• Mexichem Amanco Holdings S.A De C.V. v. Honeywell International, Inc.Some claims unpatentable
  PTAB · Dec 9, 2016 · IPR2015-01309 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1, 3, 5, 6, 10–13, 16, and 19 are unpatentable as obvious; claims 7–9, 14, and 15 were not shown unpatentable.

  RulingsFinal written decision

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

    “Petitioner and Patent Owner propose constructions for all, or a portion of, the term “Formula I, XCF3(I), where X is a C2 unsaturated, substituted, alkyl radical.” Pet. 17–19 (proposing a construction for the term “C2 unsaturated, substituted, alkyl radical”); PO Resp. 12–15. Neither party contends, however, that express construction of this claim term, or any other term in the ’808 patent, would impact any of Petitioner’s or Patent Owner’s arguments in this proceeding. Accordingly, we determine that no claim terms require construction for purposes of this Final Written Decision. See 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 7

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “art. Patent Owner, relying upon the testimony of Dr. Bivens, asserts that one of ordinary skill in the art would have had either: “(1) a bachelor of science degree in a specialty area (such as chemical engineering or chemistry) and five years of work experience in developing/testing refrigerants, blowing agents, and propellants, or (2) a Ph.D. or masters of science degree and 2-3 years of work experience.” PO Resp. 12 (citing Ex. 2034 ¶¶ 21–24). Patent Owner’s identification of a person of ordinary skill in the art is uncontroverted and is consistent with the prior art of record. Accordingly, we adopt Patent Owner’s identification for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect the level of ordinary skill in the art).” slip op. at 8

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

    “Accordingly, we are persuaded that: (1) Petitioner has identified where every limitation of claim 1 is disclosed or suggested in the combination of Kruse, Inagaki, and Butler; (2) Petitioner has set forth reasoned explanations supported by factual underpinnings to explain why one of ordinary skill in the art, prior to the earliest filing date of the ’808 patent, would have sought to combine Kruse, Inagaki, and Butler to achieve the invention set forth in claim 1 of the ’808 patent; and (3) Petitioner has set forth reasoned arguments, supported by record evidence, to show why a person of ordinary skill in the art would have had a reasonable expectation of success in combining Kruse, Inagaki, and Butler to achieve the composition of claim 1.” slip op. at 17

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “patent met a long-felt but unresolved need or were commercially successful, we have been directed to no persuasive evidence to demonstrate these propositions. See Graham, 383 U.S. at 17–18 (noting that “long felt but unsolved needs” and commercial success may be utilized as indicia of nonobviousness). Indeed, we have been directed to no persuasive evidence that a mixture of CO2 and a fluoroalkene of claim 1 has ever been used commercially, or that such a mixture was considered by those of ordinary skill in the art to have met a long felt but previously unresolved need.9, 10 See Tr. 51:24–52:7; Pet. Reply 9 (asserting that Patent Owner “has provided no evidence, post- or pre- issuance of the ’808 patent, of the commercial advantages or uses of the claimed compositions”). With respect to Petitioner’s prior patent applications, although Patent Owner initially characterizes these applications as relating to CO2 and partially fluorinated hydrocarbons, Patent Owner later notes that these patents are directed to blends of HFO-1234yf, CO2, and R-134a. PO Resp. 44; Ex. 2024, 12 (arguing in support of patentability that “[t]he specific 9 To be relevant, Patent Owner must show that the asserted secondary considerations are attributable to “the merits of the claimed invention beyond what was readily available in the prior art.” Asyst Techs. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008). Here, Inagaki discloses using compounds within the scope of claim 1 of the ’808 patent as refrigerants. Patent Owner presents no persuasive evidence that the addition of CO2 to the compounds of Inagaki, or the particular ranges recited in claim 1, resulted in a product that met a long felt but unresolved need or resulted in a commercially successful product beyond what was provided in Inagaki. Thus, we are also not persuaded that there is any nexus between the asserted secondary considerations and the features of claim 1 that are not disclosed in Inagaki. 10 As Patent Owner has not demonstrated any commercial use of the claim 1 compounds for any purpose, or provided evidence that those of skill in the art considered the claimed compounds to have met an unresolved need in the art, this analysis applies equally to the dependent claims of the ’808 patent, which each depend, directly or indirectly, from claim 1. combination of trans-R1234ze and R134a and CO2 simply is not suggested in Singh, let alone in the amounts defined in claim 1”). Patent Owner does not explain sufficiently why Petitioner’s arguments directed to the patentability of a blend of three compounds, utilized in specific proportions, are necessarily applicable to the combination of Kruse, Inagaki, and Butler proposed by Petitioner, or why these arguments are otherwise strong evidence of the nonobviousness of claim 1 of the ’808 patent. Based on the foregoing, and upon review of Patent Owner’s arguments as a whole, we are not persuaded that Patent Owner’s proffered objective evidence of nonobviousness is strong or tends to refute Petitioner’s arguments and evidence with respect to the obviousness of claim 1 of the ’808 patent.” slip op. at 25

  Patent outcomesUS 8,623,808 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,623,808
• Johnson Matthey Inc. / Johnson Matthey PLC v. BASF CorporationNo claims unpatentable
  PTAB · Nov 30, 2016 · IPR2015-01267 · APJ Jeffrey W Abraham · IPR · Final written decision

  Claims 1–7, 10–15, and 18–24 were not shown unpatentable under §103 because the evidence did not establish a reasonable expectation of success combining the references.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “occurs in Hüthwohl’s SCR-coated filter, we are not persuaded that Petitioner has shown, by a preponderance of the evidence, a reasonable expectation of successfully achieving the claimed invention, which requires substantial NOx reduction and integrated NOx and particulate removal while catalyzing the oxidation of soot using a specific type of SCR catalyst and wall flow filter having specific characteristics. As Patent Owner points out, Hüthwohl does not provide details regarding the SCR catalyst or the wall-flow filter used in its system. PO Resp. 36–37. In that regard, Dr. Harold characterized Hüthwohl as a “proof of concept” that would lead a person of ordinary skill in the art to conduct testing. PO Resp. 37; Ex. 2025, 205:5–9. Given the vague nature of Hüthwohl’s disclosure, we view Hüthwohl as simply providing incentive “to explore a new technology or general approach that seemed to be a promising field of experimentation,” and agree with Patent Owner that Hüthwohl, at best, provides “only general guidance as to the particular form of the claimed invention or how to achieve it.” Procter & Gamble, 566 F.3d at 997; PO Resp. 37. Thus, upon reviewing Hüthwohl, a person of ordinary skill in the art would still have had to identify an acceptable combination of an SCR catalyst and wall flow filter, decide how much SCR catalyst to apply to the filter, and determine if the wall flow filter coated with the SCR catalyst provided substantial NOx reduction and integrated NOx and particulate removal efficiency while also catalyzing the oxidation of soot.” slip op. at 30

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “We credit Dr. Crocker’s explanation of the competing reactions that can take place when an SCR catalyst using NH3 as a reductant is placed in an oxidizing environment, namely NH3 oxidation and the SCR reaction itself. Ex. 2013 ¶¶ 65–66. Dr. Harold considered these competing reactions to be complications (Ex. 2025, 116:8–14), stating that “whenever you combine two things together, you don’t really know what the outcome is going to be because of all the synergies and couplings” (id. at 117:6–21). Dr. Harold also testified that the only way to know how much of each reaction will occur is by “throwing everything together and measuring the outcome.” Id. As such, the evidence of record suggests that a person of ordinary skill in the art would not have known the result of introducing Speronello’s catalyst and NH3 into the highly oxidizing environment of any soot filter, but instead would have had to conduct testing to understand how such a system would perform. We view this as evidence of more than “some degree of unpredictability.” Pfizer, 480 F.3d at 1364.” slip op. at 31

  • ExcludeMotion to exclude, deniedNot reached

    “IV. MOTION TO EXCLUDE Patent Owner filed a Motion to Exclude paragraphs 26–30 of the Tennent Declaration. Paper 27, 1. We do not reach the merits of Patent Owner’s Motion because, as explained above, even if the disputed evidence is considered, Petitioner has failed to show by a preponderance of evidence that claims 1–7, 10–15, and 18–24 are unpatentable as obvious. Accordingly, Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 36

  Patent outcomesUS 9,032,709 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,032,709
• Johnson Matthey Inc. / Johnson Matthey PLC v. BASF CorporationNo claims unpatentable
  PTAB · Nov 30, 2016 · IPR2015-01265 · APJ Jeffrey W Abraham · IPR · Final written decision

  Petitioner failed to prove claims 1–27 unpatentable as obvious over Hüthwohl, Speronello, Hashimoto, and Teraoka because the record did not establish a reasonable expectation of success.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Ex. 1008, 7:30–41. Although Dr. Tennent states that “a specific catalyst composition known to work when applied to a flow-through substrate would be expected to work in a similar manner when applied to a wall-flow filter,” he does not provide any underlying facts or data to support this conclusion. Ex. 1003 ¶ 23. Pursuant to 37 C.F.R. § 42.65(a), such testimony is entitled to little or no weight. Dr. Tennent also fails to address whether this statement holds true when the flow through substrate and the wall flow substrate are subjected to distinct environmental conditions.” slip op. at 33

  • Skill levelSkill level board ownOther

    “Thus, at a minimum, the parties agree that a person of ordinary skill in the art would be a person with a bachelor’s degree in chemical engineering or a related field, and some experience or training in diesel exhaust systems. We find additional consistency between Petitioner’s position that a person of ordinary skill in the art would have at least three years of experience or training in researching, studying, designing, or manufacturing diesel exhaust treatment systems, and Patent Owner’s position that a person of ordinary skill in the art would have knowledge of certain “skills and beliefs as a result of his/her training and experience, and what was known in the art at the time of the BASF patents.” Accordingly, we hold that one of skill in the art would possess at least a bachelor’s degree in chemical engineering or a related discipline, and would have at least three years of experience or training in researching, studying, designing, or manufacturing diesel exhaust treatment systems. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 11

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

    “interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). In the Decision on Institution, 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. See 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 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “In this regard, even if a person of ordinary skill in the art would have been motivated to coat Hashimoto’s filter with Speronello’s catalyst for use in Hüthwohl’s system, we are not persuaded that Petitioner has shown by a preponderance of the evidence that a person of ordinary skill in the art would have had a reasonable expectation of successfully arriving at a coated filter that would provide integrated NOx and particulate removal efficiency, and act as a catalyst for the oxidation of soot, as required by the claims.” slip op. at 30

  Patent outcomesUS 8,899,023 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,899,023
• Johnson Matthey Inc. / Johnson Matthey PLC v. BASF CorporationNo claims unpatentable
  PTAB · Nov 30, 2016 · IPR2015-01266 · APJ Jeffrey W Abraham · IPR · Final written decision

  Claims 1–27 were not shown unpatentable under § 103 because the evidence did not establish a reasonable expectation of success in achieving the claimed combined filter and catalyst performance.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Thus, at a minimum, the parties agree that a person of ordinary skill in the art would be a person with a bachelor’s degree in chemical engineering or a related field, and some experience or training in diesel exhaust systems. We find additional consistency between Petitioner’s position that a person of ordinary skill in the art would have at least three years of experience or training in researching, studying, designing, or manufacturing diesel exhaust treatment systems, and Patent Owner’s position that a person of ordinary skill in the art would have knowledge of certain “skills and beliefs as a result of his/her training and experience, and what was known in the art at the time of the BASF patents.” Accordingly, we hold that one of skill in the art would possess at least a bachelor’s degree in chemical engineering or a related discipline, and would have at least three years of experience or training in researching, studying, designing, or manufacturing diesel exhaust treatment systems. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 11

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

    “interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). In the Decision on Institution, 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. See 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 8

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

    “reduction occurs in the SCR-coated filter, and Dr. Crocker cites no evidence to support a conclusion of zero SCR activity. Reply 10. It is Petitioner’s burden to prove that a person of ordinary skill in the art would have had a reasonable expectation that NOx reduction occurs on Hüthwohl’s SCR-coated filter. Petitioner provides no data supporting this contention, and Petitioner’s own declarant testified that the absence of NOx reduction “can’t be ruled out.” Ex. 2025, 196:11–197:6. Thus, although it appears that Hüthwohl intended for the volume of the SCR filter to be used for NOx reduction, the evidence of record does not establish, by a preponderance of evidence, that it actually occurred at that stage, or that a person of ordinary skill in the art would have had a reasonable expectation that it would. Nevertheless, even if we were to infer that some NOx reduction occurs in Hüthwohl’s SCR-coated filter, we are not persuaded that Petitioner has shown, by a preponderance of the evidence, a reasonable expectation of successfully achieving the claimed invention, which requires integrated NOx and particulate reduction while catalyzing the oxidation of soot using a specific type of SCR catalyst and wall flow filter having specific characteristics. As Patent Owner points out, Hüthwohl does not provide details regarding the SCR catalyst or the wall-flow filter used in its system. PO Resp. 36–37. In that regard, Dr. Harold characterized Hüthwohl as a “proof of concept” that would lead a person of ordinary skill in the art to conduct testing. PO Resp. 37; Ex. 2025, 205:5–9. Given the vague nature of Hüthwohl’s disclosure, we view Hüthwohl as simply providing incentive “to explore a new technology or general approach that seemed to be a promising field of experimentation,” and agree with Patent Owner that Hüthwohl, at best, provides “only general guidance as to the particular form of the claimed invention or how to achieve it.” Procter & Gamble, 566 F.3d at 997; PO Resp. 37. Thus, upon reviewing Hüthwohl, a person of ordinary skill in the art would still have had to identify an acceptable combination of an SCR catalyst and wall flow filter, decide how much SCR catalyst to apply to the filter, and determine if the wall flow filter coated with the SCR catalyst provided integrated NOx and particulate removal efficiency while also catalyzing the oxidation of soot.” slip op. at 29

  • ExcludeNot reached

    “Dr. Tennent’s Declaration. Paper 30, 1. We do not reach the merits of Patent Owner’s Motion because, as explained above, even if the disputed evidence is considered, Petitioner has failed to show by a preponderance of evidence that claims 1–27 are unpatentable as obvious. Accordingly, Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 35

  Patent outcomesUS 9,039,982 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,039,982
• Sony Corporation / Samsung Electronics, Co., Ltd. et al. v. Raytheon CompanyAll claims unpatentable
  PTAB · Nov 30, 2016 · IPR2016-00962 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 1–18 are unpatentable: claims 1–4, 6, 7, 10, and 11 as anticipated by Liu; claims 2–5, 8–10, and 11–18 as obvious over the stated combinations.

  RulingsFinal written decision

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

    “1. “furnishing” Patent Owner argues that the claims use the terms “furnishing” and “forming” to represent different steps of the claimed method. PO Resp. 13. According to Patent Owner, “furnishing” should be construed to mean “to supply or provide something that already exists.” Id. at 13 (emphasis added). Patent Owner cites to Webster’s Third New International Dictionary (1993), which defines “furnish” as “to provide or supply with what is needed.” PO Resp. 13; Ex. 2022, 6. Patent Owner asserts that “forming” should be construed to mean “to assemble or put together.” PO Resp. 13. We need not construe “forming” for purposes of this Decision, but provide Patent Owner’s argument as a comparison to its proposed construction of “furnishing.” Regarding the construction of “furnishing,” Petitioner argues that “the multi-layer substrates of the claims of the ‘678 [patent] always need to be manufactured,” at some point. Pet. Reply 4 (citing Ex. 1019 (deposition of Dr. Fitzgerald), 43:16–44:4). Even the first substrate as described in the Specification of the ’678 patent must be formed, in Patent Owner’s use of the word, at some point. See Ex. 1001, 4:2 (“[s]uch substrates can be purchased commercially,” where they must presumably be formed), 4:22–36 (discussing preparation of first substrate 40 “by applying well-known microelectronic techniques”); Pet. Reply 4–5. In other words, even in the ‘678 patent, there is a point in time before substrate 40 exists. Based on the evidence in the complete record now before us, we are not persuaded that the claimed “furnishing” step requires disclosure of the existence of a pre-existing three-layer substrate separate and apart from a disclosure that a three-layer substrate is being supplied for some intended purpose. No further express construction of furnishing is required for purposes of this Decision.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “3. “overlying” Patent Owner asserts that “overlying” should be construed to mean “lying on,” according to the Specification of the ’678 patent. PO Resp. 12– 13 (citing Ex. 1001, Fig. 1). Based on Patent Owner’s arguments attempting to distinguish the claims from the cited references, we understand Patent Owner to mean that one layer “overlying” another layer requires direct contact with the layer upon which it overlies. See id. at 23–24. In its Reply, Petitioner argues that “‘overlying’ simply means ‘lying over’—it does not require direct contact.” Pet. Reply 10. We agree that the plain and ordinary meaning of overlie does not include a requirement of direct contact. See Overlie Definition, MERRIAM-WEBSTER.COM, http://www.merriam-webster.com/dictionary/overlie (last visited Nov. 21, 2016) (defining “overlie” as “to lie over or upon”). Accordingly, we construe overlying, in accordance with its plain and ordinary meaning, as lying over or upon.” slip op. at 11

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

    “Based on our construction of “furnishing,” discussed above (see supra section II.A.1), we are not persuaded that the only substrate that is furnished in Liu is that shown in Figure 2A, as asserted by Patent Owner. In mapping Liu to the claims, Petitioner relies on Figure 2B as disclosing the claimed furnished substrate. Pet. 21–22. Whether Figure 2A includes a single layer or multiple layers is, thus, irrelevant in determining if Liu anticipates the claims. In addition, whether Liu describes steps prior to the configuration of Figure 2B also is irrelevant to whether it is furnished or not, within the meaning of the claims. Further, regardless of the words Liu uses to describe the layers of its device, Liu can still anticipate the claims if it discloses each and every limitation therein. In re Gleave, 560 F.3d at 1334 (“[A] reference need not satisfy an ipsissimis verbis test.”). We agree with Petitioner’s mapping of the layers of Figure 2B of Liu to the substrate in the furnishing step of claim 1. As discussed above, substrate 18 of Liu is etched away using a selective etchant that removes substrate 18 without removing window layer 4, thus these layers disclose an etchable layer and etch-stop layer respectively. See Ex. 1003, 3:65–4:19, 4:53–58, Figs. 2F, 2G. Further, we are persuaded that absorber and channel layers 6, 8 disclose a wafer, as discussed in more detail below.” slip op. at 16

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

    “Patent Owner argues that one of skill in the art would not combine Liu and Black because Liu involves a light sensor, while Black involves a pressure sensor, and, thus, the references are non-analogous art. PO Resp. 33–34. We agree with Petitioner, however, that both Liu and Black are in the more general field of “microelectronic devices,” the same field as the ’678 patent, and are, thus, analogous art. Pet. Reply 14–16 (citing Ex. 1001, 1:11 (“This invention relates to microelectronic devices.”); Ex. 1019, 49:9–19 (Dr. Fitzgerald confirming the relevant art is microelectronic processing); Ex. 1003, 1:11–22; Ex. 1007, 1:7–10, 2:39–42); see also Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (“The Supreme Court’s decision in KSR . . . directs us to construe the scope of analogous art broadly.”). Patent Owner also argues that the resulting device of Petitioner’s combination would be inoperable, and, thus, there is no motivation to combine the references. PO Resp. 34–35. Specifically, Patent Owner argues that Black’s pressure sensor “must have a structurally-compromised layer that can bend under pressure,” and a person of ordinary skill “would not combine Black with Liu because it results in a structure that would break during manufacture.” Id. (citing Ex. 2001 ¶¶ 112–114; Ex. 1007, 3:58–60). Petitioner, however, does not argue that Black’s structure must be bodily incorporated into Liu. See Pet. Reply 16. Instead, Petitioner relies on Black to “show the known use of patterning to form contacts through an etch-stop layer, inward from the edge of the layer, and directly to a relevant microelectronic circuit element.” Id. (citing Pet. 33–34). We agree with Petitioner that the “use of [such] patterning does not require that Black’s flexible layer be incorporated into Liu.” Id.; see also In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” (citing In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (noting that the criterion for obviousness is not whether the references can be combined physically, but whether the claimed invention is rendered obvious by the teachings of the prior art as a whole))).” slip op. at 26

  Patent outcomesUS 5,591,678 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,591,678
• Sony Corporation / Samsung Electronics, Co., Ltd. et al. v. Raytheon CompanyAll claims unpatentable
  PTAB · Nov 30, 2016 · IPR2016-00209 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 1–18 are unpatentable: claims 1–4, 6, 7, 10, and 11 as anticipated by Liu; the remaining claims as obvious over the stated combinations.

  RulingsFinal written decision

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

    “The parties’ dispute requires construction of several terms, which we address below. No issue in this Decision requires express construction of any other claim terms. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “3. “overlying” Patent Owner asserts that “overlying” should be construed to mean “lying on,” according to the Specification of the ’678 patent. PO Resp. 12– 13 (citing Ex. 1001, Fig. 1). Based on Patent Owner’s arguments attempting to distinguish the claims from the cited references, we understand Patent Owner to mean that one layer “overlying” another layer requires direct contact with the layer upon which it overlies. See id. at 23–24. In its Reply, Petitioner argues that “‘overlying’ simply means ‘lying over’—it does not require direct contact.” Pet. Reply 10. We agree that the plain and ordinary meaning of overlie does not include a requirement of direct contact. See Overlie Definition, MERRIAM-WEBSTER.COM, http://www.merriam-webster.com/dictionary/overlie (last visited Nov. 21, 2016) (defining “overlie” as “to lie over or upon”). Accordingly, we construe overlying, in accordance with its plain and ordinary meaning, as lying over or upon.” slip op. at 11

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

    “device, Liu can still anticipate the claims if it discloses each and every limitation therein. In re Gleave, 560 F.3d at 1334 (“[A] reference need not satisfy an ipsissimis verbis test.”). We agree with Petitioner’s mapping of the layers of Figure 2B of Liu to the substrate in the furnishing step of claim 1. As discussed above, substrate 18 of Liu is etched away using a selective etchant that removes substrate 18 without removing window layer 4, thus these layers disclose an etchable layer and etch-stop layer respectively. See Ex. 1003, 3:65–4:19, 4:53–58, Figs. 2F, 2G. Further, we are persuaded that absorber and channel layers 6, 8 disclose a wafer, as discussed in more detail below. “wafer” Patent Owner argues that Liu does not disclose a “wafer,” as claimed. PO Resp. 20–23. According to Patent Owner, “Liu refers to its entire device as its multi-layered wafer, which is inconsistent with the ’678 Patent’s use of the term as a single portion of material.” Id. at 20. Again, however, regardless of the particular language used in Liu, Liu can still anticipate the claims if it discloses each and every limitation therein. See In re Gleave, 560 F.3d at 1334 (“[A] reference need not satisfy an ipsissimis verbis test.”).” slip op. at 17

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

    “Patent Owner argues that one of skill in the art would not combine Liu and Black because Liu involves a light sensor, while Black involves a pressure sensor, and, thus, the references are non-analogous art. PO Resp. 33–34. We agree with Petitioner, however, that both Liu and Black are in the more general field of “microelectronic devices,” the same field as the ’678 patent, and are, thus, analogous art. Pet. Reply 14–16 (citing Ex. 1001, 1:11 (“This invention relates to microelectronic devices.”); Ex. 1019, 49:9–19 (Dr. Fitzgerald confirming the relevant art is microelectronic processing); Ex. 1003, 1:11–22; Ex. 1007, 1:7–10, 2:39–42); see also Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (“The Supreme Court’s decision in KSR . . . directs us to construe the scope of analogous art broadly.”).” slip op. at 26

  Patent outcomesUS 5,591,678 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,591,678
• Hilti, Inc. / Snap-On Incorporated v. Milwaukee Electric Tool CorporationNo claims unpatentable
  PTAB · Nov 14, 2016 · IPR2016-00343 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–11 were not shown unpatentable under § 103 over Takano and Yanai because the proposed combinations and calculations lacked adequate support and relied on hindsight.

  RulingsFinal written decision

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

    “Takano, however, discloses a battery having a plurality of cells connected in series. Ex. 1072 ¶¶ 4, 11, 26. Although we do not question that connecting battery cells in series and/or parallel is known generally in the art, Petitioner does not provide adequate specific reasoning as to why one of ordinary skill in the art would have been led to modify Takano to connect cells in parallel when Takano clearly discloses a series connection. Dr. Abraham’s testimony that the type of connection would be chosen “as needed to provide whatever target voltage and amperage is desired for a particular application,” by itself, does not provide a sufficient reason to modify Takano’s series connection. Petitioner does not explain how the prior art discloses a desired voltage or amperage that would cause one of ordinary skill in the art to modify Takano in the manner proposed. In this case, the only teaching of a desired amperage comes from the ’290 patent itself. Furthermore, Dr. Abraham’s reliance on the disclosure at column 5, lines 57–61, of the ’290 patent as supporting the alleged obviousness of combining two cells in parallel is improper. This passage of the ’290 patent describes alternative configurations of the patentees’ own invention; it is not describing prior art. Relying on knowledge gleaned only from the challenged patent’s disclosure is impermissible hindsight. Cf. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (As long as a judgment on obviousness “takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.”).” slip op. at 18

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

    “Furthermore, Petitioner’s obviousness analysis relies on (1) selecting an 18650-size or 26650-size cell; (2) estimating the positive electrode surface area to be 540 cm2; (3) selecting a foil thickness of 15 micrometers; (4) selecting an average discharge voltage of 3.6 volts; and (5) for 18650-size cells, connecting two in parallel. Petitioner fails to point out how the prior art indicates that using all of these particular values in combination would be desirable for a lithium-based battery pack when several other possible values could have been selected. Where “‘the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful,’ courts should reject ‘hindsight claims of obviousness.’” In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1070–71 (Fed. Cir. 2012) (quoting In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009)). Accordingly, we agree with Patent Owner that Petitioner’s obviousness analysis relies on impermissible hindsight.” slip op. at 20

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Third, we agree with Patent Owner that Petitioner’s argument that “three Yanai-based 18650 cells in parallel” would satisfy the 20 Amp Limitation is a new argument. Paper 60, 2. In our view, this argument does more than merely address Patent Owner’s argument regarding Dr. Abraham’s addition error. Rather, by relying on three cells instead of two, Petitioner attempts to provide a new theory as to why the combination of Takano and Yanai renders the challenged claims obvious that was not set forth clearly in the Petition. Because Petitioner waited until the Reply to make this argument, Patent Owner did not have an opportunity to respond to Petitioner’s new argument. We thus decline to consider Petitioner’s new argument as it is an improper reply. Furthermore, Petitioner’s assertion that Patent Owner made no attempt to explain why using three cells would have been just as obvious as using two cells is an improper attempt to shift the burden of proof with respect to obviousness to Patent Owner.” slip op. at 17

  • Expert testimonyPetitioner expert discountedDecided for patent owner

  Patent outcomesUS 7,554,290 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 7,554,290
• Hilti, Inc. / Snap-On Incorporated v. Milwaukee Electric Tool CorporationNo claims unpatentable
  PTAB · Nov 14, 2016 · IPR2016-00344 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–13 were not shown unpatentable over Takano and Yanai under §103 because Petitioner’s evidence did not establish the 20 Amp Limitation without unsupported assumptions and hindsight.

  RulingsFinal written decision

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

    “Takano, however, discloses a battery having a plurality of cells connected in series. Ex. 1072 ¶¶ 4, 11, 26. Although we do not question that connecting battery cells in series and/or parallel is known generally in the art, Petitioner does not provide adequate specific reasoning as to why one of ordinary skill in the art would have been led to modify Takano to connect cells in parallel when Takano clearly discloses a series connection. Dr. Abraham’s testimony that the type of connection would be chosen “as needed to provide whatever target voltage and amperage is desired for a particular application,” by itself, does not provide a sufficient reason to modify Takano’s series connection. Petitioner does not explain how the prior art discloses a desired voltage or amperage that would cause one of ordinary skill in the art to modify Takano in the manner proposed. In this case, the only teaching of a desired amperage comes from the ’173 patent itself. Furthermore, Dr. Abraham’s reliance on the disclosure at column 5, lines 59–63, of the ’173 patent as supporting the alleged obviousness of combining two cells in parallel is improper. This passage of the ’173 patent describes alternative configurations of the patentees’ own invention; it is not describing prior art. Relying on knowledge gleaned only from the challenged patent’s disclosure is impermissible hindsight. Cf. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (As long as a judgment on obviousness “takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.”).” slip op. at 18

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

    “18650-size and 26650-size cells is flawed and thus fails to support Petitioner’s assertion that claim 1 would have been obvious over the combination of Takano and Yanai. Furthermore, Petitioner’s obviousness analysis relies on (1) selecting an 18650-size or 26650-size cell; (2) estimating the positive electrode surface area to be 540 cm2; (3) selecting a foil thickness of 15 micrometers; (4) selecting an average discharge voltage of 3.6 volts; and (5) for 18650-size cells, connecting two in parallel. Petitioner fails to point out how the prior art indicates that using all of these particular values in combination would be desirable for a lithium-based battery pack when several other possible values could have been selected. Where “‘the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful,’ courts should reject ‘hindsight claims of obviousness.’” In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1070–71 (Fed. Cir. 2012) (quoting In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009)). Accordingly, we agree with Patent Owner that Petitioner’s obviousness analysis relies on impermissible hindsight.” slip op. at 21

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “e) Secondary Considerations Patent Owner argues that “[n]umerous secondary considerations strongly favor the patentability of the challenged claims.” PO Resp. 26–59. Because we are not persuaded Petitioner has demonstrated sufficiently that the combination of Takano and Yanai render claim 1 obvious, we need not reach Patent Owner’s assertions regarding secondary considerations.” slip op. at 23

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Third, we agree with Patent Owner that Petitioner’s argument that “three Yanai-based 18650 cells in parallel” would satisfy the 20 Amp Limitation is a new argument. Paper 62, 2. In our view, this argument does more than merely address Patent Owner’s argument regarding Dr. Abraham’s addition error. Rather, by relying on three cells instead of two, Petitioner attempts to provide a new theory as to why the combination of Takano and Yanai renders the challenged claims obvious that was not set forth clearly in the Petition. Because Petitioner waited until the Reply to make this argument, Patent Owner did not have an opportunity to respond to Petitioner’s new argument. We thus decline to consider Petitioner’s new argument as it is an improper reply. Furthermore, Petitioner’s assertion that Patent Owner made no attempt to explain why using three cells would have been just as obvious as using two cells is an improper attempt to shift the burden of proof with respect to obviousness to Patent Owner.” slip op. at 17

  Patent outcomesUS 7,944,173 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 7,944,173
• Hilti, Inc. / Snap-On Incorporated v. Milwaukee Electric Tool CorporationNo claims unpatentable
  PTAB · Nov 14, 2016 · IPR2016-00345 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–19 were not shown unpatentable under § 103 over Takano and Yanai because Petitioner’s evidence did not establish the 20 Amp Limitation without unsupported assumptions and hindsight.

  RulingsFinal written decision

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

    “example 2 is described as having a positive electrode surface area of 6,700 cm2 (id. ¶ 40). This wide variance in the surface areas disclosed by Adachi suggests that the working examples are specific embodiments and not indicative of “common knowledge” in the field. Moreover, we are not persuaded that the range of 400– 680 cm2 is an industry standard surface area for 18650-size cells or that one of ordinary skill in the art necessarily would consider a value in this range to be a typical or likely choice of surface area for any 18650-size cell. Accordingly, the only basis to assert that it would have been obvious to select a positive electrode surface area of 540 cm2 for Yanai’s cell 1-4 would be to rely on the disclosure of Adachi; that is, to assert that it would have been obvious to one of ordinary skill in the art to modify the combination of Takano and Yanai with the teaching of Adachi. Petitioner, however, has repeatedly argued that this is not what it proposes. Reply 3; Tr. 22:22–23:4. Furthermore, we agree with Patent Owner that the Petition does not provide an adequate reason to combine Adachi with Takano and Yanai.” slip op. at 14

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

    “Takano, however, discloses a battery having a plurality of cells connected in series. Ex. 1072 ¶¶ 4, 11, 26. Although we do not question that connecting battery cells in series and/or parallel is known generally in the art, Petitioner does not provide adequate specific reasoning as to why one of ordinary skill in the art would have been led to modify Takano to connect cells in parallel when Takano clearly discloses a series connection. Dr. Abraham’s testimony that the type of connection would be chosen “as needed to provide whatever target voltage and amperage is desired for a particular application,” by itself, does not provide a sufficient reason to modify Takano’s series connection. Petitioner does not explain how the prior art discloses a desired voltage or amperage that would cause one of ordinary skill in the art to modify Takano in the manner proposed. In this case, the only teaching of a desired amperage comes from the ’510 patent itself. Furthermore, Dr. Abraham’s reliance on the disclosure at column 5, lines 61–65, of the ’510 patent as supporting the alleged obviousness of combining two cells in parallel is improper. This passage of the ’510 patent describes alternative configurations of the patentees’ own invention; it is not describing prior art. Relying on knowledge gleaned only from the challenged patent’s disclosure is impermissible hindsight. Cf. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (As long as a judgment on obviousness “takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.”).” slip op. at 18

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

    “Furthermore, Petitioner’s obviousness analysis relies on (1) selecting an 18650-size or 26650-size cell; (2) estimating the positive electrode surface area to be 540 cm2; (3) selecting a foil thickness of 15 micrometers; (4) selecting an average discharge voltage of 3.6 volts; and (5) for 18650-size cells, connecting two in parallel. Petitioner fails to point out how the prior art indicates that using all of these particular values in combination would be desirable for a lithium-based battery pack when several other possible values could have been selected. Where “‘the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful,’ courts should reject ‘hindsight claims of obviousness.’” In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1070–71 (Fed. Cir. 2012) (quoting In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009)). Accordingly, we agree with Patent Owner that Petitioner’s obviousness analysis relies on impermissible hindsight.” slip op. at 20

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Third, we agree with Patent Owner that Petitioner’s argument that “three Yanai-based 18650 cells in parallel” would satisfy the 20 Amp Limitation is a new argument. Paper 59, 2. In our view, this argument does more than merely address Patent Owner’s argument regarding Dr. Abraham’s addition error. Rather, by relying on three cells instead of two, Petitioner attempts to provide a new theory as to why the combination of Takano and Yanai renders the challenged claims obvious that was not set forth clearly in the Petition. Because Petitioner waited until the Reply to make this argument, Patent Owner did not have an opportunity to respond to Petitioner’s new argument. We thus decline to consider Petitioner’s new argument as it is an improper reply. Furthermore, Petitioner’s assertion that Patent Owner made no attempt to explain why using three cells would have been just as obvious as using two cells is an improper attempt to shift the burden of proof with respect to obviousness to Patent Owner.” slip op. at 17

  Patent outcomesUS 7,999,510 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 7,999,510
• Hilti, Inc. / Snap-On Incorporated v. Milwaukee Electric Tool CorporationNo claims unpatentable
  PTAB · Nov 14, 2016 · IPR2015-01166 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–19 were not shown unpatentable under § 103 over Takano and Yanai because the proposed combination relied on unsupported assumptions and impermissible hindsight.

  RulingsFinal written decision

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

    “After institution, Snap-On Incorporated (“Snap-On”) filed a Petition and a Motion for Joinder to this proceeding. IPR2016-00345, Papers 2, 3. We granted the Motion for Joinder, and IPR2016-00345 was joined with IPR2015-01166 and terminated. Paper 24, 6. Consequently, Hilti and Snap-On (collectively, “Petitioner”) are joined in this proceeding.” slip op. at 2

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

    “We construed three claim terms in our Decision to Institute: (1) “hand held power tool,” (2) “battery cells being capable of producing an average discharge current greater than or equal to approximately 20 amps,” and (3) “nominal voltage.” Inst. Dec. 6–12. Neither party has indicated that the interpretations for those phrases were improper, and we do not perceive any reason or evidence that now compels any deviation from our initial determinations. Accordingly, the following interpretations are not in dispute and apply to this Decision:” slip op. at 6

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

    “select a positive electrode surface area of 540 cm2 for Yanai’s cell 1-4 would be to rely on the disclosure of Adachi; that is, to assert that it would have been obvious to one of ordinary skill in the art to modify the combination of Takano and Yanai with the teaching of Adachi. Petitioner, however, has repeatedly argued that this is not what it proposes. Reply 3; Tr. 22:22–23:4. Furthermore, we agree with Patent Owner that the Petition does not provide an adequate reason to combine Adachi with Takano and Yanai.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableDecided for patent owner

    “Furthermore, Petitioner’s obviousness analysis relies on (1) selecting an 18650-size or 26650-size cell; (2) estimating the positive electrode surface area to be 540 cm2; (3) selecting a foil thickness of 15 micrometers; (4) selecting an average discharge voltage of 3.6 volts; and (5) for 18650-size cells, connecting two in parallel. Petitioner fails to point out how the prior art indicates that using all of these particular values in combination would be desirable for a lithium-based battery pack when several other possible values could have been selected. Where “‘the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful,’ courts should reject ‘hindsight claims of obviousness.’” In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1070–71 (Fed. Cir. 2012) (quoting In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009)). Accordingly, we agree with Patent Owner that Petitioner’s obviousness analysis relies on impermissible hindsight.” slip op. at 20

  Patent outcomesUS 7,999,510 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 7,999,510

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.