- PTAB · Feb 25, 2025 · IPR2024-01296 · APJ Amee A Shah · IPR · Institution
The Board instituted IPR of claims 1–46 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. In particular, we determine that factors 1 and 5 are neutral, factors 2 and 3 weigh against denial, and factor 4 is of institution, does not outweigh factors 1–3 and 5. As a result, we need not and, therefore, do not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Fintiv Determination The balance of all Fintiv factors do not favor the exercise of our discretionary powers to deny institution. Therefore, we determine that discretionary denial is not appropriate in this case.” slip op. at 20
- Parallel petitionsDenied
“B. 35 U.S.C. § 314(A) – PARALLEL PETITION The Petition seeks inter partes review of the same claims of the ’380 patent that Petitioner previously requested review of in IPR2024-00953. Pet. 1. Patent Owner argues that the Petition should be discretionarily denied under § 314(a) for failure to show good cause for a second petition. Prelim. Resp. 67–73. The Board denied institution in IPR2024-00953, exercising discretion under § 314(a) based on the existence of the petition in this proceeding. IPR2024-00953, Paper 18. We thus decline to deny institution based on a parallel petition.” slip op. at 21
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“However, we find that Fang is not cumulative of the art considered by the Examiner in prosecution. Further, Patent Owner does not direct attention to, and we do not see, how or where the Examiner considered Khalil for teaching removing the air line for directly connecting the external pump to connecting a pump housing to a diaphragm housing” (POPR 50), the Examiner specifically found that Khalil did not teach the diaphragm housing being fixed to a recessed surface of the pump housing (Ex. 1002, 24), for which Petitioner relies on Fang (Pet. 37). And we note that Petitioner relies on Fang for the element the Examiner found was not taught by the prior art, including Khalil. Ex. 1002, 24; Pet. 37. Accordingly, we determine that discretionary denial is not warranted because the asserted combinations, all of which include Fang, were not previously presented to the Office. Because we determine that part one of the framework is not satisfied, we need not, and therefore do not, turn to part two of the analysis, which concerns whether Petitioner demonstrates that the Office erred in a manner material to the patentability of the challenged claims. 5. Conclusion Regarding Discretionary Denial under § 325(d) The Advanced Bionics framework “reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Advanced Bionics, IPR2019-01469, Paper 6 at 9. Under the present circumstances, we determine that the same or substantially the same prior art combinations or arguments were not previously presented to the Office. Accordingly, we decline to exercise our discretion to deny institution under § 325(d).” slip op. at 27
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the foregoing reasons, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the claims challenged in the Petition. Accordingly, inter partes review of the ’380 patent shall proceed in this case on all of the grounds raised in the Petition. See SAS, 138 S. Ct. at 1359–60; PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018).” slip op. at 65
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,413,380 - SNF S.A. v. Chevron U.S.A., Inc.No claims unpatentablePTAB · Apr 18, 2024 · IPR2022-01534 · APJ Barry L Grossman · IPR · Final written decision
Claims 1–25 were not shown unpatentable on any asserted ground because the evidence failed to establish the claimed filter ratio or support the proposed combinations.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“In our Decision to Institute this proceeding, we adopted Dr. Barati’s proposed level of skill based on the prior art, the sophistication of the technology disclosed in the ’320 patent, and Dr. Barati’s opinion testimony. Dec. Inst. 17 (“we adopt Dr. Barati’s definition of the level of ordinary skill”). Patent Owner states it “does not dispute the level of skill applied by the Board in its institution decision.” PO Resp. 7. Accordingly, in this Decision, based on the evidence and the arguments of the parties, we maintain and adopt the level of ordinary skill stated in the Decision to Institute. In this proceeding, a person of ordinary skill would have had a Ph.D. in Chemical or Petroleum Engineering (or related science or engineering discipline) with 2-3 years of experience in the design and implementation of methods for hydrocarbon recovery including use of polymer compositions in such recovery methods. Alternatively, a person of ordinary skill might substitute several years of actual design or implementation experience for the advanced degree. See Ex. 1012 ¶ 18.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (citations omitted)). We determine that a specific construction of the claims is not necessary to reach a decision in this inter partes review of the challenged claims.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. [Citations omitted.] If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the 17 Again, to avoid confusion, this citation format is to page 15 of Exhibit C, which is an attachment to Exhibit 1012 in this proceeding. questioned function, it seems to be well settled that the disclosure should be regarded as sufficient. Id. at 1260 (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner fails to provide any persuasive evidence or argument that claims 1, 2, 13–15, and 20–25 would have been obvious in view of Li. As discussed above, anticipation and obviousness are different grounds, requiring different analyses, and different evidence. Petitioner fails to establish what modifications in Li would have been obvious and why it would have been obvious to make the modifications with a reasonable expectation of success. The word “obvious” appears in Ground 1 only in the analysis of claim 24, clause D, on page 37 of the Petition, where Petitioner merely states the conclusion that this clause “would be obvious” [sic, the statute requires a temporal component to establish the claim “would have been obvious”]. Accordingly, we determine that Petitioner fails to provide the requisite evidence and arguments that claims 1, 2, 13–15, and 20–25 would have been obvious in view of Li.” slip op. at 28
Patent outcomesUS 10,626,320 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,626,320 - PTAB · Apr 15, 2024 · IPR2024-00029 · APJ Amee A Shah · IPR · Institution
The Board instituted IPR on claims 1, 3–5, 7–8, 10–14, and 16–25 on all grounds in the Petition, finding a reasonable likelihood of unpatentability on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“It is not disputed that Sim, Doi, and Herz were not previously presented to the Office. And, the prosecution record indicates that Sim and Doi were not listed on an Information Disclosure Statement by Application nor in a List of References or in an Office Action by the Examiner. See Ex. 1002, 9–10, 20–25, 69–74, 196–197, 346–347. Petitioner’s asserted Grounds 1 and 2 rely substantially on Sim and Doi to teach the steps of the claimed system and method. Petitioner’s asserted Grounds 4, 5, and 6 substantially rely on Herz. Sim, Doi, and Herz are meaningful to the prior art combinations set forth in the Petition. Therefore, the asserted combinations regarding Sim and Doi, Sim, Doi, and Waytena, and Waytena and Herz were not previously presented to the Office. It is also not disputed that Waytena was previously presented to the Office and considered by the Examiner. The prosecution history shows that throughout prosecution, the Examiner heavily considered and relied on Waytena for rejections under 35 U.S.C. §§102 and 103 in evaluating the application of the ՚983 patent. See, e.g., Ex. 1002, 9–10, 20–24, 69–73. At this point and based on the present record, we do not discretionarily deny under 35 U.S.C. § 325(d) because Petitioner has 7 The terms “POSITA,” “PHOSITA” or “skilled artisan” refer to a person of ordinary sill in the art. reasonable likelihood that at least one of the Challenged Claims is unpatentable. PGS Geophysical, 891 F.3d at 1360. However, based on the record before us, and because we reach the same conclusion as the Examiner regarding Waytena’s teachings, we find that Patent Owner has, on this record, sufficient support for its contentions that Waytena was previously presented to the Office and the Examiner’s evaluation on the merits regarding Waytena’s teachings was not in error.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Moreover, a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); see also 37 C.F.R. § 42.108(a) (2023) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). Considering the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we determine that, at this stage based on the evidence presented, Petitioner has demonstrated that there is a reasonable likelihood that at least one of the Challenged Claims is unpatentable. Accordingly, we institute an inter partes review of all challenged claims and on all grounds asserted in the Petition. PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest or comment on Petitioner’s definition of the level of ordinary skill in the art or offer Patent Owner’s own definition of the level of ordinary skill. Prelim. Resp. 2. that the ’983 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’983 patent is consistent with the level of skill proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition for a person of ordinary skill in the art.” slip op. at 17
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“Petitioner contends the claimed “presentation means” is a means-plus- function term under § 112, ¶ 6, that “can perform the function of (a) ‘receiv[ing] said itinerary from said computer’ and (b) ‘present[ing] said itinerary to said party.’” Pet. 8–9. Petitioner further contends the corresponding structure for performing the recited functions is display screen 130. Pet. 9. Patent Owner presents no argument against this contention. We agree that “presentation means” is a means-plus-function claim term. Because it is necessary to know what the structure and function are encompassed by the claim term in order to make a determination that the disagreement, we adopt Petitioner’s construction. Should either party believe that a different construction should apply in the instituted trial, it should explain the proposed construction, how the construction is supported by the record, and how the construction affects our unpatentability analysis.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,212,983 - Askeladden, L.L.C. v. Ohva, Inc.Institution deniedPTAB · Dec 4, 2023 · IPR2023-00921 · APJ Amee A Shah · IPR · Institution
The Board denied institution on claims 1–4 because Petitioner did not show a reasonable likelihood that the challenged claims were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. 35 U.S.C. § 314. That burden never shifts to the patentee. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we find that the ’286 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’286 patent is consistent with the level of skill proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition for a person of ordinary skill in the art.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“To the extent necessary, we discuss the meaning of a claim term (“transaction data”) in our analysis below. We, however, need not construe explicitly any of the claim terms proposed by Petitioner to reach our decision about institution. See Realtime Data, 912 F.3d at 1375 (“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))). At this stage, neither party has identified any indication that the ’286 patent uses any term differently than it would ordinarily be used or any indication in the prosecution history that “compel[s] a limitation of the claim language different from its plain meaning” as alternatives. Schumer v. Lab. Comput. Sys., Inc., 308 F.3d 1304, 1311, 1314 (Fed. Cir. 2002).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“To the extent Petitioner contends that Cho’s account information, though not explicitly providing for “transaction data,” “renders obvious” the claimed transaction data, Petitioner has not explained such a modification of Cho’s account information that would be necessary to arrive at the ’286 patent’s transaction data. Nor has Petitioner provided articulated reasoning with rational underpinning. In re Kahn, 441 F.3d 977, 988 (C.A.Fed.2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”) (cited with approval in KSR, 550 U.S.at 418). Similarly, Petitioner does not explain how skilled artisans would have used Aaron to modify Cho’s system to meet the claimed transaction data. Rather, Petitioner relies on Aaron for teaching facilitating transactions. Pet. 57. Petitioner asserts that “Aaron explains what information is sent in transactions: ‘credit card numbers, debit card numbers, bank accounts, user accounts, user identifying information or other sensitive information.’” Id. at 35 (citing Ex. 1006 ¶ 69). Yet, Petitioner does not explain how Aaron’s customer facing device that communicates with the payment service system 708 to submit a request for authorization of a transaction, the information being credit and debit card numbers, bank and user account information, and other identifying or sensitive information, would have been combined with Cho to render obvious accepting, providing, and converting transaction data—differentiated from account data—and facilitating transactions using that transaction data. Indeed, Petitioner’s contentions do not mention Aaron for limitation [1.1.1] (the initial recitation of transaction data) or for limitation [1.3.1] (where an audio signal is converted to transaction data). Pet. 40–43, 53–56. After considering the parties’ arguments and evidence, we determine” slip op. at 29
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,679,286 - PTAB · Oct 25, 2023 · IPR2023-00849 · APJ Amee A Shah · IPR · Institution
The Board instituted IPR on claims 1, 4, 7–12, 14, 17, 18, and 20–27, finding a reasonable likelihood that at least one claim is obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“discretionary denial of institution. In particular, we determine that factor 1 is neutral, factors 2–4 weigh against denial of institution, and factor 5, which is the lone factor favoring denial of institution, does not outweigh factors 1–4. As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). In addition, Petitioner asserts: (1) the Board is best suited to address the technical issues raised here; (2) a decision on the merits at institution may aid the parties in resolving their dispute; and (3) determining patentability will benefit the public, providing a complete record and rationale absent from a jury verdict form. Pet. 113. Patent Owner responds that Petitioner’s argument does nothing more than “proclaim[] in conclusory fashion that institution will result in some vague benefit to the [’492 litigation] and the public.” Prelim. Resp. 45. We agree with Patent Owner. Petitioner’s assertion is conclusory and does not adequately specify the particular benefits to the proceeding here or to the ’492 litigation. Thus, we determine that the sixth factor is neutral.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“It is not disputed the Sclater was not previously presented to the Office. As can be seen from our analysis below, all of Petitioner’s asserted grounds substantially rely upon Sclater to teach limitations of the safety device. Sclater, thus, is meaningful to the prior art combination. because the asserted combination, all of which include Sclater, were not previously presented to the Office. Because we determine that part one of the framework is not satisfied, we need not turn to part two to determine whether Petitioner demonstrates that the Office erred in a manner material to the patentability of the challenged claims. For the reasons discussed above, we decline to exercise our discretion under § 325(d) to deny the Petition.” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“of record, for the reasons set forth below we determine that, at this stage based on the evidence presented, Petitioner has demonstrated that there is a reasonable likelihood that at least one of the Challenged Claims is unpatentable. Accordingly, we institute an inter partes review of all challenged claims and on all grounds asserted in the Petition. PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the invention (“POSA” or “skilled artisan”) “would have had a bachelor’s degree in mechanical engineering and at least one year of machine design experience related to power transmission equipment and a demonstrated understanding of the biomechanics of exercise, including knowledge in the field of anthropometry (i.e., the study of human proportion).” Pet. 5 (citing Ex. 1003 ¶¶ 48, 44–49). Patent Owner “does not dispute Petitioner’s proposed qualifications of a person of ordinary skill in the art.” Prelim. Resp. 2. Thus, for purposes of this Decision, we find that the ’745 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition for a person of ordinary skill in the art.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,799,745 - PTAB · Oct 24, 2023 · IPR2023-00843 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Under § 314(a), we have discretion to deny institution of an inter partes review. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016). We consider several factors when determining whether to deny institution under § 314(a) based on a parallel district court proceeding, specifically 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). We also consider “several clarifications” made by the Director of the United States Patent and Trademark Office (“USPTO”). See USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, 2 (June 21, 2022), available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (“Fintiv Memo”).” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“It is not disputed the Sclater was not previously presented to the Office. As can be seen from our analysis below, all of Petitioner’s asserted grounds substantially rely upon Sclater to teach limitations of the safety device. Sclater, thus, is meaningful to the prior art combination. Accordingly, we determine that discretionary denial is not warranted because the asserted combination, all of which include Sclater, were not previously presented to the Office. Because we determine that part one of the framework is not satisfied, we need not turn to part two to determine whether Petitioner demonstrates that the Office erred in a manner material to the patentability of the challenged claims. For the reasons discussed above, we decline to exercise our discretion under § 325(d) to deny the Petition.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of challenged claims 30–34, 37–54, 57, and 59 of the ’884 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’884 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSA”) would have had a bachelor’s degree in mechanical engineering and at least one year of machine design experience related to power transmission equipment and a demonstrated understanding of the biomechanics of exercise, including knowledge in the field of anthropometry (i.e., the study of human proportion). Pet. 5 (citing Ex. 1003 ¶¶ 44–49 (supporting testimony of Dr. Giachetti)) (emphasis omitted). Petitioner additionally states that “[t]his description is approximate and additional development experience could make up for less education and vice versa.” Id. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’884 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,561,884 - SNF S.A. v. Chevron U.S.A., Inc.InstitutedPTAB · Apr 19, 2023 · IPR2022-01534 · APJ Barry L Grossman · IPR · Institution
The Board instituted IPR on claims 1–25 and all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Accordingly, based on the evidence before us, we determine that Petitioner has established that there is a reasonable likelihood that the Petitioner will prevail with respect to at least independent claims 1, 24, and 25. “The ‘reasonable likelihood’ standard is a somewhat flexible standard that allows the Board room to exercise judgment.” Patent Trial and Appeal Board Consolidated Trial Practice Guide, 53 (Nov. 2019).” slip op. at 25
- Skill levelSkill level board ownDecided for patent owner
“a POSITA, and thus the Board need not resolve the precise required level of skill in order to deny” the Petition. Prelim. Resp. 6. According to Patent Owner, the emphasized terms in the chart above for Petitioner’s proposed level of skill make Petitioner’s proposal “grammatically erroneous and confusing.” Id. We agree. The word “either” in Petitioner’s proposed level of skill is confusing. Patent Owner also criticizes Dr. Barati’s proposed level of skill because it “makes no mention of ‘synthesis’.” Id. at 7. Patent Owner does not provide argument or evidence as to why “synthesis” is critical or necessary in the level of skill. Patent Owner does not propose a level of skill. Id.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (citations omitted)). We determine that a specific construction of the claims is not necessary to reach a decision on whether to institute an inter partes review of the challenged claims.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInstituted
“Owner asserts that “none of the grounds of unpatentability properly address the claim requirement that the ‘inverted polymer solution has a filter ratio of 1.5 or less at 15 psi using a 1.2 µm filter’ (the ‘filter ratio limitation’).” Prelim. Resp. 9. Patent Owner also asserts that the “[t]he Petition does not point to any disclosure in Li that expressly meets this requirement. Id. (emphasis added). Patent Owner and Petitioner agree on this point. See, e.g., Pet. 32 (“Li expressly describes IPSs having FRs that were calculated using a different formula than the ’320 patent”). Additionally, Patent Owner asserts correctly that “Petitioner relies on Dr. Barati’s experiment” to establish that Li Products I, III, and VII, if prepared and tested using the standard procedure for determining the filter ratio described in the ’320 patent, provide “an alleged inherent disclosure” of the claimed filter ratio. Prelim. Resp. 10. Patent Owner, and the Declaration testimony (Ex. 2001) of its proffered expert, Dr. Gary Pope,18 take issue with the procedures and results of Dr. Barati’s testing. They question whether he performed his experiments once or multiple times, and, if the latter, they question whether the repeated tests produced consistent results. Prelim. Resp. 12 (citing Ex. 2001 ¶ 26 (Dr. Pope’s testimony stating that Dr. Barati “does not indicate whether his results reflect all of the results he obtained”)).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,626,320 - Meridian Wildlife Services, LLC v. Safe Haven Wildlife Removal And Property Management Experts, LLCRehearing deniedPTAB · Apr 11, 2023 · IPR2022-01340 · APJ Amee A Shah · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving institution denied for claims 1–8 because the petitioner did not show the Board misapprehended or overlooked its obviousness arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“C. STANDARD FOR REHEARING The party filing a request for rehearing of a decision whether to institute has the burden of showing the decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c)).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In our decision on institution (Paper 9, “Dec.” or “Decision”), we determined that Petitioner failed to show a reasonable likelihood of prevailing with respect to any of the Challenged Claims and denied institution of inter partes review. Petitioner filed a timely Request for Rehearing in which it asks that we institute inter partes review of the Challenged Claims. Paper 10, 1 (“Reh’g Req.” or “Request”). For the reasons that follow, we deny Petitioner’s Request.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“to “then place nets where the birds are observed flying in the building.” Reh’g Req. 4 (citing Pet. 19; Ex. 1008 ¶¶ 15, 45; Ex. 1004 ¶¶ 71, 72, 75). Brugh does not “instruct” a POSA to perform either of these actions. Rather, Brugh provides a method comprising, in relevant part, “a) determining the species of flying vertebrate inside the building; b) selecting bird netting; . . . [and] d) positioning the netting for capture based on the species of flying vertebrate and their flight characteristics utilizing the height adjustable poles to raise the netting.” Ex. 1004 ¶¶ 8–10, 15 (emphasis added). There is no “instruction” that the location of the netting is adjusted based on the flight pattern; rather, the height is adjusted. Brugh further provides for “determin[ing] how [the flying vertebrate] flies, e.g., a bat flies in a different pattern than a sparrow” and using the flight pattern “to place the netting in relationship to the position of the flying vertebrate.” Id. ¶ 45. There is no “instruction” that the determining of the flight pattern must be by observing the flying vertebrate (as opposed to researching the flight pattern of the species of the flying vertebrate) or that the netting is placed in relationship to and observed or expected position. b) “The Board’s analysis ignores common sense.” Reh’g Req. 4. Petitioner contends that the Board ignored common sense, as “at some point a POSA necessarily would have observed some species of bird flying near some perimeter walls within some building.” Reh’g Req. 4; see also id. at 6 (“It was common sense that a POSA would eventually observe a bird near a perimeter wall and place Brugh’s capture device accordingly.”), 7 (“[T]he Board . . . substitutes a rigid review of the prior art’s disclosure for common sense. . . .”)). This argument is unavailing. “[W]hile ‘common sense’ can be invoked, even potentially to supply a limitation missing from the prior art, it must still be supported by evidence and a reasoned explanation.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1363 (Fed. Cir. 2016). As explained above, Petitioner’s argument discounts the inventor’s discovery, in which he spent “countless hours” before discovering that birds fly along the perimeter wall of a building’s interior. Ex. 2001 ¶ 16. Further, as discussed above, Brugh does not instruct nor teach a POSA to observe flight patterns and determine or adjust the locations of the nets accordingly. We are not persuaded that the inventor’s discovery was merely “common sense,” and if it was, Petitioner should have submitted sufficient evidence to support such a finding. See Arendi, 832 F.3d at 1363. As explained in our Decision, Petitioner did not. See, e.g., Dec. 32 (“Petitioner provides insufficient evidence that bats or other flying animals are likely to fly ‘at or proximate to a perimeter wall and at or near the ceiling’ such that a POSA would find it obvious to place a net at or proximate to the perimeter of a wall within a building”). A request for rehearing under 37 C.F.R. § 42.71(d) is not an opportunity for Petitioner to simply reargue issues we previously addressed.” slip op. at 6
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Owner’s expert, Mr. Tolley, is the inventor of the ’683 patent. We considered this fact but, nevertheless, found Mr. Tolley’s testimony more persuasive than Dr. Chamberlain’s testimony. We considered the provided evidence of Mr. Chamberlain’s declaration and the support thereof and found insufficient evidentiary support for why a POSA would place at least one net at or proximate to the perimeters and at or near the ceiling of the structure. Dec. 32 (citing Ex. 1004 ¶¶ 71, 72). Id. at 33. As such, Mr. Chamberlain’s testimony is entitled to little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (Aug. 24, 2022) (precedential) (denying institution and holding that a declaration is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion to factual determinations . . . may render the testimony of little probative value in a validity determination.”) (quotation omitted); see also Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 138 (Fed. Cir. 1986) (“Although in some circumstances unsupported oral testimony can be sufficient to prove prior knowledge or use, it must be regarded with suspicion and subjected to close scrutiny.”). Dr. Chamberlain’s testimony that at least one net would reduce the flying area was not supported by any evidence. Dec. 34. As such, Dr. Chamberlain’s testimony was afforded little weight. 37 C.F.R. § 42.65(a).” slip op. at 11
§ 103 obviousnessPatents in suitUS 11,064,683 - Meridian Wildlife Services, LLC v. Safe Haven Wildlife Removal And Property Management Experts, LLCRehearing deniedPTAB · Apr 11, 2023 · IPR2022-01254 · APJ Amee A Shah · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show that the Board misapprehended or overlooked its obviousness arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“C. STANDARD FOR REHEARING The party filing a request for rehearing of a decision whether to institute has the burden of showing the decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c)).” slip op. at 3
- BurdenInstitution denied meritsInstitution denied
“Petitioner’s argument does not give enough credit to the inventor’s discovery. Mr. Tolley, the inventor, testified that he “spent countless hours monitoring bird flights and patterns within Walmart’s facilities and other indoor structures, focusing not only on where birds typically roosted in the facilities, but also where and how they flew within the enclosures . . . and experimenting with various placements of nets based on [his] observations.” Ex. 2001 ¶ 16. We do not find Petitioner’s citation to the inventor’s testimony, in which the inventor testifies to having “spent countless hours” working on his discovery, to support Petitioner’s argument that the inventor’s discovery would have been obvious based on Brugh’s “instruct[ions to] a POSA to observe the ‘flight patterns’ of these birds” and to “place nets where the birds are observed flying in the building.” Reh’g Req. 4 (citing Ex. 1008 ¶¶ 15, 45; Ex. 1004 ¶¶ 32, 72, 75). Brugh does not “instruct” a POSA to perform either of these actions. Rather, Brugh provides a method comprising, in relevant part, “a) determining the species of flying vertebrate inside the building; b) selecting bird netting; . . . [and] d) positioning the netting for capture based on the species of flying vertebrate and their flight characteristics utilizing the height adjustable poles to raise the netting.” Ex. 1004 ¶¶ 8–10, 15 (emphasis added). There is no “instruction” that the location of the netting is adjusted based on the flight pattern; rather, the height is adjusted. Brugh further provides for “determin[ing] how [the flying vertebrate] flies, e.g., a bat flies in a different pattern than a sparrow” and using the flight pattern “to place the netting in relationship to the position of the flying vertebrate.” Id. ¶ 45. There is no “instruction” that the determining of the flight pattern must be by observing the flying vertebrate (as opposed to researching the flight pattern of the species of the flying vertebrate) or that the netting is placed in relationship to an observed or expected position.” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“been obvious to place at least one net ‘along a perimeter wall . . . in response to observing flight patterns in those locations’ is premised on the alleged fact” that bats and other animals tend to roost in protected locations. Dec. 36 (citing Pet. 18). We then addressed Mr. Chamberlain’s declaration and the support thereof and found insufficient support for his testimony that birds would fly or roost “in or along the perimeter of a wall within a building or structure.” Id. at 36–37 (citing Ex. 1004 ¶¶ 32, 33; Ex. 1018, 81, 85.) As such, Mr. Chamberlain’s testimony is entitled to little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (Aug. 24, 2022) (precedential) (denying institution and holding that a declaration is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion to factual determinations . . . may render the testimony of little probative value in a validity determination.”) (quotation omitted); see also Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 138 (Fed. Cir. 1986) (“Although in some circumstances unsupported oral testimony can be sufficient to prove prior knowledge or use, it must be regarded with suspicion and subjected to close scrutiny.”).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The first reason was not written as observing flight patterns or, alternatively, expecting flight patterns, but as one reason resulting from “observing flight patterns,” premised on the tendency of birds to roost in a protected, expected location, such as, ostensibly, along the inside perimeter wall of a building. The second reason was that the placement of the nets along a perimeter wall and in another location would shrink the bird’s flying area and thus improve capture. The third reason was, ostensibly, that having more nets, i.e., increased net density, would increase the capture rate. The Decision addressed the first argument regarding observing flight patterns at pages 36–37, the second argument at pages 37–38, and the third argument at pages 38–39.” slip op. at 6
§ 103 obviousnessPatents in suitUS 10,729,108 - Meridian Wildlife Services LLC v. Safe Haven Wildlife Removal And Property Management Experts LLCRehearing deniedPTAB · Apr 11, 2023 · IPR2022-01253 · APJ Michael L Woods · IPR · Rehearing
The Board denied Meridian’s rehearing request, leaving institution denied because the petition did not show a reasonable likelihood of prevailing on any challenged claim.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c)).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We disagree with Petitioner. The Petition did not cite sufficient evidence to support a finding that a bird would have flown along the interior perimeter of an interior wall. See, e.g., Dec. 19 (“Petitioner provides no evidence that bats or other flying animals are likely to fly or roost along the inner perimeter of a structure such that a POSITA would have found it obvious to place a net along the perimeter of a wall within a building.”). Petitioner’s attempt to cite the inventor’s (Mr. Tolley’s) expert testimony is equally unavailing. See Reh’g Req. 4. We disagree with Petitioner’s assertion that Mr. Tolley’s testimony supports Petitioner’s obviousness challenge.” slip op. at 5
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Petitioner’s fourth sub-argument is not persuasive. As explained in our Decision, Dr. Chamberlain’s testimony that birds would fly along the inner perimeter of a building is not supported by evidence. Dec. 18–19. As such, his testimony is entitled to little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (Aug. 24, 2022) (precedential) (denying institution and holding that a declaration is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion to factual determinations, however, may render the testimony of little probative value in a validity determination.”) (quotation omitted); see also Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 138 (Fed. Cir. 1986) (“Although in some circumstances unsupported oral testimony can be sufficient to provide prior knowledge or use, it must be regarded with suspicion and subjected to close scrutiny.”).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We disagree with Petitioner. The Petition did not cite sufficient evidence to support a finding that a bird would have flown along the interior perimeter of an interior wall. See, e.g., Dec. 19 (“Petitioner provides no evidence that bats or other flying animals are likely to fly or roost along the inner perimeter of a structure such that a POSITA would have found it obvious to place a net along the perimeter of a wall within a building.”). Petitioner’s attempt to cite the inventor’s (Mr. Tolley’s) expert testimony is equally unavailing. See Reh’g Req. 4. We disagree with Petitioner’s assertion that Mr. Tolley’s testimony supports Petitioner’s obviousness challenge.” slip op. at 5
§ 103 obviousnessPatents in suitUS 10,251,374
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.