• Icon Health & Fitness, Inc. v. Nautilus, Inc.Rehearing denied
  PTAB · Oct 27, 2017 · IPR2017-00493 · APJ Bart A Gerstenblith · IPR · Rehearing

  The Board denied rehearing, leaving in place its denial of institution because the Petition failed to identify corresponding structure and show the prior art disclosed the same or equivalent structures.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW Pursuant to 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 We did not undertake an analysis to determine whether the equivalent structure was shown in the prior art because Petitioner failed to do so in the first instance: “By not identifying a corresponding structure, material, or acts in the ’542 patent specification, Petitioner does not show where that structure, material, or acts or its equivalent is disclosed by Maresh-I.” Dec. 18 (citing 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art . . . relied upon.”)). 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 request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 3

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “In particular, we first construed “right means,” “left means,” “second end portion support,” “first support,” “second support,” “first member,” and “second member” as invoking § 112, ¶ 6, because none of the terms has a sufficiently definite meaning as a name for structure. Dec. 7–15. Second, with respect to independent claims 1, 46, 75, and 86, we found that Petitioner did not identify corresponding structure, material, or acts in the specification for performing each of the recited functions. See id. at 17–18 (discussing Maresh-I), 19–21 (discussing Stearns). With respect to independent claims 91, 94, 97, and 100, we found that even if we accepted Petitioner’s identification of the alleged corresponding structure, material, or acts, Petitioner’s analysis failed to show that the prior art structures were the same or equivalent. Id. at 18 (discussing Maresh-I), 20–21 (discussing Stearns). Rather, Petitioner’s analysis focused entirely on the functional language of these claim elements without identifying and addressing the corresponding structure. Id. at 18 (discussing Maresh-I), 20–21 (discussing Stearns).1” slip op. at 2

  • BurdenNot shown unpatentable

    “We disagree. Petitioner did not do either. First, Petitioner did not identify any portion of the specification describing corresponding structure in the Petition. Second, there is no mention of tracks or swing arms in the discussion of Maresh-I and Stearns at pages 14, 15, and 40 of the Petition, let alone any argument that the structures identified in either reference are equivalent. See Pet. 14, 15, 40. Accordingly, we did not misapprehend or overlook whether Petitioner complied with these requirements for means-plus-function claim terms; Petitioner did not. Petitioner’s Alleged Analysis and Evidence Regarding the Same or Equivalent Structures” slip op. at 7

  Claim construction
  Patents in suitUS 7,341,542
• Icon Health & Fitness, Inc. v. Nautilus, Inc.Rehearing denied
  PTAB · Oct 27, 2017 · IPR2017-00494 · APJ Bart A Gerstenblith · IPR · Rehearing

  The Board denied rehearing, leaving in place its denial of institution because the Petition did not explain how the prior-art structures were the same as or equivalent to the claimed structures.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “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 request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 3

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “focuses on the functional language of these claim limitations and fails to explain how the structures of Maresh-I and Stearns are the same as, or equivalent to, those identified in the ’219 patent. Dec. 15–16. For example, Petitioner’s discussion of Maresh-I equates the claimed “first means” and “second means” with Maresh-I’s “radially displaced pins of cranks 760,” but fails to make any argument explaining how these are the same or equivalent structures. See Pet. 13–14. Petitioner also points to paragraphs 37 and 90 of Mr. Ganaja’s declaration where he testifies that Maresh-I’s radially displaced pins are crank arms and that a connection between rollers 2023 and cranks 2020 is the crank arm in Stearns. Req. Reh’g 5–6 (discussing Ex. 1006 ¶ 37), 6 (discussing Ex. 1006 ¶ 90). There is no question that Mr. Ganaja’s testimony in these paragraphs addresses the issues that we found lacking in the Petition. The problem for Petitioner, however, is that the Petition itself did not include these arguments equating the structures as Mr. Ganaja did. Citing to these paragraphs of Mr. Ganaja’s declaration without providing any explanation of the significance thereof in the Petition itself is insufficient. See 37 C.F.R. § 42.6(3) (“Arguments must not be incorporated by reference from one document into another document.”). See also DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”).” slip op. at 4

  • BurdenDecided for patent owner

    “focuses on the functional language of these claim limitations and fails to explain how the structures of Maresh-I and Stearns are the same as, or equivalent to, those identified in the ’219 patent. Dec. 15–16. For example, Petitioner’s discussion of Maresh-I equates the claimed “first means” and “second means” with Maresh-I’s “radially displaced pins of cranks 760,” but fails to make any argument explaining how these are the same or equivalent structures. See Pet. 13–14. Petitioner also points to paragraphs 37 and 90 of Mr. Ganaja’s declaration where he testifies that Maresh-I’s radially displaced pins are crank arms and that a connection between rollers 2023 and cranks 2020 is the crank arm in Stearns. Req. Reh’g 5–6 (discussing Ex. 1006 ¶ 37), 6 (discussing Ex. 1006 ¶ 90). There is no question that Mr. Ganaja’s testimony in these paragraphs addresses the issues that we found lacking in the Petition. The problem for Petitioner, however, is that the Petition itself did not include these arguments equating the structures as Mr. Ganaja did. Citing to these paragraphs of Mr. Ganaja’s declaration without providing any explanation of the significance thereof in the Petition itself is insufficient. See 37 C.F.R. § 42.6(3) (“Arguments must not be incorporated by reference from one document into another document.”). See also DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”). Accordingly, we did not misapprehend or overlook discussion in the Petition regarding these structures.” slip op. at 4

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “In particular, we first construed “first means” and “second means” as invoking § 112, ¶ 6, as proposed by Petitioner and Patent Owner. Dec. 9. Second, we found that even if we accepted Petitioner’s identification of the alleged corresponding structure, material, or acts, Petitioner’s analysis failed to show that the prior art structures were the same or equivalent. Id. at 15– 16 (discussing Maresh-I and Stearns). Rather, Petitioner’s analysis focused entirely on the functional language of these claim elements without addressing the corresponding structure. Id.” slip op. at 2

  Claim construction
  Patents in suitUS 7,632,219
• Icon Health & Fitness, Inc. v. Nautilus, Inc.Rehearing denied
  PTAB · Oct 27, 2017 · IPR2017-00490 · APJ Bart A Gerstenblith · IPR · Rehearing

  The Board denied rehearing, finding no overlooked or misapprehended matter in its § 112, ¶ 6 construction and its determination that Petitioner’s prior-art analysis was deficient.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW Pursuant to 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 request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 3

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “In particular, we first construed “second portion support” as invoking § 112, ¶ 6, because it did not have a sufficiently definite meaning as a name for structure. Dec. 7–10. Second, we found that Petitioner did not identify corresponding structure, material, or acts in the specification for performing the recited function of guiding the second portions of the right and left foot engagement members to follow a forward-rearward reciprocating motion in response to the user moving the user’s feet with striding steps during the striding exercise as the right and left crank arms reciprocally lift and lower the first portions of the right and left foot engagement members. Id. at 11–12 (quoting Ex. 1001, 22:65–23:4). Third, we determined that Petitioner’s analysis was deficient because it did not identify where the same structure, material, or acts or their equivalents were found in the prior art.1 Id. at 12–13.” slip op. at 2

  • BurdenNot shown unpatentable

    “§ 112, ¶ 6, because it did not have a sufficiently definite meaning as a name for structure. Dec. 7–10. Second, we found that Petitioner did not identify corresponding structure, material, or acts in the specification for performing the recited function of guiding the second portions of the right and left foot engagement members to follow a forward-rearward reciprocating motion in response to the user moving the user’s feet with striding steps during the striding exercise as the right and left crank arms reciprocally lift and lower the first portions of the right and left foot engagement members. Id. at 11–12 (quoting Ex. 1001, 22:65–23:4). Third, we determined that Petitioner’s analysis was deficient because it did not identify where the same structure, material, or acts or their equivalents were found in the prior art.1 Id. at 12–13.” slip op. at 2

  Claim construction
  Patents in suitUS 6,689,019
• Abiomed, Inc. / Abiomed R&D, Inc. et al. v. Maquet Cardiovascular, LLCInstitution denied
  PTAB · Sep 26, 2017 · IPR2017-01025 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 16–18 were unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “instituted only if “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.” See 37 C.F.R. § 42.108(c). For the reasons given below, on this record, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of claims 16–18 of the ’100 patent. Accordingly, we do not institute an inter partes review of the ’100 patent.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Petitioner also fails to provide a sufficient rationale to combine the teachings of Aboul-Hosn’s different embodiments. With respect to the recitations “an intravascular blood pump having a cannula coupled thereto” and “a guide mechanism adapted to guide said intravascular blood pump and cannula to a predetermined location within the circulatory system of a patient,” for example, the Petition relies upon modifying the axial flow pump of Aboul-Hosn to remove its reverse flow features and modifying the blood pump system of Figures 1–13 for percutaneous access. See, e.g., Pet. 34 (discussing an axial flow pump configuration without the reverse flow features), 37 (discussing modifications to the blood pump system of Figures 1–13). In short, in attempting to map Aboul-Hosn onto the challenged claims, Petitioner provides the following: “A POSITA would have readily understood that the pump 420 could also be configured without the reverse flow feature of the pump system of FIGS. 1–13 and delivered by a similar over-the-wire guide mechanism.” Pet. 24 (citing Ex. 1002 ¶ 113; Ex. 1004, 31:6–9). Petitioner goes on to discuss various modifications required to achieve that result. Id. at 24–25. Dr. Collins’s Declaration testimony is similar. See, e.g., Ex. 1002 ¶¶ 113–120. Neither Petitioner nor Dr. Collins, however, provides any reason as to why one of ordinary skill in the art would modify Aboul-Hosn’s teachings as they propose.1 Ultimately, the Petition is deficient because of the failure to explain sufficiently and support the challenges therein. Based on the record before us, we are left unpersuaded that the features of Aboul-Hosn’s various embodiments are interchangeable or that one skilled in the art would have combined those features in the manner proposed by Petitioner. Accordingly, we determine that Petitioner has failed to establish a reasonable likelihood of” slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “The cited portions of the Collins Declaration also fail to support sufficiently Petitioner’s contentions. For example, in paragraph 129, Dr. Collins’ opines that “pump 420 could include a variety of known blood pumps, including the pump system of FIGS. 1–13,” and, in paragraph 130, he opines that “pump 420 would flexibly accommodate the pump described in FIGS. 1–13.” Dr. Collins’ opinions as to what pump 420 could include or would accommodate, however, is not the same as what Aboul-Hosn expressly teaches.” slip op. at 9

  • Skill levelSkill level board ownOther

    “For the purposes of this Decision, we determine that no express finding is necessary on this record and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 6

  Claim construction§ 103 obviousness
  Patents in suitUS 7,022,100
• Abiomed, Inc. / Abiomed R&D, Inc. et al. v. Maquet Cardiovascular, LLCInstitution denied
  PTAB · Sep 20, 2017 · IPR2017-01028 · APJ Jeremy M Plenzler · IPR · Institution

  The Board denied both petitions and instituted no review because Petitioner failed to show a reasonable likelihood that claims 1–22 were unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “over Aboul-Hosn and Siess under 35 U.S.C. § 103(a). ’1028 Pet. 32–86; ’1029 Pet. 30–89. We have reviewed Petitioner’s challenge, as well as Patent Owner’s preliminary response to that challenge and the evidence relied on in those papers. Based on our review of the record before us, we determine that Petitioner has failed to establish a reasonable likelihood of prevailing at trial on the issue of whether claims 1–5, 7, 8, 10, and 12–22 would have been obvious over Aboul-Hosn and Siess.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “embodiments as teaching various claim features. ’1028 Pet. 32–68 (citing the embodiments of Figures 1–13 and 23 in Aboul-Hosn). Patent Owner contends that Petitioner has failed to establish sufficiently that the features of those different embodiments are interchangeable or provide sufficient rationale to combine the teachings of those different embodiments. See, e.g., ’1028 Prelim. Resp. 20–40. We agree.” slip op. at 8

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “The cited portions of the Collins Declaration also fail to support sufficiently Petitioner’s contentions. For example, paragraph 154 of the Collins Declaration states that “pump 420 could include a variety of known blood pumps, including the pump system of FIGS. 1–13” and paragraph 155 states that “pump 420 would flexibly accommodate the pump described in FIGS. 1–13.” Dr. Collins’ opinion as to what pump 420 could include or would accommodate, however, is not the same as what Aboul-Hosn teaches.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “A. Claim Construction Only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). We construe the claims using the broadest reasonable construction in light of the ’068 patent Specification. See 37 C.F.R. § 42.100(b). Applying that standard, we generally interpret the claim terms of the ’068 patent according to their ordinary and customary meaning in the context of the patent’s written description. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor is entitled to be his or her own lexicographer of patent claim terms by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, however, limitations are not to be read from the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Petitioner and Patent Owner each propose constructions for multiple terms. ’1028 Pet. 28–31; ’1029 Pet. 26–29; ’1028 Prelim. Resp. 68–70; ’1029 Prelim. Resp. 68–70. For purposes of this Decision, we determine that no term requires express construction.” slip op. at 6

  Claim construction§ 103 obviousness
  Patents in suitUS 9,327,068
• Abiomed, Inc. / Abiomed R&D, Inc. et al. v. Maquet Cardiovascular, LLCInstitution denied
  PTAB · Sep 20, 2017 · IPR2017-01029 · APJ Jeremy M Plenzler · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–22 were unpatentable over the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Petitioner also fails to provide a sufficient rationale to combine the teachings of Aboul-Hosn’s different embodiments. With respect to the recited step of “advancing the blood pump system along the guide wire to the predetermined location,” for example, the Petition simply alleges that “[t]his method step is also conventionally taken in any method of delivering an intravascular blood pump to the vasculature using a guide wire,” discusses the features of the embodiments shown in Aboul-Hosn’s Figures 1–13 (referencing page 22 of Aboul-Hosn), and then concludes that “Fig. 23 illustrates the predetermined location to which Aboul-Hosn guides his blood pump system with the aid of the guide wire” without further explanation or citation to supporting evidence. ’1028 Pet. 66–67. Ultimately, the ’1028 and ’1029 Petitions are deficient because of the failure to explain sufficiently and support the challenges therein. Based on the record before us, we are left unpersuaded that the features of Aboul- Hosn’s various embodiments are interchangeable or that one skilled in the art would have combined those features in the manner proposed by Petitioner. Accordingly, we determine that Petitioner has failed to establish a reasonable likelihood of success of showing that claims 1, 10, and 20, and” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Petitioner also fails to provide a sufficient rationale to combine the teachings of Aboul-Hosn’s different embodiments. With respect to the recited step of “advancing the blood pump system along the guide wire to the predetermined location,” for example, the Petition simply alleges that “[t]his method step is also conventionally taken in any method of delivering an intravascular blood pump to the vasculature using a guide wire,” discusses the features of the embodiments shown in Aboul-Hosn’s Figures 1–13 (referencing page 22 of Aboul-Hosn), and then concludes that “Fig. 23 illustrates the predetermined location to which Aboul-Hosn guides his blood pump system with the aid of the guide wire” without further explanation or citation to supporting evidence. ’1028 Pet. 66–67. Ultimately, the ’1028 and ’1029 Petitions are deficient because of the failure to explain sufficiently and support the challenges therein. Based on the record before us, we are left unpersuaded that the features of Aboul- Hosn’s various embodiments are interchangeable or that one skilled in the art would have combined those features in the manner proposed by Petitioner. Accordingly, we determine that Petitioner has failed to establish a reasonable likelihood of success of showing that claims 1, 10, and 20, and” slip op. at 10

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “The cited portions of the Collins Declaration also fail to support sufficiently Petitioner’s contentions. For example, paragraph 154 of the Collins Declaration states that “pump 420 could include a variety of known blood pumps, including the pump system of FIGS. 1–13” and paragraph 155 states that “pump 420 would flexibly accommodate the pump described in FIGS. 1–13.” Dr. Collins’ opinion as to what pump 420 could include or would accommodate, however, is not the same as what Aboul-Hosn teaches.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). We construe the claims using the broadest reasonable construction in light of the ’068 patent Specification. See 37 C.F.R. § 42.100(b). Applying that standard, we generally interpret the claim terms of the ’068 patent according to their ordinary and customary meaning in the context of the patent’s written description. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor is entitled to be his or her own lexicographer of patent claim terms by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, however, limitations are not to be read from the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Petitioner and Patent Owner each propose constructions for multiple terms. ’1028 Pet. 28–31; ’1029 Pet. 26–29; ’1028 Prelim. Resp. 68–70; ’1029 Prelim. Resp. 68–70. For purposes of this Decision, we determine that no term requires express construction.” slip op. at 6

  Claim construction§ 103 obviousness
  Patents in suitUS 9,327,068
• Abiomed, Inc. / Abiomed R&D, Inc. et al. v. Maquet Cardiovascular, LLCInstitution denied
  PTAB · Sep 20, 2017 · IPR2017-01027 · APJ Jeremy M Plenzler · IPR · Institution

  The Board denied institution on all claims 1–24 because the petitions did not show a reasonable likelihood that the challenged claims were unpatentable over the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “unpatentable over Aboul-Hosn and Siess under 35 U.S.C. § 103(a). ’1026 Pet. 34–81; ’1027 Pet. 31–87. We have reviewed Petitioner’s challenge, as well as Patent Owner’s preliminary response to that challenge and the evidence relied on in those papers. Based on our review of the record before us, we determine that Petitioner has failed to establish a reasonable likelihood of prevailing at trial on the issue of whether claims 1–4, 6, 7, 9– 11, 13, and 15–24 would have been obvious over Aboul-Hosn and Siess.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Petitioner also fails to provide a sufficient rationale to combine the teachings of Aboul-Hosn’s different embodiments. For example, Petitioner repeatedly asserts that certain features of the embodiments shown in Figures 1–13 and 23 may or can be used together, but fails to explain sufficiently why one skilled in the art would have found it obvious to combine those teachings. See, e.g., ’1026 Pet. 36 (“pump 420 [in FIG. 23] may also be configured without the reverse flow feature of the axial flow pump system of FIGS. 1–13), 57 (“the intravascular blood pump system shown in FIGS. 1–13 . . . may be adapted in a straight forward manner as the pump 420 in FIG. 23”), 61 (“With the guide wire 28 positioned in the desired location within the patient’s vasculature, such as within the left side of the heart as shown in FIG. 23, the distal end of the cannula 20 (or cannula 411) of the blood pump can be advanced by passing over the guide wire 28 via the central passages of the cannula, the drive unit 80 and the blood pump components (e.g., central passages 73 and 82) and through a lumen of the multilumen catheter 428.”). Ultimately, the ’1026 and ’1027 Petitions are deficient because of the failure to explain sufficiently and support the challenges therein. Based on the record before us, we are left unpersuaded that the features of Aboul- Hosn’s various embodiments are interchangeable or that one skilled in the art would have combined those features in the manner proposed by Petitioner. Accordingly, we determine that Petitioner has failed to establish a reasonable likelihood of prevailing in showing that claims 1, 10, and 22, and claims 2–4, 6, 7, 9, 11, 13, 15–21, 23, and 24, which depend therefrom, are unpatentable over Aboul-Hosn and Siess.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “A. Claim Construction Only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). We construe the claims using the broadest reasonable construction in light of the ’728 patent Specification. See 37 C.F.R. § 42.100(b). Applying that standard, we generally interpret the claim terms of the ’728 patent according to their ordinary and customary meaning in the context of the patent’s written description. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor is entitled to be his or her own lexicographer of patent claim terms by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, however, limitations are not to be read from the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).” slip op. at 6

  Claim construction§ 103 obviousness
  Patents in suitUS 8,888,728
• Abiomed, Inc. / Abiomed R&D, Inc. et al. v. Maquet Cardiovascular, LLCInstitution denied
  PTAB · Sep 20, 2017 · IPR2017-01026 · APJ Jeremy M Plenzler · IPR · Institution

  The Board denied both petitions because Petitioner failed to show a reasonable likelihood that any challenged claim was unpatentable over the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Petitioner also fails to provide a sufficient rationale to combine the teachings of Aboul-Hosn’s different embodiments. For example, Petitioner repeatedly asserts that certain features of the embodiments shown in Figures 1–13 and 23 may or can be used together, but fails to explain sufficiently why one skilled in the art would have found it obvious to combine those teachings. See, e.g., ’1026 Pet. 36 (“pump 420 [in FIG. 23] may also be configured without the reverse flow feature of the axial flow pump system of FIGS. 1–13), 57 (“the intravascular blood pump system shown in FIGS. 1–13 . . . may be adapted in a straight forward manner as the pump 420 in FIG. 23”), 61 (“With the guide wire 28 positioned in the desired location within the patient’s vasculature, such as within the left side of the heart as shown in FIG. 23, the distal end of the cannula 20 (or cannula 411) of the blood pump can be advanced by passing over the guide wire 28 via the central passages of the cannula, the drive unit 80 and the blood pump components (e.g., central passages 73 and 82) and through a lumen of the multilumen catheter 428.”). Ultimately, the ’1026 and ’1027 Petitions are deficient because of the failure to explain sufficiently and support the challenges therein. Based on the record before us, we are left unpersuaded that the features of Aboul- Hosn’s various embodiments are interchangeable or that one skilled in the art would have combined those features in the manner proposed by Petitioner. Accordingly, we determine that Petitioner has failed to establish a reasonable likelihood of prevailing in showing that claims 1, 10, and 22, and claims 2–4, 6, 7, 9, 11, 13, 15–21, 23, and 24, which depend therefrom, are unpatentable over Aboul-Hosn and Siess.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “Petitioner also fails to provide a sufficient rationale to combine the teachings of Aboul-Hosn’s different embodiments. For example, Petitioner repeatedly asserts that certain features of the embodiments shown in Figures 1–13 and 23 may or can be used together, but fails to explain sufficiently why one skilled in the art would have found it obvious to combine those teachings. See, e.g., ’1026 Pet. 36 (“pump 420 [in FIG. 23] may also be configured without the reverse flow feature of the axial flow pump system of FIGS. 1–13), 57 (“the intravascular blood pump system shown in FIGS. 1–13 . . . may be adapted in a straight forward manner as the pump 420 in FIG. 23”), 61 (“With the guide wire 28 positioned in the desired location within the patient’s vasculature, such as within the left side of the heart as shown in FIG. 23, the distal end of the cannula 20 (or cannula 411) of the blood pump can be advanced by passing over the guide wire 28 via the central passages of the cannula, the drive unit 80 and the blood pump components (e.g., central passages 73 and 82) and through a lumen of the multilumen catheter 428.”). Ultimately, the ’1026 and ’1027 Petitions are deficient because of the failure to explain sufficiently and support the challenges therein. Based on the record before us, we are left unpersuaded that the features of Aboul- Hosn’s various embodiments are interchangeable or that one skilled in the art would have combined those features in the manner proposed by Petitioner. Accordingly, we determine that Petitioner has failed to establish a reasonable likelihood of prevailing in showing that claims 1, 10, and 22, and claims 2–4, 6, 7, 9, 11, 13, 15–21, 23, and 24, which depend therefrom, are unpatentable over Aboul-Hosn and Siess.” slip op. at 10

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “The cited portion of the Collins Declaration also fails to support sufficiently Petitioner’s contentions. Paragraph 156 simply states that “the pump system with the reverse flow features would include not only the axial flow pump components . . . but also the reverse flow features including the outer cannula 30, housing cap 62 . . . to connect the inlet tube to the cannula and provide reverse flow.” In the preceding paragraphs, Dr. Collins testifies that “pump 420 could include a variety of known blood pumps, including the pump system of FIGS. 1–13” (’1026 Ex. 1002 ¶ 154) and that “pump 420 would flexibly accommodate the pump described in FIGS. 1–13” (id. ¶ 155). Dr. Collins’s opinion as to what pump 420 could include or would accommodate, however, is not the same as what Aboul-Hosn teaches.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “A. Claim Construction Only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). We construe the claims using the broadest reasonable construction in light of the ’728 patent Specification. See 37 C.F.R. § 42.100(b). Applying that standard, we generally interpret the claim terms of the ’728 patent according to their ordinary and customary meaning in the context of the patent’s written description. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor is entitled to be his or her own lexicographer of patent claim terms by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, however, limitations are not to be read from the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Petitioner and Patent Owner each propose constructions for multiple terms. ’1026 Pet. 30–33; ’1027 Pet. 28–30; ’1026 Prelim. Resp. 68–70; ’1027 Prelim. Resp. 67–69. For purposes of this Decision, we determine that no term requires express construction.” slip op. at 6

  Claim construction§ 103 obviousness
  Patents in suitUS 8,888,728
• Icon Health & Fitness, Inc. v. Nautilus, Inc.Institution denied
  PTAB · Jul 10, 2017 · IPR2017-00494 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because the petition did not show that Maresh-I or Stearns disclosed structures the same as or equivalent to those in claim 1’s means-plus-function limitations.

  RulingsInstitution decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “In clauses 1(c) and 1(d), the claim drafter signaled an intent to invoke § 112, ¶ 6 by using the term “means.” Williamson, 792 F.3d at 1349 (“use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies” (citing Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703 (Fed. Cir. 1998))). We agree with both Petitioner and Patent Owner; clauses 1(c) and 1(d) are means-plus-function clauses. There is no persuasive evidence to rebut the presumption that use of the word “means” invokes § 112, ¶ 6. Thus, we look to the requirements a petition must satisfy if a claim includes a limitation written in means-plus-function format.” slip op. at 9

  • Skill levelSkill level board ownDecided for petitioner

    “There is a presumption that claim terms are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art in the context of the specification. See In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Thus, we need to consider the level of ordinary skill in the relevant technological field. The parties agree that a person of ordinary skill in the art at the time of the invention of the ’219 patent would have at least a bachelor’s degree in mechanical engineering and several years of experience designing mechanical systems or exercise equipment, or an equivalent level of education and experience. Pet. 7 (citing Ex. 1006 ¶¶ 20–21); Prelim. Resp. 7. Accordingly, for purposes of this Decision, we adopt the level of ordinary skill in the art agreed to by the parties.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “function limitation based on prior art, Petitioner must: 1) identify the specific portions of the specification that describe the structure corresponding to the claimed function; and 2) specify where that structure or an equivalent is found in the cited prior art. Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299–1300 (Fed. Cir. 2009) (“a functional analysis alone will not suffice”). In this proceeding, Petitioner has failed to perform the second step of the analysis required.” slip op. at 14

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “function limitation based on prior art, Petitioner must: 1) identify the specific portions of the specification that describe the structure corresponding to the claimed function; and 2) specify where that structure or an equivalent is found in the cited prior art. Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299–1300 (Fed. Cir. 2009) (“a functional analysis alone will not suffice”). In this proceeding, Petitioner has failed to perform the second step of the analysis required.” slip op. at 14

  Claim construction§ 103 obviousness
  Patents in suitUS 7,632,219
• Icon Health & Fitness, Inc. v. Nautilus, Inc.Institution denied
  PTAB · Jul 6, 2017 · IPR2017-00495 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–16 were unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “instituted only if “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.” See 37 C.F.R. § 42.108(c). For the reasons given below, on this record, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of claims 1–16 of the ’155 patent. Accordingly, we deny the Petition and do not institute an inter partes review of the ’155 patent.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner

    “showing that the claimed cam limitations result from “combining a known technique to a known device ready for improvement to yield predictable results.” In particular, Petitioner does not explain and has not established any reason as to why one of ordinary skill in the art would have combined and modified and the teachings as proposed. Pet. 17; see also id. at 14 (citing Ex. 1006 ¶¶ 35–39). Petitioner states that the known technique is modifying a flat surface to a curved surface and that the result is a modified shape of the elliptical path of exercise. Id. at 18. We acknowledge that Maresh-II teaches the option of using alternative support member 3310, which has a curved surface, as a substitute to its overlying rack and/or force receiving member, which has a flat surface (i.e., the surface without teeth), and that the result is likely a modified shape of elliptical path. Nonetheless, Petitioner has not explained why one of ordinary skill in the art, viewing Maresh-II’s teaching, would modify one particular surface of Maresh-I’s slot 745 to modify the elliptical path. Specifically, Petitioner has not provided a reason with rational underpinning for making the modification. Mr. Ganaja’s testimony suffers from a similar deficiency. See Ex. 1006 ¶¶ 35–39; see id. ¶ 37 (citing Ex. 1003, 1:14–16, 1:34–39; Ex. 1004, 1:10–23, 1:35–52). Mr. Ganaja cites to the background and summary of the invention sections of Maresh-I and Maresh-II, which discuss some of the benefits of the inventions disclosed therein. The cited portions, however, fail to discuss any potential reason for combining and modifying the teachings of the references as proposed by Petitioner. Maresh-I states the general proposition that “[m]any advantages and improvements of the present invention may become apparent from the more detailed description that follows” (Ex. 1003, 1:49–51), but that statement alone fails to provide sufficient support for the specific modifications proposed by Petitioner. Thus, Petitioner has not established a reasonable likelihood of showing that the modification to Maresh-I would have been a combination of a known technique to a known device ready for improvement to yield predictable results.3” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner

    “modifications needed to meet the cam limitations reflects the hindsight-driven nature of Petitioner’s analysis as well as highlights a significant unsupported modification. Petitioner begins with slot 745 shown in Figure 13 of Maresh-I. Petitioner modifies one inner surface of slot 745 (the downward facing surface), which is shown as flat in Figure 13. Specifically, Petitioner changes the flat surface of slot 745 to the curved surface of alternative support member 3310, shown in Figure 23 of Maresh-II. In so doing, Petitioner rotates the alternative support member 180 degrees. Petitioner, however, does not address adequately the shape of the other surfaces of alternative support member 3310, including the teeth shown on the upper surface (after rotation by Petitioner), stating simply that the upper surface would be “a smooth surface such as that illustrated in Figure 7 of Maresh-II.” Pet. 18. Petitioner provides no reason as to why one of ordinary skill in the art would select a single surface of alternative support member 3310, ignore the other surfaces of that structure, and eliminate important structure on one of its surfaces (i.e., the teeth, which engage teeth on other structures shown in Maresh-II). In short, the twists and turns taken by Petitioner to meet the claimed cam limitations are not supported adequately by the arguments and evidence relied upon.4” slip op. at 18

  • Obviousness (§103) › KSR rationalesDecided for patent owner

    “adequately. Petitioner relies heavily on the following statement in Maresh-I: “Furthermore, the size, configuration, and/or arrangement of the components of the disclosed embodiments may be modified as a matter of design choice.” Ex. 1003, 10:12–14. Petitioner, however, fails to connect anything specific, in Maresh-I, Maresh-II, or elsewhere, to this statement. In particular, there must be “a reason for why a person of ordinary skill in the art would have made the specific design choice.” Cutsforth, Inc. v. MotivePower, Inc., 636 Fed. Appx. 575, 578 (Fed. Cir. 2016). Additionally, this is not a case of simply rearranging known parts, as is often encountered in circumstances that may be characterized as design choice. See, e.g., In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (affirming the Board’s finding of 3 We note that Petitioner repeatedly refers to the modification as an improvement (see, e.g., Pet. 14, 17, 18), yet fails to provide any evidence regarding what, if any, improvement results therefrom or would have been recognized by one of ordinary skill in the art at the time of the invention. See KSR, 550 U.S. at 417 (“if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”). obviousness based on design choice where the rearrangement of parts did not produce a novel or unexpected result).” slip op. at 17

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,323,155

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.