- SNF S.A. v. Chevron U.S.A., Inc.No claims unpatentablePTAB · Apr 18, 2024 · IPR2022-01534 · APJ Barry L Grossman · IPR · Final written decision
Claims 1–25 were not shown unpatentable on any asserted ground because the evidence failed to establish the claimed filter ratio or support the proposed combinations.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“In our Decision to Institute this proceeding, we adopted Dr. Barati’s proposed level of skill based on the prior art, the sophistication of the technology disclosed in the ’320 patent, and Dr. Barati’s opinion testimony. Dec. Inst. 17 (“we adopt Dr. Barati’s definition of the level of ordinary skill”). Patent Owner states it “does not dispute the level of skill applied by the Board in its institution decision.” PO Resp. 7. Accordingly, in this Decision, based on the evidence and the arguments of the parties, we maintain and adopt the level of ordinary skill stated in the Decision to Institute. In this proceeding, a person of ordinary skill would have had a Ph.D. in Chemical or Petroleum Engineering (or related science or engineering discipline) with 2-3 years of experience in the design and implementation of methods for hydrocarbon recovery including use of polymer compositions in such recovery methods. Alternatively, a person of ordinary skill might substitute several years of actual design or implementation experience for the advanced degree. See Ex. 1012 ¶ 18.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (citations omitted)). We determine that a specific construction of the claims is not necessary to reach a decision in this inter partes review of the challenged claims.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. [Citations omitted.] If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the 17 Again, to avoid confusion, this citation format is to page 15 of Exhibit C, which is an attachment to Exhibit 1012 in this proceeding. questioned function, it seems to be well settled that the disclosure should be regarded as sufficient. Id. at 1260 (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner fails to provide any persuasive evidence or argument that claims 1, 2, 13–15, and 20–25 would have been obvious in view of Li. As discussed above, anticipation and obviousness are different grounds, requiring different analyses, and different evidence. Petitioner fails to establish what modifications in Li would have been obvious and why it would have been obvious to make the modifications with a reasonable expectation of success. The word “obvious” appears in Ground 1 only in the analysis of claim 24, clause D, on page 37 of the Petition, where Petitioner merely states the conclusion that this clause “would be obvious” [sic, the statute requires a temporal component to establish the claim “would have been obvious”]. Accordingly, we determine that Petitioner fails to provide the requisite evidence and arguments that claims 1, 2, 13–15, and 20–25 would have been obvious in view of Li.” slip op. at 28
Patent outcomesUS 10,626,320 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,626,320 - PTAB · Apr 10, 2024 · IPR2024-00051 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR of claims 1–15 on all petition grounds, finding a reasonable likelihood that Quenzi anticipates claims 1–9 and that Jochems and Quenzi render claims 1–15 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Thus, under § 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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(a). A decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018). If the Board institutes a trial, the Board will institute on all challenges raised in the petition. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Petitioner notes that a petitioner in a prior inter partes review proceeding challenging the ’366 patent identified three terms for construction, but argues that no term requires explicit construction here. Pet. 14–17. However, Petitioner interprets recitation [1.7] as “reflect[ing] two requirements,” as discussed further in section III.E.1.e below. Id. at 31. Additionally, in asserting that claim 1 would have been obvious in view of Jochems and Quenzi, Petitioner argues that an ordinarily skilled artisan would understand that, as used in the ’366 patent, “‘striking off concrete’ means ‘screeding uncured concrete.’” Id. at 65 (citing Ex. 1006 ¶ 196). Patent Owner does not proffer any terms for construction. See generally Prelim. Resp. However, as discussed further in section III.E.1.e below, Patent Owner argues that Petitioner’s interpretation of recitation [1.7] is improper. Id. at 6–7. For the reasons provided below, we do not agree with Patent Owner’s contentions.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Best 7 At this stage of the proceeding, the parties have not directed us to any such objective evidence. Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (quoting Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007)). “The patent’s purpose can also be informative.” Id. Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) would have had “an undergraduate education in mechanical, civil, construction, or industrial engineering, or a related field and at least two years of experience in research, design, development, testing, or use of mechanical or industrial equipment.” Pet. 14 (citing Ex. 1006 ¶ 42). Petitioner further contends that “[a]dditional education may substitute for experience and vice-versa.” Id. (citing Ex. 1006 ¶ 42). Patent Owner does not contest Petitioner’s proposed definition or proffer a definition of its own. See generally Prelim. Resp. Based on the arguments presented and the cited references, we find” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,038,366 - Sram, LLC v. Fox Factory, Inc.Institution deniedPTAB · Feb 21, 2024 · IPR2023-01302 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–8 unpatentable under any asserted anticipation or obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“Petitioner bears the burden of demonstrating a reasonable likelihood that it would prevail with respect to at least one challenged claim for a petition to be granted. 35 U.S.C. § 314(a). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have a degree in Mechanical Engineering and at least three years’ experience in vehicle suspension technology, or a Master’s degree in Mechanical Engineering with a concentration in design of vehicle suspension technology and/or shock absorbers.” Pet. 2, n.1 (citing Ex. 1102 ¶ 33; Ex. 1103 ¶ 29). Patent Owner does not dispute Petitioner’s proposed definition. See generally, Prelim. Resp. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that claim construction is not necessary. Pet.7. Nonetheless, Petitioner contends that because of prosecution history disclaimer, the claim term “air bleed assembly” should be construed to be “located between the lower leg seal and the upper bushing.” Id. Patent Owner contends that this claim term should be accorded its plain and ordinary meaning. Prelim. Resp. 13. In particular, Petitioner argues that “[t]he claim language itself makes it clear that the ‘air bleed assembly’ is located on the lower fork between the lower leg seal and a resting level of the oil bath in the lower fork.” Id. (citing Ex. 1101, 4:56– 5:4). We note that Petitioner acknowledges that “claim construction is not necessary because the claims of the ‘331 patent are invalid in view of the prior art regardless of whether Fox’s prosecution history disclaimer on the position of the “air bleed assembly” is included in the claim construction.” Pet. 7. Based on our review of the parties’ arguments and evidence, no” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Here, we understand Kashima to teach that when setscrew 6 is opened to release air in the clearance, oil is also released through the same opening. Ex. 1105 ¶ 4. In other words, the distance between setscrew 6 and the oil bath lubrication does not prevent the leakage of oil from the lower tube. Rather, setscrew 6 must be closed to prevent the oil from leaking and continuing to leak from the inside of outer tube 1. Indeed, Petitioner acknowledges the same. Petitioner asserts that “most if not all of the oil bath lubrication remains within the lower fork 1 because the valve is near the top of the lower fork 1 and can be closed once any oil begins to leak.” Pet. 26– 27 (citing Ex. 1105 ¶ 4). Here, Petitioner acknowledges that it is the closing of the setscrew that stops the oil leakage. However, claim 1 requires that the fluid passage and manually operable valve “are located at a distance from an oil bath lubrication within said lower fork, such that when said manually operable valve is in said second position, most, if not all of said oil bath lubrication remains within said lower fork[.]” Ex. 1001, 5:2–7 (emphases added).” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,739,331 - Sram, LLC v. Fox Factory, Inc.Institution deniedPTAB · Feb 21, 2024 · IPR2023-01301 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable, chiefly because the references did not meet claim 1’s oil-retention limitation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“Petitioner bears the burden of demonstrating a reasonable likelihood that it would prevail with respect to at least one challenged claim for a petition to be granted. 35 U.S.C. § 314(a). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Nonetheless, Petitioner contends that because of prosecution history disclaimer, the claim term “air bleed assembly disposed on said lower fork tube” should be construed as “air bleed assembly located between the lower leg seal and the upper bushing.” Id. at 11 (citing Ex. 1014, 7). Patent Owner contends that this claim term should be accorded its plain and ordinary meaning. Prelim. Resp. 13. In particular, Petitioner argues that “[t]he claim language itself makes it clear that the ‘air bleed assembly’ is located on the lower fork between the lower leg seal and a resting level of the oil bath in the lower fork.” Id. (citing Ex. 1001, 4:56– 5:4). Based on our review of the parties’ arguments and evidence, no construction is necessary to resolve the parties’ disputes. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“From this disclosure, we understand Kojima teaches expressly that chamber 210a is positively pressurized, rather than de-pressurized to ambient pressure. As such, the level of oil shown in Figure 9, which is positioned under the location of air valve 215, also reflects a positive pressure in chamber 210a. See Ex. 1005 ¶ 78. Petitioner’s expert, Dr. Eric Wang, testified to the same at the Preliminary Injunction Hearing in the parallel district court proceeding. The cross-examination exchange between Patent Owner’s litigation counsel and Dr. Wang is provided below: Q So air chamber 210a, to which -- with which the air valve 215 communicates is -- has a positive air pressure, of example 50 PSI, correct? A Yes. Well according to this -- according to what’s written here for example, pressure 50 PSI; that's one example. Q So at least in this embodiment of figure nine, Kojima teaches that the chamber 210a has a positive air pressure of example 50 PSI, right? A That’s what it says here, yes. Ex. 2005, 191:9–17. Given that Kojima’s Figure 9 reflects a positive pressure scenario, it is” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,739,331 - PTAB · Sep 26, 2023 · IPR2023-00642 · APJ Benjamin D M Wood · IPR · Institution
The Board instituted review of claims 1–4, 14, 15, 19–22, 24, and 25 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Beach-127 and Wiese.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We determine that, on the current record, Petitioner is reasonably likely to show that the combination of Beach-127 and Wiese teaches the window limitation. First, we agree with Petitioner that “Wiese teaches ‘a window that extends into optical communication with the sealed interior cavity.” Pet. 39. Wiese teaches “a window at the housing” of tool 1, the window transmissive to the signal—which may be optical—of a transceiver within the sealed interior of the tool. Ex. 1004 ¶ 5, 14, 15. Second, Petitioner, through its Declarant, adequately explains how one of ordinary skill in the art would have incorporated Wiese’s teachings with Beach-127, i.e., Dr. Rodger’s two example configurations. Ex. 1022 ¶¶ 132–136. The second example, in particular, reflects Wiese’s teachings, as the window is sealed and the antenna/transceiver combination is within the sealed interior of the tool. Thus, Petitioner has reasonably shown, at this stage of the proceeding, that one of ordinary skill in the art would have had a reasonable expectation of success in combining Beach-127 and Wiese. Third, Petitioner has articulated a reason why one of ordinary skill in the art would have combined Beach-127 and Wiese, and supported the articulated reason with rational underpinning. That is, according to Petitioner, one of ordinary skill in the art would have modified Beach-127’s Figure 2 embodiment with a window that extends into optical communication with the sealed interior cavity, in accordance with Wiese’s teachings, because that configuration allows downloading information without having to open the downhole assembly at surface locations, which otherwise would take time and subject the downhole assembly to damage or contamination. Pet. 38–39 (citing Wiese ¶¶ 3, 10). Petitioner further contends that using Wiese’s optical communication link to communicate between Beach-127’s transceiver and remote unit would have constituted the application of known techniques to a known device ready for improvement to obtain predictable results. Id. at 41–42.” slip op. at 29
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Although Beach-127 has previously been before the Office, the same cannot be said for Wiese. It does not appear that Wiese was identified in an IDS or considered by the Examiner during the examination of the grandparent application, the parent application, or the application that issued as the ’013 patent. Further, Wiese differs from Beach-127: whereas Beach- 127 does not expressly disclose or depict a window as part of its device, or disclose optical communication with the interior of the device, Weise does both. As noted above, Wiese describes a MWD/LWD bottom hole assembly that includes “a window at the housing, the window being transmissive to the signal of at least one transceiver of a tool having a memory in operable communication with the transceiver, such that the signal is receivable outside of the housing through the window.” Ex. 1004 ¶ 5. The signal may be optical, e.g., IR, in which case the window is “optically transmissive.” Id. ¶ 14, claim 8. This difference between Wiese and Beach-127—teaching an optically transmissive window—is material, because it addresses the sole limitation in dispute at this stage of the proceeding. Thus, although Beach-127 was considered by the Examiner, the combination of Beach-127 and Wiese was not. Moreover, for the grounds that rely on the combination of Beach-127 and Wiese, the Petition relies on Beach-127 essentially to teach the same limitations that the Examiner previously found Beach-127 to teach or suggest. See, e.g., Ex. 1011, 54–56; Pet. 22–48.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had “a bachelor’s degree in petroleum, mining, mechanical, or electrical engineering (or a closely related field), and at least two years’ experience in designing and developing electromechanical downhole tools, including working with sensors and electronics.” Pet. 10–11.7 Patent Owner does not address the level of ordinary skill in its Preliminary Response, and therefore does not oppose Petitioner’s contention. At this stage of the proceeding, we adopt Petitioner’s unopposed definition for purposes of this Decision. We also presume that the cited prior art references reflect the level of ordinary skill at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“Petitioner proposes constructions for “window” and “selectively sealed.” Pet. 11–13. Patent Owner responds that “[n]o claim construction is necessary to deny institution,” and its “arguments for denial do not hinge on the outcome of an actual controversy about construction of a claim term.” Prelim. Resp. 28. No claim term requires an express construction for us to determine whether to institute an inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Accordingly, we proceed with the understanding that each term should be accorded its plain and ordinary meaning.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 10,830,013 - Testo, Inc. A/K/A Testo North America / Testo SE & Co. Kgaa v. Parker Intangibles LLCInstitution deniedPTAB · Jul 25, 2023 · IPR2023-00691 · APJ Robert J Silverman · IPR · Institution
The Board denied institution for claims 1, 10, 15, 20, and 21 because Patent Owner statutorily disclaimed all challenged claims.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“37 C.F.R. § 1.321(a); see also Vectra, 162 F.3d at 1382 (holding that a § 253 disclaimer is immediately “recorded” on the date that the Office receives a disclaimer meeting requirements of 37 C.F.R. § 1.321(a) and that no further action is required in the Office). “No inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e); see also General Electric Co. v. United Techs. Corp., IPR2017-00491, Paper 9, 3 (PTAB July 6, 2017) (precedential).” slip op. at 4
NonePatents in suitUS 10,739,051 - PTAB · Jun 8, 2023 · IPR2023-00288 · APJ Jeremy M Plenzler · IPR · Institution
The Board instituted review of claims 1–20 on all petition grounds and joined Clover Network, LLC as a petitioner in IPR2022-00997.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“2. Petitioner’s Challenge Based on Woycik Initially, we note that there does not appear to be any dispute that Woycik’s administration tool would be understood as point of sale builder software by one skilled in the art. Prelim. Resp. 30–46.7 Indeed, based on the record before us, we do not see any less disclosure in Woycik regarding its administration tool than that disclosed in the ’012 patent for its point of sale builder software.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The recent guidance from the Director of the United States Patent and Trademark Office regarding discretionary denials5 requires that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3. 5 USPTO, Memorandum on Interim Procedure for Discretionary Denials in AIA Post-grant Proceedings with Parallel District Court Litigation (June 21, 2022), available at uspto.gov/sites/default/files/documents/interim_proc_discretionary_denials_ aia_parallel_district_court_litigation_memo_20220621_.pdf (“Guidance Memo”). and Fintiv[6] remains precedential at the time of institution, [Petitioner] stipulates not to pursue in the district court any ground raised or that could have reasonably been raised in IPR (i.e., under §§102 or 103 based on prior art patents or printed publications alone).” Paper 14, 2. Moreover, any timing issues or inefficiencies are moot in view of our decision on Petitioner’s Joinder Motion. Accordingly, we decline Patent Owner’s invitation for us to apply our discretion under 35 U.S.C. § 314(a) to deny the petition.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Here, Petitioner’s Motion requests no more than the statute allows. Petitioner represents that the current Petition and that from the 997 IPR are identical in all substantive respects, including “identical grounds, prior art, and analysis.” Mot. 3. And although Petitioner used a different declarant that the one used in the 997 IPR, there is no briefing remaining for the petitioner in the 997 IPR, as Petitioner’s Reply in that proceeding was entered on May 12, 2023. See IPR2022-00997, Paper 19. Moreover, Petitioner agrees to use the declarant from the 997 IPR if joinder is granted. See Paper 14, 2; Ex. 1037, 11:8–15:24; Ex. 1038, 16:13–17:7. Given the advanced stage of the 997 IPR proceeding, if Petitioner is joined as a party to the 997 IPR, Petitioner’s only possible remaining role would be to present oral argument or potentially request rehearing or appeal our final written decision in the 997 IPR if the initial petitioner in that proceeding drops out. Patent Owner opposes the Motion, contending that joinder would increase complexity and costs, as well as delay the schedule of the 997 IPR. Paper 8, 6–12. But those concerns are unfounded, particularly in view of the advanced stage of the 997 IPR. Indeed, Patent Owner acknowledges that, at this stage of the proceeding, there is nothing left for Petitioner to deal with as far as briefing or declarant testimony in the 997 IPR. See, e.g., Ex. 1037, 18:2–20. We see no increase in complexity and costs, or any schedule delay in the 997 IPR as asserted by Patent Owner. Accordingly, we grant Petitioner’s Motion, and add it as a party to the 997 IPR.” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“POSITA does not require any experience with retail POS systems—let alone building POS screens—that are the field of the ’012 Patent.” Prelim. Resp. 10. According to Patent Owner, “Petitioner’s proposed definition of a POSITA makes experience in retail POS systems optional.” Id. Patent Owner contends that its “proposed definition of a POSITA remedies this deficiency by including experience or equivalent study in the field of the ’012 Patent, retail point of sale (“POS”) systems, including experience with building POS screens.” Id. We fail to see how the alleged differences in the level of ordinary skill in the art advanced by Patent Owner affects our decision to institute in this proceeding. Accordingly, for purposes of this decision, we apply the level of skill set forth by Patent Owner.” slip op. at 6
Claim constructionDiscretionary denialPatents in suitUS 10,083,012 - PTAB · Jun 8, 2023 · IPR2023-00287 · APJ Jeremy M Plenzler · IPR · Institution
The Board instituted IPR on claims 1–4, 7–28, and 31–44 on all petition grounds, finding a reasonable likelihood of success on claim 1 over Woycik, and granted Clover’s motion to join IPR2022-01143.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“2. Petitioner’s Challenge Based on Woycik Initially, we note that there does not appear to be any dispute that Woycik’s administration tool would be understood as point of sale builder software by one skilled in the art. Prelim. Resp. 45–64.6 Indeed, based on 6 Patent Owner acknowledges that Woycik’s “administrative tool can ‘perform various administrate functions such as configuring kiosks, creating and editing menus and available food items, and specifying tax and payment features of the system.’” Prelim. Resp. 50 (citing Ex. 1004 ¶ 73). its administration tool than that disclosed in the ’793 patent for its point of sale builder software. Patent Owner presents a number of contentions that do not appear tied to any particular claim requirement. For example, Patent Owner presents contentions regarding the use of a local server in addition to the web server in Woycik, without clearly explaining how those contentions relate to any particular claim requirement. See, e.g., Prelim. Resp. 59–60 (alleging that Woycik’s “local server as the middleman for all communications”). The actual dispute with respect to Woycik’s teachings as related to claim 1, appears to be based on whether Woycik teaches its administration tool running on a web server. Id. at 47–61. We have reviewed Petitioner’s contentions regarding the other limitations recited in claim 1, which Patent Owner does not dispute at this time, and determine that Petitioner has established sufficiently that Woycik teaches those limitations. Our discussion below is directed to the disputed limitations.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Patent Owner’s request has already been considered and determined unpersuasive in the 1143 IPR. Moreover, we also question the merit of simply seeks to have Petitioner joined as a party to an already instituted proceeding where the same art and arguments asserted in this proceeding are already being evaluated in the 1143 IPR. For the reasons explained in the 1143 IPR we decline Patent Owner’s invitation for us to apply our discretion under 35 U.S.C. § 325(d) to deny the petition in this proceeding. See IPR2022-01143, Paper 8 at 9–12.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Accordingly, we decline Patent Owner’s invitation for us to apply our discretion under 35 U.S.C. § 314(a) to deny the petition.” slip op. at 10
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Section 315(c) “authorizes joinder of a person as a party, not ‘joinder’ of two proceedings” and “does not authorize the joined party to bring new issues from its new proceeding into the existing proceeding.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1335 (Fed. Cir. 2020). Here, Petitioner’s Motion requests no more than the statute allows. Petitioner represents that the current Petition and that from the 1143 IPR are identical in all substantive respects, including “identical grounds, prior art, and analysis.” Mot. 3. And although Petitioner used a different declarant that the one used in the 1143 IPR, there is no briefing remaining for the petitioner in the 1143 IPR, as Petitioner’s Reply in that proceeding was entered on May 16, 2023. See IPR2022-01143, Paper 16. Moreover, Petitioner agrees to use the declarant from the 1143 IPR if joinder is granted. See Paper 14, 2; Ex. 1030, 11:8–15:24; Ex. 1031, 16:13–17:7. Given the advanced stage of the 1143 IPR proceeding, if Petitioner is joined as a party to the 1143 IPR, Petitioner’s only possible remaining role would be to present oral argument or potentially request rehearing or appeal our final written decision in the 1143 IPR if the initial petitioner in that proceeding drops out. Patent Owner opposes the Motion, contending that joinder would increase complexity and costs, as well as delay the schedule of the 1143 IPR. Paper 8, 6–12. But those concerns are unfounded, particularly in view of the advanced stage of the 1143 IPR. Indeed, Patent Owner acknowledges that, at this stage of the proceeding, there is nothing left for Petitioner to deal with as far as briefing or declarant testimony in the 1143 IPR. See, e.g., Ex. 1030, 18:2–20. the 1143 IPR as asserted by Patent Owner. Accordingly, we grant Petitioner’s Motion, and add it as a party to the 1143 IPR.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 11,226,793 - PTAB · May 11, 2023 · IPR2023-00063 · APJ Paul J Korniczky · IPR · Institution
The Board instituted IPR on claims 1–5, 7–11, and 14–16 because Tesla showed a reasonable likelihood that at least claim 1 would have been obvious over Eberhard, the Roadster Manual, and Hibi.
RulingsInstitution decision- 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(a) (2018). After considering the Petition, Preliminary Response, and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of showing the unpatentability of at least one of the challenged claims. Thus, we institute an inter partes review on all challenged claims on all asserted grounds. 37 C.F.R. § 42.108(a). Specifically, we grant Petitioner’s request to institute an inter partes review of claims 1–5, 7–11, and 14–16 of the ’135 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Because Fintiv Factors 1–5, when weighed together, do not favor exercising our discretion to deny institution, there is no need to determine whether the Petition establishes compelling merits. 7. Summary For the reasons stated above, the Fintiv Factors do not support exercising our discretion to deny institution.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“description of the goals of Eberhard and Hibi appears to be too narrow and does not address Petitioner’s articulated rationale. Petitioner adequately explains for purposes of institution that Eberhard and Hibi relate to similar products and methods—they each relate to systems to control vehicle functions, including charging and climate control, and potentially in the absence of the user, or by the user while the user is away from the vehicle (e.g. they both disclose the use of remote controls to operate the vehicle). Pet. 36 (citing Ex. 1009, 1:15–18, 8:60–9:3, 10:33–53, 11:25–36; Ex. 1008 ¶¶ 1, 7, 38; Ex. 1002 ¶ 80). Relying on the testimony of Mr. Wilson, Petitioner adequately explains that the skilled artisan would have understood that “climate control is an important feature that users wish to exercise control over, and providing means to automatically or remotely control the climate of a vehicle is important to a user” and “drivers often wish to leave occupants such as pets in their vehicles for a short time and that this is considerably safer if the temperature of the vehicle can be monitored and controlled.” Id. at 37 (citing Ex. 1002 ¶ 81). Adding Hibi’s monitoring and controlling to Eberhard’s system would help to meet the well-known interests of drivers in safely leaving pets in vehicles. Id.; see Ex. 1008 ¶ 61 (“automatically controlling or the driver remotely controlling an apparatus within the automobile makes it possible to maintain the inside of the vehicle in a comfortable state for children, animals, or the like left within the vehicle and to . . . prevent the occurrence of an accident due to lack of oxygen, dehydration, or the like”).” slip op. at 22
§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 10,819,135 - SNF S.A. v. Chevron U.S.A., Inc.InstitutedPTAB · Apr 19, 2023 · IPR2022-01534 · APJ Barry L Grossman · IPR · Institution
The Board instituted IPR on claims 1–25 and all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Accordingly, based on the evidence before us, we determine that Petitioner has established that there is a reasonable likelihood that the Petitioner will prevail with respect to at least independent claims 1, 24, and 25. “The ‘reasonable likelihood’ standard is a somewhat flexible standard that allows the Board room to exercise judgment.” Patent Trial and Appeal Board Consolidated Trial Practice Guide, 53 (Nov. 2019).” slip op. at 25
- Skill levelSkill level board ownDecided for patent owner
“a POSITA, and thus the Board need not resolve the precise required level of skill in order to deny” the Petition. Prelim. Resp. 6. According to Patent Owner, the emphasized terms in the chart above for Petitioner’s proposed level of skill make Petitioner’s proposal “grammatically erroneous and confusing.” Id. We agree. The word “either” in Petitioner’s proposed level of skill is confusing. Patent Owner also criticizes Dr. Barati’s proposed level of skill because it “makes no mention of ‘synthesis’.” Id. at 7. Patent Owner does not provide argument or evidence as to why “synthesis” is critical or necessary in the level of skill. Patent Owner does not propose a level of skill. Id.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (citations omitted)). We determine that a specific construction of the claims is not necessary to reach a decision on whether to institute an inter partes review of the challenged claims.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInstituted
“Owner asserts that “none of the grounds of unpatentability properly address the claim requirement that the ‘inverted polymer solution has a filter ratio of 1.5 or less at 15 psi using a 1.2 µm filter’ (the ‘filter ratio limitation’).” Prelim. Resp. 9. Patent Owner also asserts that the “[t]he Petition does not point to any disclosure in Li that expressly meets this requirement. Id. (emphasis added). Patent Owner and Petitioner agree on this point. See, e.g., Pet. 32 (“Li expressly describes IPSs having FRs that were calculated using a different formula than the ’320 patent”). Additionally, Patent Owner asserts correctly that “Petitioner relies on Dr. Barati’s experiment” to establish that Li Products I, III, and VII, if prepared and tested using the standard procedure for determining the filter ratio described in the ’320 patent, provide “an alleged inherent disclosure” of the claimed filter ratio. Prelim. Resp. 10. Patent Owner, and the Declaration testimony (Ex. 2001) of its proffered expert, Dr. Gary Pope,18 take issue with the procedures and results of Dr. Barati’s testing. They question whether he performed his experiments once or multiple times, and, if the latter, they question whether the repeated tests produced consistent results. Prelim. Resp. 12 (citing Ex. 2001 ¶ 26 (Dr. Pope’s testimony stating that Dr. Barati “does not indicate whether his results reflect all of the results he obtained”)).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,626,320
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.