- Fisher & Paykel Healthcare Limited v. Resmed LimitedRehearing deniedPTAB · Apr 24, 2018 · IPR2017-00632 · APJ Beverly M Bunting · IPR · Rehearing
The Board denied Fisher & Paykel’s rehearing request, leaving institution denied for claims 22 and 37 because it found no overlooked or misapprehended matter or abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). On rehearing, the burden of showing that the Decision should be modified lies with the party challenging the Decision, in this case, Petitioner. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsNot shown unpatentable
“claims 22 and 37 with the identified group of non-instituted claims. In our Decision, we expressly stated that “[c]laims 22 and 37 each require the second frame to include contact points that prevent rotation of the first frame with respect to the second frame.” Dec. 22. As Petitioner correctly points out, claims 22 and 37 depend from instituted claims 17 and 32, and further recite that “the second frame includes contact points [contacting the first frame] to prevent rotation of the first frame with respect to the second frame.” Req. Reh’g. 3–4 (citing Ex. 1001, 21:21–23, 22:44–47). Claim 17 requires “an opening located between the annular connection and the upper support member, the opening providing access to the first frame.” Ex. 1001, 21:4–7. Claim 32 similarly requires “a separate opening located between the annular opening and the upper support member, the separate opening providing access to the first frame while the mask assembly is fully assembled.” Id. at 22:28–31. Petitioner relied on its arguments directed to Decision, however, we were not persuaded by Petitioner’s primary argument directed to claim 81. Dec. 22. Namely, that Berthon-Jones and Barnett teach retaining the upper portion of opening 536 as a separate opening to limit or prevent unwanted rotation. See Pet. 43–44. Petitioner has not directed us to any disclosure in Berthon-Jones indicating that opening 536 performs an anti-rotation function. Rather, the function of securing the second frame to the first frame, as disclosed in Berthon-Jones, is performed by receiving holes 526, which snap-fit over connecting members 524. See Ex. 1002 ¶ 182, Fig. 51; see [Paper 7], 22–23. Dec. 18–19. Nonetheless, we were persuaded by Petitioner’s alternative argument, namely that “opening 526 located between the annular opening and upper member in the modified second frame corresponds to the ‘separate opening’ limitation.” Dec. 19 (citing Pet. 45; Ex. 1002 ¶ 182, Fig. 51). And, for the same reasons as stated with respect to claim 81, we were “persuaded at this preliminary stage of this proceeding that Petitioner has established a reasonable likelihood of prevailing on its contention that claims 17 and 32 would have been obvious over Berthon-Jones, Barnett, and Lithgow.” Id. at” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Decision, however, we were not persuaded by Petitioner’s primary argument directed to claim 81. Dec. 22. Namely, that Berthon-Jones and Barnett teach retaining the upper portion of opening 536 as a separate opening to limit or prevent unwanted rotation. See Pet. 43–44. Petitioner has not directed us to any disclosure in Berthon-Jones indicating that opening 536 performs an anti-rotation function. Rather, the function of securing the second frame to the first frame, as disclosed in Berthon-Jones, is performed by receiving holes 526, which snap-fit over connecting members 524. See Ex. 1002 ¶ 182, Fig. 51; see [Paper 7], 22–23. Dec. 18–19. Nonetheless, we were persuaded by Petitioner’s alternative argument, namely that “opening 526 located between the annular opening and upper member in the modified second frame corresponds to the ‘separate opening’ limitation.” Dec. 19 (citing Pet. 45; Ex. 1002 ¶ 182, Fig. 51). And, for the same reasons as stated with respect to claim 81, we were “persuaded at this preliminary stage of this proceeding that Petitioner has established a reasonable likelihood of prevailing on its contention that claims 17 and 32 would have been obvious over Berthon-Jones, Barnett, and Lithgow.” Id. at” slip op. at 4
- Expert testimonyPatent owner expert creditedDecided for patent owner
“bracket or frame structure” was a known modification with predictable results.” Req. Reh’g. 5–9. Primarily, our determination that we were “not persuaded that a ‘bracket or frame structure’ would have been a predictable option for incorporating Barnett’s collar 34 into Berthon-Jones’s mask.” Id. at 5 (citing Dec. 18). By way of example and citing the testimony of Mr. Eaton, we stated by that “adding a ‘bracket or frame structure’ would have been just ‘[a]nother possible solution.’” Dec. 18. slip op. at 6
§ 103 obviousnessPatents in suitUS 8,944,061 - Cree, Inc. v. Optolum, Inc.Institution deniedPTAB · Dec 4, 2017 · IPR2017-01511 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim unpatentable, chiefly because Begemann did not disclose the claimed heat-conduction-to-contained-fluid limitation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“evidence. As explained below and given the evidence of record, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that it will prevail on its assertions that Begemann anticipates either of claims 17 or 30. 1. Principles of Law” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“136 S. Ct. 2131, 2144–46 (2016) (upholding the Board’s use of the broadest reasonable interpretation standard in Inter Partes Review proceedings). Under the broadest reasonable interpretation standard, and absent any special definitions, claims terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms or phrases must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Petitioner advances interpretations of the claim terms “elongate,” “thermally conductive member,” and “heat dissipation protrusions.” Pet. 17–18. In turn, Patent Owner advances interpretations of “thermally conductive member,” “heat dissipation protrusions,” and “configured to.” Prelim. Resp. 17–21. Having considered the evidence of record and as reflected in the discussion below, we determine that express construction of these terms is not necessary for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“A claim is anticipated if each limitation of the claim is disclosed in a single prior art reference arranged as in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). “The requirement that the prior art elements themselves be ‘arranged as in the claim’ means that claims cannot be ‘treated . . . as mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims and that give the claims their meaning.’” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Lindemann Maschinenfabrik GmbH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed. Cir. 1984)). The Federal Circuit has also explained, however, that “a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (citing In re Petering, 301 F.2d 676, 681 (CCPA 1962)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“likewise require that the thermally conductive member includes the “configured to” limitation and “one or more heat dissipation protrusions, at least one of said heat dissipation protrusions being carried on said elongate member outer surface” limitations discussed above. Ex. 1001 at 4:47–50, 5:60–63. In addition to the anticipation arguments for claims 17 and 30, Petitioner argues in the alternative, “[s]hould it be determined that Begemann does not disclose the claimed heat dissipation protrusions, then claim 17 is obvious in view of Begemann in combination with English” (Pet. 28) and “claim 30 is obvious in view of Begemann in combination with English . . . for reasons previously explained . . . for claim 17” (Pet. 59). According to Petitioner, English expressly discloses the placement of cooling fins on an exterior of a hollow, metal base portion of an elongated, thermally conductive metal support to further enhance heat dissipation for cooling LEDs mounted on the metal support. Pet. 31. Petitioner argues a person of ordinary skill would have been motivated to provide the cooling fins of the lamp of English to the outer surface of Begemann’s gear column to enhance the performance and/or efficiency of cooling the LEDs by enhancing heat dissipation away from the gear column, substrate, and LEDs “to air circulating inside and at the outer surface of the gear column 1.” Pet. 31 (citing Ex. 1008 ¶¶ 93–94). Further, Petitioner presents the following annotated copy of Begemann’s Figure 1 to illustrate its proposed modification of Begemann’s gear column using English’s fins: Petitioner’s annotated version of Begemann Figure 1 with accompanying text that describes providing cooling fins to the outer surface of Begemann’s gear column 1. Pet. 33 (citing Ex. 1003 at 4:6–9). As Patent Owner argues (Prelim. Resp. 39), Petitioner does not rely on English to meet the “configured to” limitation for either of claim 17 or 30 (see, e.g., Pet. 26–27, 55–56 (citing only Begemann for the “configure to” limitation)). Having determined above that Begemann fails to disclose the “configured to” limitation, Petitioner’s reliance on English to satisfy the heat dissipation protrusions limitation fails to cure the noted deficiencies in Begemann with regards to the “configured to” limitation of claims 17 and 30 of the ’028 Patent.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,242,028 - Smith & Nephew, Inc. v. Conformis, Inc.Rehearing deniedPTAB · Nov 29, 2017 · IPR2017-00372 · APJ James A Worth · IPR · Rehearing
The Board denied Smith & Nephew’s rehearing request, leaving institution denied for claims 1–83 because the petition failed to show a reasonable likelihood of obviousness.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3
- BurdenNot reached
“II. DISCUSSION Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“combination of Radermacher and Kenna in which a cutting guide (as in Radermacher) is aligned intra-operatively (as in Kenna), but that the Decision did not address a combination of Radermacher and Kenna in which there is angular alignment (as in Kenna) when the cutting guide is planned pre-operatively (which Petitioner argues to have been taught in Radermacher). First, we regard this latter argument to be a new argument. The argument in the Petition is reproduced above. We conclude that the Petition provided inadequate argument and reasoning for combining the references in this manner, i.e., to take the intra-operative teachings of Kenna and apply them pre-operatively. Neither the Petition nor Declaration explain how this would have been accomplished or persuade us that such a combination would have been obvious (without intra-operative adjustment, as taught in Kenna). In particular, the Petition does not explain adequately how a person of ordinary skill would have included Kenna’s angle adjustment teaching in Radermacher’s prosthesis with a patient-specific surface, rather than rotating Kenna’s cutting guide intra-operatively. Although we appreciate Petitioner’s argument that the combination does not require bodily incorporation of one prior art device into another, we are not persuaded that the Petition adequately set forth what that combination would be, or how it would be achieved. See, e.g., Pet. 43–45 (quoting Kenna and asserting it would have been obvious to combine the teachings of the prior art).” slip op. at 9
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s reliance on Exhibits 1051, 1054, 1055, and 1057 is misplaced because the Petition did not contain developed arguments with respect thereto, and we regard this as a new argument. As such, we determine that we did not overlook or misapprehend any arguments with respect to Exhibits 1051, 1054, 1055, and 1057. To the extent that Petitioner relies on Kenna for the argued limitation, we address that contention below.” slip op. at 5
§ 103 obviousnessPatents in suitUS 8,377,129 - Wendt Corporation v. Iqasr, LLCInstitution deniedPTAB · Sep 28, 2017 · IPR2017-01080 · APJ Richard H Marschall · IPR · Institution
The Board denied institution because Petitioner failed to show a reasonable likelihood that claims 1–15, 18–20, and 22 were unpatentable over Jody or Jody and the 1998 Handbook.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We review the Petition under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, we determine that Petitioner has failed to demonstrate a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute an inter partes review. A.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“automobile shredder residue,” “sorting, non-ferrous recovery system,” “magnetic fuzz,” “selected magnetic fuzz,” “substantially free,” “recyclable materials,” and “air-locked automobile shredder residue sorting, non-ferrous recovery system” require construction. Pet. 12–35. In turn, Patent Owner proposes its own construction for those same terms. Prelim. Resp. 3–24. Having considered the evidence presented, we determine that we need only address the meaning of “magnetic fuzz” for purposes of this Decision. See 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.”). slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“The Petition also lacks an explicit inherency analysis. As Petitioner acknowledges in its legal background, inherent disclosure “necessarily describes” the unstated limitation. Pet. 35 (citing Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002)). Even if Petitioner established that magnetic fuzz is likely present and sorted using Jody’s process, that does not establish inherency. See Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639 (Fed. Cir. 2011) (“The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” (citation omitted)). To the extent that Petitioner’s argument that magnetic fuzz “would be part of the plastic-rich stream and initially would be sorted from the PUF, fines, etc.,” amounts to an inherency argument, it lacks adequate support. Pet. 40–41 (citing Ex. 1004 ¶ 69) (emphasis added). Petitioner’s assertion fails to address why magnetic fuzz would be present in Jody’s automobile shredder residue in the first place, much less that Jody’s process necessarily must sort that magnetic fuzz. Given Jody’s failure to disclose magnetic fuzz expressly, Petitioner needed to do more than merely assume that magnetic fuzz is present and assert that magnetic fuzz “would be” sorted, without explaining why this must be the case.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“2. Discussion To establish anticipation under 35 U.S.C. § 102, “all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Moreover, the reference must “enable one of ordinary skill in the art to make the invention without undue experimentation.” Impax Labs., Inc. v. Aventis Pharms. Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008); see In re LeGrice, 301 F.2d 929, 940–44 (CCPA 1962).” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,132,432 - Fisher & Paykel Healthcare Limited v. Resmed LimitedRehearing deniedPTAB · Aug 17, 2017 · IPR2017-00218 · APJ James J Mayberry · IPR · Rehearing
The Board denied Fisher & Paykel’s rehearing request, leaving institution denied because it found no abuse of discretion in its assessment of the claim limitation and Berthon-Jones.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). And, because Fisher seeks rehearing of our Decision on Institution, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment 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). A request for rehearing is not an opportunity to present new arguments. See 37 C.F.R. § 42.71(d) (requiring the rehearing request to “specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply”) (emphasis added).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“the effect of the prosecution history on the scope of the claims, as substantial evidence supports our findings. We understand that prosecution disclaimer requires that a patentee make it clear “that the invention does not include a particular feature” and that, although “such disavowal can occur either explicitly or implicitly, it must be clear and unmistakable.” Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016). We are not persuaded by Fisher that ResMed’s disclaimer is limited to adjustment mechanisms that correspond to a structure that forms the engagement between a cushion component and a common frame.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“discretion, as the argument is inconsistent with our construction of the “fixed, non-adjustable position” claim limitations. As we indicated above, we interpret these limitations to exclude masks with structures that adjust the” slip op. at 7
- Strike new argumentNew argument disregardedDecided for patent owner
“3 Fisher’s Petition did not identify raised central structure 538 as satisfying the subject matter of the “fixed, non-adjustable position” claim limitations. See Pet. 23–25 (identifying protrusions 524 and receiving holes 526). We do not consider new arguments in a request for rehearing. See 37 C.F.R. § 42.71(d).” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 9,381,316 - Smith & Nephew, Inc. v. Conformis, Inc.Institution deniedPTAB · Jul 26, 2017 · IPR2017-00307 · APJ James A Worth · IPR · Institution
Institution was denied because Petitioner failed to show a reasonable likelihood that claims 1–20 were unpatentable over the asserted § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 311 and any response filed under [35 U.S.C. §] 313 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.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108. For the reasons set forth below, we determine that Petitioner has not demonstrated that there is a reasonable likelihood that claims 1–20 are unpatentable. Accordingly, we do not institute an inter partes review of claims 1–20 based on the grounds asserted in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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); see Cuozzo Speed Techs. v. Lee, LLC, 136 S. Ct. 2131, 2142–46 (2016). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must be set forth with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner asserts no claim construction is necessary and that it “construes the claim language such that the claims are given their broadest reasonable interpretation in light of the specification of the ’025 patent.” Pet. 19. Patent Owner does not dispute this assertion. See generally Prelim. Resp. Having considered the evidence presented, we determine that express construction of any term is not necessary. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (court construes claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Moreover, while Petitioner seemingly acknowledges that Schuster I and Schuster II are separate and distinct references (see Pet. 21), we agree with Patent Owner that Petitioner has failed to provide an articulated rationale for combining features of Schuster I and those of Schuster II, as required by KSR. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Claim 1 recites that “the patient-specific surface ha[s] at least a portion that is substantially a negative of a corresponding portion of a diseased or damaged cartilage surface of the joint of the patient.” Petitioner asserts that both Schuster I and Schuster II disclose a patient-specific surface. Pet. 27. Yet, Petitioner relies primarily on Figure 2 of Schuster II to describe how “a portion of the patient specific surface is substantially a negative of the cartilage surface.” Id. As discussed below, Petitioner’s arguments and evidence do not demonstrate sufficiently why one of skill in the art would have combined the tool of Schuster I with the tool of Schuster II, which includes a portion that is substantially a negative of the cartilage surface. According to Petitioner, “it would have been obvious to a POSITA to use MRI (as taught by Schuster I & II) to image the patient’s cartilage surface (as was common knowledge) and to make at least a portion of the patient-specific surface of the implantation aid be substantially a negative of the patient’s damaged cartilage surface.” Id. at 29–30 (citing Ex. 1002 ¶¶ 82–85). Relying on the testimony of its declarant, Petitioner proffers several reasons why one of skill in the art would have wanted to match the patient-specific surface to the corresponding cartilage. Id. at 30. For example, Petitioner asserts that “the Schuster references themselves provide the motivation.” Id. (citing Ex. 1008, 3:57–67, Fig. 2; Ex. 1046 ¶ 11; Ex. 1002 ¶ 84). In context, Petitioner is relying on the teachings from both Schuster I and Schuster II that the implantation aids are “set on the damaged knee joint.” Id. (citing Ex. 1008, 3:57–67, Fig. 2; Ex. 1046). However, such reasoning lacks rational underpinnings because it does not address the proposed modification of the tool of Schuster I using the tool of Schuster II, in which a portion of the tool is substantially a negative of the patient’s damaged cartilage surface. Petitioner further suggests that the combination would have been obvious as a matter of design choice, or as a choice from a limited number of finite options, to simplify the surgery, or to ensure “very exact positioning on the damaged knee joint.” Pet. 30–31 (citing Ex. 1002 ¶ 84); see also Ex. 1002 ¶ 84 (providing near verbatim discussion). We determine that these statements, as well as the portion of the Mabrey Declaration to which Petitioner refers, are conclusory as well, and do not provide significantly more than an assertion that they are directed to the same problem. See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (explaining that Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements”); see also In re Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016) (reviewing case law and explaining that findings must be supported by a reasoned basis).” slip op. at 12
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingNot reached
“likelihood of prevailing on its assertion that claims 1–20 of the ’025 patent are unpatentable. 4 IV. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is denied. 4 Because we determine that Petitioner has not established a reasonable likelihood of success of prevailing on its contentions and do not institute an inter partes review, Petitioner’s request for joinder, or a consolidated schedule with, with Case IPR2017-00115 is also moot. See Pet. 24–25; see also id. at 22–24 (arguing lack of redundancy with Case IPR2017-00115).” slip op. at 17
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 9,216,025 - Lavelle Industries, Inc. v. Danco, Inc.Institution deniedPTAB · May 4, 2017 · IPR2017-00159 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1, 6, 11, or 14 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have jurisdiction under 35 U.S.C. § 314, which provides that inter partes review may not be instituted unless “the information presented in the petition . . . and any [preliminary] response . . . 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.” 35 U.S.C. § 314(a). Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are not persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review of any claim.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the time it was made, 35 U.S.C. § 103 requires us to resolve the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in determining the level of ordinary skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. In a given case, one or more factors may predominate. Id. Petitioner does not propose a level of ordinary skill in the art. Relying on the testimony of Mr. Jones, Patent Owner, asserts that a person of ordinary skill in the art “typically would have had (a) a bachelor’s degree in mechanical engineering, or a related field, and at least two years of experience in the design of plumbing components; or (b) a high school degree and at least four years of experience in the design of plumbing components.” Prelim. Resp. 19 (citing Ex. 2003 ¶ 24). Mr. Jones testifies that his opinion is based on his “experiences working in the field of product design in the plumbing industry in addition to the specification and claims of the ‘455 Patent in light of the state of the art in the 2012 time frame.” Ex. 2003 ¶ 24. We determine that the level of ordinary skill proposed by Mr. Jones is consistent with the challenged patent and the asserted prior art, and we therefore adopt this definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 10
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We are not persuaded by Petitioner’s arguments and evidence that Turner’s sleeves 20, 52 are collapsible. We agree with Patent Owner and Mr. Jones that “flexibility is not the same as collapsibility,” and that Turner thus does not disclose that flexible sleeves 20, 52 necessarily are collapsible. Furthermore, Mr. Jones testifies that one of ordinary skill in the art would not find Turner’s sleeves to be collapsible and “a cylindrical polyethylene wall that is 1/16 or 5/32 of an inch [as disclosed in Turner] would actually be relatively rigid (although still capable of flexing).” Ex. 2003 ¶¶ 65–66. We find this testimony, which is based on Mr. Jones’ “experiences with polyethylene and similar materials and how they have been used in the plumbing industry,” credible and persuasive. See Ex. 2003 ¶ 66. Petitioner, on the other hand, offers no objective evidence supporting its assertion that Turner’s sleeves are collapsible.” slip op. at 28
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Having considered Petitioner’s argument and evidence, we are not persuaded that Schwartz’s intermediate portion 24 is collapsible. Instead, we agree with Patent Owner that the passage of Schwartz cited by Petitioner as disclosing collapsibility (line 21 of column 2), fails to suggest that intermediate portion 24 is collapsible. Indeed, this passage merely discloses that ferrule 12 is shaped with radial flange 18. Ex. 1002, 2:21. As such, we are not directed to any disclosure in Schwartz that suggests intermediate portion 24—or any part of ferrule 12—is collapsible. Schwartz discloses that ferrule 12 is made of “chemically inert plastic material” (Ex. 1002, 2:13–14), but insufficient reasoning is given to establish that this material necessarily would be collapsible. Regarding Petitioner’s argument noted above that intermediate portion 24 “must” be collapsible, we agree with Patent Owner that this argument is not persuasive. The assertion that the intermediate portion must at least partially collapse to provide a sealing force against the soil pipe and to take up any variable space present above the pipe is not supported sufficiently by objective evidence or analysis. Furthermore, this assertion is contradicted by Mr. Jones’ testimony, which we credit. See Ex. 2003 ¶ 51.” slip op. at 14
§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 9,273,455 - Amit Agarwal v. Immersion CorporationInstitution deniedPTAB · Sep 19, 2016 · IPR2016-00807 · APJ Minn Chung · IPR · Institution
Institution was denied for all challenged claims because the petition did not show a reasonable likelihood of prevailing on either asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A claim is anticipated only if a single prior art reference expressly or inherently describes each and every limitation set forth in the claim. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). Further, a reference cannot anticipate “unless [it] discloses within the four corners of the document not only all of the limitations claimed[,] but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Although the elements must be arranged in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). We analyze this asserted ground based on anticipation with the principles identified above in mind. 2. Overview of Rosenberg (Ex. 1002)” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“A claim is anticipated only if a single prior art reference expressly or inherently describes each and every limitation set forth in the claim. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). Further, a reference cannot anticipate “unless [it] discloses within the four corners of the document not only all of the limitations claimed[,] but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Although the elements must be arranged in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). We analyze this asserted ground based on anticipation with the principles identified above in mind. 2. Overview of Rosenberg (Ex. 1002)” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“35 U.S.C. § 103(a) over the combination of Rosenberg and Simon. Pet. 17– 20. Claims 5 and 15 depend from claims 1 and 12, respectively, and further recite “wherein the display signal is configured to display a keypad comprising a plurality of softkeys.” Claims 7 and 17 depend from claims 1 and 12, respectively, and further recite “wherein the plurality of softkeys comprises one softkey for each digit from 0 to 9.” Similar to its challenges based on anticipation discussed above, Petitioner relies on Rosenberg as disclosing all of the limitations of underlying independent claims 1 and 12. Id. at 17. Simon is relied upon by Petitioner only to teach the additionally recited limitations of claims 5, 7, 15, and 17. Id. at 17–19. Hence, Simon cannot and does not remedy the above-identified deficiencies in Petitioner’s analysis of challenged independent claims 1 and 12. Accordingly, on this record, the information presented in the Petition does not demonstrate a reasonable likelihood of Petitioner prevailing in its challenge to claims 5, 7, 15, and 17 under 35 U.S.C. § 103(a) as obvious over the combination of Rosenberg and Simon.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no claim interpretation is needed” (Pet. 1), and Patent Owner does not propose any claim constructions in this case (Prelim. Resp. 10). Having considered the arguments and evidence presented, we determine that no claim terms require express interpretation for purposes of this Decision. See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,773,356 - PTAB · Apr 18, 2016 · IPR2015-01542 · APJ Beverly M Bunting · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim under the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petition on July 02, 2015 pursuant to 35 U.S.C. §§ 311–319, requesting an inter partes review of claims 1–10 and 20–38 (the “challenged claims”) of U.S. Patent No. 6,519,581 B1 (Ex. 1004, “the ’581 patent”). Paper 2, (“Pet.”). Pursuant to our December 7, 2015 Order (Paper 16), Intellectual Ventures I LLC (“IV”), timely filed a Preliminary Response to the Petition on January 20, 2016 (Paper 17, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“single prior art reference arranged as in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). As recently reiterated by the Federal Circuit, “a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (citing In re Petering, 301 F.2d 676, 681 (CCPA 1962)). We analyze the ground based on anticipation in accordance with the above-stated principles.” slip op. at 11
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We also are not persuaded by Dr. Taylor’s supporting testimony because it is not supported by underlying facts. See 37 C.F.R. § 42.65. For example, Dr. Taylor testifies that one of ordinary skill in the art would have understood, even when a particular action is not required of the control point subsystem, the information generated is received there to facilitate system management. (Ex. 1001 ¶113). In addition, Dr. Taylor testifies that: one of ordinary skill would understand, any changes to the system resulting from a rule’s action would be reflected in updates to this database. (Id. ¶ 114). Thus, we understand Dr. Taylor to testify that Seiffert’s control point C necessarily could perform the same function of receiving the information from Managed System A. “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.” In re Robertson, 169 F.3d 743, 745 (Fed Cir. 1999) (citations omitted). Although Seiffert’s system may indeed be capable of receiving the generated information, mere probabilities or possibilities fall short of demonstrating that the missing descriptive matter is necessarily present in Seiffert, as is required for a ground based on anticipation.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not found
“Moreover, a ground of obviousness must include “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). “[T]his analysis should be made explicit” and it “can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR, 550 U.S. at 418. We have considered Petitioner’s arguments (Pet. 55– 59), however, Petitioner does not articulate sufficiently why or how one of ordinary skill in the art would have combined or modified the teachings and suggestions of Fawcett and Ghezzi, or Fawcett, Ghezzi or Berry, to address with sufficient specificity the differences between the claimed invention and the prior art. Based on the record before us, Petitioner has not demonstrated a reasonable likelihood that it will prevail on its assertion that claims 1–8, 10, 20–26, 28–36, and 38 would have been obvious over the combination of Fawcett and Ghezzi. Nor has Petitioner demonstrated a reasonable likelihood that it will prevail on its assertion that claims 9, 27, and 37 would have been obvious over the combination of Fawcett, Ghezzi, and Berry.” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,519,581 - PTAB · Apr 18, 2016 · IPR2015-01543 · APJ Beverly M Bunting · IPR · Institution
The Board denied institution on all asserted grounds because IBM did not show a reasonable likelihood of proving claims 11–19 and 39–47 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petition and Preliminary Response, and for the reasons explained below, we conclude that the Petition does not establish a reasonable likelihood that Petitioner would prevail in challenging the patentability of claims 11–19 and 39–47 of the ’581 patent. We, therefore, deny the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“Seiffert expressing that the information generated by transmitting a watchdog rule from control point C to Managed System A and applying the rule to values returned by watchdog checks within Managed System A, is also communicated back to control point C. See Pet. 24–26. Indeed, the passage of Seiffert cited by Petitioner is silent with respect to any correlation between action agent 12, 22, and 33 that carries out the specified action(s) and a particular rule evaluator module 13, 23, and 33. See Ex. 1005, 5:49– 58. Petitioner’s argument, i.e., because control point C maintains information about Managed Systems A and B and the computer system as a whole, it would receive any changes resulting from a rule, is not supported by a sufficient factual basis. See Pet. 26 (citing Ex. 1001 ¶ 114; Ex. 1005, 4:47–55, 6:9–14). We also are not persuaded by Dr. Taylor’s supporting testimony” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not found
“Moreover, a ground of obviousness must include “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). “[T]his analysis should be made explicit” and it “can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR, 550 U.S. at 418. We have considered Petitioner’s arguments (Pet. 51– 52), however, Petitioner does not articulate sufficiently why or how one of ordinary skill in the art would have combined or modified the teachings and suggestions of Fawcett and Ghezzi, or Fawcett, Ghezzi or Berry, to address with sufficient specificity the differences between the claimed invention and the prior art. Based on the record before us, Petitioner has not demonstrated a reasonable likelihood that it will prevail on its assertion that claims 11–17, 19, 39–45, and 47 would have been obvious over the combination of Fawcett and Ghezzi. Nor has Petitioner demonstrated a reasonable likelihood that it will prevail on its assertion that claims 18 and 46 would have been obvious over the combination of Fawcett, Ghezzi, and Berry.” slip op. at 22
- Expert testimonyPetitioner expert discountedOther
“We also are not persuaded by Dr. Taylor’s supporting testimony because it is not supported by underlying facts. See 37 C.F.R. § 42.65. For example, Dr. Taylor testifies that one of ordinary skill in the art would have understood, even when a particular action is not required of the control point subsystem, the information generated is received there to facilitate system management. (Ex. 1001 ¶113). In addition, Dr. Taylor testifies that: one of ordinary skill would understand, any changes to the system resulting from a rule’s action would be reflected in updates to this database. (Id. ¶ 114). Thus, we understand Dr. Taylor to testify that Seiffert’s control point C necessarily could perform the same function of receiving the information from Managed System A. “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.” In re Robertson, 169 F.3d 743, 745 (Fed Cir. 1999). Although Seiffert’s system may indeed be capable of communicating the generated information, mere probabilities or possibilities fall short of demonstrating that the missing descriptive matter is necessarily present in Seiffert, as is required for a ground based on anticipation.” slip op. at 13
§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,519,581
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.