• Favored Tech Corporation v. P2i LtdRehearing denied
  PTAB · Oct 21, 2020 · IPR2020-00478 · APJ Jeffrey W Abraham · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving in place institution of review on claims 1–17 based on the Petition’s challenges.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). When rehearing a decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

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

    “Petitioner also provides a reason why a person of ordinary skill in the art would have used [Baalmann’s] outer-wall configuration with a 1 m3 chamber such that the plasma zone covers the full chamber volume: “because doing so would have maximized the effective chamber capacity at any given chamber size by allowing the reactive plasma to reach all substrate surfaces, even for large substrates or large batches of smaller substrates extending near the outer limits of the chamber.” Pet. 35; Ex. 1002 ¶ 125. Dec. 20–21. Patent Owner does not address this portion of the Decision or our citation to page 35 of the Petition in the section of its Rehearing Request asserting we incorrectly found the Petition asserts a ground of obviousness based on Baalmann alone. Req. Reh’g 7–11.5 These portions of the record, which address Petitioner’s evidence demonstrating a person of ordinary skill in the art would have had reason to use a particular reactor configuration and plasma zone size, undermine Patent Owner’s assertion that “Petitioner’s obviousness theory fails to provide any reasoning why a POSA would combine Baalmann’s separate and distinct teachings to arrive at the claimed” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “teaching away argument in the Decision, we will do so here. With regard to Patent Owner’s contention that “Baalmann teaches away from the claimed method because . . . Baalmann discloses applying a power of 2kW in its only example using a reactor large enough to potentially satisfy claim 1’s plasma zone volume requirement, which would result in a plasma power density well outside the claimed range” (Req. Reh’g 14), we note that a reference teaches away from a claimed invention if it “criticize[s], discredit[s], or otherwise discourage[s]” modifying the reference to arrive at the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Patent Owner does not direct us to any such evidence in Baalmann, and we will not “read into a reference a teaching away . . . where no such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). Additionally, although the one example of a 1 m3 reactor in Baalmann involved using a power density that did not fall within the claimed range, for purposes of an obviousness analysis, we cannot ignore the broader disclosure of Baalmann regarding the use of power densities in the range of between 0.5 kW/m3 and 5kW/m3, which does overlap the claimed range. See In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) (“It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art.”).” slip op. at 10

  • Strike new argumentNew argument disregardedDecided for petitioner

    “Req. Reh’g 14. Patent Owner cites to pages 54–56 of the Preliminary Response as the source for this argument and evidence. Although these pages do provide a discussion of the use of certain power densities in prior art references, this portion of the Preliminary Response primarily addresses Patent Owner’s arguments regarding whether a person of ordinary skill in the art “would have had a reasonable expectation of success when combining the disparate process of Coulson and Baalmann,” not what a person of ordinary skill in the art would have been “motivated” to do. Prelim. Resp. 56; see Par Pharmaceutical v. Twi Pharmaceuticals, Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (noting the proper analysis under § 103 requires “consideration of two factors: (1) whether the prior art would have suggested to those of ordinary skill in the art that they should make the claimed composition or device, or carry out the claimed process; and (2) whether the prior art would also have revealed that in so making or carrying out, those of ordinary skill would have a reasonable expectation of success”) (quoting Medichem, S.A. v. Rolabo S.L., 437 F.3d 1157, 1164 (Fed. Cir. 2006). As such, Patent Owner appears to present a new argument for the first time in the Rehearing Request. Not only is such an argument improper (see 37 C.F.R. § 42.71(d)), but the fact that it was raised for the first time in the rehearing means it is not something we could have overlooked. Even if Patent Owner had presented this “motivation” argument in the Preliminary Response, we remain unpersuaded of any error in our Decision. Patent Owner fails to explain sufficiently why a person of ordinary skill in the art would look to other prior art references for guidance regarding the use of a particular power density in large scale reactors in view of our determination that Baalmann itself discloses the use of a power density in the claimed range in a large scale reactor.” slip op. at 11

  § 103 obviousness
  Patents in suitUS 8,389,070
• Choirock Contents Factory Co., Ltd. v. Spin Master Ltd.All claims unpatentable
  PTAB · Sep 24, 2020 · IPR2019-00900 · APJ Neil T Powell · IPR · Final written decision

  Claims 1–20 are unpatentable under § 103 over Aprile and Shannon; the Board did not reach the other asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “In determining the level of ordinary skill in the art, various factors may be considered, 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 and internal quotation marks omitted). Based on the full record before us, we determine that one of ordinary skill in the art “would have a bachelor’s degree in mechanical engineering or a related field and at least three years of experience in toy design.” This level of skill in the art is consistent with the disclosure of the ’073 patent and the prior art of record.” slip op. at 7

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

    “According to the applicable standard, claim terms “are generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Extrinsic evidence is “less significant than the intrinsic record in determining ‘the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317. Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. America Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Our analysis below does not require construing any claim term to resolve the parties’ dispute. Accordingly, we do not expressly construe any claim term.” slip op. at 8

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

    “b. Analysis Considering the record as a whole, Petitioner’s evidence and arguments provide rational underpinning for its contentions that claims 1–20 would have been obvious in view of Aprile and Shannon. Weighing the parties’ evidence and arguments, Petitioner persuades us that a person of ordinary skill in the art would have had motivation to modify Shannon’s toy to have a magnetically released latch like Aprile’s. Additionally, Petitioner persuades us that there would have been a reasonable expectation of success for such a modification.” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “We also do not agree with Patent Owner’s assertion that Shannon teaches away from using a magnetically released fastener like Aprile’s. PO Resp. 23–29. A reference teaches away “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Mouttet, 686 F.3d 1322, 1333– 34 (Fed. Cir. 2012)); DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) (“We will not read into a reference a teaching away from a process where no such language exists.”). A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Fulton further explains [O]ur case law does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention. “[T]he question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination,” not whether there is something in the prior art as a whole to suggest that the combination is the most desirable combination available. 391 F.3d at 1200. Additionally, “obviousness must be determined in light of all the facts, and there is no rule that a single reference that teaches away will mandate a finding of nonobviousness. Likewise, a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).” slip op. at 28

  Patent outcomesUS 9,868,073 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,868,073
• Choirock Contents Factory Co., Ltd. v. Spin Master Ltd.All claims unpatentable
  PTAB · Sep 23, 2020 · IPR2019-00897 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–5 are unpatentable as obvious based on Tomiyama alone, Shannon modified by Tomiyama, and Shannon, Tomiyama, and Aprile.

  RulingsFinal written decision

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “8. Weighing the Graham Factors Based on the full record before us, we find that (1) Petitioner’s” slip op. at 87

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

    “8. Weighing the Graham Factors Based on the full record before us, we find that (1) Petitioner’s” slip op. at 87

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

    “filed a Petition (Paper 1, “Pet.”), requesting institution of an inter partes review of claims 1–5 of U.S. Patent No. 8,500,508 B2 (Ex. 1001, “the ’508 patent”). Concurrently with the Petition, Petitioner also filed a “Motion for Joinder to Related Inter Partes Review of U.S. Patent No. 8,500,508 ([Mattel, Inc. v. Spin Master Ltd.,] IPR2018-01672) Under 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b).” Paper 3. Spin Master Ltd. (“Patent Owner” or “Spin Master”) filed a Preliminary Response (Paper 14) and an Opposition to Petitioner’s Motion for Joinder to IPR2018-01672 (Paper 7). Petitioner thereafter filed a Reply to Patent Owner’s Opposition (Paper 8), and with our authorization (Paper 15), Petitioner further filed a Reply to Patent Owner’s Preliminary Response (Paper 16). Pursuant to 35 U.S.C. § 314, we instituted an inter partes review of the ’508 patent and at the same time denied the Motion for Joinder. Paper 17 (“Dec. to Inst.”).” slip op. at 2

  Patent outcomesUS 8,500,508 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,500,508
• Tetra Tech Canada Inc. v. Georgetown Rail Equipment CompanyAll claims unpatentable
  PTAB · Aug 25, 2020 · IPR2019-00620 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1–3, 7–13, and 16–20 are unpatentable as obvious; the contingent motion to amend with substitute claims 30–44 is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer engineering, mechanical engineering, computer science, physics, or a related field, and at least four years of experience (or the academic equivalent) in the field of computer or machine vision.” Pet. 21 (citing Ex. 1004 ¶ 42). Patent Owner states that, for purposes of its Response, “Patent Owner does not contest the level of ordinary skill in the art asserted by Petitioner.” PO Resp. 3. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. In light of the record now before us, we find that a person of ordinary skill in the art would be an individual with at least a bachelor’s degree in electrical engineering, computer engineering, mechanical engineering, computer science, physics, or a related field, and at least four years of experience (or the academic equivalent) in the field of computer or machine vision. Ex. 1004 ¶ 42. The level of ordinary skill in the art is also reflected by the references themselves. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record).” slip op. at 8

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

    “On the full record now before us, we determine it is not necessary to construe any claim term expressly to resolve the parties’ dispute. Vivid Techs., Inc., 200 F.3d at 803 (“Only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). D. Prior Art” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Additionally, by providing the declaration of Ms. Watters, Petitioner has taken further steps to provide testimony that Uzarski was catalogued, shelved, and indexed before the critical date, and made available such that persons of ordinary skill in the art, exercising reasonable diligence, could have located it. Id. at 1–2. Ms. Watters, a librarian with the University of Wisconsin-Madison since 1998, provides details regarding her professional background leading to her current position as Director of Wisconsin TechSearch within the University of Wisconsin-Madison. Ex. 1038, 1. She testifies that, based on her knowledge, Uzarski “was received by Wendt Library, University of Wisconsin-Madison Libraries on February 11, 1994.” Id. at 2. She further testifies that, based on the information in Uzarski, “it is clear that the microfiche was received by the library on or before February 11, 1994, catalogued and available to library patrons within a few days or at most 2 to 3 weeks after February 11, 1994.” Id. The declaration concludes with an affidavit that Ms. Watters is aware that false statements are punishable by fine or imprisonment or both. Id.; see 37 C.F.R. § 1.68; 28 U.S.C. § 1746. We have reviewed the testimony of Ms. Watters supporting Uzarski’s public accessibility as of the critical date, and find that Ms. Watters provides credible testimony regarding the receipt of Uzarski by the University of Wisconsin-Madison Library and the cataloging and availability of Uzarski. On this complete record, we are persuaded that the indicia on Uzarski and the support provided by the Watters declaration demonstrate sufficiently that Uzarski was publicly accessible as of the critical date.” slip op. at 17

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

    “Petitioner and its declarant provide ample reasons that one of ordinary skill in the art would have been motivated to employ Villar’s processor to use Uzarski’s method, and ample reasons that one of ordinary skill in the art also would have known to look to Haas to determine what was “well-known to one of ordinary skill in the art at the relevant time to determine the condition of railroad ties,” and to identify and use the particular regulations referenced in Uzarski. Pet. 30 (citing Ex. 1004 ¶ 58), 37–38 (citing Ex. 1004 ¶ 70); see also Reply 6–12; Ex. 1004 ¶¶ 70–71; Ex. 1038, 18–20. On this complete record, and for the reasons provided by Petitioner and discussed above, we determine that Petitioner provides adequate reasoning to combine the three references in the manner proposed in the Petition with a reasonable expectation of success.” slip op. at 33

  Patent outcomesUS 9,441,956 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 9,441,956
• Tetra Tech Canada Inc. v. Georgetown Rail Equipment CompanyAll claims unpatentable
  PTAB · Aug 25, 2020 · IPR2019-00662 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 21–29 are unpatentable under §103 over Holmes, Bostrom, Kanade, and Davis; Ground 1 over Davis, Kowalski, Bostrom, and Kanade was not further addressed.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer engineering, mechanical engineering, computer science, physics, or a related field, and at least four years of experience (or the academic equivalent) in the field of computer or machine vision.” Pet. 19 (citing Ex. 1004 ¶ 42). Patent Owner states that, for purposes of its Response, “Patent Owner does not contest Petitioner’s asserted level of ordinary skill in the art.” PO Resp. 1. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. In light of the record now before us, we find that a person of ordinary skill in the art would be an individual with at least a bachelor’s degree in electrical engineering, computer engineering, mechanical engineering, computer science, physics, or a related field, and at least four years of experience (or the academic equivalent) in the field of computer or machine vision. Ex. 1004 ¶ 42. The level of ordinary skill in the art is also reflected by the references themselves. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). C. Claim Construction” slip op. at 8

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

    “Petitioner proposes constructions for “misaligned” and “image,” and states that the Board should construe “determining,” “crosstie contour,” and “tie plate contour” according to their plain and ordinary meanings. Pet. 20– 23. Patent Owner proposes constructions for “misaligned,” “tie plate is . . . sunken,” “across,” and “image,” and agrees with Petitioner that the Board should construe “determining,” “crosstie contour,” and “tie plate contour” according to their plain and ordinary meanings. PO Resp. 1–7. On the full record now before us, we determine it is not necessary to construe any claim term expressly to resolve the parties’ dispute. Vivid Techs., Inc., 200 F.3d at 803 (“Only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

  Patent outcomesUS 9,441,956 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,441,956
• Tetra Tech Canada Inc. v. Georgetown Rail Equipment CompanyAll claims unpatentable
  PTAB · Aug 25, 2020 · IPR2019-00619 · APJ Hubert C Lorin · IPR · Final written decision

  Claims 16, 23, 38, 44, 46, 62, 68, and 70 are unpatentable as obvious over each of two combinations: Davis/Kowalski/Bostrom/Trosino/Kanade and Holmes/Bostrom/Trosino/Kanade/Davis.

  RulingsFinal written decision

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors” slip op. at 10

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

    “2. Obviousness A claim is unpatentable under 35 U.S.C. § 103(a) if the differences” slip op. at 9

  • Obviousness (§103) › Objective indicia / secondary considerationsDecided for petitioner

    “5. Objective Indicia Before we make a final obviousness determination, we must consider” slip op. at 91

  • Exclude

    “According to Petitioner, GREX relies on Exhibits 2006 and 2007 to show the alleged “accuracy of GPS” in 2004. Response, 45; Ex-2003, ¶¶167-170; Sur-Reply, 6-10. In response to Petitioner’s objections, GREX served a purported authenticity certification declaration from its expert, Dr. Bovik. Ex-2023 (served only). But the declaration fails to properly authenticate Exhibits 2006 and 2007, which are not otherwise self-authenticating under FRE 902. Accordingly, the Board should exclude Exhibits 2006 and 2007.” slip op. at 109

  Patent outcomesUS 7,616,329 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,616,329
• Solvay USA Inc. v. Worldsource Enterprises, LLC, Eco Agro Resources LLC, And Eco World Group LLCRehearing denied
  PTAB · Aug 10, 2020 · PGR2019-00046 · APJ Sheldon M Mcgee · PGR · Rehearing

  The Board held claims 1–20 unpatentable as obvious over the stated combinations and denied Patent Owner’s rehearing request.

  RulingsRehearing decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In light of the complete record now before us, we adopt Petitioner’s definition of one of ordinary skill in the art. In addition to the academic requirements associated with obtaining a bachelor’s degree in chemistry or chemical engineering, Petitioner’s definition includes at least two years of experience specific to chemical formulations used in the agricultural industry. Pet. 8. Patent Owner’s “definition” is generic to “formulation chemistry.” Sur-Reply 4. Patent Owner does not explain, nor do we discern, why the skilled artisan would not have had at least some work experience in developing chemical formulations in the relevant field, i.e., the agrochemical industry. Indeed, some of Patent Owner’s arguments are directed to solvent delivery systems used in the agricultural market. PO Resp. 57–78.” slip op. at 7

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

    “filing date, we apply the claim construction standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Id. at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Neither party offers a construction for any claim term. Pet. 11; see also PO Resp., generally. On the complete record, we determine that no claim limitations need an express construction to resolve the controversy.” slip op. at 6

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

    “analogous art. PO Resp. 47; Sur-Reply 8, 15–16. Patent Owner incorrectly frames the analogous art inquiry by comparing whether the prior art references are analogous to each other. See PO Resp. 47 (“not all three references are in the same field of endeavor”); Sur-Reply 16 (asserting that CN400 “is not analogous art with Iannotta [] and/or Kolc” because CN400’s NBPT is purportedly “not dissolved in any solvent”). Our reviewing court has stated, however, that “[a] reference qualifies as prior art for a determination under § 103 when it is analogous to the claimed invention.” Innovention Toys, LLC v. MGA Entertainment, Inc., 637 F.3d 1314, 1322 (Fed. Cir. 2011) (citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004), the court stated Two separate tests define the scope of analogous art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. Innovention Toys, 637 F.3d at 1322. Regarding whether the CN400 patent is in the same field of endeavor as the ʼ108 patent, we must consider the scope of the ʼ108 patent as a whole and not just the claims. In re Mettke, 570 F.3d 1356 (Fed. Cir. 2009) (rejecting appellant’s attempt to rely on the claimed subject matter to define the relevant “field of endeavor” when the specification described a broader one). Significantly, the ʼ108 patent discloses both solutions and suspensions of NBPT. See Ex. 1001, 5:20–52, 6:5–12, 6:39–40 (disclosing various solutions of NBPT), and 13:24–36 (setting forth an embodiment that formed “a suspension of NBPT in the aqueous mixture” that may “be solved by agitation”). Therefore, regardless of whether CN400’s process set forth in its claim 1 results in a solution or suspension of NBPT, CN400 is from the same field of endeavor as defined by the ʼ108 patent itself––“solvent formulations for the urease inhibitor . . . NBPT.” Ex. 1001, 1:15–18. Even if CN400 was not in the same field of endeavor as the ʼ108 patent, we find it is reasonably pertinent to the particular problem with which the inventor was involved. The ʼ108 patent identifies NBPT formulation toxicity as problematic to the environment, animals, and possibly humans (id. at 2:60–62, 4:8–33), and expressly states “it is desirable to develop formulations/fertilizers that are less toxic to the environment and to animals and humans” (id. at 4:34–36). The skilled artisan would have been aware of this toxicity problem with NBPT-containing formulations (Ex. 1025, 1; Ex. 1007 ¶ 6), and CN400 was also concerned with this problem (Ex. 1006, 1 (Abstract), ¶¶ 2, 5; see also Ex. 2006, 461 (machine translation of CN400 abstract noting how use of its fertilizer formulation will not pollute the environment), 462 ¶ 2, 463 ¶ 5. Notably, Patent Owner does not address this second test in its briefing. Tr. 39:6–11 (Patent Owner’s counsel acknowledging “[w]e did not address the other prong in the briefing”). Thus, on several bases, we find CN400 is analogous art to the ʼ108 patent and may be properly relied on in our obviousness determination.” slip op. at 24

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,221,108
• Motorola Mobility LLC v. Intellectual Ventures II LLCRehearing denied
  PTAB · Jul 22, 2020 · IPR2014-00504 · APJ Patrick R Scanlon · IPR · Rehearing

  The Board denied Motorola’s rehearing request, leaving intact the remand decision that claims 1–4, 7, and 18 were not shown unpatentable on the instituted grounds.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 3

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “that Dr. Tewfik’s testimony is not credible because he has “no personal knowledge” and “merely parrots the inventor’s claim chart.” Req. 6. We disagree, because we considered and analyzed expressly Petitioner’s argument and the basis for Dr. Tewfik’s testimony. Remand Dec. 27, 30. We determined that Dr. Tewfik’s testimony was credible, in that it was testimony concerning his opinion with respect to the claim chart, and also that his testimony was based, at least in part, on his personal experience with Windows 98 and its functionalities. Id. at 30. Indeed, the Federal Circuit noted that the rule of reason requires us to consider all pertinent evidence, and then noted explicitly that Dr. Tewfik’s testimony was one example of such pertinent evidence that needed to be considered. See Intellectual Ventures II, 692 F. App’x at 627–628. For these reasons, we are not persuaded that we misapprehended or overlooked the credibility of Dr. Tewfik’s testimony.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “not have changed the outcome of our Decision. In Figure 4, Kellerer shows a block with a central control unit, address management, routing, an application server, and network managers. Exhibit 1007, 45. This block diagram, however, does not specifically address whether or not Internet access requires an external service controller. Moreover, Petitioner provides no citations to any passages that describe the functions of the central control unit, address management, routing, the application server, and the network managers. See generally Req. 9–13. We are not persuaded that Kellerer teaches all of the components that are necessary to enable Internet access based on Figure 4 alone. That these components are located inside the car, as shown in Figure 3, also does not specifically address whether or not Internet access requires an external service controller. Accordingly, we are not persuaded that Figures 3 and 4 render the stand-alone system limitation obvious.” slip op. at 12

  § 103 obviousness
  Patents in suitUS 7,382,771
• 3shape A/S / 3shape Inc. v. Align Technology, Inc.No claims unpatentable
  PTAB · Jul 16, 2020 · IPR2019-00151 · APJ Neil T Powell · IPR · Final written decision

  Claims 15–30 were not shown unpatentable because Petitioner failed to establish the required motivation to combine Picard with Ishihara or a reasonable expectation of success combining Gmitro with Tiziani.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “After considering the evidence and arguments of the parties, we determine that Petitioner has not proven by a preponderance of the evidence that claims 15–30 of the ’448 patent are unpatentable. See 35 U.S.C. § 316(e). We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a).” slip op. at 2

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

    “We agree that the law does not require Petitioner to show a person of ordinary skill in the art would have viewed the proposed modification as the most preferred or desirable approach. The law does, however, require Petitioner to show not only that a person of ordinary skill in the art could have combined the references in the proposed manner, but that a person of ordinary skill in the art would have had a reason to combine the references’ teachings in the proposed manner. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis added) (citation omitted) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”). Here, Petitioner does not do so.” slip op. at 25

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Patent Owner persuades us that, in Picard, the axial chromatism of lens 15 constitutes a key feature of its system, not a problem. PO Resp. 27– 31. We credit the unrebutted testimony of Mr. Aikens that Picard’s “basic principle of operation, and purported point of novelty, requires focusing light at different planes via axial chromatic aberration,” provided by lens 15. Ex. 2019 ¶ 107. Mr. Aikens explains that Picard leverages the axial chromatism of lens 15 to ascertain the position of an object along the z-axis. Id. ¶¶ 68–70, 107–116. Consistent with this, Dr. Sergienko testifies that “[t]he axial chromatism in Picard is the main feature to achieve this section,” elaborating that “[t]hey’re arranging the device to provide the longitudinal dynamics, because longitudinal dynamics, it’s information about position of the focal planes along the axis longitudinally.” Ex. 2012, 85:21–86:10.” slip op. at 24

  • Strike new argumentNew argument disregardedDecided for patent owner

    “have foreseen Patent Owner’s argument does not justify its insufficient explanation and lack of evidence in the Petition. As Patent Owner argues, its ITC brief, filed approximately a month before the Petition was filed, provided effective notice of Patent Owner’s position that there would have been issues using Gmitro’s fiber-optic bundle to carry the plurality of light beams used in Tiziani. Id. Moreover, even without such express notice, Petitioner should have recognized the requirement that its Petition must “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). The Petition was also required to include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). The Petition fails to meet these requirements with respect to its assertion that a person of ordinary skill in the art would have had a reasonable expectation of success in combining Gmitro’s fiber-optic bundle with Tiziani’s confocal imaging system and microlens array. It is “improper for a reply to present new evidence (including new expert testimony) that could have been presented in a prior filing.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 74– 75 (citing Genzyme Therapeutic Prods. Ltd. v. Biomarin Pharm. Inc., 825 F.3d 1360, 1365–69 (Fed. Cir. 2016)). Petitioner does not provide any persuasive reason that the evidence it presented with its Reply to bolster its assertion of a reasonable expectation of success could not have been provided with the Petition. Accordingly, we find that Petitioner exceeded the proper scope of a reply with its newly presented arguments on pages 24– 27 of the Reply and with the its new citations of portions of the ’448 Patent (Ex. 1001, 7:53–8:3, 5:62–65, 5:39–41, 5:45–51, Fig. 1A), Picard (Ex. 1003, 25–26), Gmitro’s title (Ex. 1005, title), Dr. Sergienko’s new testimony (Ex. 1037 ¶¶ 22–28), and Exhibits 1038 and 1039.” slip op. at 44

  Patent outcomesUS 8,638,448 not shown unpatentable
  § 103 obviousnesscites Phillips
  Patents in suitUS 8,638,448
• 3shape A/S / 3shape Inc. v. Align Technology, Inc.Some claims unpatentable
  PTAB · Jul 16, 2020 · IPR2019-00152 · APJ Neil T Powell · IPR · Final written decision

  Claims 15 and 20 are unpatentable as anticipated by Picard; claims 1–14 and 16–19 were not shown unpatentable on the asserted grounds.

  RulingsFinal written decision

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

    “In view of our analysis below, we need not construe expressly any claim language to resolve the parties’ patentability dispute. The Petition’s first challenge asserts obviousness of claims 1, 2, 7, 8, 9, and 14 over Picard and Ishihara. Pet. 18–39. As explained in greater detail below in Section III.B.3, this challenge rests on a contention that it would have been obvious to modify Picard to use telecentric optics like those taught in Ishihara. Id. at 32–38. With respect to the challenge of claims 1, 2, 7, 8, 9, and 14 over Picard and Ishihara, the Petition does not explain any theory of unpatentability that does not rely on the assertion that it would have been obvious to modify Picard with telecentric optics based on Ishihara. Id. at 18–39. Thus, the merits of this challenge inextricably depend on whether Petitioner has demonstrated adequately that it would have been obvious to modify Picard with telecentic optics based on Ishihara. For the reasons explained below in Section III.B.3, Petitioner has not done so. Therefore, Petitioner’s challenge of claims 1, 2, 7, 8, 9, and 14 over Picard and Ishihara fails for reasons unrelated to claim construction.” slip op. at 9

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

    “We agree that the law does not require Petitioner to show a person of ordinary skill in the art would have viewed the proposed modification as the most preferred or desirable approach. The law does, however, require Petitioner to show not only that a person of ordinary skill in the art could have combined the references in the proposed manner, but that a person of ordinary skill in the art would have had a reason to combine the references’ teachings in the proposed manner. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis added) (citation omitted) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”). Here, Petitioner does not do so.” slip op. at 25

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

    “Thus, Picard expressly discloses that the embodiment discussed in connection with Figure 8 includes the components and features shown and discussed in connection with Figure 3, plus all of the components and features shown and discussed in connection with Figure 8. Accordingly, the Petition cites to Picard’s discussions of Figures 3 as providing details regarding certain components and features that Picard discloses are also included in the embodiment of Figure 8. Pet. 20–23, 26–30, 39–41. In view of Picard’s express teaching to combine the features of Figures 3 and 8 and explanation of how they should be combined (Ex. 1003, 24:9–17) and Petitioner’s reliance on these same features to show anticipation (Pet. 20–23, 26–30, 39–41), we find no merit in Patent Owner’s argument that Petitioner does not identify any motivation to combine Picard’s discussions of Figures 3 and 8.11 See Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016) (“[A] reference need not always include an express discussion of the actual combination to anticipate. . . . Instead, a reference may still anticipate if that reference teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination.”) (citing Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F. 3d 1376, 1383 (Fed. Cir. 2015)). In sum, Petitioner demonstrates by a preponderance of the evidence that Picard anticipates claims 15 and 20.” slip op. at 32

  • Strike new argumentNew argument disregardedDecided for patent owner

    “have foreseen Patent Owner’s argument does not justify its insufficient explanation and lack of evidence in the Petition. As Patent Owner argues, its ITC brief, filed approximately a month before the Petition was filed, provided effective notice of Patent Owner’s position that there would have been issues using Gmitro’s fiber-optic bundle to carry the plurality of light beams used in Tiziani. Id. Moreover, even without such express notice, Petitioner should have recognized the requirement that its Petition must “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). The Petition was also required to include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). The Petition fails to meet these requirements with respect to its assertion that a person of ordinary skill in the art would have had a reasonable expectation of success in combining Gmitro’s fiber-optic bundle with Tiziani’s confocal imaging system and microlens array. It is “improper for a reply to present new evidence (including new expert testimony) that could have been presented in a prior filing.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 74– 75 (citing Genzyme Therapeutic Prods. Ltd. v. Biomarin Pharm. Inc., 825 F.3d 1360, 1365–69 (Fed. Cir. 2016)). Petitioner does not provide any persuasive reason that the evidence it presented with its Reply to bolster its assertion of a reasonable expectation of success could not have been provided with the Petition. Accordingly, we find that Petitioner exceeded the proper scope of a reply with its newly presented arguments on pages 24– 27 of the Reply and with the its new citations of portions of the ’901 Patent (Ex. 1001, 5:46–48, 5:52–58, 6:2–6, 7:62–8:13, Fig. 1A), Picard (Ex. 1003, 25–26), Gmitro’s title (Ex. 1005, title), Dr. Sergienko’s new testimony (Ex. 1037 ¶¶ 23–28), and Exhibits 1038 and 1039. For all of the foregoing reasons, Petitioner has not carried its burden of showing that claims 1, 2, 7–9, 14, 15, and 20 would have been obvious over Tiziani, Gmitro, and Ishihara.” slip op. at 47

  Patent outcomesUS 9,615,901 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 9,615,901

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.