- 10x Genomics, Inc. v. The University Of ChicagoNo claims unpatentablePTAB · Nov 15, 2016 · IPR2015-01157 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1–31 were not shown unpatentable because the evidence did not establish the claimed surface-tension relationship under either instituted obviousness ground.
RulingsFinal written decision- Strike new argumentNew argument disregardedNew argument consideredMixed
“proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)). For this reason, our Rules require that “[a] reply may only respond to arguments raised in the corresponding opposition . . . or patent owner response.” See 37 C.F.R. § 42.23(b). This reasoning applies equally to reply declarations, submitted to support a party’s reply brief. See Intelligent Bio-Sys., Inc., 821 F.3d at 1369–70 (affirming exclusion of reply brief and supporting declaration). Our Trial Practice Guide provides that “a reply that raises a new issue or belatedly presents evidence will not be considered. . . . The Board will not attempt to sort proper from improper portions of a reply.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“Trial Practice Guide”). Of course, “the introduction of new evidence in the course of the trial is to be expected in inter partes review trial proceedings.” Genzyme Therapeutic Prod. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366 (Fed. Cir. 2016). That new evidence, however, must be responsive to an argument raised by the opposing party in its opposition brief. By contrast, when “new evidence necessary to make out a prima facie case for . . . unpatentability” or “new evidence that could have been presented in a prior filing” is introduced, these are indications that a new issue has been raised improperly. See Trial Practice Guide, 77 Fed. Reg. at 48,767.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“The theory advanced by 10X—that the surface tension relationship can be inferred from the lack of adhesion of droplets—suffers from at least two failings. First, as discussed above, to establish the presence of fluorinated surfactants with a hydrophilic head group, 10X relies on paragraph 117 of Quake, which it argues discloses surfactants residing at the oil-water interface between the droplets and the carrier fluid. Indeed, this reliance is crucial to its inference that the surfactants have a hydrophilic head group. But when it comes to inferring that the claimed surface tension relationship is present, 10X points to a different disclosure of surfactants coating the channel walls. As counsel conceded, the disclosures of paragraphs 117 and 118 “disclose two separate uses of surfactants.” Tr. 21:8–9. 10X cannot have it both ways, arguing that the hydrophilic head group is implied because the surfactant is at the oil-water interface, while also arguing that the surface tension relationship is implied because the surfactant coats the channel walls. Furthermore, even if we were to accept 10X’s reliance on the surfactant coating the channel walls, its proposed inference is not supported by the record or logic. While it may be the case that if the surface tension relationship is present, droplets do not adhere to the wall, to infer the reverse would be affirming the consequent.9 In other words, we cannot infer from the fact that droplets do not adhere to the channel wall that the claimed surface tension relationship is necessarily present, because there are other possible causes of non-adherence. As Chicago correctly notes, Quake discloses multiple reasons why a droplet may not adhere to a channel wall, including droplet shape (“about four times as long as [it is] wide”) and size (“[d]roplet adherence is overcome when the droplet is massive enough in relation to the channel size”). PO Resp. 24–25 (citing Ex. 1004 ¶ 92).” slip op. at 25
- ExcludeNot reached
“D. Motion to Exclude Chicago moves to exclude various exhibits filed by 10X, namely Exhibits 1037, 1043, 1045, 1047, 1050, 1051–1056, 1072, 1081, 1088–1092, and portions of Dr. Huck’s testimony (Exs. 1002 and 1087). Mot. 1. The basis for the Motion is Chicago’s prior objections to these exhibits on grounds of hearsay (FRE 802), prejudice (FRE 403), or unreliability (FRE 702). Even having considered these objected-to exhibits, however, we have found in Chicago’s favor on the merits of 10X’s patentability challenge. As such, the grant or denial of Chicago’s Motion would have no effect on the outcome of the proceeding. We, therefore, dismiss the Motion to Exclude as moot.” slip op. at 28
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for patent owner
“We agree with Chicago that Quake does not explicitly disclose that the surfactants of paragraph 117 have a hydrophilic head group, and that “surfactants” in general include surface active agents both with and without a hydrophilic head group. Nevertheless, we find that a person of skill in the art would understand the surfactants disclosed in paragraph 117 may include a hydrophilic head group. Dr. Olmsted notes, and Chicago does not dispute, that the other surfactants listed as “exemplary”—namely, Tween and Span— have hydrophilic head groups. Ex. 1085 ¶ 27. Furthermore, the sentence characterizes the surfactants as “soluble in oil relative to water,” from which Dr. Olmsted concludes that the oil-water boundary is the surface where the surfactants are expected to reside. Id. ¶ 29. While Chicago is correct that other portions of Quake—for example, as discussed extensively above, paragraph 118—disclose surfactants that coat the channel walls, we do not understand paragraph 117’s surfactants to be so limited.8 For this reason, we find credible Dr. Huck’s and Dr. Olmsted’s testimony that a person of ordinary skill in the art would understand paragraph 117’s disclosure to refer to surfactants having a hydrophilic head group. We find that Quake discloses fluorinated surfactants that reside at the droplet-carrier fluid interface, and which have a hydrophilic head group.” slip op. at 23
Patent outcomesUS 8,889,083 not shown unpatentable§ 103 obviousnesscites GrahamPatents in suitUS 8,889,083 - Kaiser Aluminum v. Constellium Rolled Products Ravenswood, LLCNo claims unpatentablePTAB · Nov 2, 2015 · IPR2014-01002 · APJ Jo-Anne M Kokoski · IPR · Final written decision
Claim 10 was not shown unpatentable under § 103 over Balmuth1, the Starke Reference, or ’662 Balmuth combined with ’910 Pickens.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim Interpretation We interpret claims of an unexpired patent using the “broadest reasonable construction in light of the specification of the patent in which [the claims] appear[].” 37 C.F.R. § 42.100(b). Under this standard, claim terms are given their ordinary and customary meaning in view of the specification, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). For purposes of our Decision to Institute, we determined that the terms in the challenged claims did not need to be construed expressly, and we see no reason to modify that determination in light of the record developed at trial. B.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Given the complexities involved in developing a thick plate composition from a thin sheet, and the breadth of potential applications within the aerospace industry, we determine that Mr. Balmuth and Dr. Starke fail to provide sufficient reasoning as to why one of ordinary skill in the art would have attempted to manufacture thick plates having the claimed properties from the thin sheets described in the prior art. See, e.g., InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1348–49 (Fed. Cir. 2014) (holding expert testimony to be impermissible hindsight for failing to explain what reason or motivation one of ordinary skill in the art at the time of the invention would have had to place the prior art together). In an obviousness determination, we must avoid analyzing the prior art through the prism of hindsight. Instead, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then-accepted wisdom in the art.” W.L. Gore & Assoc., Inc. v. Garlock, 721 F.2d 1540, 1553 (Fed. Cir. 1983). Here, Petitioner attempts to imbue one of ordinary skill in the art with knowledge of the claimed invention, when there is insufficient evidence of record to convey or suggest that knowledge. Rather, Petitioner’s arguments that a person having ordinary skill in the art would have only needed to use routine experimentation to manufacture a thick plate alloy having the claimed properties appears to be premised on Petitioner’s knowledge of the ’509 patent itself. See, e.g., Pet. 20 (“In this case, the ’509 patent confirmed that the chemistry in the Balmuth1 reference relating to sheet material could be used for plate products without adjusting the chemistry to arrive at the beneficial strength and toughness properties using merely routine testing procedures.”). Petitioner’s contentions that it would have been obvious to try to manufacture thick plates having the claimed properties and that “one of ordinary skill in the art had a ‘good reason to pursue the known options within his . . . technical grasp’” to do so similarly are insufficient. See Pet. 22; id. at 21–24. The Federal Circuit has held that “a finite number of identified, predictable solutions” may support an inference of obviousness, but “[t]o the extent an art is unpredictable, as the chemical arts often are, KSR’s focus on these ‘identified, predictable solutions’ may present a difficult hurdle because potential solutions are less likely to be genuinely predictable.” Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 1359 (Fed. Cir. 2008) (citing KSR, 550 U.S. at 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has a good reason to pursue known options within this or her technical grasp.”)). As set forth above, we credit Dr. Pickens’s testimony that designing a thick plate alloy product having the claimed properties from a thin sheet alloy product would be costly and unpredictable. Accordingly, Petitioner has not shown sufficiently that a person having ordinary skill in the art would have considered it obvious to try to manufacture a thick plate composition with the properties recited in claim 10 of the ’509 patent.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“In an obviousness determination, we must avoid analyzing the prior art through the prism of hindsight. Instead, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then-accepted wisdom in the art.” W.L. Gore & Assoc., Inc. v. Garlock, 721 F.2d 1540, 1553 (Fed. Cir. 1983). Here, Petitioner attempts to imbue one of ordinary skill in the art with knowledge of the claimed invention, when there is insufficient evidence of record to convey or suggest that knowledge. Rather, Petitioner’s arguments that a person having ordinary skill in the art would have only needed to use routine experimentation to manufacture a thick plate alloy having the claimed properties appears to be premised on Petitioner’s knowledge of the ’509 patent itself. See, e.g., Pet. 20 (“In this case, the ’509 patent confirmed that the chemistry in the Balmuth1 reference relating to sheet material could be used for plate products without adjusting the chemistry to arrive at the beneficial strength and toughness properties using merely routine testing procedures.”). Petitioner’s contentions that it would have been obvious to try to manufacture thick plates having the claimed properties and that “one of ordinary skill in the art had a ‘good reason to pursue the known options within his . . . technical grasp’” to do so similarly are insufficient. See Pet. 22; id. at 21–24. The Federal Circuit has held that “a finite number of identified, predictable solutions” may support an inference of obviousness, but “[t]o the extent an art is unpredictable, as the chemical arts often are, KSR’s focus on these ‘identified, predictable solutions’ may present a difficult hurdle because potential solutions are less likely to be genuinely predictable.” Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 1359 (Fed. Cir. 2008) (citing KSR, 550 U.S. at 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has a good reason to pursue known options within this or her technical grasp.”)). As set forth above, we credit Dr. Pickens’s testimony that designing a thick plate alloy product having the claimed properties from a thin sheet alloy product would be costly and unpredictable. Accordingly, Petitioner has not shown sufficiently that a person having ordinary skill in the art would have considered it obvious to try to manufacture a thick plate composition with the properties recited in claim 10 of the ’509 patent.” slip op. at 16
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“to be persuasive. In order to rely on inherency to establish the existence of a missing claim limitation in an obviousness analysis, “the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.” PAR Pharma., Inc. v. TWI Pharmas., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014). Neither Mr. Balmuth’s nor Dr. Starke’s statements regarding the inherent properties of a thick plate with the same chemistry as a thin sheet are supported by sufficient objective evidence or analysis demonstrating that the claimed properties would necessarily be present in the thick plate. Mr. Balmuth and Dr. Starke simply state that such a thick plate would inherently have the properties necessitated by the chemistry involved, without providing sufficient and credible explanations as to why that would be the case. See Ex. 1006 ¶ 13; Ex. 1008 ¶ 32. Mr. Balmuth, for example, states that “it is generally understood that the strength and fracture toughness properties of a plate are less than those of a sheet having similar chemistry,” but that “one of ordinary skill in the art would predict improved properties for a plate upon a showing of improved properties in a sheet having similar chemistry,” and does not expound upon the reasons why a person skilled in the art would understand that to mean that the thick plate would display the same mechanical properties as the thin sheet. See Ex. 1006 ¶ 14. Based upon the evidence presented, we find that the opinions of Mr. Balmuth and Dr. Starke are not persuasive as they are not supported by the evidence of record. 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.”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (stating a lack of objective support for an expert opinion “may render the testimony of little probative value in [a patentability] determination”). Patent Owner, in contrast, provides reasoning as to why a person having ordinary skill in the art would not have understood that a thick plate would have similar properties to a thin sheet having the same chemistry. PO Resp. 13–14, 34–35, 37–40, 42–44. For example, Patent Owner notes that since according to Mr. Balmuth you ‘don’t have the ability’ or ‘any interest’ in measuring toughness in the S-T direction in sheet, Petitioner has not established that the strength and toughness properties in sheet would necessarily be predictive of the strength and toughness properties of plate, such as described in Claim 10. Id. at 14. Dr. Pickens also testified to the complexities involved in developing thick plate aluminum-lithium alloys: For example, quench sensitivity, stress-corrosion cracking resistance, in plane anisotropy, through thickness heterogeneity, and lower short transverse fracture toughness are a few factors that make developing thick plate aluminum-lithium alloys very complicated. Furthermore, lithium lowers the thermal conductivity of aluminum which is problematic in several areas. Heat is more difficult to extract during direct-chill casting thereby exacerbating metallurgical segregation problems. Hot rolling can break down segregation, such as heterogeneous segregations at grain boundaries, so that it may be less harmful, although there is a practical limit on how thick aluminum alloy rolling ingot can be cast. The reduction ratio, i.e. scalped ingot thickness to final product gauge, is an important real-world processing variable when developing a thick plate aluminum lithium alloy. Ex. 2043 ¶ 11; see also PO Resp. 16–17 (discussing the “recognition in the art of complex differences between sheet and thick plate”). Patent Owner further notes that Dr. Pickens testified “that he would not have been motivated to add Mn in the claimed amount to an Al-Cu-Li-Mg-Ag alloy with a thickness of at least about 3 inches, or scale up a sheet alloy to the” slip op. at 11
Patent outcomesUS 7,229,509 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,229,509 - A.C. Dispensing Equipment Inc. v. Prince Castle LLCNo claims unpatentablePTAB · Aug 4, 2015 · IPR2014-00511 · APJ Linda M Gaudette · IPR · Final written decision
Claims 1–12 were not held unpatentable under § 103 because Petitioner did not show a reason to combine Pascoe and Wang to achieve the claimed method.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“with PO Resp. 13–19. We did not adopt these proposed constructions in our Decision to Institute, because we were not persuaded that they represented the broadest reasonable interpretation of the claim language. Dec. on Inst. 6–7. Patent Owner contends that, because we did not adopt its proposed constructions for these terms, or otherwise expressly interpret these claim terms, we “implicitly adopted constructions that are improperly broad.” PO Resp. 11.1 We determine that, for purposes of this decision, it is unnecessary for us to construe these additional claim terms. As indicated in the analysis below, even if the disputed claim terms are given the broader constructions advanced by Petitioner, Petitioner has not met its burden to prove, by a preponderance of the evidence, that claims 1–12 of the ’497 patent would have been unpatentable based on the grounds on which trial was instituted.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner contends “[a] person of ordinary skill in the art of the ‘497 patent is someone who, prior to September 20, 2010, has a Bachelor’s degree in mechanical engineering, has familiarity with fluid mechanics and has worked as an engineer in the field of liquid dispensing equipment.” Pet. 8 (citing the Declaration of Julio Militzer, Ph.D. (“the Militzer Declaration”), Ex. 1007 ¶ 13). Patent Owner agrees with this definition. PO Resp. 9. In light of the parties’ agreement, we adopt Petitioner’s definition of the level of ordinary skill in the art (Pet. 8) for purposes of this proceeding.” slip op. at 9
- ExcludeMotion to exclude, deniedDenied
“Federal Rule of Evidence 702 permits a witness qualified as an expert by knowledge, skill, experience, training, or education to testify in the form of an opinion if: (a) the expert’s knowledge will help the trier of fact to understand the evidence or to determine a fact in issue, (b) the testimony is based upon sufficient facts or data, (c) the testimony is the product of reliable principles and methods, and (d) the witness has applied the principles and methods reliably to the facts of the case. To testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010); Mytee Prods., Inc. v. Harris Research, Inc., 439 Fed. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). Although Dr. Militzer has never worked as an engineer in the field of liquid dispensing equipment, he testified that he has been “a Professor of Mechanical Engineering at Dalhousie University in Halifax, Nova Scotia, Canada since 1998,” his “area of specialization is Thermo-fluid, which includes disciplines like Thermodynamics, Heat Transfer and fluid Mechanics,” and that as part of his teaching, he “developed a series of laboratory experiments to demonstrate fundamental concepts and measure relevant flow characteristics.” Ex. 1007 ¶¶ 2–3. We agree with Petitioner that Dr. Militzer is qualified to testify about “the fundamentals of load cells, curve fitting and the relationship between head and fluid velocity at a nozzle” and that his testimony would assist the Board in understanding the mechanics and dynamics in Pascoe, Wang, and Hernandez. Pet. Opp. 3. The arguments advanced by Patent Owner in section A of its Reply (PO Reply 1–3) go to the weight to be given to Dr. Militzer’s testimony, not to its admissibility. See 37 C.F.R. § 42.65(a). It is within our discretion to assign the appropriate weight to the testimony offered by Dr. Militzer. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board was well within its discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1368 (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). We are capable of determining the appropriate weight to be accorded Dr. Militzer’s testimony without risk of being prejudiced, confused, or misled. See Section III.E.4. infra. For the above reasons, Patent Owner’s motion is denied.” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
Patent outcomesUS 8,534,497 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,534,497
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.