Trials@uspto.gov
`571-272-7822
`
`Paper 12
`Entered: November 8, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SHENZEN CHIC ELECTRICS CO., LTD.,
`Petitioner,
`v.
`PILOT, INC.,
`Patent Owner.
`
`IPR2023-00810
`Patent 11,376,971 B2
`
`
`
`
`
`
`
`
`
`Before JEFFREY W. ABRAHAM, JULIA HEANEY, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`ABRAHAM, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
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`IPR2023-00810
`Patent 11,376,971 B2
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`INTRODUCTION
`I.
`Background and Summary
`A.
`Shenzen Chic Electrics Co., Ltd. (“Petitioner”) filed a petition for an
`inter partes review (Paper 2 (“Pet.”)) challenging claims 1–30 of U.S. Patent
`No. 11,376,971 B2 (Ex. 1001 (“the ’971 Patent”)). Pilot Inc. (“Patent
`Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard
`for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
`provides that an inter partes review may not be instituted “unless the
`Director determines . . . there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.”
`For the reasons set forth below, we determine the information
`presented in the Petition establishes a reasonable likelihood that Petitioner
`would prevail with respect to at least one of the challenged claims.
`Accordingly, we institute an inter partes review.
`Related Matters
`B.
`The parties state that the ’971 patent is at issue in one district court
`litigation that is currently stayed: Shenzhen Carku Technology Co., Ltd. v.
`Pilot, Inc., 2:22-cv-08471 (C.D. Cal.). Pet. 2; Paper 4, 2; Prelim. Resp. 2.
`The parties also identify seven IPR proceedings against six patents that are
`parents to or related to the ’971 patent:
`1. NOCO v. Pilot, IPR2022-01237 on U.S. Pat. No. 11,124,077
`(Pending);
`2. NOCO v. Pilot, IPR2022-01417 on U.S. Pat. No. 11,104,236
`(Pending);
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`Patent 11,376,971 B2
`3. NOCO v. Pilot, IPR2023-00167 on U.S. Pat. No. 11,235,673
`(Pending);
`4. NOCO v. Pilot, IPR2021-01235 on U.S. Pat. No. 10,328,806
`(Final Written Decision issued January 9, 2023);
`5. NOCO v. Pilot, IPR2021-00777 on U.S. Pat. No. 10,046,653
`(Final Written Decision issued October 3, 2022; Federal
`Circuit appeal pending);
`6. Shenzhen Chic v. Pilot, IPR2021-01232 on U.S. Pat. No.
`10,046,653 (Final Written Decision issued January 9, 2023;
`Federal Circuit appeal pending);
`7. Winplus v. Pilot, IPR2018-00488 on U.S. Pat. No. 9,525,297
`(trial terminated due to settlement before Final Written
`Decision).
`Pet. 2–3; Paper 4, 2–3.
`The ’971 Patent (Ex. 1001)
`C.
`The ’971 patent, titled “Automobile Charger,” issued July 5, 2022,
`and is directed to “a novel automobile charger with a safe power supply
`charging quickly.” Ex. 1001, codes (45), (54), 1:21–23. The ’971 patent
`explains that prior art automobile charging devices, i.e., devices for jump
`starting vehicles, suffered from various problems, including an inability to
`automatically detect whether a load (e.g., an automobile storage battery) is
`connected, whether an automobile engine or storage battery has a reverse
`current, and whether the battery state is suitable for heavy power generation.
`Ex. 1001, 1:28–34. The ’971 patent aims to solve these problems, and
`depicts one solution in Figure 1, reproduced below.
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`Patent 11,376,971 B2
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`Figure 1 is a block diagram showing one embodiment of an
`automobile charger that includes DC to DC module 1, microcontroller 2,
`battery voltage detection module 3, automobile start control module 4, load
`detection module 5, load module 6, and direct current power supply 7 (the
`jump starter battery). Ex. 1001, 2:66–3:2. Although not shown in Figure 1,
`the ’971 patent states that load module 6 “comprises the automobile storage
`battery and the automobile engine is located on the end of the load module.”
`Ex. 1001, 3:33–35.
`The ’971 patent explains that the DC to DC module provides “the
`stable voltage for the microcontroller,” which “collects relevant data” and
`“determines whether the automobile storage battery is connected with the
`automobile engine through the load detection module.” Ex. 1001, 4:14–25.
`When the load is correctly connected, the automobile start control module
`(an electronic switch) is automatically activated, and the battery starts to
`supply power to the load module. Ex. 1001, 2:29–30, 4:26–28. If the load is
`not connected, or positive and negative polarities are reversed, the
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`automobile start control module is automatically deactivated, and the battery
`stops supplying power to the load module. Ex. 1001, 4:28–32.
`The ’971 patent explains that its automobile charger provides benefits
`over prior art devices, including, inter alia, (1) controlling the supply power
`for the load, which protects the product and reduces the product size and
`material cost, (2) providing low voltage protection to prevent damage caused
`by over-discharging the battery, (3) preventing improper operations by the
`user, such as reversed polarity, which can cause damage to the automobile or
`direct current power supply, and (4) employing voltage backflow protection
`for an abnormal load, wherein the automobile start line is closed to protect
`the battery when an abnormal voltage is detected. Ex. 1001, 2:31–47.
`Illustrative Claims
`D.
`Of the challenged claims, claims 1, 17, and 18 are independent claims.
`Claim 1 is illustrative and reproduced below.
`1[Pre]. A jumpstarter comprising:
`1[a] a battery connected to a voltage regulator, the battery
`capable of supplying power, via the voltage regulator, to at least
`one microcontroller, the battery also capable of supplying
`power to an automobile battery when the battery has at least
`one predetermined voltage;
`1[b] a load detector circuit to detect when the jumpstarter is
`correctly connected to the automobile battery;
`1[c] said at least one microcontroller generating, when the
`battery has said at least one predetermined voltage, an output
`signal; and
`1[d] switching circuitry, including at least one switch, to
`operatively connect the battery to the automobile battery when
`said at least one microcontroller generates the output signal to
`supply a charging current to the automobile battery.
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`Ex. 1001, 5:11–26 (labels added to correspond with Petitioner’s designation
`of claim limitations (Ex. 1024)).
`Asserted Unpatentability Challenges
`E.
`Petitioner asserts that claims 1–30 are unpatentable based on the
`following challenges:
`Claim(s) Challenged
`1–30
`10
`14, 15, 29
`18–30
`29
`1–4, 6, 7, 9–13,
`16–28, 30
`5
`8, 10, 16, 30
`14, 15, 29
`18–30
`29
`
`35 U.S.C. §
`103
`103
`103
`103
`103
`
`Reference(s)/Basis
`Baxter1
`Baxter, Zhang2
`Baxter, Tracey3
`Baxter, Xinfang4
`Baxter, Xinfang, Tracey
`
`103
`
`103
`103
`103
`103
`103
`
`Krieger4505
`
`Krieger450, Koebler6
`Krieger450, Richardson7
`Krieger450, Morse8
`Krieger450, Krieger0499
`Krieger450, Krieger049, Morse
`
`
`Petitioner relies on the declaration of David Ricketts, Ph.D. (Ex. 1023).
`
`
`
`1 US 2010/0173182 A1, published July 8, 2010 (Ex. 1008).
`2 CN 202696190 U, published Jan. 23, 2013 (Ex. 1010).
`3 WO 2012/080996 A1, published June 21, 2012 (Ex. 1012).
`4 US 9,506,446 B2, issued Nov. 29, 2016 (Ex. 1013).
`5 US 7,345,450 B2, issued Mar. 18, 2008 (Ex. 1009).
`6 US 2013/0241498 A1, published Sept. 19, 2013 (Ex. 1011).
`7 US 2013/0154543 A1, published June 20, 2013 (Ex. 1014).
`8 US 5,820,407, issued Oct. 13, 1998 (Ex. 1022).
`9 US 2007/0285049 A1, published Dec. 13, 2007 (Ex. 1020).
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`II. ANALYSIS
`Level of Ordinary Skill in the Art
`A.
`Petitioner asserts that a person of ordinary skill in the art would have
`had a “bachelor’s degree in electrical engineering or its equivalent and two
`years of experience in electrical engineering with some experience in design
`of power supply management systems, such as battery charging systems.”
`Pet. 12. Petitioner also contends that “[a]dditional graduate education could
`substitute for professional experience, or significant experience in the field
`could substitute for formal education.” Pet. 12 (citing Ex. 1023 ¶¶ 44–48).
`Patent Owner does not challenge Petitioner’s definition or offer its own. See
`generally, Prelim. Resp.
`In light of the record before us, and for purposes of this Decision, we
`adopt Petitioner’s proposal regarding the level of ordinary skill in the art.
`Based on our review of the ’971 patent and the prior art of record, we
`determine that the definition offered by Petitioner comports with the
`qualifications a person would have needed to understand and implement the
`teachings of the ’971 patent and the prior art. See Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding
`ordinary skill level are not required “where the prior art itself reflects an
`appropriate level and a need for testimony is not shown”) (quoting Litton
`Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir.
`1985)).
`
`B. Claim Construction
`In an inter partes review, we construe claim terms according to the
`standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed.
`Cir. 2005) (en banc). 37 C.F.R. § 42.100(b). Under Phillips, claim terms
`are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at
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`1312. “[T]he ordinary and customary meaning of a claim term is the
`meaning that the term would have to a person of ordinary skill in the art in
`question at the time of the invention.” Id. at 1313. “Importantly, the person
`of ordinary skill in the art is deemed to read the claim term not only in the
`context of the particular claim in which the disputed term appears, but in the
`context of the entire patent, including the specification.” Id.
`Petitioner argues that the term “start control module” should be
`construed as “electronic switch.” Pet. 12 (citing Ex. 1023 ¶¶ 148–150).
`According to Petitioner, “the ‘971 Patent states that ‘the automobile start
`control module is the electronic switch.’” Pet. 13 (citing Ex. 1001, 2:29–30,
`4:42–45, 4:26–28, 4:29–32). Patent Owner does not address claim
`construction in its Preliminary Response.
`We determine that we do not need to expressly construe any terms for
`purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing 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.”)).
`C. Claims 1–30 – Alleged Obviousness in view of Baxter
`Petitioner contends claims 1–30 of the ’971 patent are unpatentable as
`obvious in view of Baxter. Pet. 14–54.
`1. Baxter (Ex. 1008)
`Baxter is a U.S. patent application publication titled “Low-Voltage
`Connection with Safety Circuit and Method for Determining Proper
`Connection Polarity,” filed on March 24, 2010, and published on July 8,
`2010. Ex. 1008, codes (12), (22), (43), (54). Baxter states that the invention
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`Patent 11,376,971 B2
`relates to “a battery integrated connection between a battery and a low-
`voltage system that includes a safety circuit.” Ex. 1008 ¶ 8.
`Baxter explains that jumper cables “commonly used to connect two
`low-voltage (e.g. battery-powered) systems temporarily” may “result in
`personal injury and equipment damage.” Ex. 1008 ¶ 5. For example, when
`“jump starting a car with” a depleted battery “using a car with a good
`battery,” a “spark may be created.” Ex. 1008 ¶ 5. If “the spark is in the
`vicinity of hydrogen gas commonly generated by car batteries, the spark can
`ignite the hydrogen gas to explosive effect.” Ex. 1008 ¶ 5. Further,
`“connecting a jumper cable set backward (i.e. with polarity of one of the
`battery connections reversed) can also cause injury or damage.” Ex. 1008
`¶ 5.
`
`To address those issues, Baxter discloses “a safety circuit for use in
`low-voltage systems that improves safety.” Ex. 1008 ¶¶ 7, 25, code (57).
`The safety circuit “leaves the battery disconnected from the low-voltage
`system until it determines that it is safe to make a connection.” Ex. 1008
`¶¶ 7, 25, code (57). The safety circuit may implement a method for
`detecting the “proper polarity of the connections between the battery and the
`low-voltage system.” Ex. 1008 ¶¶ 7, 25, code (57). Figure 2 of Baxter,
`reproduced below, provides a diagram illustrating the components in one
`embodiment of Baxter’s safety circuit. Ex. 1008 ¶ 44.
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`Figure 2 shows safety circuit 18 comprising input terminals 20, output
`terminals 22, power transistor 24, logic circuit or microcontroller 26,
`detection circuit and power supply 28, alarm 30, and LEDs 32. Ex. 1008 ¶¶
`44–45.
`Baxter’s Figure 7 (reproduced below) depicts a representative circuit
`diagram for use in embodiments of Baxter’s safety circuit:
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`Figure 7 illustrates a safety circuit comprising microcontroller 60 and other
`components arranged in various areas as follows:
`• area 50 depicted in more detail in Figure 8;
`• area 52 depicted in more detail in Figure 9;
`• area 54 depicted in more detail in Figure 10;
`• area 56 depicted in more detail in Figure 11; and
`• area 58 depicted in more detail in Figure 12.
`Ex. 1008 ¶¶ 18–19, 58, Figs. 7–12.
`Baxter’s Figure 9 (reproduced below) depicts in more detail area 52 in
`Figure 7’s safety circuit:
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`Figure 9 illustrates area 52 encompassing microcontroller 60 (also labeled as
`IC1), as well as the following components: IC4, C1, C4, R12, R13, R16, J1,
`and J2. Ex. 1008 ¶ 58, Fig. 9. Baxter also provides flow charts
`demonstrating processes that may be implemented using the circuitry shown
`in Figures 7–12. Ex. 1008 ¶¶ 59–75, Figs. 13–17.
`2. Analysis
`
`a. Claim 1
`Petitioner contends Baxter discloses a jumpstarter, as recited in the
`preamble of claim 1. Pet. 16–17. Petitioner directs us to Baxter’s disclosure
`of integrating its safety circuit into a “booster box” or battery charger that
`connects to an automobile. Pet. 16–17 (citing Ex. 1008 ¶¶ 7, 26, 38, 40, 43,
`49, 51–53, 77; Ex. 1023 ¶ 211). According to Dr. Ricketts, a person of
`ordinary skill in the art “would understand that a ‘booster box’ would refer
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`to an apparatus with integrated battery and cables to connect to a vehicle
`battery.” Ex. 1023 ¶ 211.
`Petitioner next contends that Baxter discloses limitation 1[a], which
`recites “a battery connected to a voltage regulator, the battery capable of
`supplying power, via the voltage regulator, to at least one microcontroller,
`the battery also capable of supplying power to an automobile battery when
`the battery has at least one predetermined voltage.” Ex. 1001, 5:12–16.
`According to Petitioner, Baxter’s safety circuit can be connected to a battery,
`for example through input terminals 20 shown in Figure 2, or Positive Cable
`A/Negative Cable A shown in Figure 8. Pet. 18–19. Petitioner provides an
`annotated version of Baxter Figure 2, reproduced below, showing how
`Baxter’s safety circuit can be connected to a power source and a dead
`battery. Pet. 19.
`
`
`Petitioner’s annotations of Baxter’s Figure 2 show input terminals 20
`connected to a power source (depicted in brown), such as the battery of a
`
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`booster box, and output terminals 22 connected to a dead battery, such as an
`automobile battery that needs to be jumpstarted. Pet. 18–19.
`Petitioner contends that “Detection Circuitry and Power Supply” 28 in
`Figure 2 contains a voltage regulator, and “Logic or microcontroller” 26
`corresponds to the microcontroller recited in claim 1. Pet. 20. Petitioner
`argues that Figure 2 shows how the battery (through input terminals 20) is
`connected to the voltage regulator (in Detection Circuitry and Power Supply
`28), and that microcontroller 26 has one power connection through the
`voltage regulator. Pet. 20 (citing Ex. 1008 ¶ 44; Ex. 1023 ¶ 219).
`Additionally, Petitioner contends that IC4 and IC1 in Baxter Figure 9
`correspond, respectively, to the voltage regulator and microcontroller recited
`in claim 1. Pet. 18–19; see also Pet. 23 (citing Ex. 1023 ¶¶ 224–225 and
`Ex. 1017 to support Petitioner’s contention that IC4 is a microcontroller).
`Petitioner provides an annotated version of Baxter’s Figure 9, reproduced
`below, to illustrate the connections between these components.
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`Petitioner’s annotations in red show how the output (OUT) of voltage
`regulator IC4 connects to the VDD input of microcontroller IC1. Pet. 24
`(citing Ex. 1023 ¶¶ 226–227). Petitioner contends that a battery, such as an
`internal booster box battery, could be connected to the system shown in
`Figure 9, and would supply power to IC4 and IC1 through “Cable A.” Pet.
`20–22 (citing Ex. 1008 ¶¶ 40, 59, Figs. 7, 8, 13; Ex. 1023 ¶ 223).
`Petitioner also contends that a battery connected to Baxter’s safety
`circuit is capable of supplying power to an automobile battery when the
`battery has at least one predetermined voltage, as recited in limitation 1[a].
`Pet. 25–29. In particular, Petitioner directs us to Baxter’s statement that “the
`safety circuit refuses to make a connection to the low-voltage system while
`an unsafe condition exists.” Pet. 26 (quoting Ex. 1008 ¶ 8). According to
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`Petitioner, Baxter discloses that measuring a voltage is one way to determine
`an unsafe condition. Pet. 26 (citing Ex. 1008 ¶¶ 53, 63). Petitioner also
`directs us to the flowchart shown in Figure 13, and argues that it shows
`“how the voltage measurement operation on the supply side battery is used
`to determine whether to close the switch” to provide power to the
`automobile battery. Pet. 27–28. In particular, Petitioner asserts that
`Baxter’s safety circuit will only connect the power systems (per step 72)
`when the voltage in the batteries connected to the system, including the
`internal booster box battery, is greater than 2.5V (per step 68). Pet. 29.
`For limitation 1[b], which recites “a load detector circuit to detect
`when the jumpstarter is correctly connected to the automobile battery”
`(Ex. 1001, 5:17–18), Petitioner contends that Baxter discloses “a load
`detector in various implementations so switch closure occurs only when no
`unsafe conditions are detected.” Pet. 30 (emphasis omitted) (citing Ex. 1008
`¶ 8, 29, 32–33, 38; Ex. 1023 ¶¶ 238–239). As one example, Petitioner
`asserts that Figure 5 shows a current sensor that detects connection and
`polarity by detecting a change in voltage. Pet. 30 (citing Ex. 1008 ¶ 56;
`Fig. 5). According to Petitioner, “[t]he measured voltage would not increase
`past the required threshold when a battery is not connected or connected
`with reverse polarity.” Pet. 30 (citing Ex. 1023 ¶ 242).
`Petitioner next argues that Baxter discloses limitation 1[c], which
`recites “said at least one microcontroller generating, when the battery has
`said at least one predetermined voltage, an output signal.” Ex. 1001,
`5:19–21. According to Petitioner, Baxter discloses that microcontroller 26
`generates an output signal to power transistor 24, such that the operation of
`power transistor 24 is under the control of microcontroller 26. Pet. 33
`(citing Ex. 1008 ¶¶ 44, 46, 48, Fig. 2; Ex. 1023 ¶ 252). Additionally,
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`Petitioner contends that Baxter’s microcontroller IC1 controls a series-
`parallel MOSFET switch by sending signals to turn the FET switch on or
`off. Pet. 33–36 (citing Ex. 1008 ¶¶ 62, 71; Ex. 1023 ¶¶ 253–258). Petitioner
`further contends Baxter’s microcontrollers generate output signals when the
`battery has at least one predetermined voltage, as limitation 1[c] requires,
`because
`[Baxter’s] power switch (the series-parallel transistors in Fig. 7,
`also power transistor 24 in Fig. 2) is turned on (at step 72 of Fig.
`13) when the voltage at the input (wires labeled Positive Cable
`A, Negative Cable A in Fig. 8, also input terminals 20 in Fig. 2)
`of the safety circuit 18 is at least 2.5 volts (a test performed in
`Fig. 13, reference 68).
`Pet. 36 (citing Ex. 1023 ¶ 261).
`Petitioner relies on similar disclosures in Baxter to demonstrate that
`Baxter satisfies limitation 1[d], which recites “switching circuitry, including
`at least one switch, to operatively connect the battery to the automobile
`battery when said at least one microcontroller generates the output signal to
`supply a charging current to the automobile battery.” Ex. 1001, 5:22–26.
`According to Petitioner, Baxter contains numerous disclosures of “the
`transistor switching circuitry and connections between a first voltage system
`-- the battery at the input (the battery in the booster box) and a second
`voltage system -- the battery at the output (automobile battery).” Pet. 38–39
`(citing Ex. 1008 ¶¶ 10, 28, 36, 46, 48, 56; Ex. 1023 ¶ 266).
`At this stage of the proceeding, Patent Owner provides a conclusory
`statement that “[n]one of the above references render obvious the
`Challenged Claims of the ‘971 patent,” but otherwise does not substantively
`dispute that Baxter discloses or suggests the limitations in claim 1. Prelim.
`Resp. 4. After reviewing the evidence and arguments Petitioner presents in
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`the Petition regarding claim 1, including the relevant portions of the
`supporting Ricketts Declaration, we determine Petitioner has demonstrated
`sufficiently for purposes of institution that Baxter discloses or suggests the
`limitations of claim 1. As a result, we are persuaded Petitioner has
`established a reasonable likelihood of prevailing on its obviousness
`challenge with respect to claim 1.
`b. Claims 2–30
`Claims 2–16 depend directly or indirectly from claim 1. Claims 17
`and 18 are independent, and claims 19–30 depend directly or indirectly from
`claim 18. Petitioner directs us to portions of Baxter that disclose or suggest
`the limitations in these claims. Pet. 39–54. At this stage of the proceeding,
`Patent Owner does not meaningfully dispute that Baxter discloses or
`suggests the limitations in claims 2–30.
`After reviewing the evidence and arguments Petitioner presents in the
`Petition, including the relevant portions of the supporting Ricketts
`Declaration, we are persuaded Petitioner has established a reasonable
`likelihood of prevailing on its obviousness challenge with respect to these
`claims.
`
`3. Conclusion
`For all of the foregoing reasons, we determine Petitioner has
`demonstrated a reasonable likelihood of prevailing with respect to its
`argument that claims 1–30 are unpatentable as obvious in view of Baxter.
`D. Discretionary Denial Under 35 U.S.C. § 325
`Patent Owner argues that we should exercise our discretion under
`35 U.S.C. § 325(d) to deny institution because “the Petition does not raise
`new issues not considered by the Examiner during the examination process.
`The Examiner was provided with and considered references cited by
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`Petitioner and similar, if not the same, analysis of these references by the
`same expert and others.” Prelim. Resp. 1. 10
`Petitioner contends that “the prior art in this Petition was not
`evaluated on record in” an Office action, and, as a result, “[t]he first-action
`allowance of Claims 1–30 is an error or oversight by the Patent Office by
`not specifically addressing any prior art made of record in the ‘971 and prior
`art references relied upon by the PTAB in 4 different PTAB proceedings
`prior to issuance of the ‘971.” Pet. 10–11 (referring to IPR2018-00488,
`IPR2021-00777, IPR2021-01232, and IPR2021-01235).
`Institution of inter partes review is discretionary. See 35 U.S.C.
`§ 314(a); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016)
`(the AIA does not impose a “mandate to institute review”). One of the
`guideposts for our discretion is 35 U.S.C. § 325(d), which provides, in
`relevant part:
`MULTIPLE PROCEEDINGS -- . . . In determining whether to
`institute or order a proceeding under this chapter, chapter 30, or
`chapter 31, 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.
`Thus, 35 U.S.C. § 325(d) identifies two separate issues that the
`Director may consider in exercising discretion to deny institution of review:
`whether the petition presents to the Office the same or substantially the same
`
`
`10 Patent Owner also argues that we should deny institution because any new
`issues of patentability raised by the Petition “would be more efficiently and
`directly addressed by the petition for reexamination that has been or will
`shortly be filed by Patent Owner.” Prelim. Resp. 1. On October 16, 2023,
`however, Patent Owner notified the Board that it decided not to file a
`Reexamination Request. Ex. 3001.
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`IPR2023-00810
`Patent 11,376,971 B2
`art previously presented to the Office; and whether the petition presents to
`the Office the same or substantially the same arguments previously
`presented to the Office. Advanced Bionics, LLC v. MED-EL
`Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 7 (PTAB
`Feb. 13, 2020) (designated precedential March 24, 2020) (“Advanced
`Bionics”). We consider multiple factors when determining whether to
`exercise our discretion under § 325(d), including:
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination; (b) the
`cumulative nature of the asserted art and the prior art evaluated
`during examination; (c) the extent to which the asserted art was
`evaluated during examination, including whether the prior art
`was the basis for rejection; (d) the extent of the overlap between
`the arguments made during examination and the manner in which
`Petitioner relies on the prior art or Patent Owner distinguishes
`the prior art; (e) whether Petitioner has pointed out sufficiently
`how the Examiner erred in its evaluation of the asserted prior art;
`and (f) the extent to which additional evidence and facts
`presented in the Petition warrant reconsideration of the prior art
`or arguments.
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586,
`Paper 8 at 17–18 (PTAB Dec. 15, 2017) (informative; precedential as to
`§ III.C.5, first paragraph). We apply a two-part framework in deciding
`discretionary denial under § 325(d), first considering Becton, Dickinson
`factors (a), (b), and (d) to determine whether the same or substantially the
`same art or arguments were previously presented to the Office, and if so,
`evaluating Becton, Dickinson factors (c), (e), and (f) to determine whether
`the petitioner has demonstrated that the Office erred in a manner material to
`the patentability of challenged claims. Advanced Bionics, 7–11.
`With respect to the first part of the Advanced Bionics framework, it is
`undisputed that Baxter (as well as other references relied upon in the
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`IPR2023-00810
`Patent 11,376,971 B2
`Petition) was previously presented to the Office. Pet. 10; Prelim. Resp. 2–3;
`Ex. 1002, 81–85 (IDS listing Baxter and stating “All references considered
`except where lined through”); Advanced Bionics, 7–8 (stating that
`“[p]reviously presented art includes . . . art provided to the Office, such as
`on an Information Disclosure Statement (IDS)”).
`With respect to the second part of the Advanced Bionics framework,
`we conclude Petitioner has adequately shown that the Office erred in a
`manner material to the patentability of the challenged claims. Petitioner
`correctly notes that the record does not reflect any substantive evaluation of
`Baxter in an Office action during prosecution of the ’971 patent. See Pet.
`10; see generally Ex. 1002. Further, as discussed in detail above, Petitioner
`has demonstrated sufficiently for purposes of this Decision that Baxter
`teaches or suggests all of the limitations of the challenged claims, and that
`the challenged claims would have been obvious in view of Baxter.
`Accordingly, we agree with Petitioner that, at least with respect to Baxter,
`“[t]he first-action allowance of Claims 1–30 is an error or oversight by the
`Patent Office.” Pet. 10.
`For all of the foregoing reasons, we decline to exercise our discretion
`under 35 U.S.C. § 325(d) not to institute an inter partes review.11
`
`
`
`11 We recognize that Patent Owner’s § 325(d) arguments are not limited to
`Baxter. See, e.g., Prelim. Resp. 2–3 (asserting that Tracey, Zhang,
`Richardson, Xinfang, and Krieger450 were also previously presented to the
`Office). In view of our determination regarding Baxter, however, we
`decline to consider Patent Owner’s additional § 325(d) arguments because
`Petitioner’s challenges based on Baxter alone address all challenged claims.
`Accordingly, § 325(d) is not sufficiently implicated under the present facts
`such that institution on all challenges would undermine the statutory purpose
`of § 325(d).
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`
`III. CONCLUSION
`Because Petitioner has demonstrated a reasonable likelihood that at
`least one challenged claim of the ’971 patent is unpatentable over the prior
`art of record, we institute an inter partes review. And because we find some
`grounds sufficient for institution, we institute on all grounds in the petition.
`See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018) (“The agency
`cannot curate the claims at issue but must decide them all.”); PGS
`Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting
`the statute as requiring “a simple yes-or-no institution choice respecting a
`petition, embracing all challenges included in the petition”).
`At this stage of the proceeding, we have not made a final
`determination with respect to the patentability of any challenged claim or
`any underlying factual or legal issue.
`IV. ORDER
`For the reasons given, it is:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–30 of the ’971 patent is instituted with respect to all
`grounds of unpatentability asserted in the Petition, commencing on the entry
`date of this Decision; and
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of trial.
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`IPR2023-00810
`Patent 11,376,971 B2
`FOR PETITIONER:
`Kevin Patariu
`Bing Ai
`John Esterhay
`John Schnurer
`PERKINS COIE
`patariu-ptab@perkinscoie.com
`ai-ptab@perkinscoie.com
`esterhay-ptab@perkinscoie.com
`schnurer-ptab@perkinscoie.com
`
`FOR PATENT OWNER:
`Robert R. Brunelli
`Jason H. Vick
`SHERIDAN ROSS P.C.
`rbrunelli@sheridanross.com
`jvick@sheridanross.com
`
`
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