- Saudi Arabian Oil Company v. SK Innovation Co., Ltd.All claims unpatentablePTAB · May 9, 2019 · IPR2018-00159 · APJ Monté T Squire · IPR · Final written decision
Claim 2 was held unpatentable as anticipated by Novomer 1; the contingent motion to amend was granted, substituting claim 5.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we granted Petitioner’s request and instituted an inter partes review for challenged claim 2. Paper 9 (“Institution Dec.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner agrees with Petitioner’s assessment regarding the level of ordinary skill in the art. Mot. Amend 7. We determine the level of ordinary skill proposed by Petitioner is consistent with the ’979 patent and the asserted prior art, and we adopt that level in construing and deciding the patentability of claim 2.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Institution Decision, we determined that the phrase “A poly(alkylene carbonate) represented by Formula 10” did not require construction at that stage. Institution Dec. 9; see also id. at 7 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms which are in controversy need be construed and only to the extent necessary to resolve the controversy)). Neither party has argued post-institution that this phrase of claim 2 needs be construed. See PO Resp. 2; Pet. Reply 1–3. We conclude that no further construction of this phrase is necessary.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“In the Institution Decision, we agreed with Petitioner that the variable construction of the phrase “each independently” is the broadest reasonable interpretation in light of the specification, and construed the phrase to mean that “each variable R81, R82, R83, and R84 is independent from one instance to another throughout the polymer.” Institution Dec. 13–14. Based on that construction, we also determined in the Institution Decision that claim 2 encompasses the following genera: (1) “Genus A,” which includes a poly(ethylene glycol) chain transfer agent flanked by poly(ethylene carbonate) chains (Pet. 24); (2) “Genus B,” which includes a poly(propylene glycol) chain transfer agent flanked by poly(propylene carbonate) chains (id. at 25–26); (3) “Genus C,” which includes a poly(propylene glycol) chain transfer agent flanked by poly(ethylene carbonate) chains (id. at 26); and (4) “Genus D,” which includes a poly(ethylene glycol) chain transfer agent flanked by poly(propylene carbonate) chains (id. at 27). Institution Dec. 12–13. Neither party opposes adopting the variable construction of the phrase “each independently” and the determination that, under the variable construction, claim 2 encompasses Genus A, Genus B, Genus C, and Genus D. PO Resp. 2; Pet. Reply 1–3. We maintain the variable construction of the phrase “each independently” on the complete record.” slip op. at 11
Patent outcomesUS 9,023,979 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,023,979 - Husky Injection Molding Systems Ltd. / Husky Injection Molding Systems, Inc. v. Plastics Engineering & Technical Services, Inc.All claims unpatentablePTAB · Jun 15, 2017 · IPR2016-00431 · APJ Jeffrey W Abraham · IPR · Final written decision
Claims 1–22 are unpatentable as obvious over Moss and Erhart because the combination teaches their limitations and a skilled artisan would have had reason to combine the references.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ dispute regarding the level of ordinary skill comes down to whether the hypothetical person of ordinary skill must have specific “experience designing and operating injection molding equipment using hot runners.” See id. at 25–26. While we agree with Patent Owner that one of skill in the art will have some familiarity or experience in valve gate assemblies for injection molding machines, we are not persuaded by Patent Owner’s assertion that the relevant art should be defined so narrowly as to specifically require significant experience designing and operating injection molding machines. Patent Owner presents no evidence that the design of injection molding machines is particularly specialized and beyond the skill of a mechanical engineer. Thus, we disagree with Patent Owner and decline to insert any specific amount of experience with, or specialized knowledge of, injection molding machines into the definition of one of ordinary skill in the art at the time of the invention.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner argues that Dr. Slocum fails to adequately establish his familiarity with injection molding machines, molding processes, or computer controlled motion of injection molding equipment, and “tries to draw the Board’s focus away from injection molding machines to a more generic or academic subject matter that he deems himself qualified to give an opinion.” PO Resp. 20–21, 25–26. During the oral hearing, Patent Owner, referring to Dr. Slocum’s cross-examination testimony, argued that Dr. Slocum does not, in fact, have injection molding experience. Tr. 43:17– 44:1; see Mot. for Obs. 10–11 (citing Ex. 2006, 35:15–36:15, 121:10– 122:24). Dr. Slocum, however, expressly testified that he had designed injection molding devices, made molds used for injection molding, and run injection molding machines in the lab at the Massachusetts Institute of Technology (“MIT”). Ex. 1004 ¶ 5; Ex. 2006, 31:1–4, 36:1–5; see Pet. Resp. 14–15. Based on the evidence before us, we find that Dr. Slocum has sufficient familiarity with injection molding machines. Further, as discussed above, we are not persuaded that the level of ordinary skill requires any specific amount of experience with, or specialized knowledge of, injection molding machines.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“B. 35 U.S.C. § 325(d) Patent Owner argues that, because Moss and Erhart were considered during prosecution of the application leading to the ’436 patent, we should exercise our discretion under 35 U.S.C. § 325(d) to deny institution of inter partes review. PO Resp. 9–12. “In determining whether to institute or order a proceeding,” the Director “may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). As we have already decided to institute a proceeding, Patent Owner’s § 325(d) argument is moot. See id. Even if we were to review the substance of the § 325(d) argument, however, for the reasons set forth in the Institution Decision we would not be persuaded to exercise our discretion in this case as there is insufficient evidence that the combination of Erhart and Moss was ever considered by the Examiner or applied in any rejection of the claims. Dec. on Inst. 8–9.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“D. The Instituted Ground of Unpatentability We instituted trial based on the ground that claims 1–22 are unpatentable under 35 U.S.C. § 103(a) over Moss1 and Erhart.2 Dec. on Inst. 25.” slip op. at 8
Patent outcomesUS 7,588,436 unpatentable§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,588,436
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.