958 F.3d 1378
Fed. Cir.2020Background:
- ESIP Series 2, LLC owns U.S. Patent No. 9,415,130 for a diffuser/vaporizer that uses a micro‑cyclone (a spiral or arcuate channel through a wall) to separate larger droplets and emit ultra‑fine droplets.
- Claim 1 recites a system with a reservoir, eductor, atomizer, and a separator that passes flow spirally and circumferentially through an arcuate channel formed through a wall.
- Puzhen Life USA filed an IPR against claims 1, 3, and 17, asserting obviousness in view of Sevy combined with Cronenberg and alternatively Sevy combined with Giroux.
- The PTAB found Sevy disclosed most claim elements (including a separator plate/orifice), and that Cronenberg or Giroux taught the arcuate/helical channel; the Board concluded a skilled artisan would be motivated to combine them and held the challenged claims obvious.
- ESIP also argued the petition was defective because Puzhen failed to identify all real parties in interest (allegedly doTERRA and Puzhen Life Co.); the Board found no such RPI and instituted the IPR.
- The Federal Circuit affirmed the Board’s obviousness decision and held that the Board’s real‑party‑in‑interest determination (and decision to institute) is non‑appealable under 35 U.S.C. § 314(d).
Issues:
| Issue | Plaintiff's Argument (ESIP) | Defendant's Argument (Puzhen / Board) | Held |
|---|---|---|---|
| Obviousness of claims 1, 3, 17 | Sevy does not teach separating by an orifice or produce the claimed arcuate channel; Giroux/Cronenberg do not teach forming a helical/arcuate channel through a wall; expert evidence disputes combination | Sevy teaches a separator plate/orifice that segregates large droplets; Cronenberg/Giroux teach arcuate/helical channels that could be substituted into Sevy; expert testimony supports motivation to combine | Affirmed: substantial evidence supports PTAB findings and the claims are obvious in view of Sevy+Cronenberg and Sevy+Giroux |
| Real parties in interest / Institution | Puzhen failed to identify all real parties in interest so the petition was barred and PTAB should not have instituted IPR | PTAB found the named petitioners adequately identified real parties in interest; institution is an agency action tied to §314(d) | Held non‑reviewable on appeal: §314(d) precludes review of the Board’s RPI/institution determination; institution stands |
Key Cases Cited
- Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016) (§314(d) can preclude judicial review of institution‑related determinations)
- Thryv, Inc. v. Click‑To‑Call Techs., LP, 140 S. Ct. 1367 (2020) (time‑bar challenges under §315(b) are institution‑related and barred from appeal)
- Persion Pharms. LLC v. Alvogen Malta Operations Ltd., 945 F.3d 1184 (Fed. Cir. 2019) (standards for obviousness review; factual findings reviewed for substantial evidence)
- Impax Labs., Inc. v. Lannett Holdings Inc., 893 F.3d 1372 (Fed. Cir. 2018) (courts should not reweigh expert testimony; substantial evidence review)
- Consol. Edison Co. v. NLRB, 305 U.S. 197 (1938) (definition of substantial evidence)