- Uatp IP LLC v. Slick Slide LLCSome claims unpatentablePTAB · Oct 2, 2026 · PGR2024-00054 · APJ Brian D Range · PGR · Final written decision
Claims 22–26 are unpatentable based on obviousness; claims 1–17, 27, and 28 were not shown unpatentable. Patent Owner’s motion to terminate was denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“1. Mesh Layer Petitioner contends “no formal claim construction is necessary in this” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“5. Analysis On this complete record, we determine that Petitioner’s arguments do” slip op. at 31
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“form of nylon and some form of Teflon (and possible combinations thereof) having the specific coefficient of friction range given in limitation [1c] breaks down, because the building blocks of the obviousness argument are not sufficiently identified in Phillips alone, nor in the supporting testimony. Accordingly, we determine that Petitioner’s arguments and evidence fail to show that Phillips renders the challenged claims obvious. 6. Conclusion Based on the foregoing, we determine that Petitioner has not established by a preponderance of the evidence that claims 1–4, 6, and 7 would have been anticipated by or obvious in view of Phillips.” slip op. at 33
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“2. Products and Nexus We first consider the issue of whether certain evidence relied upon by” slip op. at 20
Patent outcomesUS 11,998,854 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Graham · NautilusPatents in suitUS 11,998,854 - Apple Inc. v. RJ Technology LLCSome claims unpatentablePTAB · Feb 18, 2025 · IPR2023-01350 · APJ Jon B Tornquist · IPR · Final written decision
Claims 5–10 are unpatentable as obvious; claims 11–14 were not shown unpatentable because the evidence did not establish the claimed capacity retention after 400 cycles.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art “would have held a Bachelor’s degree in chemistry or chemical engineering, with at least 4 years of experience in cell design, electrochemical techniques, and battery materials development.” Pet. 4. Petitioner further contends that a “Master’s Degree can substitute[] for some of the relevant experience,” and “[e]quivalent training with battery specific experience can accommodate other degreed fields.” Id. 9 The parties here do not address objective evidence of nonobviousness. Patent Owner does not dispute Petitioner’s definition of the ordinarily skilled artisan. PO Resp. 20. We adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the ’641 patent, the prior art of record, and the parties’ arguments.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties agree that the term “charge cut-off voltage” is “the maximum voltage to which the battery is configured to be charged.” PO Resp 21–22; Pet. Reply 1. The parties dispute, however, whether the “charge cut-off voltage” is a “battery property” or “the voltage applied to the battery during charging.” PO Resp. 21–24; Pet. Reply 1–6. We need not resolve the precise meaning of “charge cut-off voltage” because there is no dispute that Yamaki discloses this limitation under either party’s interpretation of the claim term. Upon review of the prior art and the parties’ arguments, we determine that no terms of the ’641 patent require express construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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))); Pet. Reply 1 (asserting that the challenged claims are unpatentable under either parties’ construction of “charge cut-off voltage”).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Patent Owner’s arguments do not persuasively undermine Petitioner’s position. Sakamoto expressly discloses setting the ratio of negative to positive electrode active material in the range of 1.05 to 1.30. Ex. 1005 ¶ 8. Sakamoto also explains why this range is preferable, i.e., if the ratio is roughly equal “the charge-discharge cycle performance is insufficient due to significant deterioration from charging and discharging,” and if the ratio is 10 Citations to the prosecution history of Yamaki are to the page numbers added to the lower right corner of the document. too high “too much of the compound does not participate in charging and discharging.” Id. ¶¶ 6, 8. These disclosures are sufficient to explain why one of ordinary skill in the art would have found it obvious to select the ratios disclosed in Sakamoto in Yamaki. Id. ¶ 8 (providing a secondary battery with a capacity ratio between 1.05 and 1.30 and noting that by setting the ratio within this range the resulting secondary lithium battery is “safe due to low risk of heat being generated and an explosion occurring”). We also disagree that Sakamoto teaches away from elevated voltages or from increasing the amount of lithium in circulation. See PO Resp. 29. Contrary to Patent Owner’s arguments, Sakamoto provides no general teaching against using a charge cut-off voltage above 4.2 V, or against increasing the level of lithium in circulation. Nor does Sakamoto “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Rather, Sakamoto warns against setting the reversible capacities of the positive and negative electrode substantially equal as this may result in excess lithium plating on the surface of the electrode. Ex. 1005 ¶¶ 6, 8. We agree with Petitioner that this disclosure would lead one of ordinary skill in the art to design a battery with a higher capacity in the negative electrode active material than the positive electrode active material. Pet. 11–12.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We also disagree that Sakamoto teaches away from elevated voltages or from increasing the amount of lithium in circulation. See PO Resp. 29. Contrary to Patent Owner’s arguments, Sakamoto provides no general teaching against using a charge cut-off voltage above 4.2 V, or against increasing the level of lithium in circulation. Nor does Sakamoto “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Rather, Sakamoto warns against setting the reversible capacities of the positive and negative electrode substantially equal as this may result in excess lithium plating on the surface of the electrode. Ex. 1005 ¶¶ 6, 8. We agree with Petitioner that this disclosure would lead one of ordinary skill in the art to design a battery with a higher capacity in the negative electrode active material than the positive electrode active material. Pet. 11–12.” slip op. at 15
Patent outcomesUS 7,749,641 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,749,641 - Samsung Electronics Co., Ltd. / Apple Inc. v. RJ Technology LLCSome claims unpatentablePTAB · Jan 17, 2025 · IPR2024-00597 · APJ Jon B Tornquist · IPR · Final written decision
Claims 2–4 and 6–18 are unpatentable as obvious over Abe and Guyomard, with claims 9–10 also obvious over Iwaizono; claims 1 and 5 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years of experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. (citing Ex. 1002 ¶¶ 50–51). Patent Owner “does not dispute Petitioner’s level of ordinary skill.” PO Resp. 17. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the disclosures of the ’641 patent and the prior art of record.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We also agree with Patent Owner that the charge cut-off voltage is not necessarily the applied voltage during charging. PO Resp. 20. Rather, depending on the charging protocol used and when in the charging cycle the voltage is applied, the applied voltage could be higher than the battery voltage. Ex. 2013; Ex. 2006 ¶ 91. For example, as discussed in more detail below with respect to the Uemura grounds, when fast charging using constant current is used and the charging rate is not slow, the applied voltage will be higher than the battery voltage when the constant current charging phase is stopped. Ex. 2006 ¶ 91; Ex. 2013. Likewise, during constant current/constant voltage charging, the applied voltage approximates the battery voltage only when the battery is nearly completely charged. Ex. 2013; Ex. 2006 ¶ 91. Thus, the applied voltage may be, but is not necessarily, the charge cut-off voltage. In view of the foregoing, we construe “charge cut-off voltage” in claims 1 and 5 as “the maximum value to which the battery is configured to be charged.” PO Resp. 18; Ex. 2008, 217:6–11; Pet. Reply 5. Contrary to Patent Owner’s arguments, however, we do not understand the phrase “configured to be charged” to necessarily represent a single voltage for the battery that is determined based on the structure and chemistry of the battery. Pet. Reply 4–5. Rather, the charge cut-off voltage is a selected potential, or voltage, of the battery or cell at the end of charging that is controlled by a circuit or device, such as a charger or control circuit within the battery. Ex. 1001, 9:50–55; Ex. 1048, 2, 7–8; Ex. 1008, 3:9–13. And, for the reasons discussed herein, the charge cut-off voltage may be, but is not necessarily, the same as the applied voltage during charging. PO Resp. 20.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“charge cut-off voltage “greater than 4.2 V but less than 5.8 V” and calculating a specific or theoretic capacity “with a charge cut-off voltage limited to 4.2” (claim 1) or “with a charge cut-off voltage set at 4.2 V” (claim 5). Ex. 1001, 16:56–61, 17:6–11. Although the parties dispute the precise scope of these claim terms, the parties agree that the first use of “charge cut-off voltage” in claims 1 and 5 refers to the potential of the battery as a whole (between the cathode and the anode), and not a half-cell voltage using lithium metal as a counter electrode.10 Tr. 17:1–3 (agreeing 10 With respect to the phrase “as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V,” the parties in fact appear to be in that the first use of “charge cut-off voltage” in claim 5 refers to a full-cell voltage); Sur-reply 5; PO Resp. 22. We need not further construe the claims to resolve the disputes between the parties. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 16
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Given Mr. Juzkow’s unambiguous testimony that Uemura uses constant current charging that would stop when the applied voltage reached 11 The chart is reproduced from SAFT, Charging your lithium-ion batteries: 5 expert tips for a longer lifespan, (https://www.saft.com/energizing-iot/charging-your-lithium-ion-batteries-5-expert-tips-longerlifespan#:~: text=When%20the%20battery%20provides%20current,This%20restore s%20the%20battery's%20capacity). 4.3 V, as well as Dr. Yao’s persuasive testimony that Uemura’s constant charging rate is not slow, we credit the testimony of Dr. Yao that one of ordinary skill in the art would have understood that the internal voltage to which the battery of Uemura was charged is less than 4.3 V. Ex. 2006 ¶ 119. In particular, Dr. Yao persuasively testifies that one of ordinary skill in the art would have believed that the charge cut-off voltage was no more than 4.2 V, and most likely equal to “about 4 V.” Id. ¶¶ 119–122.” slip op. at 21
Patent outcomesUS 7,749,641 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,749,641 - Samsung Electronics Co., Ltd. / Apple Inc. v. RJ Technology LLCSome claims unpatentablePTAB · Jan 17, 2025 · IPR2023-01183 · APJ Jon B Tornquist · IPR · Final written decision
Claims 2–4 and 6–18 are unpatentable as obvious over Abe and Guyomard, with claims 9 and 10 also obvious over Iwaizono; claims 1 and 5 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years of experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. (citing Ex. 1002 ¶¶ 50–51). Patent Owner “does not dispute Petitioner’s level of ordinary skill.” PO Resp. 17. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the disclosures of the ’641 patent and the prior art of record.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“constructions. First, we agree with Petitioner that the ’641 patent indicates that the charge cut-off voltage selected for a particular battery need not be a fixed property of the battery or something that is set by the design and chemistry of the battery. Consistent with this conclusion, the ’641 patent discloses that a “charging device controls the charge cut-off voltage of the single lithium-ion cell within a range from 4.3 V to 5.8 V.” Ex. 1001, 9:50– 55. This strongly suggests that the charge cut-off voltage is controlled by the charger and is not necessarily an inherent property of the battery. Patent Owner contends that this is merely an unclaimed embodiment, but the relevant disclosure states that the charging device for the “present invention” may be any type of device “with the proviso that said charging device controls the charge cut-off voltage.” Id. at 9:50–53.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“charge cut-off voltage “greater than 4.2 V but less than 5.8 V” and calculating a specific or theoretic capacity “with a charge cut-off voltage limited to 4.2” (claim 1) or “with a charge cut-off voltage set at 4.2 V” (claim 5). Ex. 1001, 16:56–61, 17:6–11. Although the parties dispute the precise scope of these claim terms, the parties agree that the first use of “charge cut-off voltage” in claims 1 and 5 refers to the potential of the battery as a whole (between the cathode and the anode), and not a half-cell voltage using lithium metal as a counter electrode.10 Tr. 17:1–3 (agreeing 10 With respect to the phrase “as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V,” the parties in fact appear to be in that the first use of “charge cut-off voltage” in claim 5 refers to a full-cell voltage); Sur-reply 5; PO Resp. 22. We need not further construe the claims to resolve the disputes between the parties. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 16
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Given Mr. Juzkow’s unambiguous testimony that Uemura uses constant current charging that would stop when the applied voltage reached 11 The chart is reproduced from SAFT, Charging your lithium-ion batteries: 5 expert tips for a longer lifespan, (https://www.saft.com/energizing-iot/charging-your-lithium-ion-batteries-5-expert-tips-longerlifespan#:~: text=When%20the%20battery%20provides%20current,This%20restore s%20the%20battery's%20capacity). 4.3 V, as well as Dr. Yao’s persuasive testimony that Uemura’s constant charging rate is not slow, we credit the testimony of Dr. Yao that one of ordinary skill in the art would have understood that the internal voltage to which the battery of Uemura was charged is less than 4.3 V. Ex. 2006 ¶ 119. In particular, Dr. Yao persuasively testifies that one of ordinary skill in the art would have believed that the charge cut-off voltage was no more than 4.2 V, and most likely equal to “about 4 V.” Id. ¶¶ 119–122. Petitioner argues that because the battery of Uemura is charged “to” a maximum voltage of 4.3 V, Uemura discloses the claimed charge cut-off voltage under either Petitioner’s or Patent Owner’s construction of the term. Pet. Reply 11–12 (citing Ex. 1009 ¶ 81; Ex. 1044 ¶¶ 56–59). This argument is not persuasive because Mr. Juzkow unambiguously testified that charging in Uemura stopped when the applied voltage reached 4.3 V, and Uemura discloses that the battery was charged “at” a voltage ranging from 4.3 V to 2.0 V, not “to” such a voltage. Ex. 1009 ¶ 81; Ex. 2008, 113:2–13; Ex. 2006 ¶ 119 n.64; Sur-reply 9. In view of the foregoing, we determine that Petitioner has not demonstrated by a preponderance of the evidence that Uemura anticipates independent claims 1 and 5 of the ’641 patent.” slip op. at 21
Patent outcomesUS 7,749,641 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,749,641 - Scentair Technologies, LLC v. Prolitec, Inc.Some claims unpatentablePTAB · Apr 22, 2022 · IPR2021-00014 · APJ Brian D Range · IPR · Final written decision
Claims 1–6, 8–14, 21, 24, and 25 are unpatentable as obvious; claims 7, 15–20, 22, and 23 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We determine that “toward” in the context of these claims means “in the direction of.” This definition is consistent with the ordinary dictionary definition that Patent Owner advances. Resp. 10; Ex. 2003, 3 (ordinary dictionary defining toward as “in the direction of” or, alternatively, as “along a course leading to”). Patent Owner argues that the ’976 patent describes embodiments supporting Patent Owner’s construction of “toward,” but directs us to no disclosure that requires “aiming.” To the contrary, the ’976 patent suggests that liquid moves “toward” something such as an end point so long as it advances along a path leading to the end point. Reply 1–4 (Petitioner collecting examples). For example, ’976 patent Figures 5 and 6 illustrate fluid taking a spiral flow pattern to outlet zone 174. The specification explains that the liquid takes a “curvilinear path . . . as it moves from the inlet 172 toward the outlet zone 174.” Ex. 1001, 10:50–55; see also Ex. 1015 ¶¶ 8–16 (Dr. Morse providing testimony regarding this and other ’976 patent embodiments). Thus, contrary to Patent Owner’s position, the specification uses the word “toward” to describe liquid that moves in the direction of the outlet––without reference to aiming––and even where the liquid’s movement encounters obstacles or otherwise fails to travel in a straight line to the outlet. We agree with Petitioner that “‘aimed’ is found nowhere in the intrinsic evidence and is contrary to the specification” of the ’976 patent. Reply 1. Further, Patent Owner’s own extrinsic evidence does not include the word “aimed” in the definition of “toward.” Ex. 2003, 3. Against that backdrop, for reasons stated above, we determine that “toward” in the context of the challenged claims means “in the direction of.”” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“least three years of experience working with, designing, or studying liquid diffusion devices or similar devices.” Pet. 14; Ex. 1003 ¶ 13. Patent Owner does not dispute that definition or advance an alternative definition. The prior art asserted in the Petition appears, on this record, as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). To the extent a more specific definition is required, we adopt Petitioner’s unopposed definition (Pet. 16) because it is consistent with the disclosures of the ’976 patent and the prior art references that form the basis for Petitioner’s challenges. See, e.g., Ex. 1001, 1:7–43 (abstract and overview of technical field of invention of the ’976 patent); Ex. 1004, code (57), ¶ 3 (abstract and background of Rosener’s invention); Ex. 1005, code (57), 1:1–13:12 (abstract and background of Rubin’s invention).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Based on the record before us, the preponderance of the evidence supports Petitioner’s position. King is concerned with delivering small particles to a patient: King states, for example, that an object of its invention is to “deliver to the patient essentially the same particle size distribution of the aerosol mist that originates from the nebulizer itself.” Ex. 1006 2:19–22; see also id. at [57] (stating that its apparatus delivers medication “in essentially the same particle size distribution of the aerosol mist”); 1:7–10 (stating that invention “delivers a mist of properly sized aerosol particles”); 1:60–65 (stating that invention “functions in a manner to assure that the medicament particles delivered to the patient will be of optimum size”). King states that in “this latest form of the invention this important baffle means comprises a generally spiral-shaped wall 100 (Fig. 20).” Id. at 6:20– 22. A person of ordinary skill in the art would have understood that design of the passage, through which aerosolized particles pass, will affect the size of output particles. Ex. 1003 ¶ 60; Ex. 1004 ¶ 27 (teaching that, for example, “tight bends” may be use to separate small airborne particles from big particles). We find that a person of ordinary skill in the art would have recognized that the spiral structure of King’s passage is an example of a “tight bend” (as referenced by Rosener) that can help control what size of particle progresses through the entire passage. Ex. 1006 6:16–22 (explaining that “this important baffle means comprises a generally spiral-shaped wall 100” and serves to “provid[e] a circuitous fluid flow path through the first chamber”)8; Ex. 1003 ¶¶ 56–61. A person of ordinary skill in the art’s use of a spiral structure, as taught by King, to further control particle size via tight bends, as taught by Rosener, would have been obvious because it would have been a “predictable use of a prior art elements according to their established function.” KSR Int’l, Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Rather than a spiral disrupting Rosener’s separation as Patent Owner argues, the combined teachings of Rosener and King suggest that King’s spiral would assist in achieving separation and particle size control (as Rosener and King teach). Dr. Morse’s testimony is credible in this regard and supports our findings and conclusion along with the references themselves. Ex. 1003 ¶¶ 54–56. Thus, for the reasons explained above, Petitioner has established by a preponderance of the evidence that the subject matter of claims 2 and 11 of the ’976 patent would have been obvious over Rosener in view of King.” slip op. at 24
- BurdenNot shown unpatentable
“Ultimately, to determine whether Rosener’s suggested tortuous passage is a structure capable performing the functionality of claims 7 and 16, we would need to determine that, because of Rosener’s tortuous passage, liquid would take more time to leak when the device is upended than if the tortuous passage was not present. The record before us, however, does not adequately support such a finding. Here again, the paucity of information provided by Petitioner, who bears the burden of showing unpatentability, tips against a conclusion that these claims are proven unpatentable. Although tight bends and corners might make the flow take longer to leak from the cartridge (as Petitioner urges at Reply 4–6), Petitioner does not establish that this is the case and, moreover, does not establish that it is not the case that the tight bends and corners might make the liquid take less time to leak from the cartridge. As Patent Owner argues, where a channel narrows in a direction of flow, a fluid’s speed may increase in accordance with Bernoulli’s principle. Sur-Reply 7–8.10 This principle is evidenced by the Svoboda reference, which explains that gas will travel faster through the “necked down portion 29” of its venturi tube. Ex. 1008, 4:4–8, Fig. 1, 2 (illustrating necked down portion 29). Accordingly, the record is unclear as to whether the tight bends and corners would speed up or slow down the flow of liquid from the cartridge. Additionally, Rosener does not refer to its tortuous passage as preventing leaking, and if the tortuous passage were capable of doing so, it is unclear why the valve would be necessary. See 10 The record also lacks evidence regarding to what extent other factors such as fluid viscosity, pressure differentials, and friction losses could potentially also affect flow speed. This lack of evidence, again, underscores Petitioner’s failure to meet its burden to show unpatentability of these claims. generally Ex. 1004; see also Ex. 2005 ¶ 68 (Dr. Mello’s written testimony on point). In any event, for reasons explained by Patent Owner, Petitioner’s analysis regarding the path and speed of liquid flow when Rosener’s device is upended is insufficient to support the unpatentability of claims 7 and 16 (Sur-Reply 1–18), at least because Petitioner fails to take account of leakage through orifice 401 or because of Rosener’s express need for a valve to provide for a device that “may be inverted without causing the fragrance oil to pour out” (id. at 12). See Ex. 1004 Fig. 2D (illustrating position of orifice 401), ¶ 33 (describing Rosener’s valve); see also Resp. 11–17 (Patent Owner’s arguments); Pet. 29–30, 33; Reply 4–6 (Petitioner’s analysis).” slip op. at 37
Patent outcomesUS 9,745,976 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,745,976 - Scentair Technologies, LLC v. Prolitec, Inc.Some claims unpatentablePTAB · Apr 22, 2022 · IPR2021-00012 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 5, 6, 8–10, 13–16, 18, and 22 are unpatentable as obvious; the Board did not find claims 1–4, 7, 11, 12, 17, 19–21, 23, and 24 unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“factual determination that provides a primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Petitioner asserts that a person of ordinary skill in the art “would typically have a bachelor’s degree in mechanical or chemical engineering as well as at least three years of experience working with, designing, or studying liquid diffusion devices or similar devices.” Pet. 16; Ex. 1003 ¶ 13. Patent Owner does not dispute that definition or advance an alternative definition. See Resp. 79 (repeating Petitioner’s definition). The prior art asserted in the Petition, on this record, is representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). To the extent a more specific definition is required, we adopt Petitioner’s unopposed definition (Pet. 16) because it is consistent with the disclosures of the ’004 patent and the prior art references that form the basis for Petitioner’s challenges. See, e.g., Ex. 1001, 1:7–43 (abstract and overview of technical field of invention of the ’004 patent); Ex. 1004, code (57), ¶ 3 (abstract and background of Rosener’s invention); Ex. 1005, code (57), 1:1–13:12 (abstract and background of Rubin’s invention).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We determine that “toward” in the context of these claims means “in the direction of.” Ex. 2003, 3. That definition is consistent with the dictionary definition advanced by Patent Owner. Resp. 7–11; Ex. 2003, 3 (ordinary dictionary defining toward as “in the direction of” or, alternatively, as “along a course leading to”). Patent Owner argues that the ’004 patent describes embodiments supporting Patent Owner’s construction of “toward,” but directs us to no disclosure that requires “aiming.” Id. To the contrary, the ’004 patent suggests that liquid moves “toward” something, such as an end point, so long as it advances along a path leading to the end point. Reply 1–4 (Petitioner collecting examples). For example, in the ’004 patent, Figures 5 and 6 illustrate fluid taking a spiral flow pattern to outlet zone 174. The specification explains that the liquid takes a “curvilinear path . . . as it moves from the inlet 172 toward the outlet zone 174.” Ex. 1001, 10:34–36; see Ex. 1015 ¶¶ 8–16 (Dr. Morse providing testimony regarding this and other ’004 patent embodiments). Thus, contrary to Patent Owner’s position, the specification uses the word “toward” to describe liquid that moves in the direction of the outlet––without reference to aiming––and even where the liquid’s movement encounters obstacles or otherwise fails to travel in a straight line to the outlet. We agree with Petitioner that “‘aimed’ is found nowhere in the intrinsic evidence and is contrary to the specification” of the ’004 patent. Reply 1. Further, Patent Owner’s own extrinsic evidence does not include the word “aimed” in the definition of “toward.” Ex. 2003, 3. Against that backdrop, for reasons stated above, we determine that “toward” in the context of the challenged claims means “in the direction of.”” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We recognize, in that regard, that a witness “must at minimum possess ordinary skill in the art” in order to opine about the level of skill in the art. Kyocera Secco Indus. Tools Inc. v. ITC, 22 F.4th 1369, 1377 (Fed. Cir. 2022). Dr. Morse has at least the qualifications of an ordinarily skilled artisan and is qualified to provide opinions as to what an ordinarily skilled artisan would have understood as of April 22, 2014. Based on Dr. Morse’s statement of qualifications and curriculum vitae, as well as his stated familiarity with the state of the prior art at the time of the invention, we find Petitioner has shown by a preponderance of the evidence that Dr. Morse is qualified to provide opinions keyed to the level of ordinary skill in the art at the time of the invention. Ex. 1003 ¶¶ 2–5, 9, 11, App’x pp. 69–73. In any event, to the extent we agree that Petitioner establishes unpatentability as explained above, the prior art references themselves are adequate for Petitioner’s showing of unpatentability even if we were to provide little or no weight to Dr. Morse’s testimony.” slip op. at 61
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“It is not clear, on this record, that guiding surfaces 10 are formed as spirals, as opposed to flat surfaces arranged to “project” and “extend[]” into the atomizing space in a helical pattern. Id.; see Resp. 37–38. Nor is it clear, on this record, how guiding surfaces 10 relate, if at all, to the formation of the transient airflow path defined by the “spiral vortex” described in Knoch, which forms only during normal operation of the device. Id. Knoch indicates that the spiral vortex is formed as a result of the placement and orientation of openings 2 and 3, and that “homogenization” of the aerosolized particles occurs, not via impaction with guiding surfaces 10, but rather, as a result of particles traveling a transient airflow path defined by the spiral vortex. Ex. 1006, Figs. 1, 2, 2:48–61, 3:10–4:25, 5:14–38, 5:56–63; see Pet. 31–32 (relying on “homogenization” that occurs when “vaporized liquid” traverses a transient airflow path defined by the “spiral vortex” in Knoch’s device) (quoting Ex. 1006, 3:26–29 5:28–32); see supra 44 n.13. To be clear, Knoch’s spiral vortex is a transient path of airflow that forms only during normal operation of the device, and Petitioner directs us to no persuasive information that Rosener employs any comparable approach “to perform the same functions within the same general structure.” Pet. 24. The lack of analysis provided in the Petition on that key point undermines this challenge. Id. at 23–25, 31–32; Reply 9–10 (totality of Petitioner’s information on that point); see supra 44 n.13. Even if we set aside that problem, however, we find, in the alternative, that Petitioner fails to explain adequately how or why Knoch would have suggested a tortuous passage (as opposed to a transient airflow path) that spirals between the inlet and outlet zone of Rosener’s insert. Without adequate analysis, Petitioner merely refers us to Figure 2E of Rosener, which shows a tortuous passage extending from inlet 401 to outlet zone 240, then directs us to guiding surfaces 10 illustrated in Knoch’s Figure 1. Pet. 31–32. The paucity of analysis provided in the Petition, particularly on the question of where, how, and why an ordinarily skilled artisan would have included a spiraling impaction surface extending from Rosener’s inlet 401 to outlet zone 240 in view of Knoch, persuades us that the proposed modification is driven, not by any suggestion in the prior art, but rather, by an impermissible hindsight reconstruction of the claimed invention. Id.; see Resp. 27–39 (Patent Owner’s arguments on that point). Petitioner does not establish that Knoch teaches a spiraling” slip op. at 45
Patent outcomesUS 9,162,004 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,162,004
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