• Hanshow America Inc. / Hanshow Technology Co., Ltd. v. Ses-Imagotag Inc.No claims unpatentable
  PTAB · May 14, 2025 · IPR2024-00189 · APJ William V Saindon · IPR · Final written decision

  Claims 1–9 were not shown unpatentable because Fujiwara lacks the claimed horizontal position, and Bandy with Fowler lacks the claimed vertical position.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art . . . would have had at least a Master of Science Degree in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field (or a similar technical Master’s Degree, or higher degree). Ex. 1009, ¶34. Alternatively, . . . a Bachelor’s Degree (or higher degree) in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field with two or more years of work experience in electrical engineering, wireless telecommunication systems, computer engineering, or an equivalent field. Id. Additional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above. Id. Pet. 9. Patent Owner applies the same definition. PO Resp. 17. We apply the parties’ proposed level of ordinary skill because it is reasonably consistent with the level of skill implied in the disclosure of the ’340 patent and the cited prior art.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededGranted in part

    “c) Conclusion Having reviewed the claim language and the specification, we determine that the claimed planogram stores one piece of data with respect to identification—a unique identifier—and two pieces of data with respect to location—a vertical position and a horizontal position. Further, claim 1 states that each location (i.e., each horizontal/vertical position pair) is unique (“one-to-one”) for each unique identifier. Ex. 1001, 8:25–27. Thus, we determine that no horizontal/vertical position pair will be associated with more than one unique identifier (and vice versa). No other terms require construction at this time. See Realtime, 912 F.3d at 1375.” slip op. at 9

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

    “taught by “the horizontal position of the electronic shelf label along the horizontal shelf part 21, as shown in FIG. 4.” Pet. 21 (citing Ex. 1009 ¶ 75). Certainly, each shelf label in the real world, as well as in the drawing of Figure 4, has a horizontal position. However, that does not mean that Fujiwara’s database stores information indicating the horizontal position of the shelf label as required by the claim. The claim is not calling for the shelf label to have a location; it is calling for location information to be accessible by the server so that the server can determine the location of the mobile terminal. Ex. 1001, 8:19–24 (claiming a “method being performed by a central server configured to access a planogram associating . . . identifiers . . . with . . . locations . . . defined by a vertical and horizontal position”), 8:41–46 (claiming a method step of “determining a location of the mobile terminal . . . based on . . . the planogram). For example, fields in a database storing horizontal and vertical positions would be sufficient. Id. at 6:31–36 (“The central server 2 determines the location of said mobile terminal 1 from the identifier of said electronic label 3 using the data of a planogram associating a location with the label identifier.”), 7:16–18 (calling for the planogram to be stored in a database). To the extent we accept that Fujiwara teaches a unique identifier (shelf label ID) and a vertical position (e.g., shelf number 21-1), we find Fujiwara to be missing a horizontal position as required by the claim because neither the shelf number nor the shelf label ID provides an indication of where along the shelf the shelf label is located.” slip op. at 14

  • ExcludeMotion to exclude, deniedDenied

    “III. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner moves to exclude Exhibits 1013–1021 and 1024–1027. PO Mot. Excl. 1. Our analysis above focuses on a dispositive issue regarding the claimed planogram. We are not apprised of any citations to these documents in the briefing regarding the planogram issue. Indeed, according to Patent Owner, Exhibits 1013–1021 involve one of the issues we did not address, regarding near-field communications. PO Mot. Excl. 3–4. Because this motion involves a question on evidence that is not relevant to the issues discussed in this Decision, we need not rule on the motion at this time. We dismiss Patent Owner’s motion to exclude as moot.” slip op. at 27

  Patent outcomesUS 10,674,340 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,674,340
• Hanshow America Inc. / Hanshow Technology Co., Ltd. v. Ses-Imagotag Inc.No claims unpatentable
  PTAB · Mar 28, 2025 · IPR2024-00208 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because Wu and the asserted combinations did not teach or suggest the claimed acquisition and transmission of a sequence of shelf label identifiers.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “identifying information and the label location information[,]’ by extrapolating from the ESL that is already installed as required by steps S104 and S106.” Pet. 16 (citing Ex. 1003, 4:26-28; Ex. 1009 ¶ 81) (third and fourth alterations in original). There is no explanation or reasoning provided in the Petition to support this assertion. See id. We can find no support for this assertion that the method described in Wu requires this undisclosed step or that it could not otherwise possibly work14 to create the relationship between the label identifying information and the label location information of the added shelf label by extrapolation from the ESL that is already installed. The only evidence cited in support of this assertion is a short passage in Wu (Ex. 1003, 4:26–28) and paragraph 81 of the Declaration of Dr. Tentzeris (Ex. 1009). This short passage in Wu provides that, “[i]n step S106, the deploying device 130 or the controlling device 120 creates the relationship between the label identifying information and the label location information.” Ex. 1003, 4:26–28. This passage does not support Petitioner’s assertion. The cited paragraph in the Declaration of Dr. Tentzeris provides: 81. In my opinion, a POSITA would understand that, without acquiring this second identifier in the sequence (which 14 Prior art patents enjoy a presumption of enablement. Apple Inc. v. Corephotonics, Ltd., 861 Fed. Appx. 443, 450 (Fed. Cir. 2021). Wu is presumed to enable what it discloses. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003) (“a presumption arises that both the claimed and unclaimed disclosures in a prior art patent are enabled”). However, even without applying this presumption, Wu provides a disclosure that establishes how to create the relationship between the label identifying information and the label location information of the added shelf label by extrapolation or interpolation without the reading device acquiring the label identifying information of the adjacent shelf label which is already installed. See Ex. 1003, 3:59–4:28. is explicitly shown in FIG. 3B of Wu), the reading device could not possibly “create[] the relationship between the label identifying information and the label location information[,]” by extrapolating from the ESL that is already installed as required by steps S104 and S106. Ex. 1003, [4:26-28]. Ex. 1009 ¶ 81. Dr. Tentzeris does not support his opinion with any explanation, reasoning, facts or data, here or elsewhere. This unsupported, conclusory testimony is entitled to little or no weight. See cxLoyalty, Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1378 (Fed. Cir. 2021) (“We do not accord weight to conclusory expert testimony.”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). There is no evidence that supports Petitioner’s assertion that a skilled artisan would understand from Wu that the reading device acquires the label identifying information of a second shelf label that is already installed and adjacent to the added shelf label.” slip op. at 27

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person having ordinary skill in the art relating to the subject matter of the ’709 Patent as of the Critical Date (“POSITA”) would have had at least a Master of Science Degree in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field (or a similar technical Master’s degree, or higher degree). Pet. 6 (citing Ex. 1009 ¶ 31). Petitioner further contends, in the alternative, that “a POSITA would have had a Bachelor’s Degree (or higher degree)” in one of the fields noted above, with “two or more cannot demonstrate unpatentability of any claim of the ’709 Patent because Petitioners fail to identify a ‘reading device’ that acquires and transmits the ‘sequence of label identifiers’ recited by the claims.”). Our decision is based on our determination that Petitioner has failed to establish that the cited art teaches or suggests acquiring and transmitting a sequence of label identifiers as recited in the independent claims of the ’709 patent. years of work experience” in one of those fields. Id. According to Petitioner, “[a]dditional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” Id. Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art. PO Resp. 16. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner, as it is not disputed by the Patent Owner and is consistent with the ’709 patent and the asserted prior art.” slip op. at 10

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

    “necessary to resolve the controversy involved in this IPR, and the terms of the ’709 Patent should be given their ordinary and customary meaning.” Pet. 4. In the claim construction section of its Response, Patent Owner discusses the claim terms “location(s)” and “planogram.” See PO Resp. 16– 29. As discussed in our analysis below, we determine that Petitioner has failed to show that the prior art teaches or suggests certain limitations of the claims that do not include either the term “location(s)” or “planogram.” Accordingly, no need exists to expressly construe any claim terms to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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))). Our decision relies on the plain and ordinary meaning of the limitations on which our decision is based and no need exists to expressly construe any claim term to make our decision.8” slip op. at 9

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

    “Based on the entire record of this proceeding, we find that Wu does not teach or suggest: (1) “acquiring, by a reading device, a sequence of label identifiers . . . comprising a label identifier of an adjacent shelf label which is adjacent to the added shelf label” as recited in independent claim 1: (2) “transmitting, by the reading device, the sequence of label identifiers to the computer system” as recited in independent claim 1: (3) “acquiring, by a reading device, a sequence of label identifiers . . . comprising a label identifier of an adjacent shelf label which is adjacent to the added shelf label” as recited in independent claim 10; (4) “transmitting, by the reading device, the sequence of label identifiers to the computer system” as recited in independent claim 10: (5) “the computer system being configured to receive, from the reading” slip op. at 37

  Patent outcomesUS 11,010,709 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,010,709
• Biofrontera Inc. / Biofrontera Bioscience GmbH et al. v. Sun Pharmaceutical Industries, Inc.Institution denied
  PTAB · Nov 12, 2024 · IPR2024-00874 · APJ Erica A Franklin · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was unpatentable, failing to show Bansal's claimed light intensity arrangement.

  RulingsInstitution decision

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

    “An obviousness determination requires finding both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” CRFD Research, Inc. v. Matal, 876 F.3d 1330, 1340 (Fed. Cir. 2017) (quoting Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367– 68 (Fed. Cir. 2016)). Obviousness grounds must be supported with “articulated reasoning with some rational underpinning” and not by “mere conclusory statements.” See KSR Int’l Co., 550 U.S at 418. slip op. at 11

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

    “agree with Patent Owner that Petitioner has not sufficiently shown for institution that Bansal teaches or suggests arranging light sources “such that a higher intensity of light is emitted proximate the second edges compared to the intensity of light emitted not proximate the second edges,” as required by the challenged claims. Instead, Petitioner demonstrates how Bansal describes varying the density of light source distribution throughout the array to provide a higher density of light in the entire peripheral area of the array, which includes the areas proximal to both the first and second edges, as compared to the central area of the array. See Pet. 36–37; Ex. 1005 ¶ 25. In this regard, Petitioner relies on Bansal’s Figure 9b, asserting that it “shows one embodiment where more light sources are placed near the edges of the panel compared to the light sources in the center.” Pet. 36–37. The comparison of Bansal’s light density between the entire periphery and the central area of the array is insufficient. What is missing from Petitioner’s argument and discussion of Bansal is how Bansal teaches or suggests a configuration that provides a higher density of light proximate to the second shorter edges of the periphery in comparison to the remaining areas of the array, which includes the first longer edges of the periphery. Without that discussion, we find that Petitioner has not shown sufficient for institution that Bansal is persuasively relied upon for the light source arrangement limitation of the challenged claims. likelihood of prevailing in its obviousness challenge of independent claims 1, 5, 16, 20, or 21, or dependent claims 2, 4, 6–8, and 17–19 over Larsen, Bansal, and Jones.” slip op. at 17

  • Skill levelOther

    “would have had at least a Bachelor of Science in electrical engineering, physics, biomedical engineering, computer engineering, chemical engineering, material science, or a related scientific or engineering field, and at least one year of work or research experience in optics, optoelectronics, radiometry, photometry, photodynamic diagnosis (PD), photodynamic therapy (PDT), phototherapy (PT), or a related field. Pet. 8. Petitioner asserts that, alternatively, a “POSITA in the relevant time frame would have had at least four years of industry or academic experience in optics, optoelectronics, radiometry, photometry, PD, PDT, PT, or a related field.” Id. (citing Ex. 1003 ¶ 37). According to Patent Owner, a person of ordinary skill in the art at the time the application for the ’028 patent was filed, “would have had a M.D. and/or a Ph.D. in an electrical engineering, physics, optical sciences, optical engineering, or a related scientific or engineering field, and at least one to two years of work or research experience in optical engineering, optics, optoelectronics, phototherapy (‘PT’), PDT, or a related field.” Prelim. Resp. 16. Patent Owner asserts that, “[a]lternatively, a POSITA could have a Bachelor’s degree in one of the above areas and at least three to four years of work or research experience in that area.” Id. (citing Ex. 2001 ¶¶ 30–31). We note that the parties’ proposed definitions are largely similar. To the extent that the proposed definitions differ, we do not need to resolve those differences as our findings and conclusion in this Decision would be the same under any of the proposed definitions.” slip op. at 9

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,697,028
• Affordable Wire Management, LLC v. Cambria County Association For The Blind And Handicapped, Inc.Institution denied
  PTAB · Apr 24, 2024 · IPR2024-00182 · APJ James P Calve · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable and had not shown a second petition was necessary.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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). Upon consideration of the evidence and arguments in the record, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Nor has Petitioner demonstrated a need to file a second petition challenging the claims of the ’291 patent. We therefore do not grant institution of an inter partes review.” slip op. at 2

  • Parallel petitionsInstitution denied discretionary otherInstitution denied

    “This overlap in coverage of the claims asserted in the district court litigation in the ’178 and ’182 petitions means that Petitioner has filed two petitions that cover the same claims asserted in the district court litigation. The few, non-overlapping claims challenged in each petition are not asserted in the district court litigation. Under the first factor in General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19, 9–10 (PTAB Sept. 6, 2017), we find that the petitions are directed to the same claims at issue in the district court litigation. See Paper 3, 3–4; Paper 16, 1–2. This factor weighs against exercising our discretion to allow two petitions.” slip op. at 25

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art or propose its own definition of a skilled artisan. See generally Prelim. Resp. Dr. Kern testifies that for purposes of his analysis he is assuming the definition of a person of ordinary skill in the art provided by Petitioner. Ex. 2001 ¶ 20. On the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the ’291 patent and the prior art of record. Therefore, we adopt Petitioner’s level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 8

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

    “At this stage, Petitioner does not propose any claim construction of any claim term expressly. Pet. 18. At this stage, Patent Owner does not propose the construction of any claim term expressly. See generally Prelim. Resp. On the present record, we determine that we do not need to construe any claim terms expressly because none are in dispute, and no terms require construction for us to reach our Decision. See Realtime Data, LLC. v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019).” slip op. at 8

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 11,349,291
• Affordable Wire Management, LLC v. Cambria County Association For The Blind And Handicapped, Inc.Instituted
  PTAB · Apr 24, 2024 · IPR2024-00178 · APJ James P Calve · IPR · Institution

  The Board instituted IPR on claims 1–10, 14–22, 24, and 25 on all asserted grounds, finding a reasonable likelihood of prevailing on the Carr–Almy obviousness ground.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “degree in a pertinent discipline, such as electrical engineering, civil engineering, mechanical engineering or equivalent with 2–3 years of experience in electrical utility systems, planning, and design.” Pet. 20 (citing Ex. 1002 ¶ 51). Petitioner also asserts that the number of years of experience could be higher or lower given the level of education and vice versa. Id. (citing Ex. 1002 ¶ 51).” slip op. at 7

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

    “On the current record, we preliminarily interpret “electrical cables” as “wiring that conducts current or signals.” The parties are encouraged to present relevant intrinsic and extrinsic evidence regarding the meaning of this term and whether the preamble should be construed as limiting. This meaning is consistent with the ’291 patent’s description of cable hangers used to support “electrical cables [that] extend from a power or signal source to a location of application” in solar, mining, and electrical industries. Ex. 1001, 1:18–22 (emphasis added). The electrical cables are DC wires that attach to solar panels, AC cables that power motors to rotate solar panels, and category five cables for control wiring. Id. at 1:22–51. The claims recite “electrical cables” not “electrical power cables.” Ex. 1001, 10:24–13:7. We do not limit “electrical cables” to particular types of cables, e.g., AC cables or DC cables, absent a lexicographic definition or a disclaimer in the specification, neither of which are asserted by either party in this proceeding. See Phillips, 415 F.3d at 1316.” slip op. at 9

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

    “artisan would have modified Almy’s system by replacing wire loops 204B with Caveney’s cable supports that attach to building structures and frames using fasteners as discussed in Section II.D.2. supra, rather than messenger wires extending from solar panels. As discussed in Section II.D. supra for Ground 1, Caveney’s cable hangers are secured to building structures and frames by threaded rod fasteners. On this record, we are not persuaded that the hanger plates 40 and clamps 34 that fasten Caveney’s cable hangers to building structures and brackets using apertures 46, 48 and fasteners would secure Caveney’s cable hangers to Almy’s messenger wire, or that a skilled artisan would have been motivated to modify these structures of Caveney to attach to, and be disposed along, Almy’s messenger wire in order to replace Almy’s closed wire loops 204B with Caveney’s open cable supports 42, 44. Dr. Beik testifies that “Caveney is directed at a multi-tiered cable hanger that can be adapted for attaching to a variety of structures or support surfaces, including messenger wires,” but he supports this assertion by citing Caveney’s disclosure that cable support system 30 is secured to any fastener or structure such as a threaded rod, different brackets, a joist, a ceiling, or a wall. Ex. 1002 ¶ 76 (citing Ex. 1003, 3:3–9). On the current record, we find that the threaded rods secure cable support system 30 to the structures. See Ex. 1003, 2:65–3:1, 3:21–28, 5:63–67, 6:12–15, Figs. 1–7, 20–22. We find that Caveney’s cable supports are designed to attach to fixed, rigid structures such as brackets, joists, ceilings, and walls in a building using threaded rods with hanger plates 40 and brackets 34 that have apertures 46, 48 to receive threaded rod fasteners that secure the cable hangers to building structures. Id. at 3:1–28, 5:63–67, Figs. 1–7, 10–13, 20–22. We are not persuaded on this record that the threaded rod fasteners teach or suggest messenger wires. d. Conclusion On this record, we determine Petitioner has not shown sufficiently that a skilled artisan would have been motivated to combine the teachings of Caveney and Almy as asserted by Petitioner to render claim 14 unpatentable.” slip op. at 26

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,349,291
• Dr. Reddy’S Laboratories, Inc. v. Genentech, Inc., Hoffman-La Roche AG, And Abbvie Inc.No claims unpatentable
  PTAB · Apr 16, 2024 · IPR2023-00052 · APJ Jeffrey N Fredman · IPR · Final written decision

  The Board held claims 1–4, 8–14, and 18–26 not shown unpatentable because they were entitled to priority before the November 2018 Venclexta Label, which therefore was not prior art.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “We do not discern a substantive difference between the parties’ respective definitions for the level of ordinary skill in the art. Although Petitioner did not expressly recite hematological malignancies, Petitioner did refer to expertise in clinical oncology, which would encompass the blood cancers recited in the claims. Neither party identifies a difference in the analysis or conclusions that would be based on differences in the ordinary skill in the art analysis. Accordingly, we find the parties’ respective definitions to be equivalent and consistent with the level of ordinary skill in the art as reflected by the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 7

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

    “The parties do not identify any issue relating to the preamble that would impact our analysis. We recognize that Patent Owner is suggesting that Petitioner’s expert, at least, is reading the word “clinical” into the treatment language of claim 1. However, the plain language of the claim 1 preamble states “treating lymphoma or leukemia in a human patient” and is supported by a straightforward definition in the Specification of the ’087 patent, expressly limiting the invention to treatment of human patients. See Ex. 1001, 16:25–38. We therefore find that the preamble terms do not need claim construction because there is no actual dispute suggesting that, for example, claim 1 implicitly recites the term “clinical.” See, e.g., 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 5

  • Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)EnabledEntitled to earlier dateDecided for patent owner

    “d. Analysis Considering the Wands factors as a whole, we find that the limited breadth of the claims, presence of several working examples, significant amount of direction and guidance provided by the ’087 patent, predictability in treating blood cancers with Bcl-2 inhibitors like GDC-0199, and high level of skill in the art are balanced against a large quantity of experimentation. Based on our consideration of the entirety of the evidence, we find that a preponderance of the evidence supports the conclusion that undue experimentation would not have been required to make and use the invention commensurate in scope with the claims of the ’087 patent. One underlying theme of Petitioner’s contentions and Petitioner’s expert testimony is the repeated contention that clinical trials were not completed by Patent Owner. See, e.g., Pet. 48 (“venetoclax (GDC-0199) was not FDA-approved”); Ex. 1020 ¶ 193. We find these arguments unpersuasive as we agree with Patent Owner that “[i]t is well established that a patent may be secured, and typically is secured, before the conclusion of clinical trials.” In re Montgomery, 67 F.3d 1375, 1382 (Fed. Cir. 2012). Particularly as to the dependent claims, a preponderance of the evidence of record does not support a finding that undue experimentation would have been required to administer three different doses of GDC-0199 starting with 100 mg, to use multiple daily dosing cycles of one day, to continue until disease progression occurs, or to combine with other treatment compounds. We find that a preponderance of the evidence does not support Petitioner’s position that any of the dependent claims fail to comply with the enablement requirement.” slip op. at 23

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

    “Applying Rai and Wertheim to the instant facts, we agree with Patent Owner that, factually and legally, in the ’087 patent “the claimed dosages of 100 mg, 200 mg, and/or 400 mg of GDC-0199 are adequately supported.” PO Second Suppl. Brief 2 (citing PO Resp. 11, 27–29; PO Sur-reply 19, 21– 22; Ex. 1001, 24:20–29.) In particular, the ’087 patent describes all three specific dosage values 100 mg, 200 mg, and 400 mg in the context of an escalating drug dosage series and Petitioner points to no persuasive statements in the specification that dispute either the effectiveness or the operability of GDC-0199 at any of these dosages.” slip op. at 32

  Patent outcomesUS 11,110,087 not shown unpatentable
  Claim construction§ 102 anticipation§ 112 disclosure
  Patents in suitUS 11,110,087
• TCL Industries Holdings Co. Ltd v. Ati Technologies UlcInstituted
  PTAB · Mar 14, 2024 · IPR2024-00366 · APJ Brian J Mcnamara · IPR · Institution

  The Board instituted IPR on all petition grounds: claims 1–11 over Amanatides and Kohn, and claim 2 over Selzer and Fiske, based on a reasonable likelihood of success.

  RulingsInstitution decision

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

    “Institution is issued pursuant to 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition “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.” A decision to institute under § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). In addition, per Board practice, if the Board institutes trial, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a). Having considered the arguments and the associated evidence presented in the Petition and in the Realtek IPR, we institute inter partes review.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Reasons to Combine the Teachings of Lindholm ’685 and Lindholm ’913 Noting that Lindholm ’685 and Lindholm ’913 are both directed to a multithreaded shader and much of their Specifications and figures are the same, in the Realtek IPR Petitioner contends that a person of ordinary skill would have recognized the Lindholm references disclose different details of the same unified shader architecture. Realtek IPR Pet. 21–22. In the Realtek IPR, Petitioner also states that an ordinarily skilled artisan would have looked to the additional disclosure in Lindholm ’913 for additional details about scheduling threads for execution independent of other threads. Id. at 22. In the Realtek IPR, we agreed that a person of ordinary skill would have had reason to combine the teachings of the Lindholm references. We apply the same reasoning to this Decision do not repeat that analysis here.” slip op. at 21

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artNot shown unpatentable

    “Analysis in the Realtek IPR In the Realtek IPR we were persuaded that Patent Owner antedated the Lindholm references and therefore they are not prior art. Therefore, in this proceeding we are not persuaded that Petitioner will succeed on its challenge based on the Lindholm references. Realtek IPR Dec. to Inst. 23– 41. We apply the same reasoning in this Decision and do not repeat our analysis here. In the Realtek IPR, we also noted that if the Lindholm references were considered applicable prior art, we are persuaded that Petitioner has cited sufficient evidence to demonstrate that a person of ordinary skill would have been motivated to combine the teachings of Lindholm ’685 and Lindholm ’913, and that in combination, the references would have taught, or at least suggested, all the limitations of claims 1–11 to a person of ordinary skill in the art. We apply the same reasoning to this Decisions and do not repeat that analysis here. Id.” slip op. at 22

  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,760,454
• Wellmatics, LLC / GR Energy Services Management, LP et al. v. Canatex Completions Solutions, Inc.Institution denied
  PTAB · Jan 8, 2024 · IPR2023-01149 · APJ Brent M Dougal · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.

  RulingsInstitution decision

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

    “Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a).” slip op. at 4

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner “does not dispute” these qualifications. Prelim. Resp. 10. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’122 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 6

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

    “We agree with Patent Owner that the example of “a fluid line that provides gas or liquid to expansion chamber 38 from [the] surface” in the specification, does not require that a fluid line be a source of fluid pressure. We further agree that Petitioner’s analysis ignores the fact that this example makes clear that the source of fluid pressure is at the surface. Prelim. Resp. 20 (citing Ex. 2001 ¶¶ 66–67). Both Patent Owner and Petitioner agree that “source” should be construed in accordance with its ordinary meaning. Prelim. Resp. 13, 18; Pet. 18–19 (Patent Owner has not “identified any clear definition or clear and unambiguous disclaimer that would justify departing from the ordinary meaning of the claim language.”). ordinary meaning of “source.”2 See Prelim. Resp. 13–18 (citing Ex. 1001, 3:55–65, 4:5–12, Ex. 2001 ¶¶ 52–63, Ex. 2003, 7, 8, Ex. 2004, 5, Ex. 2005 ¶¶ 29–30, Fig. 1, Ex. 2006, 4:64–5:9, Fig. 1, Ex. 2007, 13:23–35, Ex. 2009, Abstr., 3:54–60, Ex. 2010. Patent Owner provides dictionary and declaratory evidence that the ordinary meaning of “source” is ‘“origin’— i.e., the place from which something originates.” Id. at 13 (citing Ex. 2001 ¶ 52, Ex. 2003, 7, 8, Ex. 2004, 5). Patent Owner provides further evidence and explanation as to why that definition is consistent with the usage of “source of fluid pressure” in the ’122 patent. Id. at 13–15 (citing e.g., Ex. 1001, 3:55–65, 4:5–12). Patent Owner provides further evidence of how the term “source” is used in other patents and documents “in the oil and gas industry” that is consistent with its definition. Id. at 15–18 (citing Ex. 2001 ¶¶ 57–63, Ex. 2005 ¶¶ 29–30, Fig. 1, Ex. 2006, 4:64–5:9, Fig. 1, Ex. 2007, 13:23–35, Ex. 2009, Abstr., 3:54–60, Ex. 2010). Thus, based on the current record, we construe “source of fluid pressure” to mean the place from which the fluid pressure originates.” slip op. at 8

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “As noted by Patent Owner, Petitioner’s declarant merely asserts that Bebak’s hydraulic pump would have been considered part of the second part of a releasable connection, and thus it is entitled to little weight. Prelim. Resp. 28; see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper No. 9 at 15 (Aug 24, 2022) (precedential) (“Dr. Jones does not cite to any additional supporting evidence or provide any technical reasoning to support his statement. Thus, the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.”) (citing 37 C.F.R. § 42.65(a)). For all of the above reasons, we determine that the Petition does not provide a reasonable basis to determine that Bebak teaches “a second part [of the releasable connection] comprising: . . . a source of fluid pressure,” as required by independent claims 1 and 13.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,794,122
• Trend Micro, Inc. v. Taasera Licensing LLCInstitution denied
  PTAB · Dec 1, 2023 · IPR2023-00801 · APJ Steven M Amundson · IPR · Institution

  Denied institution because neither Munetoh and Rajan nor Rajan and Munetoh showed a reasonable likelihood of proving claims 1–7 and 9 obvious under § 103.

  RulingsInstitution decision

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

    “to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2

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

    “Ex. 1005, 2–3. Petitioner maps the claimed “one or more executable file binaries of the application and loaded components of the application” to the “software components” executed during Munetoh’s trusted-bootstrap process. Pet. 23. Petitioner maps the claimed “attestation server” to Munetoh’s server-PVA. Id. at 19, 21, 27. But Petitioner fails to show that Munetoh’s server-PVA receives the “software components” executed during Munetoh’s trusted-bootstrap process. See id. at 22–24; Ex. 1003 ¶¶ 158–165.” slip op. at 33

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention “would have had a bachelor’s degree in computer science, or a related field, or an equivalent technical degree or equivalent work experience, and an additional one to two years of education or experience in the field of computer security topics.” Pet. 10. Petitioner also asserts that “[m]ore education can supplement practical experience and vice versa.” Id. Dr. Nielson’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶ 81. For purposes of the Preliminary Response only, “Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 11–12 (quoting Pet. 10). Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’441 patent as well as the asserted prior art.” slip op. at 13

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

    “For purposes of this proceeding only, “Petitioner proposes that all claim terms should be given their plain and ordinary meanings.” Pet. 10. Further, Petitioner asserts that “no specific claim constructions are necessary to apply the asserted prior art to” the challenged claims. Id. For purposes of the Preliminary Response only, “Patent Owner believes that claim construction is not required to resolve any issues.” Prelim. Resp. 9. Additionally, Patent Owner notes that in the Consolidated Litigation Patent Owner and Petitioner have proposed constructions for certain claim language, including the following terms and limitations in claim 1: (Fed. Cir. 2017). Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial.” slip op. at 14

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,327,441
• Hebei Huatong Wires And Cables Group Co, Ltd. v. Gulf Coast Downhole Technologies LLCInstitution denied
  PTAB · Nov 22, 2023 · IPR2023-00908 · APJ James J Mayberry · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable on the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

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

    “For institution, “[t]he ‘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), available at https://www.uspto.gov/TrialPracticeGuideConsolidated.” slip op. at 10

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

    “We find, upon review of the information in the Petition and evidence of record, that Petitioner fails to demonstrate a reasonable likelihood that Hurley discloses that its separation layer 52, even when formed of flexible armor (see Pet. 26) is structured to be hermetically sealed or maintain a positive or negative pressure as required by claim 1. Petitioner fails to direct us to sufficient evidence to support a finding that separation layer 52 is structured to be hermetically sealed or maintain a positive or negative pressure. Dr. Ballato does not provide any testimony in support.” slip op. at 13

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

    “Petitioner’s contention with respect to motivation is directed merely to a motivation to consult Bowker. That is, Petitioner’s contention is directed to whether Bowker is analogous art to the ’565 patent. We agree it is. However, “[o]bviousness requires, inter alia, a finding that a skilled artisan would have been motivated to combine the teachings of prior art in such a way that the combination discloses the claimed limitations.” Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th 1368, 1374 (Fed. Cir. 2023) (emphasis added). This inquiry is separate from the requirement that the prior art is analogous. See Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1003–04 (Fed. Cir. 2023) (“Prior art references are applicable to the obviousness inquiry only when they are analogous to the claims being challenged.”); Johns Manville Corp. v. Knauf Insulation, Inc., (denying institution after determining that showing that the references are analogous art and could be combined does not necessarily establish a sufficient rationale for combining the references). The Petition does not provide any contentions directed to why a person having ordinary skill in the art would have been motivated to combine Bowker’s teachings with Hurley to arrive at the claimed invention. As such, the Petition fails to provide a reason, supported by rational underpinnings, to combine the teachings of Hurley and Bowker and, accordingly, fails to demonstrate obviousness. Cf. KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). Dr. Ballato’s Declaration adds nothing to Petitioner’s analysis. The Declaration merely repeats what is in the Petition and provides no support for the testimony. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–17 (PTAB Aug. 24, 2022) (precedential) (according “little weight” to declaration testimony that contains a verbatim restatement of a petition’s conclusory assertions without additional supporting evidence or reasoning). Accordingly, the Petition fails to provide information sufficient to demonstrate for institution that the combination of Hurley and Bowker renders claims 1–5, 11, 13, 18–20, and 22 unpatentable under 35 U.S.C. § 103(a) over Hurley and Bowker. Cf. Apple Inc. v. Corephotonics, Ltd., 81 F.4th 1353, 1360 (Fed. Cir. 2023) (“We held that, under the [Administrative” slip op. at 17

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Petitioner’s contention with respect to motivation is directed merely to a motivation to consult Bowker. That is, Petitioner’s contention is directed to whether Bowker is analogous art to the ’565 patent. We agree it is. However, “[o]bviousness requires, inter alia, a finding that a skilled artisan would have been motivated to combine the teachings of prior art in such a way that the combination discloses the claimed limitations.” Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th 1368, 1374 (Fed. Cir. 2023) (emphasis added). This inquiry is separate from the requirement that the prior art is analogous. See Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1003–04 (Fed. Cir. 2023) (“Prior art references are applicable to the obviousness inquiry only when they are analogous to the claims being challenged.”); Johns Manville Corp. v. Knauf Insulation, Inc.,” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,581,565

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.