- PTAB · Jan 5, 2017 · IPR2016-01367 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because Wollesen did not disclose the claimed interlayer insulating film, and Jeng did not cure that deficiency.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Upon consideration of the Petition and Preliminary Response, and for the reasons explained below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to any claim challenged in the Petition. See 35 U.S.C. § 314(a); 37 C.F.R § 42.108. The Petition is denied.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We are in general agreement with Patent Owner’s proposed construction. However, our construction adds the word “other” and is as follows: an insulating film located between but not within other layers. Our construction is supported sufficiently by the intrinsic evidence alone. The ’980 patent uses the terms “interlayer” and “buried” to refer to two distinct configurations of insulating films. The term “interlayer insulating film” is described with something (namely, a metal wire layer) formed on top of it. E.g., Ex. 1001, Abstract (“A plurality of metal wires are formed on an underlying interlayer insulating film.”), 13:39–41 (“As is shown in FIG. 10, on an underlying interlayer insulating film 11 is formed a metal wire layer including a plurality of metal wires 12.”); see also id. at Fig. 1 4 The ’980 patent identifies several priority applications, having a range of filing dates from September 10, 1996 through November 19, 2007. Ex. 1001, [22], [64], [60], [30]; see also id. at 1:10–20 (identifying the U.S. priority applications). The ’811 patent was filed within this range—on December 20, 2000. Ex. 2003, [22]. In its Preliminary Response, Patent Owner does not argue for entitlement to any particular priority date. On this record, we find the ’811 patent’s disclosure probative of what a person of ordinary skill in the art would have understood “intralayer” to mean in the context of semiconductors. (illustrating the same). In contrast, the term “buried insulating film” is described with something (namely, metal wires) buried within it. E.g., id., Abstract (“Areas among the metal wires are filled with a buried insulating film.”), 13:39–48 (“The metal wires 12 are buried in the insulating film 13.”), Fig. 1 (ref. 11, 13); see also id. at Fig. 1 (illustrating the same); dependent claims 19 and 36 (reciting “wherein said first dielectric film is buried, among said areas among said metal wires, at least in an area having a minimum pitch between said metal wires.”). Patent Owner’s extrinsic evidence, discussed above, also supports our construction.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“An “interlayer insulating film” within the meaning of claims 18 and 35 is an insulating film located between but not within other layers. As Patent Owner correctly points out, in Wollesen, dielectric layer 9 is located, at least partially, within the same layer as conductive layer 8. See Prelim. Resp. 24 (“dielectric layer 9 would be considered an ‘intralayer’ dielectric, not an ‘interlayer’ insulating film”). Put another way, conductive layer 8 is buried within dielectric layer 9 in a manner similar to that of the ’980 patent’s metal wires 12 buried within buried insulating film 13. See Ex. 1001, 13:39–48, Fig. 1. Accordingly, dielectric layer 9 is not an interlayer insulating film within the meaning of claims 18 and 35.5 5 The Wollesen embodiment that Petitioner asserts as anticipatory also includes “[i]nterlayer dielectric layer 6.” Ex. 1006, 1:57. Petitioner does not argue, however, that it meets the “interlayer insulating film” limitation of claims 18 and 35. Indeed, so arguing would have compromised Petitioner’s arguments with respect to other limitations of claims 18 and 35. Petitioner has not shown how any of the challenged claims, all of which recite or incorporate “an interlayer insulating film,” is anticipated by Wollesen.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“C. Obviousness over Wollesen and Jeng Petitioner’s obviousness challenge relies additionally on Jeng but not in a manner that would cure the deficiency of Wollesen identified above. More specifically, Petitioner relies additionally on Jeng to meet a different limitation of claims 18 and 35, namely “a surface protecting film including a first dielectric film with a small dielectric constant for filling at least a part of areas among said metal wires in said metal wire layer,” and no other limitations. Pet. 52–57. Accordingly, Petitioner has not shown how any of the challenged claims would have been obvious over Wollesen and Jeng.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips - Fitbit, Inc. v. Bodymedia, Inc.Institution deniedPTAB · Sep 8, 2016 · IPR2016-00707 · APJ Trevor M Jefferson · IPR · Institution
The Board denied institution because Fitbit did not show a reasonable likelihood that claims 1–29 would have been obvious over Mault 470 and Mault 089, which were not shown to be prior art.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Petitioner asserts that the broadest reasonable construction of “contextual data of the individual” as recited in the claim limitation 1(b)(i) is “data relating to an individual’s activity state environment, surrounding, or location.” Pet. 17. Petitioner asserts that this construction was applied in the related ITC proceeding. Id. (citing Ex. 1015, 17–22, 33). Patent Owner does not contest this proposed construction. For purposes of this Decision, we adopt Petitioner’s proposed construction for “contextual data of the individual.”” slip op. at 6
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“of the claimed subject matter without explaining what the parent application conveys to those skilled in the art. See Pet. 9–10 (discussing whether June 2000 applications contain “equivalent description” of claim 1 limitations); Ex. 1003 ¶ 32 (addressing whether “equivalent description” exits in the parent applications). Contrary to Petitioner’s application of the “equivalent description,” the test for sufficiency of support in a parent application is not “the presence or absence of literal support in the [parent application] for the claim language,” In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983), but instead is whether the disclosure of the application relied upon reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter, Vas-Cath Inc., 935 F.2d at 1563–64; see Yorkey v. Diab, 605 F.3d 1297, 1303 (Fed. Cir. 2010) (quoting In re Kaslow, 707 F.2d at 1375). In the present case, Petitioner relies on conclusory statements that [t]he June 2000 applications do not contain an equivalent description of a processing unit configured to provide feedback for an individual’s weight-loss goal by performing each of the steps recited in subparts b.(i)–(v) of claim 1 in sufficient detail such that one of skill in the art can clearly conclude the applicant invented the claimed invention.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“Based on the foregoing, we find that Petitioner has not shown that Mault 470 and Mault 089 are prior art, and, thus, there is not a reasonable likelihood that Petitioner would prevail in showing that claims 1–29 would have been obvious under 35 U.S.C. § 103 over Mault 470 and Mault 089.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)
“Mault 470 and Mault 089 are prior art, and, thus, there is not a reasonable likelihood that Petitioner would prevail in showing that claims 1–29 would have been obvious under 35 U.S.C. § 103 over Mault 470 and Mault 089. III. CONCLUSION For the foregoing reasons, we determine that the Petition fails to establish a reasonable likelihood of prevailing on the asserted ground that claims 1–29 would have been unpatentable as obvious under 35 U.S.C. § 103 over Mault 470 and Mault 089.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 8,398,546 - Leggett & Platt, Inc. v. Dreamwell, Ltd.Rehearing deniedPTAB · Jun 29, 2016 · IPR2015-01753 · APJ Barry L Grossman · IPR · Rehearing
The Board denied rehearing of its decision denying institution because Petitioner did not show that the Board abused its discretion or misapprehended or overlooked a matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an 1 The “statement” to which the Request apparently refers reads: “Petitioner does not cite any persuasive evidence that Kochi achieves any of the asserted advantages of the disclosed alloy without the claimed and disclosed pearlite structure.” Decision 12. unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). It is not enough to show merely that the prior art includes separate references covering each separate limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. Id.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“composition that provided “excellent wire-drawing workability, generating wire insusceptible to wire break, extending die life, increasing a wire-drawing rate thereby enhancing productivity during the manufacturing process, reducing cost, and producing a product, e.g., spring that is less susceptible to breakage.” Id. at 33–34. According to Kochi’s disclosure, however, the benefits on which Petitioner relied for the proffered rationale result from: adequately controlling the requirements for the metal microstructure thereof (the area ratio of the second-phase ferrite, and the pearlite lamellar spacing) and the requirements for the chemical components thereof. Decision 12 (citing Ex. 1002 ¶ 71); see also Ex. 1004 ¶ 41 (disclosing the need to control the area ratio of second-phase ferrite to achieve improved resistance to wire-break). Kochi also discloses that “pearlite is the primary constituent of the metal microstructure.” Ex. 1004 ¶ 43. As stated in the Decision, there was no persuasive evidence that Kochi achieves any of the asserted advantages of the disclosed alloy without the disclosed pearlite lamellar structure. Decision 12. In weighing the evidence, the Decision determined there was no persuasive evidence that it would have been obvious to a person of ordinary skill that the asserted benefits in Kochi can be achieved with an alloy that does not include the metal microstructure of Kochi. Id.” slip op. at 4
§ 103 obviousnesscites KSRPatents in suitUS 8,474,805 - Depuy Synthes Sales, Inc v. Acantha LLCInstitution deniedPTAB · Jun 6, 2016 · IPR2016-00333 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 44–54 and 101–105 obvious over Errico and Koshino or Campbell.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner has not shown an apparent reason to combine the relied upon teachings of Errico and Koshino or Campbell in the manner set forth in the challenged claims. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (requiring, for obviousness, “an apparent reason to combine the known elements in the fashion claimed by the patent at issue”).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The Petition and declaration do offer additional arguments and testimony to support the proposed modification but they too are insufficient. First, the Petition states, with support from Dr. Ferree, that “it was known in the orthopedic industry at the time of the filing of the ’008 patent that it was desirable for orthopedic implants to be limited to the minimum number of components necessary” due to “cost of manufacturing, inventory, ease of use, crevice corrosion, and simplicity of surgery.” Pet. 14 (citing Ex. 1006 ¶ 40). Limiting the number of components may be desirable, if the reduction can be achieved without compromising design goals. Yet, Errico expressly teaches a more complex structure because of the benefits it provides. Those benefits include that the screw can be angulated in countless directions to provide a surgeon flexibility during implantation (Ex. 1003, 7:22–24), that the screw is locked into whatever angle ultimately is chosen by the “crush locking” of the interior semi-spherical volume of the coupling element against the semi-spherical head (id. at 5:5–7), that the coupling element fully mates with the hole in the plate regardless of the angle of the screw (id. at 6:62–67), and that the coupling element is secured just beneath (posterior to) the snap ring (id. at 7:51–55, Fig. 6). The Petition next states, with support from Dr. Ferree, that a person of ordinary skill in the art “would understand that it is critical for the bone plate to have as thin a profile as possible” but that “[t]he coupling element in Errico . . . requires more space in the bore, and thus necessarily increases the profile (thickness) of the plate.” Pet. 15 (citing Ex. 1006 ¶¶ 42–43). However, neither the Petition nor Dr. Ferree cites evidence that using a coupling element requires more anterior-posterior space in the bore than using a screw head alone. See Pet. 15; Ex. 1006 ¶¶ 42–43. In fact, the record evidence tends to show the opposite. In Koshino, as well as in the ’008 patent, a substantial gap exists above the screw head. See Ex. 1004, Fig. 6; Ex. 1001, Figs. 5–6.6 As discussed above, the ’008 patent describes this gap as desirable because it, along with transverse tolerance, accommodates angulation of the screw. Ex. 1001, 5:43–52. Petitioner has not shown an apparent reason to combine the relied upon teachings of Errico and Koshino or Campbell in the manner set forth in the challenged claims. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (requiring, for obviousness, “an apparent reason to combine the known elements in the fashion claimed by the patent at issue”).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundNot shown unpatentable
“Additionally, Errico teaches away from the proposed combination because such a combination would render Errico inoperable for its intended purpose. See In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1381 (Fed. Cir. 2007) (“Additionally, a reference may teach away from a use when that use would render the result inoperable.”). Errico seeks to provide an” slip op. at 15
§ 103 obviousnesscites KSR · Graham - Depuy Synthes Sales, Inc v. Acantha LLCInstitution deniedPTAB · Jun 6, 2016 · IPR2016-00334 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution for claims 59–91 because Petitioner did not show a reasonable likelihood of proving obviousness over Errico and Koshino or Campbell.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Because Petitioner has not presented sufficient reasoning for why a person of ordinary skill in the art would have made the proposed combination and because Errico teaches away from such a combination, there is not a reasonable likelihood that Petitioner would prevail with respect to any of the claims challenged as obvious over Errico and Koshino or Campbell. III. CONCLUSION There is not a reasonable likelihood that Petitioner would prevail with respect to any challenged claim. See 35 U.S.C. § 314(a); 37 C.F.R. § 42.108. IV. ORDER Accordingly, it is ORDERED that the Petition is denied.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The Petition and declaration do offer additional arguments and testimony to support the proposed modification but they too are insufficient. First, the Petition states, with support from Dr. Ferree, that “it was known in the orthopedic industry at the time of the filing of the ’008 patent that it was desirable for orthopedic implants to be limited to the minimum number of components necessary” due to “cost of manufacturing, inventory, ease of use, crevice corrosion, and simplicity of surgery.” Pet. 14 (citing Ex. 1006 ¶ 40). Limiting the number of components may be desirable, if the reduction can be achieved without compromising design goals. Yet, Errico expressly teaches a more complex structure because of the benefits it provides. Those benefits include that the screw can be angulated in countless directions to provide a surgeon flexibility during implantation (Ex. 1003, 7:22–24), that the screw is locked into whatever angle ultimately is chosen by the “crush locking” of the interior semi-spherical volume of the coupling element against the semi-spherical head (id. at 5:5–7), that the coupling element fully mates with the hole in the plate regardless of the angle of the screw (id. at 6:62–67), and that the coupling element is secured just beneath (posterior to) the snap ring (id. at 7:51–55, Fig. 6). The Petition next states, with support from Dr. Ferree, that a person of ordinary skill in the art “would understand that it is critical for the bone plate to have as thin a profile as possible” but that “[t]he coupling element in Errico . . . requires more space in the bore, and thus necessarily increases the profile (thickness) of the plate.” Pet. 15 (citing Ex. 1006 ¶¶ 42–43). However, neither the Petition nor Dr. Ferree cites evidence that using a coupling element requires more anterior-posterior space in the bore than using a screw head alone. See Pet. 15; Ex. 1006 ¶¶ 42–43. In fact, the record evidence tends to show the opposite. In Koshino, as well as in the ’008 patent, a substantial gap exists above the screw head. See Ex. 1004, Fig. 6; Ex. 1001, Figs. 5–6.6 As discussed above, the ’008 patent describes this gap as desirable because it, along with transverse tolerance, accommodates angulation of the screw. Ex. 1001, 5:43–52. Petitioner has not shown an apparent reason to combine the relied upon teachings of Errico and Koshino or Campbell in the manner set forth in the challenged claims. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (requiring, for obviousness, “an apparent reason to combine the known elements in the fashion claimed by the patent at issue”).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundNot shown unpatentable
“Additionally, Errico teaches away from the proposed combination because such a combination would render Errico inoperable for its intended purpose. See In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1381 (Fed. Cir. 2007) (“Additionally, a reference may teach away from a use when that use would render the result inoperable.”). Errico seeks to provide an 6 Campbell also shows a gap above the screw head, although it appears to be relatively smaller than the gap above the screw head in Koshino or the ’008 patent. See Ex. 1005, Fig. 22. implantable plate “having a polyaxial coupling of the screw to the plate, whereby a single plate is compatible with a wide range of screw-in angles” and “which has a simple and effective locking mechanism for locking the bone screw to the plate.” Ex. 1003, 3:59–67 (emphasis added). Modifying Errico as Petitioner proposes would destroy at least one of these features. In Errico, the coupling element facilitates angulation of the screw relative to the plate prior to full implantation and subsequent locking of the screw to the plate in a given angulation upon full implantation. The proposed combination would remove the coupling element without substituting in anything that would preserve both features. Although the Petition explains how the proposed modified screw could angulate with respect to the plate (thereby allowing polyaxial coupling to the plate), the Petition does not explain how the proposed screw (or its head) could be locked to the plate at any particular angle. See Pet. 14–18.” slip op. at 15
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Citing declaration testimony of Bret A. Ferree, M.D., the Petition argues that using a screw head from either Koshino or Campbell instead of Errico’s coupling element “is nothing more than an obvious choice in design, and one that would have been readily contemplated and implemented by a POSA at the time of the invention, for both mechanical and clinical reasons, with a reasonable expectation of success.” Id. (citing Ex. 1006 ¶¶ 38–39). The cited testimony, however, is not persuasive. In paragraph 38, Dr. Ferree simply testifies to the ultimate conclusion of law that the claims are obvious. Ex. 1006 ¶ 38. And paragraph 39 is virtually identical to the just-quoted conclusory argument set forth in the Petition. Id. at ¶ 39.” slip op. at 13
§ 103 obviousnesscites KSR - Depuy Synthes Sales, Inc v. Acantha LLCInstitution deniedPTAB · Jun 3, 2016 · IPR2016-00329 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on the Errico–Koshino or Errico–Campbell obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner has not shown an apparent reason to combine the relied upon teachings of Errico and Koshino in the manner set forth in independent claims 1, 21, and 36. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (requiring, for obviousness, “an apparent reason to combine the known elements in the fashion claimed by the patent at issue”).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“argues that using a screw head instead of Errico’s coupling element “is nothing more than an obvious choice in design, and one that would have been readily contemplated and implemented by a POSA at the time of the invention, for both mechanical and clinical reasons, with a reasonable expectation of success.” Id. (citing Ex. 1006 ¶¶ 37–38). The cited testimony, however, is not persuasive. In paragraph 37, Dr. Ferree simply testifies to the ultimate conclusion of law that the claims are obvious. Ex. 1006 ¶ 37. And paragraph 38 is virtually identical to the just-quoted conclusory argument set forth in the Petition. Id. at ¶ 38. The Petition and declaration do offer additional arguments and testimony to support the proposed modification but they too are insufficient. First, the Petition states, with support from Dr. Ferree, that “it was known in the orthopedic industry at the time of the filing of the ’008 patent that it was desirable for orthopedic implants to be limited to the minimum number of components necessary” due to “cost of manufacturing, inventory, ease of use, crevice corrosion, and simplicity of surgery.” Pet. 13–14 (citing Ex. 1006 ¶ 39). Limiting the number of components may be desirable, if the reduction can be achieved without compromising design goals. Yet, Errico” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundNot shown unpatentable
“Additionally, Errico teaches away from the proposed combination because such a combination would render Errico inoperable for its intended purpose. See In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1381 (Fed. Cir. 2007) (“Additionally, a reference may teach away from a use when that use would render the result inoperable.”). Errico seeks to provide an implantable plate “having a polyaxial coupling of the screw to the plate, whereby a single plate is compatible with a wide range of screw-in angles” and “which has a simple and effective locking mechanism for locking the bone screw to the plate.” Ex. 1003, 3:59–67 (emphasis added). Modifying Errico as Petitioner proposes would destroy at least one of these features. In Errico, the coupling element facilitates angulation of the screw relative to the plate prior to full implantation and subsequent locking of the screw to the plate in a given angulation upon full implantation. The proposed combination would remove the coupling element without substituting anything that would preserve both features. Although the Petition explains how the proposed modified screw could angulate with respect to the plate (thereby allowing polyaxial coupling to the plate), the Petition does not explain how the proposed screw (or its head) could be locked to the plate at any particular angle. See Pet. 13–17. Because Petitioner has not presented sufficient reasoning for why a person of ordinary skill in the art would have made the proposed combination and because Errico teaches away from such a combination, there is not a reasonable likelihood that Petitioner would prevail with respect to any of the claims challenged as obvious over Errico and Koshino.” slip op. at 15
§ 103 obviousnesscites KSR - Enovate Medical, LLC v. Intermetro Industries CorporationAll claims unpatentablePTAB · May 11, 2016 · IPR2015-00300 · APJ Jennifer S Bisk · IPR · Final written decision
Claims 27, 28, 88, 101, and 108 are unpatentable as obvious over Dell, Sweere, and Allan, with Planar additionally applied to claim 108.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (internal citations omitted). Generally, “the ‘real party-in-interest’ [on the petitioner side] is the party that desires review of the patent. Thus, the ‘real party-in-interest’ may be the petitioner itself, and/or it may be the party or parties at whose behest the petition has been filed.” Id.” slip op. at 8
- ExcludeMotion to exclude, grantedGranted
“IV. MOTIONS TO EXCLUDE Petitioner filed a Motion to Exclude Exhibits 2003–2006. Paper 33. Each of Exhibits 2003–2005 is a license agreement, and Exhibit 2006 is a Declaration by Robert A. Sobie. All of this evidence was submitted by Patent Owner as objective evidence of secondary considerations. Because we do not rely on any of that evidence in a manner adverse to Petitioner, we dismiss the Motion as moot. Patent Owner filed a Motion to Exclude Exhibit 1007, which is a declaration by T.E. Schlesinger, Ph.D., which Petitioner filed with its Reply. Paper 35. Because we do not rely on Exhibit 1007 in any manner, we dismiss the Motion as moot.” slip op. at 28
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other
“entity. It was filed without our authorization because it was filed with Patent Owner’s Opposition to Petitioner’s Motion to Exclude despite that Exhibit 202316 is not responsive to the Motion to Exclude. Paper 42 (“Opp. to Pet. Mot. to Excl.”). In fact, Patent Owner’s Opposition requests that we enter into the record “new Exhibit 2023, which was finalized subsequent to Patent Owner’s Response.” Opp. to Pet. Mot. to Excl. 1. A request for relief should not be made in an opposition brief. It should be made in a motion. 37 C.F.R. § 42.20(a) (“Relief, other than a petition requesting the institution of a trial, must be requested in the form of a motion.”). Further, a motion (and, thus, a request for relief) may be filed only if authorization has been obtained. 37 C.F.R. § 42.20(b) (“A motion will not be entered without Board authorization. Authorization may be provided in an order of general applicability or during the proceeding.”). Consequently, Exhibit 2023 shall be expunged because it was filed without our authorization. See 37 C.F.R. § 42.7.” slip op. at 29
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“No limitation requires an express construction for purposes of the patentability challenge at issue here. See Pet. 6–7 (offering only one proposed construction, which was not material to the patentability challenge);8 PO Resp. 11 (“Patent Owner agrees that the claim terms involved in the [instituted Grounds] do not require construction for purposes of resolving this [inter partes review (IPR)].”).” slip op. at 7
Patent outcomesUS 6,721,178 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,721,178 - Leggett & Platt, Inc. v. Dreamwell, Ltd.Institution deniedPTAB · Feb 22, 2016 · IPR2015-01757 · APJ Meredith C Petravick · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on claims 1–9 under the asserted obviousness ground.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“II. ANALYSIS A. Claim Construction In an inter partes review, the Board interprets claim terms in an unexpired patent according to the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 84 U.S.L.W. 3218 (U.S. Jan. 15, 2016) (No. 15-446). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as they would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner proposes a construction for “high-carbon steel.” Pet. 21. We, however, determine that an explicit construction of “high-carbon steel” or any other claim term is not necessary for the purposes of our Decision.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Absent other evidence or another articulated rationale with logical underpinning, combining Gladney, Kochi, and Magrab to arrive at the a spring for a cushioning article made from the specifically claimed alloy of high-carbon steel appears to be improper hindsight. “A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” See KSR, 550 U.S. at 421. Petitioner fails to establish a sufficient articulated reasoning with some rational underpinning to support the legal conclusion of obviousness (In re Kahn, 441 F.3d at 988) and, thus, fails to demonstrate a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition. iii. Dependent Claims 2–9 Claims 2–9 depend from claim 1, and, like for claim 1, Petitioner contends that claims 2–9 are unpatentable over Gladney, Kochi, and Magrab (Pet. 40–47). For the same reasons as discussed above, we determine that Petitioner fails to demonstrate a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The evidence of record does not establish sufficiently that the prior art alloyed high-carbon steel is an inexpensive material suitable for springs of a mattress or other cushioning article. Gladney’s general disclosure that springs made from high-carbon spring steels are inexpensive (see Ex. 1003, 5:1–3), fails to establish sufficiently that the prior art alloyed high-carbon steel is inexpensive or suitable for springs of a mattress or cushioning article. Likewise, Magrab’s general disclosures that high-carbon steel is inexpensive and used for springs (see Ex. 1005, 155, 161–162) and Kochi’s brief mention of “spring steel” (Ex. 1004 ¶ 1) does not demonstrate such. Dr. O’Malley’s testimony also does not cure the deficiencies of the prior art because Dr. O’Malley discusses cost with regards to carbon steel generally, but not the cost of the prior art alloyed high-carbon steel. See Ex. 1002 ¶¶ 68, 85. We also acknowledge that Gladney and Magrab disclose that the cost of materials is a factor to be considered when choosing an alloy. Pet. 38 (citing Ex. 1003, 1005). Such disclosure, however, does not demonstrate that claim 1 would have been obvious based on Gladney, Kochi, and Magrab. And Petitioner’s reliance on Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368 (Fed. Cir. 2006) does not persuade us otherwise. In Dystar, decided prior to KSR, the Federal Circuit emphasized a flexible approach to considering whether an invention would have been obvious. DyStar, 464 F.3d at 1367 (“It is difficult to see how our suggestion test could be seen as rigid and categorical given the myriad cases over several decades in which panels of this court have applied the suggestion test flexibly.”). As noted by the Court, “[o]bviousness is a complicated subject requiring sophisticated analysis, and no single case lays out all facets of the legal test.” Id. Moreover, as discussed above, there is no persuasive evidence that the alloyed high-carbon steel spring recited in the claim is less expensive or more efficient than prior art springs. See Prelim. Resp. 17 (pointing out there is no “list of materials costs or any manufacturing cost analysis that would substantiate Petitioner’s statement in the context of combining Gladney with Kochi with Magrab to allegedly come up with the claimed invention.”). The evidence of record fails to demonstrate, sufficiently, that the prior art alloyed high-carbon steel is an inexpensive material suitable for a spring for a mattress or cushioning articles and, thus, Petitioner fails to establish that one of ordinary skill in the art would make the proposed modification because the alloyed high-carbon steel required by claim 1 is a well-known inexpensive material that is suitable for springs.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“C. Availability of Magrab as Prior Art Patent Owner argues that Petitioner fails to establish that Magrab was publically accessible prior to April 18, 2008. Prelim. Resp. 34–36. As discussed above, we determine that Petitioner fails to demonstrate that claims 1–9 are unpatentable over Gladney, Kochi, and Magrab and, thus, we need not address whether Petitioner has established sufficiently that Magrab is prior art for the purposes of our Decision.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,919,752 - Leggett & Platt, Inc. v. Dreamwell, Ltd.Institution deniedPTAB · Feb 22, 2016 · IPR2015-01753 · APJ Barry L Grossman · IPR · Institution
Institution was denied because the petition did not show a reasonable likelihood of proving claims 1–20 obvious over Gladney, Kochi, and Magrab.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. It is not enough to show merely that the prior art includes separate references covering each separate limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness additionally requires that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. Id. Petitioner’s rationale for the proposed combination of references is that it would have been obvious “to apply the alloy compositions as taught by Kochi to the wire spring of Gladney to obtain the multiple benefits as taught by Kochi.” Pet. 33. According to Petitioner, [t]he combination is nothing more than applying a known technique of producing a high-carbon spring steel, as taught by Kochi, to the known spring of Gladney to yield the predictable results of, for example, providing excellent wire-drawing workability, generating wire insusceptible to wire break, extending die life, increasing a wire-drawing rate thereby enhancing productivity during the manufacturing process, reducing cost, and producing a product, e.g., spring that is less susceptible to breakage. Id. at 33–34 (citing Ex. 1002 ¶ 71). Paragraph 71 of Exhibit 1002, the Declaration of Dr. O’Malley, is essentially a verbatim repetition of the portion of the Petition quoted above. It does not provide any underlying facts or data on which the opinion is based, and thus is entitled to little or no probative weight. 37 C.F.R. § 42.65(a). Neither the Petition nor the cited portion of Dr. O’Malley’s Declaration refers to any persuasive evidence to support the assertions that the proposed combination of references extends die life, increases a wire-drawing rate thereby enhancing productivity during the manufacturing process, reduces cost, and produces a product, e.g., a spring, that is less susceptible to breakage. slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Petitioner’s rationale for the proposed combination of references is that it would have been obvious “to apply the alloy compositions as taught by Kochi to the wire spring of Gladney to obtain the multiple benefits as taught by Kochi.” Pet. 33. According to Petitioner, [t]he combination is nothing more than applying a known technique of producing a high-carbon spring steel, as taught by Kochi, to the known spring of Gladney to yield the predictable results of, for example, providing excellent wire-drawing workability, generating wire insusceptible to wire break, extending die life, increasing a wire-drawing rate thereby enhancing productivity during the manufacturing process, reducing cost, and producing a product, e.g., spring that is less susceptible to breakage. Id. at 33–34 (citing Ex. 1002 ¶ 71). Paragraph 71 of Exhibit 1002, the Declaration of Dr. O’Malley, is essentially a verbatim repetition of the portion of the Petition quoted above. It does not provide any underlying facts or data on which the opinion is based, and thus is entitled to little or no probative weight. 37 C.F.R. § 42.65(a). Neither the Petition nor the cited portion of Dr. O’Malley’s Declaration refers to any persuasive evidence to support the assertions that the proposed combination of references extends die life, increases a wire-drawing rate thereby enhancing productivity during the manufacturing process, reduces cost, and produces a product, e.g., a spring, that is less susceptible to breakage.” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“C. Availability of Magrab as Prior Art Patent Owner argues that Petitioner fails to establish that Magrab was publically accessible prior to April 18, 2008. Prelim. Resp. 36–38. As discussed above, we determine that Petitioner fails to demonstrate that claims 1–20 are unpatentable over Gladney, Kochi, and Magrab and, thus, we need not address whether Petitioner has established sufficiently that Magrab is prior art for the purposes of our decision.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“II. ANALYSIS A. Claim Construction When interpreting a claim, words of the claim are generally given their ordinary and accustomed meaning, unless it appears from the specification, the file history, or other evidence asserted by the parties that the inventor used them differently. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. Id. Petitioner proposes a construction for “high-carbon steel.” Pet. 20– 21. We, however, determine that an explicit construction of “high-carbon steel” or any other claim term is not necessary for the purposes of our Decision.” slip op. at 5
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,474,805 - Blackhawk Specialty Tools, LLC v. Top-Co Cementing Products Inc.Institution deniedPTAB · Feb 8, 2016 · IPR2015-01661 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 2, 6, and 7 anticipated by Hartman or obvious over Hartman and Lirette.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“It was Petitioner’s burden to show how the claims are unpatentable. 37 C.F.R. § 42.104(b)(4). Petitioner has not done so. Accordingly, there is not a reasonable likelihood of Petitioner prevailing in showing claims 1, 2, 6, and 7 would have been obvious over Hartman and Lirette.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner proposes that “sub” be construed to mean “tube” but provides no explanation for its proposal and cites no evidence to support it. Pet. 20. Patent Owner argues that “a ‘sub’ means ‘a small inline component in a drillstring’,” citing a “Glossary of Oilfield Terms” for support. Prelim. Resp. 12 (citing Ex. 2008, 10). Although it is clear from its title as to what the “Glossary of Oilfield Terms” purports to be, the glossary’s origin is unknown on the record before us, as the record does not shed any light on who authored it, when it was authored, or from where Patent Owner obtained it. Patent Owner does direct us, however, to intrinsic evidence that demonstrates that Petitioner’s proposed construction, which equates sub and tube, is unreasonably broad. First, Patent Owner points out that the ’131 patent distinguishes between a sub and a tubing string by noting that Figure 7 depicts the former but not the latter. Prelim. Resp. 13 (“‘FIG. 7 can be constructed so as to allow relative rotation between sub 12, and hence, a tubing string (not shown in FIG. 7).’”) (quoting Ex. 1001, 5:27–30) (Patent Owner’s emphasis). Second, Patent Owner notes that related U.S. Patent No. 6,484,803 B1, which issued from the parent application of the ’131 patent, distinguishes between a sub and tubing. Prelim. Resp. 13; see also Ex. 2009, Abstract (referring to “the diameter of the sub and/or the tubing to which it is mounted”). At a minimum, this evidence suggests that a sub is a particular part of, or within, a tubing string. In light of Petitioner’s lack of evidence for its proposed construction of sub as well as Patent Owner’s intrinsic evidence to the contrary, i.e., that a sub is a particular part of, or within, a tubing string, we reject Petitioner’s proposed construction of sub. No further construction of sub is necessary for purposes of this Decision.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Independent claim 1 recites a “sub having at each end thereof thread means for threadably connecting the sub in a tubing string.” Patent Owner argues that this limitation is not met by Hartman because Hartman discloses the use of a centralizer on a standard drilling pipe but not on a sub. As discussed above, Petitioner asserts that a tube (and, thus, presumably also the “pipe” of Hartman) is a sub, but Petitioner does not support its proposed construction with any evidence, and Patent Owner identifies intrinsic evidence that demonstrates that not every tubular component of a tubing string is considered a sub. On the record before us, Petitioner has not shown that Hartman teaches a sub. For this reason alone, there is not a reasonable likelihood of Petitioner prevailing in showing that claims 1, 2, 6, and 7 were anticipated by Hartner.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“First, Petitioner does not articulate any particular combination and/or modification of prior art elements that purportedly would have been obvious to a person of ordinary skill in the art. In other words, Petitioner has not identified any prior art construct for us to compare to the claims. See Pet. 46 (“Should HARTMAN be found to fail to teach any of the limitations of claim 1, LIRETTE fills in any such gaps.”). Second, Petitioner does not provide any reasoning or rationale to make any particular combination and/or modification of prior art elements. Instead, it states “Applicable rationales include: . . .” and then repeats, without any analysis, six of the seven rationales that are provided in the Manual of Patent Examining Procedure. Compare Pet. 46–47, with MPEP § 2141(III). It was Petitioner’s burden to show how the claims are unpatentable. 37 C.F.R. § 42.104(b)(4). Petitioner has not done so. Accordingly, there is not a reasonable likelihood of Petitioner prevailing in showing claims 1, 2, 6, and 7 would have been obvious over Hartman and Lirette.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 7,182,131
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.