics, or a related field and at least two years of work experience (or a graduate degree) in LCD display technology.” Ex. 2010 ¶ 28. Mr. Credelle also states that, although he disagrees with Petitioner’s proposed level of ordinary skill in the art, his opinions “apply equally under either proposed level.” Id. ¶ 30. We agree with the parties that a person of ordinary skill in the art would have had the equivalent of a four-year undergraduate degree in electrical engineering or a similar field, and experience in the field of flat panel displays or liquid crystal display technology, which appears to be consistent with the level of skill in the art at the time of the invention as reflected in the prior art in this proceeding. Our determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions, and we note that our conclusion would be the same under either definition.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,793,299 - Johnson & Johnson Surgical Vision, Inc. v. Alcon Inc.Institution deniedPTAB · Dec 10, 2021 · IPR2021-01069 · APJ Jamie T Wisz · IPR · Institution
The Board denied institution for claims 1, 2, 4, 5, 11, 12, 17, 23, 24, 26, and 27 under § 325(d), finding the same or substantially the same art was previously presented and no material …
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Under Advanced Bionics, “[p]reviously presented art includes art made of record by the Examiner, and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent.” Advanced Bionics, Paper 6 at 7–8. Because Gray, which is substantially identical to Frey, and Blumenkranz were before the Office during prosecution of the ’925 patent, we find that the same or substantially the same art was previously presented and we move on to the second part of the Advanced Bionics framework.” slip op. at 15
Discretionary denialPatents in suitUS 9,456,925 - Bluecatbio Ma Inc. v. Yantai Ausbio Laboratories Co., Ltd.No claims unpatentablePTAB · Dec 9, 2021 · PGR2020-00051 · APJ Elizabeth M Roesel · PGR · Final written decision
Petitioner failed to prove claims 1, 3–5, 7, 10–12, and 14–20 unpatentable because the Gyro Washer was not shown to drive all or nearly all expelled liquid to the drain.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We find that Patent Owner’s additions are supported by the ’063 Patent. Patent Owner directs us to portions of the Specification that discuss immunoassays, magnetic bead assays, and cellular assays, as well as the need to avoid cross-contamination for these types of reactions. PO Resp. 14; Ex. 1001, 1:24–28, 3:43–45; 3:63–66, 4:25–32, 13:25–50, 15:52– 16:2, 19:41–59. We find that these disclosures support Patent Owner’s contention that a POSA would have been aware of the operational requirements of reaction vessel unit washing devices, methods used to cross-contamination. For these reasons, we apply Petitioner’s definition of a POSA as modified by Patent Owner’s additions. Pet. 16; PO Resp. 15.4” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that its proposed construction stays true to the claim language. PO Sur-reply 5. As just discussed, “the expelled liquid on the inner surface of the housing” refers back to an earlier part of the claim that recites that rotating the rotor (referred to in claim 12 as inner surface of the housing. Ex. 1001, 24:5–8, 25:5–7. Claims 1 and 12 recite “the expelled liquid” without any modifier, such as “at least some.” In our view, Patent Owner’s proposed construction is consistent with the claim language because the antecedent for “the expelled liquid” is the liquid that is expelled from the reaction vessel onto the inner surface of the housing, not merely some portion of that liquid. Nothing in the claim language suggests that “the expelled liquid on the inner surface of the housing” is divisible, with some of the liquid being driven by the wind to the drain and some of the liquid not being driven by the wind to the drain. For example, we see no support in the claim language for Petitioner’s argument that “the first expelled milliliter qualifies as ‘liquid . . . expelled,’ and the second milliliter also qualifies as ‘liquid . . . expelled,’ and so on.” Pet. 20 (citing Ex. 1006 ¶ 65). Although “all or nearly all” is not expressly recited in the claim, neither is “some.” As between these two constructions, “all or nearly all” more closely aligns with the language and structure of claims 1 and 12, including the antecedent for “the expelled liquid on the inner surface of the housing,” which in our view refers to the undivided whole of the liquid.6” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“5. Weighing the Evidence For all of the foregoing reasons, we determine that Petitioner has not shown persuasively that the Gyro Washer generates a wind that drives to the drain “all or nearly all of the liquid expelled from the reaction vessel onto the inner surface of the housing,” as required by our claim construction. More particularly, we find that the photos and observations of the Gyro Washer and microplates after completion of a wash cycle, as discussed in subsection 2 above, show that a substantial amount of the liquid expelled from a microplate onto the inner surface of the housing is not driven by the wind to the drain of the Gyro Washer. We find that this evidence outweighs the other evidence relied upon by Petitioner to show that the wind limitation is met, including the videos and observations of the Gyro Washer in operation, as discussed in subsection 1 above, Petitioner’s droplet experiments, as discussed in subsection 3 above, and Petitioner’s bucket experiments, as discussed in subsection 4 above.” slip op. at 48
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“dependent claim 10, Petitioner contends that it would have been obvious to use an aspiration pump with the Gyro Washer. Pet. 104–105 (relying on evidence that a Gyro Washer was sold with an aspiration pump). For dependent claims 7 and 17, Petitioner contends that it would have been obvious to modify the Gyro Washer so that the rotor is rotated in a second rotational direction. Pet. 105–108, 114. For method claims 12 and 14–17, Petitioner contends that, even in the absence of Mr. Yagi’s demonstrations of the Gyro Washer at the 2009 and 2010 trade shows, the method of using the Gyro Washer would have been obvious in view of the device itself and that the limitations claims 12 and 14–16 are satisfied by the natural, ordinary, and intended use of the Gyro Washer. Pet. 108–114. Petitioner’s contentions do not remedy the deficiencies in Petitioner’s arguments and evidence addressing the wind limitation, as discussed above. Accordingly, we determine that Petitioner has not met its burden to show that claims 7, 10, 12 and 14–17 would have been obvious in view of the Gyro Washer.” slip op. at 51
Patent outcomesUS 10,338,063 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 10,338,063 - Sattler Tech Corporation v. Yaqi LyuInstitution deniedPTAB · Dec 9, 2021 · PGR2021-00095 · APJ Scott A Daniels · PGR · Institution
The Board denied institution of PGR challenging the sole claim because Sattler had filed a civil action challenging that claim’s validity before filing the petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“Sattler filed this Petition for post grant review of the ’645 patent on June 9, 2021. Approximately two months prior, on April 15, 2021, Sattler filed the Virginia lawsuit seeking a declaratory judgment that the claim of the ’645 patent is invalid based on prior art sales and activity prior to October 18, 2019. See Ex. 3002; see also Ex. 3001 ¶¶ 15, 25(a). Because the Board may not institute a post grant review of a challenged patent when the petitioner filed a civil action challenging the validity of a claim of the patent before the date on which the petition for review is filed, we deny the Petition in all respects. See 35 U.S.C. § 325(a)(1).” slip op. at 3
- BurdenDenied
“Sattler filed this Petition for post grant review of the ’645 patent on June 9, 2021. Approximately two months prior, on April 15, 2021, Sattler filed the Virginia lawsuit seeking a declaratory judgment that the claim of the ’645 patent is invalid based on prior art sales and activity prior to October 18, 2019. See Ex. 3002; see also Ex. 3001 ¶¶ 15, 25(a). Because the Board may not institute a post grant review of a challenged patent when the petitioner filed a civil action challenging the validity of a claim of the patent before the date on which the petition for review is filed, we deny the Petition in all respects. See 35 U.S.C. § 325(a)(1).” slip op. at 3
Discretionary denial - PTAB · Nov 22, 2021 · IPR2021-00968 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board instituted IPR on claims 1–20 and all petitioned grounds, finding a reasonable likelihood of unpatentability and declining discretionary denial under §§ 314(a) and 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“approximately two months after the start of the trial. We determine that this factor weighs slightly in favor of exercising our discretion to deny institution. See Fintiv Order, 9 (“If the court’s trial date is earlier than the projected statutory deadline, the Board generally has weighed this fact in favor of exercising authority to deny institution under NHK.”).” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“The record shows that Petitioner presents the same or substantially the same prior art for one reference (Zimmerman) in a minor capacity. See Section II.A.2, supra; Square, Inc. v. 4361423 Canada Inc., IPR2019-01650, Paper 11 at 6–9 (PTAB April 28, 2020). In particular, the Examiner rejected the claims over the combination of Yang and Zimmerman, and the associated rationale was largely based on the disclosures of Yang, with Zimmerman relied upon for its teaching of “a plurality of lighting units being mounted to frame portions in a sign in a retro-fit manner.” Ex. 1002, 88–89, 119–120. Huang and Withers are the primary prior art references relied upon in the Petition. See, e.g., Pet. 23–43, 73–98. That is, Petitioner relies on the disclosures of Huang or Withers as teaching all of the limitations of the independent claims, save for the reliance on Zimmerman in combination for teaching the portion of the independent claims directed to the end caps comprising electrically insulative material, and on Hoover (only in combination with Withers and Zimmerman) as teaching frictionally engaging end caps to the elongate support member. Id. at 25–37, 40–43, 79– 85, 87–90, 94–98. Therefore, in view of the primary reliance on Huang or Withers, there are material differences between the asserted art here and the prior art involved during examination. Further, Patent Owner’s only support for its argument that Huang and Withers are cumulative of other art cited during prosecution is the side-by-side reproductions of figures that appear in each of the references which, on this record, is insufficient to establish that there is overlap, much less substantial overlap, between the arguments during examination and Petitioner’s reliance on the prior art. See Prelim. Resp. 27–29. Nor do we discern any overlap, as neither Huang nor Withers were at issue during prosecution, and the arguments during examination were directed to a different reference. Accordingly, neither condition of the first part of the two-part framework, that is, substantially the same art or argument, is satisfied for the exercise of discretion under 35 U.S.C. § 325(d), and we decline to exercise our discretion to deny institution under § 325(d). See Square, Inc., Paper 11 at 7–9.” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . and any response . . . shows that 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 (2018); see also 37 C.F.R. § 42.4 (2020). Upon consideration of the Petition, the Preliminary Response, the Reply, the Sur-Reply, and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least 1 claim of the ’835 patent, and we decline to exercise our discretion to deny institution. Accordingly, for the reasons that follow, we institute an inter partes review of claims 1–20 of the ’835 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had “at least a bachelor’s degree in mechanical engineering, electrical engineering, and/or physics and at least four years’ experience designing lighting equipment.” Pet. 19–20 (citing Ex. 1003 ¶ 26). Petitioner further contends that such a person “would understand concepts associated with lights, such as different types of light sources (e.g., LEDs, fluorescent, neon, etc.)” and “would be familiar with existing lighting equipment and their components—such as lighting mounts—and would know how to modify lighting equipment based on various design criteria.” Id. at 20 (citing Ex. 1003 ¶ 26). Patent Owner neither addresses Petitioner’s proposed definition, nor offers its own proposed definition. For purposes of this Decision, we adopt Petitioner’s proposed definition, which is undisputed on this record, and is consistent with the level of 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))).” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,311,835 - Philip Morris Products, S.A. v. Rai Strategic Holdings, Inc.All claims unpatentablePTAB · Nov 15, 2021 · IPR2020-00920 · APJ Jo-Anne M Kokoski · IPR · Final written decision
Claims 1–14 are unpatentable: claims 1, 3, 4, 6, and 7 are anticipated by Wang; claims 2, 5, and 8–14 are obvious over the stated combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art (“POSA”) “would have had a Bachelor’s degree in mechanical engineering, electrical engineering, or a related field, and three to four years of experience,” or a Master’s degree in the same fields with “one to two years of experience.” Pet. 9. Petitioner also contends that “[s]uch a POSA would have been familiar with charging devices used in commercial electronics and/or the components and underlying technology used therein.” Id. Patent Owner does not dispute Petitioner’s contentions. PO Resp. 8 (stating that, “[f]or the purposes of this IPR,” Patent Owner does not dispute Petitioner’s proposed definition of a POSA). Accordingly, we adopt Petitioner’s assessment of the level of ordinary skill in the art, which is undisputed on this record and 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.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We apply the claim construction standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. given their ordinary and customary meaning,’” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips, 415 F.3d at 1312–13. “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Tecs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). On the full record now before us, we determine it is not necessary to construe any claim term expressly to resolve the parties’ dispute. Nidec Motor, 868 F.3d at 1017; see also Pet. 10 (Petitioner stating that “[n]o claims require a specific construction.”); PO Resp. 8 (Patent Owner stating that it “does not believe that any terms in the claims of the ’591 patent require explicit construction.”).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner that Wang teaches “a connector to interface to a computer, the case transferring data from said personal vaporizing unit to said computer via said connecter” as claims 3 and 4 require. Pet. 23–24; teaches that electronic circuit 44 in charging means 40 can both control the charging of smoking device 10 and keep a record of the number of charges and general usage data relating to smoking device 10. Ex. 1005 ¶¶ 54–55. Wang also teaches that the usage data electronic circuit 44 records can be transferred from charging means 40 to an external computing device via interface 45, which can be a standard interface such as a USB. Id. ¶ 55. Wang explains that” slip op. at 14
- Strike new argumentNew argument consideredDecided for petitioner
“Our rules provide that a petitioner must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a). Our rules also state that “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response.” Id. § 42.23(b). “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Consolidated Trial Practice Guide (“Practice Guide”), 74 (Nov. 2019), available at https://go.usa.gov/xpvPF. Our Practice Guide explains that it is “improper for a reply to present new evidence (including new expert testimony) that could have been presented in a prior filing, for example, newly cited prior art present in the prior art presented with the petition.” Id. at 74–75. We evaluate Petitioner’s Reply and Patent Owner’s Sur-reply arguments in light of this guidance. In our judgment, Petitioner’s arguments and evidence in the Reply are responsive to arguments made by Patent Owner in the Patent Owner Response and are not outside the scope of a proper reply. In the Patent Owner Response, Patent Owner argues that when Wang states that electric circuit 44 in charging means 40 is capable of keeping certain data relating to smoking device 10, that data is from charging means 40, not from smoking article 10. PO Resp. 22. Patent Owner also argues in the Patent Owner Response that Wang does not describe or suggest that interface 28 in smoking article 10 is for data transfer at all. Id. at 23. In the Reply, Petitioner responds to Patent Owner’s argument without straying from the case it presented in the Petition. The case presented in the Petition, as supported with the Nayfeh Declaration, is that Wang teaches the transfer of general usage data related to smoking device 10 to an external computer via interface 45, and that a POSA would have understood that Wang obtains this usage data from smoking device 10 over interface 28, which can be a mini USB. Pet. 23; Ex. 1003 ¶¶ 85–88. Petitioner makes this same argument in the Reply, and provides additional evidence and testimony from Dr. Nayfeh to rebut Patent Owner’s assertions regarding Wang’s disclosures. Pet. Reply 2–5; Ex. 1046 ¶¶ 7–14. This is not an attempt to argue a new case or to provide new evidence necessary to make out a prima facie case of unpatentability. Instead, Petitioner’s reply arguments and evidence respond to arguments in the Patent Owner Response, without proceeding in a new direction or taking a new approach. Petitioner confirms and reinforces the” slip op. at 19
Patent outcomesUS 8,314,591 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,314,591 - R.J. Reynolds Vapor Company v. Philip Morris Products S.A.Institution deniedPTAB · Nov 9, 2021 · IPR2021-00826 · APJ Elizabeth M Roesel · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 3–5, 8, and 17 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic 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”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). A patent claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved based on underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when presented, objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of ordinary skill in the art (“POSA”) would have had a bachelor of science degree in mechanical engineering, electrical engineering, materials science, physics, or have completed a similar technical program or coursework, along with one to two years of experience designing, developing, or working with materials and structures used in electronic products incorporating thermal resistors or other types of heaters. Pet. 15 (citing Ex. 1010 ¶ 97). Petitioner asserts that a higher level of education could substitute for a lesser amount of experience, and vice versa. Id. Patent Owner does not dispute Petitioner’s contention regarding the level of ordinary skill in the art. Prelim. Resp. 7. We find that Petitioner’s definition of a POSA is consistent with the scope and content of the ’265 Patent and the asserted prior art, and we apply this definition for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In an inter partes review, we apply the same claim construction standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). For purposes of this proceeding, the parties do not dispute the meaning of any claim term. See Pet. 17 (asserting that no terms require express construction for purposes of this proceeding and that, in the related litigation, the Court held that no claim terms required construction); Prelim. Resp. 7 (asserting that, “[f]or purposes of its Preliminary Response [ ], Patent Owner accepts Petitioner’s position that no terms require construction”). Accordingly, we do not need to resolve any claim construction disputes for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of inter partes review).” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We have considered the paragraphs of the Suhling Declaration relied upon by Petitioner for its challenge to claim 1 based on Alarcon and Rabin (Ex. 1010 ¶¶ 101–143), and we find that they are essentially the same as the Petition (Pet. 29–49) and are deficient for the same reasons.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,814,265 - Johnson & Johnson Surgical Vision, Inc. v. Alcon, Inc.Institution deniedPTAB · Nov 9, 2021 · IPR2021-00899 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution of IPR on claims 1–17 under § 325(d), finding substantially the same art or arguments had been presented to the Office and no material examination error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“discretion and deny a petition as authorized under Section 325(d). First, we consider whether the same or substantially the same prior art or arguments previously were presented to the Office. 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, Paper 6 at 8. A non-exclusive list of factors, set forth in Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph), guides our application of that two-part framework. Advanced Bionics, Paper 6 at 9. Those factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Paper 8 at 17–18. “If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office.” Advanced Bionics, Paper 6 at 10.” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“Based on the information presented, we find the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we adopt Petitioner’s definition because, on this record, it appears consistent with the disclosures of the asserted prior art and the written description of the invention provided in the ’036 patent. Pet. 17 (Petitioner’s asserted definition of the ordinarily skilled artisan); see Prelim. Resp. 20 (reciting that definition without adopting it or proposing an alternative definition).” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe terms in controversy 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) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party proposes an express construction for any claim term. See Pet. 17; Prelim. Resp. 61–62. We find no claim term requires express construction in order to resolve whether to exercise our discretion and deny the Petition under Section 325(d). We discuss the scope of certain claim terms as necessary to our analysis of that issue, however, which we turn to in the next section.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“factual determination that provides a primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). In this Decision, we assess the asserted obviousness grounds only to the extent necessary to resolve Patent Owner’s request that we exercise our discretion and deny the Petition under Section 325(d).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,849,036 - Johnson & Johnson Surgical Vision, Inc. v. Alcon, Inc.Institution deniedPTAB · Nov 9, 2021 · IPR2021-00898 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution under § 325(d), finding the petition relied on substantially the same art or arguments previously presented to the Office and failed to show material examination error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“discretion and deny a petition as authorized under Section 325(d). First, we consider whether the same or substantially the same prior art or arguments previously were presented to the Office. 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, Paper 6 at 8. A non-exclusive list of factors, set forth in Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph), guides our application of that two-part framework. Advanced Bionics, Paper 6 at 9. Those factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Paper 8 at 17–18. “If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office.” Advanced Bionics, Paper 6 at 10.” slip op. at 19
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“The Board may not institute an inter partes review unless the information presented “shows that 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). The Board has discretion to deny a request for institution when the information presented shows a petitioner raises “the same or substantially the same prior art or arguments previously presented to the Office,” for example, during patent examination. 35 U.S.C. § 325(d).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on the information presented, we find the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we adopt Petitioner’s definition because, on this record, it appears consistent with the disclosures of the asserted prior art and the written description of the invention provided in the ’913 patent. Pet. 16 (Petitioner’s asserted definition of the ordinarily skilled artisan); see Prelim. Resp. 18 (reciting that definition without adopting it or proposing an alternative definition).” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe terms in controversy 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) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party proposes an express construction for any claim term. See Pet. 17; Prelim. Resp. 59–60. We find no claim term requires express construction in order to resolve whether to exercise our discretion and deny the Petition under Section 325(d). We discuss the scope of certain claim terms as necessary to our analysis of that issue, however, which we turn to in the next section.” slip op. at 18
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,622,913
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.