• Bio-Rad Laboratories, Inc. v. California Institute Of TechnologyNo claims unpatentable
  PTAB · Mar 23, 2026 · IPR2024-01451 · APJ Tawen Chang · IPR · Final written decision

  Claims 1–19 were not shown unpatentable: Larson did not establish the claimed detection in a single sample volume, and the asserted obviousness combinations did not cure the deficiencies.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner states that, “[f]or purposes of this IPR proceeding, PO does not contest Petitioner’s description of qualifications for a person of ordinary skill in the art (POSA) set forth [above].” PO Resp. 23. In view of the above, and because Petitioner’s uncontested description of one of ordinary skill in the art is reasonable and consistent with the ’921 patent and the cited art, we adopt Petitioner’s definition of a POSA for purposes of this Decision, except that we replace the phrase “at least a year of experience in quantitative and/or dPCR and fluorescence-based analyte detection” with “around a year of experience in quantitative and/or dPCR and fluorescence-based analyte detection.” Pet. 9 (emphasis added).13” slip op. at 14

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

    “We begin with “the context in which a term is used in the asserted claim,” which can be “highly instructive.” Phillips, 415 F.3d at 1314. In this case, claim 1 recites that the claimed assay is “capable of unambiguously detecting the presence or absence of each of said at least M analytes, in any combination of presence or absence, in a single sample volume, . . . wherein the analytes are amplified in the single sample 15 In this regard, we note that Petitioner’s claim construction position is not predicated on the collection of droplets being reconstituted into its original, pre-partition form prior to amplification; rather, the droplets remain compartmentalized from each other in the PCR thermal cycling tube. Tr. 65:21–66:9 (Petitioner’s counsel explaining that the droplets do not combine in the PCR thermal cycling tube but, rather, are “suspended in an immiscible fluid and analyzed en masse”). indicates that the first instance of single sample volume, i.e., the single sample volume in which the presence or absence of each M analytes are to be detected, is the antecedent basis for the second instance of “single sample volume,” i.e., the single sample volume in which the analytes are amplified. Thus, as the parties appear to agree, the single sample volume in which amplification takes places must be the same single sample volume in which the presence or absence of analytes are to be detected. We are not persuaded that, when accorded its plain and ordinary meaning, a single sample volume divided into a collection of droplets would be considered the “same” single sample volume prior to its partition.” slip op. at 17

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

    “With respect to the limitation, “wherein the analytes are amplified in the single sample volume,” Petitioner asserts that “Larson discloses PCR assays that amplify target polynucleotide in a single sample volume, specifically a portion of the reaction mixture that is subsequently partitioned into droplets.” Pet. 31 (emphasis added). There is no dispute that the amplification of the analytes in Larson occurs in the droplets. Larson ¶¶ 6–7 (explaining that “[d]igital PCR (dPCR) is an alternative quantitation method in which dilute sample are divided into many separate reactions” and that “[t]he template is amplified in the droplet for detection”) (emphasis added). Because the claims require that amplification of the analytes be in the same sample volume in which the at least M analytes, in any combination of presence or absence, is unambiguously detected, and because the pre-partition single sample volume is not the same single sample volume as the collection of droplets after partition under our claim construction set forth above, we find Petitioner has not shown, by a preponderance of evidence, that claims 1–10 and 13–19 are anticipated by Larson.17 Tr. 68:12–69:14 (Petitioner’s counsel” slip op. at 27

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

    “Although we agree with Petitioner that Larson contemplates scenarios in which droplets may contain more than one target molecule and does not require the exclusion of such multiple occupancy droplets in all embodiments, we are nevertheless not persuaded Petitioner has shown, based on a preponderance of evidence, that Larson renders obvious an assay capable of unambiguously detecting, in such multiple occupancy droplets, the presence or absence of each of at least M analytes, in any combination of presence or absence, when M is greater than F and F is at least 2.” slip op. at 32

  Patent outcomesUS 11,827,921 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,827,921
• Inergy Technology, Inc. v. Force Mos Technology Co., Ltd.No claims unpatentable
  PTAB · May 16, 2025 · IPR2024-00093 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1–9 were not proven unpatentable because the asserted references did not establish the claimed epitaxial layer or the required coverage of the trench sidewalls.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner defines a person of ordinary skill in the art as having “a Master’s degree in electrical engineering, and at least two years of relevant work experience in the field of integrated circuit design and manufacturing.” Pet. 13 (citing Ex. 1003 ¶¶ 32–37, 57). Patent Owner does not dispute Petitioner’s definition. PO Resp. 6. We adopt Petitioner’s proposed definition of the level of ordinary skill in the art because it is supported by unopposed declaration testimony and appears to be consistent with the disclosures of the ’634 patent and the asserted prior art references. See Ex. 1001, 1:6–2:33 (describing the invention and related art in terms of integrated circuit design and fabrication); see also Ex. 1006 ¶¶ 1–6 (Hirler); Ex. 1008 ¶¶ 1–37 (Kobayashi); Ex. 1009 ¶¶ 2–29 (Shiraishi). Neither party, moreover, indicates the overall result would change based on a different definition.” slip op. at 7

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

    “Petitioner argues that “the sidewalls of said trenches in said base layer are covered” should be construed to mean that “the entire sidewalls of” those trenches are covered. Pet. 18–19. We refer to this as “the sidewall limitation.” Petitioner shows persuasively that the disclosure and file history of the ’634 patent support its position on the sidewall limitation. Id. Patent Owner, for its part, observes that, after the filing of the Petition. two District Courts adopted the construction proposed by Petitioner.” PO Resp. 21 (citing Ex. 2010, 6–9; Ex. 2011, 23). Patent Owner also agrees to apply Petitioner’s construction for purposes of this proceeding. Id. We agree with Patent Owner that an express construction of the sidewall limitation is necessary to this Decision, id., and adopt Petitioner’s undisputed definition because it is supported by the record. No other claim term requires express construction for purposes of this Decision.” slip op. at 8

  • BurdenNot shown unpatentable

    “On this record, Petitioner fails to demonstrate that any claim is unpatentable under any ground asserted in the Petition. IV. CONCLUSION For the above reasons, we determine that Petitioner fails to establish by a preponderance of the evidence that claims 1–9 of the ’634 patent are unpatentable.” slip op. at 34

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Alternatively, even if we set aside that timing issue, Dr. Liu’s bare opinion, advanced for the first time during cross-examination, that an epitaxial layer is “obvious” from Hirler’s disclosure is inadequate to support the challenges. Id. at 24–25. We accord little weight to Dr. Liu’s opinion because it is conclusory. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). In any event, Petitioner does not meet, on this record, the “high standard” required to establish an inherent disclosure of an epitaxial layer in Hirler. PO Resp. 24.6 Dr. Liu opined for the first time during cross-examination “that it would have been impossible to create Hirler’s more lightly doped n- drift zone layer on top of its more heavily doped n+ substrate layer other than via epitaxy.” Id. at 25 (citing Ex. 2014, 164:16– 165:20). But Patent Owner effectively refutes that proposition with evidence that such a layer “could be created by counter-doping,” even if, as Dr. Liu contends, counter-doping may have been less ideal due to “disadvantageous mobility.” Id. (citing Ex. 2012 ¶ 133; Ex. 2014, 166:15–167:8).” slip op. at 11

  Patent outcomesUS 7,629,634 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,629,634
• Nespresso USA, Inc. v. K-Fee System GMHBNo claims unpatentable
  PTAB · Apr 10, 2024 · IPR2022-01574 · APJ James J Mayberry · IPR · Final written decision

  Claims 1–13 were not shown unpatentable because the asserted combinations did not teach or render obvious the claimed groove entirely to the side of the chamfered mandrel.

  RulingsFinal written decision

  • Skill levelSkill level board ownPatent owner expert discountedDecided for patent owner

    “The Federal Circuit has made clear that, “[t]o offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art.” Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022) (emphasis added). “Without that skill, the witness’[s] opinions are neither relevant nor reliable.” Id. at 1377. The Federal Circuit reasons that “‘[a]dmitting testimony from a person . . . with no skill in the pertinent art serves only to cause mischief and confuse the factfinder.’ . . . That testimony would ‘amount[ ] to nothing more than advocacy from the witness stand.’” Id. (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)). possesses at least the level of ordinary skill in the art. Our level of ordinary skill in the art requires a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier. Patent Owner does not persuasively account for how Dr. Howle’s experience, extensive as it may be, includes five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier. Cf. Kyocera, 22 F.4th at 1376 (“Dr. Pratt has advanced degrees in engineering and extensive experience in the design and manufacture of fastener driving tools. But he lacks experience in power nailer design.”).” slip op. at 21

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “The Federal Circuit has made clear that, “[t]o offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art.” Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022) (emphasis added). “Without that skill, the witness’[s] opinions are neither relevant nor reliable.” Id. at 1377. The Federal Circuit reasons that “‘[a]dmitting testimony from a person . . . with no skill in the pertinent art serves only to cause mischief and confuse the factfinder.’ . . . That testimony would ‘amount[ ] to nothing more than advocacy from the witness stand.’” Id. (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)). possesses at least the level of ordinary skill in the art. Our level of ordinary skill in the art requires a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier. Patent Owner does not persuasively account for how Dr. Howle’s experience, extensive as it may be, includes five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier. Cf. Kyocera, 22 F.4th at 1376 (“Dr. Pratt has advanced degrees in engineering and extensive experience in the design and manufacture of fastener driving tools. But he lacks experience in power nailer design.”).” slip op. at 21

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

    “Based on the information above, we conclude that the limitation “a groove that is laterally offset from the chamfered mandrel” requires the groove to be entirely to the side of any part of the mandrel. This construction is consistent with the words of the claim—the claim states that the groove is laterally offset from, or to the side of, the chamfered mandrel, not merely offset from a portion of or the centerline of the mandrel. This construction is also consistent with the one embodiment describing the relationship between the mandrel and groove containing the seal, which depicts the groove entirely to the side of the chamfered mandrel. We do not accept Mr. Jobin’s testimony that laterally offset is determined relative to the centerline of an object. Neither the intrinsic record nor other extrinsic evidence provides support for Mr. Jobin identifying the centerline of an object as the reference point for determining if a point is laterally offset from the object.” slip op. at 31

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

    “We do not agree with Petitioner that Yoakim teaches a groove that is laterally offset from the chamfered mandrel. As we indicated in our claim construction section, we construe the claim term to require the groove to be entirely to the side of any part of the mandrel. We agree with Patent Owner that, as depicted in Yoakim’s Figure 35, the alleged groove is not entirely to the side of any part of the mandrel. See Pet. 69; see also Pet. Reply 19 (showing the alleged groove, in red, including a portion over the chamfered mandrel); PO Resp. 55 (same). Even if Petitioner’s position is that all of the groove must be to the side of the centerline of the mandrel, Petitioner fails to prove that Yoakim teaches such a structure. As seen in Petitioner’s illustration at page 19 of Petitioner’s Reply (reproduced above), a small portion of the groove (which Petition colorizes in red) is to the left of the centerline (shown in green). See Pet. Reply 19.” slip op. at 40

  Patent outcomesUS 11,254,491 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,254,491
• Markforged Inc. v. Continuous Composites, Inc.No claims unpatentable
  PTAB · Sep 26, 2023 · IPR2022-00679 · APJ Sheldon M Mcgee · IPR · Final written decision

  Claims 1–12, 20, and 21 were not proven unpatentable; the asserted obviousness grounds failed for insufficient motivation to combine, teaching away, or missing claim limitations.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentOther

    “Patent Owner statutorily disclaimed claims 13–19 on July 25, 2023, rendering Petitioner’s Grounds 4, 9, and 10 moot. Ex. 2008. Thus, our Final Written Decision does not address Petitioner’s Grounds 4, 9, and 10. The Board heard oral arguments in an in-person hearing conducted on July 27, 2023. See Paper 23.” slip op. at 4

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA”) would have had a master’s or bachelor’s degree in mechanical engineering, materials science, or a related degree, and either at least 3–5 years of experience (with a master’s degree), or at least 5–6 years of experience (with a bachelor’s degree), in composite materials or additive manufacturing. Pet. 13–14 (citing Ex. 1002 ¶ 36). Patent Owner states that it “does not agree that Petitioner’s proposed level of skill in the art accurately reflects the level of ordinary skill in the art as of the priority date . . . [, but r]egardless [of] the level of skill, . . . the Petition does not show the challenged claims are unpatentable.” Resp. 14–15. Patent Owner does not propose a different level of skill in the art. See id. at 15 (“Patent Owner reserves the right to propose a level of ordinary skill in the art later in this proceeding, or in other proceedings.”). On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the 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))). Although a more specific definition is not necessary, we adopt Petitioner’s proposed definition because, on this record, it is consistent with the disclosures of the asserted prior art references. Neither party, however, advances information explaining how or why the result in this case would change based on the level of ordinary skill determined by the Board.” slip op. at 7

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

    “Petitioner advances no specific construction of any claim term, but rather proposes that “claim terms should be given their plain and ordinary meaning.” Pet. 14. Patent Owner asserts that the term “anchor” should be construed according to its plain and ordinary meaning, which, according to Patent Owner, is “contact to which the path of composite material is adhered to enable pulling of the path.” Resp. 15 (citing Ex. 2006, 2, 53). Petitioner responds that “[i]n the parallel litigation, the Court has construed ‘anchor point’ and ‘anchor’ as ‘a contact point to which the path is affixed and that serves as an origin point for the formation of the path.’” Reply 3. On the complete record, we determine that no claim term needs an express construction to resolve the controversy. C. GROUND 1 – ALLEGED OBVIOUSNESS OF CLAIMS 20 AND 21 OVER LIPSKER” slip op. at 9

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

    “combining multiple embodiments from a single prior art reference (Resp. 31), i.e., “there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” In re Stepan, 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017). On this record, Petitioner fails to provide any such motivation to combine the embodiment in Lipsker’s Figure 2 with those of Figures 4A, 4B, 4C, and 5 to arrive at the subject matter of claim 20. Pet. 23–31. Rather, Petitioner merely points to the disparate embodiments of Figures 2, 4A, 4B, 4C, and 5 and portions of Lipsker’s disclosure pertaining to those embodiments, and asserts that Lipsker “discloses” the individual limitations recited in claim 20. See, e.g., id. at 25 (Petitioner, relying on Figure 2, asserting that “Lipsker discloses the preamble of Claim 20”), 27 (Petitioner, relying on Figure 5, asserting that “Lipsker discloses Element 20[a]”), 28 (quoting Lipsker’s descriptions of wire and adhesive dispensed separately as depicted in Figure 2, and asserting “Lipsker discloses Element 20 [c]”), 29 (pointing to Figures 4A, 4B, and 4C and asserting “Lipsker discloses Element 20[d]”). Pointing to disparate embodiments without providing a sufficient motivation to combine them is not enough to establish the obviousness of claim 20 as a whole. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (holding that a claim “composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art”).” slip op. at 14

  Patent outcomesUS 10,744,708 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,744,708
• Hanwha Solutions Corporation / Hanwha Q Cells USA, Inc. v. Rec Solar Pte. Ltd.No claims unpatentable
  PTAB · Dec 9, 2022 · IPR2021-00989 · APJ Brian D Range · IPR · Final written decision

  Claims 1–6, 11, and 13 were not shown unpatentable under either obviousness ground because Petitioner did not establish a motivation to combine Yagiura and Shimasaki.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Petitioner’s position is persuasive. We agree that documents from the Japanese Patent Office are self-authenticating official government documents. The technical issues regarding missing pages in the originally filed version of the document do not cause us to question authenticity. We also agree that Petitioner uses the documents to establish what the documents teach rather than establishing the truth of what the documents teach. In Reply, Patent Owner argues that Petitioner relies on the date printed on the document to prove up the truth of when the document was published. Mot. Excl. Reply 1–2. To the extent this is the case, an exception to hearsay applies because the document is a record of a public office. Fed. R. Evid. 803(8)(B) (a record of public office is an exception to the hearsay rule if the opponent does not show that the source of information or other circumstances “indicate a lack of trustworthiness”). Here, Patent Owner does not persuasively demonstrate a lack of trustworthiness; Patent Owner does not identify any substantively meaningful distinction in the missing pages of the originally filed document and does not identify any evidence to suggest that the missing pages were anything more than a harmless clerical error. For the reasons above, Patent Owner’s motion to exclude is denied with respect to these documents. B.” slip op. at 8

  • Skill levelSkill level board ownOther

    “Petitioner’s proposal is too broad. PO Resp. 8. For example, a person who merely installs solar panels for three years (satisfying “professional experience in solar energy”) while having some familiarity with module manufacturing would not be of ordinary skill in the design aspects of the ’060 patent as, for example, reflected by the claims at issue and the ’060 patent’s text and figures. See, e.g., Ex. 1101, Figs. 2a, 2b, 3a, 3b, 4a, 4b, 3:22–7:44. On the other hand, we also determine that Patent Owner’s proposal is too narrow. A person could, for example, have ordinary skill in the art of the ’060 patent by virtue of non-professional experience (for example, academic experience). When assessing relevant experience, research work done for a university (beyond mere classroom study) would have been just as valuable as research work done for a corporation. Also, ordinary skill in the art could be demonstrated by work that requires understanding of the ’060 patent’s field even if not “designing, developing, and/or researching” in the field itself We, thus, determine that a person of ordinary skill in the art of the ’060 patent would have been someone with a bachelor’s degree in electrical engineering, applied physics, or the like, and at least two years of (a) experience designing, developing, and/or researching in the field or (b) experience in solar energy that required an understanding of the ’060 patent’s field. Alternatively, that person would have had an advanced degree in electrical engineering, applied physics, or the like and at least one year of” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “qualifies as evidence in this matter. The Federal Circuit has held that expert testimony about the perspective of person of ordinary skill in the art (as Dr. Kimball provides here) must come from a person having at least ordinary skill in the art. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022) (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)) (holding that ITC Administrative Law Judge abused discretion by admitting expert testimony of witness who lacked the experience of a person having ordinary skill in the art); see Mot. Excl. 6–7 (arguing this point). Patent Owner, however, cites no authority that expert testimony on such matters come from a person having ordinary skill in the art at the time of the invention. Cf. Scentair Tech., LLC v. Prolitiec Inc., IPR2021-00012, Paper 22 at 61 (PTAB Apr. 22, 2022) (similarly noting a party’s lack of authority on this point). Beyond needing to come from a person of ordinary skill in the art, expert testimony is admissible if the expert has the “scientific, technical, or other specialized knowledge [that] will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702. Furthermore, “[t]here is … no requirement of a perfect match between the expert’s experience and the relevant field.” USPTO, Patent Trial and Appeal Board Consolidated Trial Practice Guide, 34 (Nov. 2019). Here, Petitioner adequately establishes that Dr. Kimball qualifies as a” slip op. at 12

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

    “The Petition argues that all claim terms should be given their plain and ordinary meaning. Pet. 18. Patent Owner does not dispute this. PO Resp. 13. We determine that no claim term requires express construction for purposes of this Final Written Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms that are in controversy, and only to the” slip op. at 15

  Patent outcomesUS 10,749,060 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,749,060
• Johnson & Johnson Surgical Vision, Inc. v. Alcon Inc.No claims unpatentable
  PTAB · Dec 5, 2022 · IPR2021-01053 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1 and 2 were not shown unpatentable: Grounds 2 and 4 lacked motivation and a reasonable expectation of success, while Grounds 1 and 3 relied on a rejected construction.

  RulingsFinal written decision

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

    “under which “the ‘curvature of the focal plane’ must ‘track the natural curvature of the lens.’” Pet. 12. Petitioner asserts that this second “construction is the basis for Grounds 2 and 4 in [the] Petition.” Id. Petitioner’s second proposed construction repeats, word-for-word, language that appears in claim 1. Compare id. (“‘curvature of the focal plane’ must ‘track the natural curvature of the lens’”), with Ex. 1001, 12:17–18 (“curvature of the focal plane” will “track the natural curvature of the lens”). That suggests to us that Petitioner, in advancing this alternative construction, agrees with Patent Owner that those words can, and should, “be given their plain and ordinary meaning.” Resp. 19. We agree with the parties’ suggestions that those words, as they appear in the full claim limitation at hand, are clear and unambiguous. The challenged claims require multiple “layers of photodisrupted bubbles,” which “form a regular array of cells in the target region” defining “cell boundaries,” and wherein those “layers are created by scanning the pulsed laser with the optics module according to a curvature of the focal plane of the optics module to track the natural curvature of the lens.” Ex. 1001, 12:13–18 (Board’s emphasis). Where the same word, “curvature,” appears in two phrases within claim 1, namely, “curvature of the focal plane” and “curvature of the lens,” we determine that the phrases relate to one another and that the word should be assigned a single, cohesive meaning. Id. Read fairly, this limitation indicates that the layers of photodisrupted bubbles that form the cell boundaries are generated by scanning a pulsed laser according to a single curvature – a curvature that characterizes both the focal plane of the optics module and the natural bend of the lens. Id. Accordingly, on this record, we determine that the “curvature of the focal plane” itself must “track the natural curvature of the lens.” Id. Other evidence of record supports that determination. Most notably, the record of examination includes this unequivocal statement: “It was Applicant’s inventive idea to design the laser surgical system such that the curvature of its focal plane tracks the curvature of the eye.” Ex. 1002, 133.7” slip op. at 17

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

    “The problem of mismatch simply “is not present in flat-field corrected systems that are imaging a flat surface because there is no mismatch. As a result, Frey and Blumenkranz do not have the blurriness problem Koschmieder describes.” Resp. 15 (citing Ex. 2030, 88:21–89:7; Ex. 2033 ¶ 104). Furthermore, the proposed modification of Frey’s system would have been expected to “cause blurring or defocusing” to occur “when used with a pulsed laser source” system, such as Frey’s, that employs a laser-shot-by-laser-shot scan pattern to generate, point-by-point, layers of photodisrupted tissue in the eye. Ex. 2033 ¶ 122. Accordingly, on this record, we find that an ordinarily skilled artisan would not “have been motivated to modify Frey with Koschmieder’s solution to address a problem of laser focus that is nonexistent in Frey.” Id.” slip op. at 38

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “opinions regarding whether there would have been a reasonable expectation of success for Petitioner’s combination” of prior art references. Sur-reply 8 (citing cases). We agree with Patent Owner that, based on the record presented, Dr. Bentley “has no experience designing laser-based systems for eye surgery” and, further, that a question arises as to whether Dr. Bentley “even understand[s] what photodisruption is” within the context of claim 1. Id. at 7–8 (and citations therein to Exs. 1004, 1046, 1047, and 2051). Although Dr. Bentley possesses excellent credentials in optics generally, this witness reports no experience with surgical optics, much less optics for laser surgery of the eye. Ex. 1046 ¶¶ 3–9; see generally Ex. 1047 (curriculum vitae). Dr. Bentley currently advises students working on optics for “microscope objectives, digital and film camera lenses, zoom lenses, fisheye lens, riflescopes,” and other devices––but none, on this record, is 6 The record also includes a declaration of Edward A. DeHoog, Ph.D. (Ex. 2001), which Patent Owner filed with the Preliminary Response but does not advance in the Response. See generally Resp. demonstrated by Petitioner as applicable to laser surgery, much less a method of laser surgery whereby layers of photodisrupted bubbles are generated within eye tissue. Ex. 1047, 1; see Ex. 2051, 45:8–21 (Dr. Bentley’s deposition transcript). Dr. Bentley’s prior experience includes, for example, working on optics related to “broadband zoom lens for cancer screening, several high-resolution broadband infrared cameras,” and “a multi-photon endoscope objective,” but includes no work, on this record, that relates to optics for laser surgery of the eye. Id. We recognize that Dr. Bentley is named on four patents and frequently lectures and publishes articles on optical imaging in general, but the list of patents and publications persuades us that Dr. Bentley possesses little, if any, experience with surgical optics. Id. ¶¶ 3, 5–9. We agree with Patent Owner, moreover, that during Dr. Bentley’s deposition, it became clear that this witness “is not an expert in laser-based systems for photodisrupted surgery” and has no experience with, or specific knowledge about, optics that perform “photodisruption” of lens tissue. Sur-reply 8 (citing Ex. 2051, 61:17–62:17, 65:12–17, 66:18–68:21, 72:4–72:20, 73:10– 73:19, 75:11–76:13, 80:9–16, 81:13–83:25, 85:13–86:3, 89:25–92:7, 94:25– 95:23, 121:3–121:12 (deposition transcript)). By contrast, Patent Owner’s witness, Dr. Dhalla, has “many years of” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the information presented, we find that 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 ’356 patent. Pet. 10 (Petitioner’s asserted definition of the ordinarily skilled artisan). Neither party, however, advances information explaining how or why the result in this case would change based on the definition selected by the Board.” slip op. at 12

  Patent outcomesUS 9,427,356 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,427,356
• Fluid Energy Group Ltd. v. Green Products And Technologies, LLCNo claims unpatentable
  PTAB · Jul 5, 2022 · IPR2021-00357 · APJ Grace Karaffa Obermann · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

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

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

  Patent outcomesUS 7,938,912 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,938,912
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Nanoco Technologies Ltd.No claims unpatentable
  PTAB · May 16, 2022 · IPR2021-00184 · APJ Erica A Franklin · IPR · Final written decision

  Claims 1–16 and 21–25 were not shown unpatentable because Banin’s gold clusters were not shown to be molecular cluster compounds, and the Zaban combinations lacked motivation to combine.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have had “at least a Ph.D. in chemistry, physics, chemical engineering, material science, or equivalent technical degree or equivalent work experience, with knowledge regarding nanoparticles and methods of synthesizing them” and “[a]dditional education might supplement practical experience and vice-versa.” Pet. 18–19 (citing Ex. 1002 ¶ 70). Patent Owner neither addresses Petitioner’s description of the level of ordinary skill in the art nor provides its own description. See PO Response. Accordingly, we adopt Petitioner’s definition as we find it is unopposed and consistent with the level of skill in the art at the time of the invention as reflected by the prior art in this proceeding.” slip op. at 10

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedMixed

    “suggested formula” assigned to them is “based on a calculation that relied on the average of a wide distribution of particle sizes reported in the literature by Hutchison.” Ex. 2030 ¶ 103(citing Ex. 2017, 12891). We assign persuasive weight to her testimony because it is based upon the disclosures in Hutchison, which Banin explicitly identifies as the published procedures by which it synthesized its clusters. In particular, Dr. Cossairt’s testimony is supported by the following discussion in Hutchison: To calculate an average molecular formula for 1 it is necessary to know the number of gold atoms in the metal core. Given the average particle size (1.5 nm) this number is estimated to be ~101 by the method of Whetten et al. and leads to an estimated formula of Au101(PPh3)21Cl5. Ex. 2017, 12891. In other words, Hutchison explains that it calculated an average molecular formula for its synthesized nanoparticles by estimating the number of gold atoms in the metal core based upon the average particle size of 1.5 nm. Id. Indeed, as Dr. Cossairt has recognized, Banin’s “suggested formula” is exactly the same molecular formula that Hutchison discloses as the “average molecular formula” for its nanoparticles. Thus, we determine that the record as a whole supports finding that a person of ordinary skill in the art would have understood that Banin’s “suggested formula” represents an average molecular formula for a disperse mixture of gold clusters that are not identical and do not have sufficiently well-defined chemical structure such that all molecules of the cluster compound possess the same relative molecular formula, as required for MCCs. slip op. at 23

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Specification expressly defines the term “molecular cluster” in a manner that refers to the cluster compound. According to the Specification, “Molecular cluster” is a term which is widely understood in the relevant technical field but for the sake of clarity should be understood herein to relate to clusters of 3 or more metal or nonmetal atoms and their associated ligands of sufficiently well defined chemical structure such that all molecules of the cluster compound possess the same relative molecular mass. Ex. 1001, 5:3–9. We note that the District Court determined that “the term ‘molecular formula’ as opposed to ‘molecular mass’ is most appropriate. By necessity, a compound with the same molecular formula will necessarily have the same molecular mass.” Ex. 1091, 16. The District Court explained also, “it appears that the difference between a molecular formula and a molecular mass, at least for purposes of this claim construction, in inconsequential.” Id. We agree and do not find any dispute on the current record from the parties on this matter. Accordingly, for purposes of this Decision, we agree with the District Court that the term “molecular cluster compound” means “clusters of 3 or more metal atoms and their associated ligands of sufficiently well-defined chemical structure such that all molecules of the cluster compound possess the same relative molecular formula.” Id. at 18.” slip op. at 12

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

    “that Petitioner has not shown persuasively that a person of ordinary skill in the art would have considered Banin’s small Au clusters to be MCCs. According to Petitioner and Dr. Green, Banin’s gold clusters are MCCs because they are clusters of three or more metal atoms with their associated ligands and “each cluster is ‘identical to one another.’” Ex. 1002 ¶ 90; Pet. 23. To begin, we do not find that the record supports Petitioner’s contention or Dr. Green’s opinion that “each cluster is ‘identical to one another.’” Ex. 1002 ¶ 90; Pet. 23. Petitioner and Dr. Green do not identify any disclosure in Banin describing the clusters as being identical. Instead, they refer to Banin’s disclosure that the Au clusters have “the suggested formula Au101(PPh3)21Cl5” and are “1.4 nm in mean diameter.” In doing so, Petitioner and Dr. Green do not meaningfully address or adequately explain how Banin derived its “suggested” molecular formula for the gold clusters or why Banin reported a “mean” diameter for those clusters. To that end, Petitioner and Dr. Green have failed to provide any reason why a skilled artisan would have understood Banin’s disclosures of a “suggested formula” and a “mean diameter” to convey that the Au clusters are identical.” slip op. at 22

  Patent outcomesUS 7,803,423 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,803,423
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Nanoco Technologies Ltd.No claims unpatentable
  PTAB · May 16, 2022 · IPR2021-00183 · APJ Erica A Franklin · IPR · Final written decision

  Claims 1, 3–6, and 8–14 were not shown unpatentable because the asserted combinations failed to establish the claimed molecular cluster compounds or a reason to combine the references.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have had “at least a Ph.D. in chemistry, physics, chemical engineering, material science, or equivalent technical degree or equivalent work experience, with knowledge regarding nanoparticles and methods of synthesizing them” and “[a]dditional education might supplement practical experience and vice-versa.” Pet. 20 (citing Ex. 1002 ¶¶ 72–75). Patent Owner neither addresses Petitioner’s description of the level of ordinary skill in the art, nor provides its own description. See PO Resp. Accordingly, we adopt Petitioner’s definition as we find it is unopposed and consistent with the level of skill in the art at the time of the invention as reflected by the prior art in this proceeding.” slip op. at 9

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedMixed

    “on the average of a wide distribution of particle sizes reported in the literature by Hutchison.” Ex. 2030 ¶ 102 (citing Ex. 2017, 12891). We assign persuasive weight to her testimony because it is based upon the disclosures in Hutchison, which Banin explicitly identifies as the published procedures by which it synthesized its clusters. In particular, Dr. Cossairt’s testimony is supported by the following discussion in Hutchison: To calculate an average molecular formula for 1 it is necessary to know the number of gold atoms in the metal core. Given the average particle size (1.5 nm) this number is estimated to be ~101 by the method of Whetten et al. and leads to an estimated formula of Au101(PPh3)21Cl5. Ex. 2017, 12891. In other words, Hutchison explains that it calculated an average molecular formula for its synthesized nanoparticles by estimating the number of gold atoms in the metal core based upon the average particle size of 1.5 nm. Id. Indeed, as Dr. Cossairt has recognized, Banin’s “suggested formula” is exactly the same molecular formula that Hutchison discloses as the “average molecular formula” for its nanoparticles. Thus, we determine that the record as a whole supports finding that a person of ordinary skill in the art would have understood that Banin’s “suggested formula” represents an average molecular formula for a disperse mixture of gold clusters that are not identical and do not have sufficiently well-defined chemical structure such that all molecules of the cluster compound possess the same relative molecular formula, as required for MCCs.” slip op. at 24

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

    “Based on our consideration of the record as a whole, we find that the Specification expressly defines the term “molecular cluster” in a manner that refers to the cluster compound. According to the Specification, “Molecular cluster” is a term which is widely understood in the relevant technical field, but for the sake of clarity should be understood herein to relate to clusters of three or more metal atoms and their associated ligands of sufficiently well-defined chemical structure such that all molecules of the cluster compound possess approximately the same relative molecular formula. Ex. 1001, 3:28–34 (emphasis added). As there is no dispute that the term “molecular cluster compound” refers to “clusters of three or more metal atoms and their associated ligands of sufficiently well-defined chemical structure such that all molecules of the cluster compound possess approximately the same relative molecular formula,” we agree with the parties that no further construction of the claim is necessary for purposes of rendering this Decision. Additionally, we find that express construction of any remaining claim terms is unnecessary for purposes of rendering this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

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

    “Moreover, we agree with Patent Owner that Petitioner has not demonstrated persuasively that a skilled artisan would have been motivated to replace Banin’s metal catalyst with Herron’s cluster compound. PO Resp. 44–49. Petitioner’s expert, Dr. Green, does not dispute that Banin’s SLS process requires the use of a metal catalyst. Ex. 1002 ¶ 79; Ex. 1005, 4:3–9, 6:9–16. Nor does Dr. Green dispute that Herron’s Cd32S14(SC6H5)36 cluster is not a metal, but rather a cadmium sulfide semiconductor. Ex. 1002 ¶ 80; Ex. 1016, 1426. According to Patent Owner and Dr. Cossairt, there is no indication on the record that anyone has ever tried or succeeded in using a semiconductor as a catalyst in SLS nanorod synthesis. PO Resp. 53; Ex. 2030 ¶ 137. We agree and determine that Petitioner has not shown otherwise by referring to the use of a semiconductor in a different type of nanoparticle synthesis, i.e., a vapor-liquid-solid nanoparticle synthesis. See Pet. Reply 12. In any event, we find that the Petition fails to support a motivation to combine Herron’s cadmium sulfide semiconductor with Banin’s process because the Petition fails to address sufficiently (or at all) the differences between metal catalysts and Herron’s semiconductor material and to explain why a person of ordinary skill in the art would have used such a semiconductor material in place of the metal as the catalyst in Banin’s process, despite Banin’s teachings that the catalyst must be a metal. Accordingly, for the foregoing reasons, we determine that Petitioner has failed to establish persuasively that a person of skill in the art would have been motivated to modify Banin’s nanoparticle synthesis by replacing its gold metal catalyst with Herron’s cadmium-based semiconductor.” slip op. at 30

  Patent outcomesUS 7,588,828 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,588,828
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Nanoco Technologies Ltd.No claims unpatentable
  PTAB · May 16, 2022 · IPR2021-00186 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1–23 were not proven unpatentable; Petitioner failed to show Banin’s gold clusters were molecular cluster compounds or establish the proposed combinations.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Dr. Green’s annotated side-by-side comparison of the TEM images in Banin and Hutchison (Reply 3; Ex. 1093 ¶ 17), we are unable to discern any meaningful distinction between the images. We do not assign Dr. Green’s testimony on that point persuasive weight, as he does not supply sufficient facts and data to support his opinion that a skilled artisan would have understood that the differences in the appearances of the clusters in Banin’s TEM images are attributable to a different orientation of the non-spherical clusters and/or the aggregation of the clusters next to one another, as opposed to a size distribution among the clusters. See Ex. 1093 ¶¶ 19–20. As discussed in the Patent Trial and Appeal Board Consolidated Trial Practice Guide,18 expert testimony must be based on sufficient facts and data. See CTPG 35 (citing Fed. R. Evid. 702; 37 C.F.R. §42.65(a)). Although Dr. Green testifies that Banin’s gold clusters, as depicted in the TEM image, reflect “purified and size-selected” MCCs (Ex. 1093 ¶ 18), we remain unpersuaded by that testimony, because Dr. Green does not direct us to any disclosure in Banin reporting a size selection of the gold clusters, after being synthesized by Hutchison’s process, or prior to the TEM imaging (Ex. 1093 ¶¶ 17–21). Here again, we observe, a centrifugation step in Banin, to which Dr. Green refers as supporting his opinion in that regard, relates to the purification of the size-selected nanorods, not the gold metal clusters. See Ex. 1005, 7:4–5 (“The purification is carried out by centrifugation that affords purified nanorods having selected size.”); id. at 20:24–25 (“The rods were purified and size-selected by centrifugation.”); id. at 22:29–30 (“The rods were purified and size-selected by centrifugation.”).” slip op. at 28

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Our rules require a petitioner to explain with particularity, at the outset in the petition, why the patent it challenges is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). “Unlike district court litigation—where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of” inter partes review proceedings “bring with it an obligation for petitioners to make their case in their petition to institute.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). Accordingly, Petitioner carries a burden to “identify with particularity” at the outset, in the Petition, “the grounds on which the challenged to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). Although “the introduction of new evidence in the course of the trial is to be expected in inter partes review trial proceedings,” Genzyme Therapeutic Prods. LP v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366 (Fed. Cir. 2016), the shifting of arguments is not, Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017).” slip op. at 31

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Based on our consideration of the record as a whole, we agree with the District Court that the molecular cluster compound of the claimed invention must have “sufficiently well-defined chemical structure such that all molecules of the cluster compound possess the same relative molecular formula.” Ex. 1091, 18. To the extent that this or any other claim term requires further discussion, we provide it in our analysis of the challenges. No further express claim construction is necessary for purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the 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))). To the extent a more specific definition is required, we adopt Petitioner’s definition for purposes of this Decision, because that definition is unopposed and consistent with the disclosures of the asserted prior art references.” slip op. at 9

  Patent outcomesUS 8,524,365 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,524,365

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.