- Olympia Tools International, Inc. v. JPW Industries, Inc.Rehearing deniedPTAB · Aug 3, 2018 · IPR2018-00388 · APJ Ulrike W Jenks · IPR · Rehearing
The Board denied rehearing and maintained denial of institution because the petition did not adequately explain why a skilled artisan would reverse Cornes’s spindle.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD FOR RECONSIDERATION 37 C.F.R. § 42.71(d) provides that [a] party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request 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. (Emphasis added.) When reconsidering a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). A request for rehearing, however, is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“has not “sufficiently provided an articulated reason with a rational underpinning as to why reversing the spindle and mating threaded tubular member and nut in Cornes would have been obvious to a person of ordinary skill in the art.” Dec. 19 (citing 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)), see also id. at 22 (“Neither Petitioner nor its declarant, Mr. O’Banion, explains adequately why a skilled artisan would have had reason to redesign Cornes’s vise under the general theory of simple “substitution” of one known element for another. . . . [Merely reciting theory is not enough] there [still] needs to be reason why an ordinary artisan would reverse the spindle in the first place.”).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“has not “sufficiently provided an articulated reason with a rational underpinning as to why reversing the spindle and mating threaded tubular member and nut in Cornes would have been obvious to a person of ordinary skill in the art.” Dec. 19 (citing 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)), see also id. at 22 (“Neither Petitioner nor its declarant, Mr. O’Banion, explains adequately why a skilled artisan would have had reason to redesign Cornes’s vise under the general theory of simple “substitution” of one known element for another. . . . [Merely reciting theory is not enough] there [still] needs to be reason why an ordinary artisan would reverse the spindle in the first place.”).” slip op. at 3
- Expert testimonyPetitioner expert discountedDecided for patent owner
“to arrive at the claimed invention an artisan would need to do more than substitute one element for another, it would also necessitate a redesign of Cornes’s vise that requires reversing the position of the spindle. See Dec. 22. We are mindful that in order to arrive at a conclusion of obviousness it is often necessary to look at interrelated teachings including “background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418. Our Decision considered Mr. O’Banion’s testimony but we found that it was not sufficiently persuasive to explain why an artisan would have reversed the position of Cornes’s spindle in the first place. See Dec. 18 (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352, 1354 (Fed. Cir. 2014)), see id. 22.” slip op. at 4
§ 103 obviousnesscites KSRPatents in suitUS 9,079,464 - Olympia Tools International, Inc. v. JPW Industries, Inc.Institution deniedPTAB · Jun 20, 2018 · IPR2018-00388 · APJ Ulrike W Jenks · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 3, 5–8, 12, and 21–25 were unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority 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.” 35 U.S.C. § 314(a). Upon consideration of the arguments and evidence presented in the Petition and the Preliminary Response, we are not persuaded that Petitioner has established a reasonable likelihood that it would prevail in any of its challenges with respect to any of claims 1, 3, 5–8, 12, and 21–25 of the ’464 patent. Accordingly, we deny institution of an inter partes review of claims 1, 3, 5–8, 12, and 21–25.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Ex. 1001, 3:15–22, see Fig. 2. This description makes clear that the passage runs from one end of the connection member to the opposing other end of the connection member. It also is apparent from the ’464 patent that by extending between the first and second ends (elements 24 and 22, respectively) of connection member 16, the passage is a continuous space between those ends, that receives a spindle assembly that movably couples jaw pieces therein. See, e.g., id. at 3:9–13, 3:37–39, 4:1–2. The spindle assembly requires two pieces, a spindle nut 42 and a spindle 52, which are operatively coupled only after they are inserted from opposite ends though connection member 16. See, e.g., id. at 3:9–13, 3: 36–33, 4:1–2, 4:6–7, 5:53-54, Fig. 2. The ordinary and customary meaning of the term “passage”1 is “a way of exit or entrance: a road, path, channel, or course by which something passes” or “a corridor or lobby giving access to the different rooms or parts of the building.” When considering the ordinary and customary use of the term “passage” as read in light of the specification of the ’464 patent, we construe a “passage” to describe a tube having an opening on both ends so that it defines the path between the two opposing openings. In other words, we construe a “passage,” in the context of a “connection member defining a . . . passage,” to be, “a continuous open space extending from the first opening on one end of the connection member to a second opening at the opposing second end of the connection member.”” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Cornes does not satisfy the claimed “first connection member defining a first passage.” Id. As discussed above in the Claim Construction section (see II.A), a “passage” is “a continuous open space extending from the first opening on one end of the connection member to a second opening at the opposing second end of the connection member.” This is shown, for instance, in figure 2 of the ’464 patent, where passage 20 spans the length of member 16 between opening 24 of the stationary vise jaw and second end 22. See Ex. 1001, Fig. 2, see 3:19–20. Cornes discloses a vise that can be inserted into a trailer hitch. See Ex. 1006, Figs. 1 and 2. Cornes discloses two components 33 and 36 that are brought together to make up the shaft that is inserted into the trailer hitch. See Ex. 1006, Fig. 2. We agree with Patent Owner that Cornes further discloses that plate 52 is welded between components 33 and 36. See Ex. 1006 ¶ 35 (“a receiving sleeve 33 having an outer receiving opening in the outer face of the stationary jaw and an outer threaded stationary shaft 51 inside the receiving sleeve 33, which threaded stationary shaft 51 is welded to a shaft receiving plate 52 welded to the vise insertion tube 36”); see also id. at Fig. 2 (depicting the same). Sleeve 33 is not a passage because there is only one opening that serves as both the entrance and exit. Because Cornes does not disclose a passage spanning from the stationary jaw all the way to the end of insertion tube 36, we agree with Patent Owner that Cornes does not anticipate claim 1.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree with Patent Owner that Petitioner has not demonstrated a reasonable likelihood that it would prevail at trial in showing that claim 23 would have been obvious in view of Cornes. A showing of obviousness “requires a suggestion of all limitations in a claim,” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) and “an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” 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) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,079,464 - Flexitallic Investments, Inc. v. Eriks N.V.Rehearing deniedPTAB · Mar 28, 2018 · IPR2017-01968 · APJ Scott C Moore · IPR · Rehearing
The Board denied Flexitallic’s rehearing request and left in place the denial of institution because the petition did not adequately show that the Bond References taught or suggested all limitations of claims 1–5.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request 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. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“B. The Decision Denying Institution In the Decision, we found that Petitioner had failed to make an adequate showing that the Bond References disclose, teach, or suggest all limitations of challenged claims 1–5. Regarding claims 1, 4, and 5, we determined: Petitioner has not made an adequate showing that the Bond References disclose (expressly or inherently), teach, or suggest, “an intermediate stress gas/liquid sealing zone between the core inner surface and the flange inner surface” of the type required by claims 1, 4, and 5. Dec. 17. With respect to claims 2 and 3, we determined: Petitioner has not made an adequate showing that the Bond References disclose (expressly or inherently), teach, or suggest the step of “selecting a deformable pillow material and a deformable pillow thickness such [that] upon compression of the gasket . . . the gasket intermediate portion exhibits a stress level sufficient to preclude gas and liquid flowing through the pipe from passing radially outward beyond the gasket intermediate portion,” as required by claims 2 and 3.” slip op. at 3
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“adequate showing that the Bond References disclose, teach, or suggest all limitations of challenged claims 1–5. Regarding claims 1, 4, and 5, we determined: Petitioner has not made an adequate showing that the Bond References disclose (expressly or inherently), teach, or suggest, “an intermediate stress gas/liquid sealing zone between the core inner surface and the flange inner surface” of the type required by claims 1, 4, and 5. Dec. 17. With respect to claims 2 and 3, we determined: Petitioner has not made an adequate showing that the Bond References disclose (expressly or inherently), teach, or suggest the step of “selecting a deformable pillow material and a deformable pillow thickness such [that] upon compression of the gasket . . . the gasket intermediate portion exhibits a stress level sufficient to preclude gas and liquid flowing through the pipe from passing radially outward beyond the gasket intermediate portion,” as required by claims 2 and 3.” slip op. at 3
- Expert testimonyPetitioner expert discountedDecided for patent owner
“First and foremost, Petitioner does not provide any citation to the Petition or Dr. Green’s Declaration to demonstrate that it previously argued that limitation 1.3 requires a “flange” that “extends radially inward along the entire circumferential inner surface of the core.” See Reh. Req. 5. We could not have misapprehended or overlooked an argument that Petitioner failed to make. 37 C.F.R. 42.71(d). We also note that claim limitation 1.3 does not recite a flange that extends “along the entire circumferential surface of the core” (see Ex. 1001, 8:60–62), and that the claim construction portion of the Petition did not argue that limitation 1.3 should be construed to require a flange that extends radially inward “along the entire circumferential surface of the core” (see Pet. 14–20). In addition, Petitioner fails to identify any testimony from Dr. Green that the Bond References teach or suggest a flange that extends radially inward “along the entire circumferential inner surface of the core” of the type Petitioner now seemingly concedes is necessary for those references to teach or suggest an “intermediate zone.” See Reh. Req. 5. Though Dr. Green testifies regarding a single-projection embodiment in which the projection “extend[s] radially inward from the core inner surface,” Dr. Green never testifies that the single projection of this embodiment extends radially inward “along the entire circumferential inner surface of the core.” See Ex. 1012 ¶¶ 97–99. Our Decision did not overlook or misapprehend Dr. Green’s testimony. To the contrary, we considered and analyzed Dr. Green’s testimony, and determined that Dr. Green’s opinions were not adequately supported by the evidence of record. See Dec. 16–17 (analyzing the portions of the Bond References cited by Dr. Green, and rejecting Dr. Green’s assertion that these portions of the Bond References disclose, teach or suggest a flange that extends radially inward “along the entire circumferential inner surface of the core.”) Petitioner’s argument that we improperly disregarded Dr. Green’s testimony thus has no merit.” slip op. at 5
§ 103 obviousnessPatents in suitUS 9,388,924 - R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V.Rehearing deniedPTAB · Feb 8, 2018 · IPR2017-01120 · APJ Josiah C Cocks · IPR · Rehearing
The Board denied rehearing and maintained its decision not to institute review of claims 13–15 and 17–18 because the Petition did not adequately explain how Hongbin met the claimed output and signal limitations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“may “deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b). When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing has the burden of showing the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d). Here, it is Petitioner’s burden to show we misapprehended or overlooked the matters it requests that we review.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We observe that the ’239 patent generally uses the term “output” in an electrical sense. See Ex. 1001, 3:52–53 (“The control circuit board 8 then outputs two driving voltages . . .” (emphasis added)). The use of the term “output” in that context is consistent with the meaning of the term proffered by Patent Owner. Although in Hongbin, it is the movement of valve plate 5 that ultimately effects the illumination of indicator 8, Petitioner does not explain adequately how that movement means that it is the “output” of valve plate 5 that causes a change in luminance. In other words, Petitioner does not provide sufficient explanation as to why claim 13 effectively should be read as requiring only that the change in luminance be “based on the airflow sensor” instead of being “based on the output of the airflow sensor.”” slip op. at 3
NonePatents in suitUS 8,899,239 - PTAB · May 23, 2017 · IPR2016-01601 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Petitioner’s rehearing request, finding no abuse of discretion in denying institution because Lilley was not shown to teach the claimed tubing spool and xmas tree.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. STANDARD OF REVIEW When considering a request for rehearing of a decision, the Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s 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). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked,” and (2) identify the place “where each matter was previously addressed.”” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“owner preliminary response includes testimonial evidence that creates a genuine issue of material fact, ‘such testimonial evidence will be viewed in the light most favorable to the petitioner solely for [] purposes of deciding whether to institute an inter partes review.’” Req. Reh’g 13 (emphasis omitted) (citing 37 C.F.R. § 42.108(c)). Here, Patent Owner did not proffer testimonial evidence in support of the arguments in its Preliminary Response.4 Accordingly, there was no “such testimonial evidence” for us to consider, let alone view in the light most favorable to Petitioner. Even if there had been such testimonial evidence, however, we note that “[i]nter partes review shall not be instituted for a ground of unpatentability unless the Board decides that the petition supporting the ground would demonstrate that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable.” 37 C.F.R. § 42.108(c). As discussed above, based on non-testimonial evidence before us, we were unpersuaded by Petitioner’s arguments that Lilley teaches the recited tubing spool and xmas tree. V. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated that we abused our discretion by not instituting inter partes review of the challenged claims of the ’554 patent on any of the asserted grounds.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“IV. ANALYSIS In our Institution Decision, we agreed with Patent Owner that a tubing spool is different than a tree. Inst. Dec. 7–9. We also agreed with Patent Owner that a tree cap is different than a tree. Id. at 9–10. Accordingly, we were unpersuaded by Petitioner’s arguments that Lilley’s tree body 31 teaches the recited tubing spool and that Lilley’s tree cap assembly 41 teaches the recited xmas tree. Id. at 7–10.” slip op. at 4
§ 103 obviousnessPatents in suitUS 6,715,554 - Duane Brockman v. Wesley BainterInstitution deniedPTAB · May 11, 2017 · DER2016-00002 · APJ Jameson Lee · DER · Institution
The Board denied institution of a derivation proceeding because the petition did not provide substantial evidence that the challenged claims were the same or substantially the same as the invention conceived and communicated.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“required to show (1) that the challenged claims are drawn to the same or substantially the same invention as the invention he disclosed to Respondent, (2) that Petitioner has at least one claim that is the same or substantially the same as the Respondent’s claimed invention, and (3) that Petitioner has at least one claim that is the same or substantially the same as the invention Petitioner disclosed to the Respondent. For these requirements, the Petition contains only a general citation to “Ex. 1003; Ex. 1004; Ex. 1005.” Pet. 7–11. As noted above, Exhibit 1003 is a declaration from Petitioner; Exhibit 1004 is a declaration of Tyler Brockman; and Exhibit 1005 is an affidavit of Scott Sproul. None of the testimony from Petitioner, Tyler Brockman, and Scott Sproul, however, addresses the specifics of any claim. With regard to the first requirement, it cannot simply be assumed that the challenged claims are drawn to the same or substantially the same invention as that which Petitioner has conceived and communicated to Respondent. The Petitioner provides no reasoning or analysis in that regard. Several features in the challenged claims demand a meaningful accounting by Petitioner, relative to the invention conceived by Petitioner and communicated by Petitioner to Respondent. Challenged claims 1, 2, and 6 are independent and all other challenged claims depend, directly or indirectly, from one of claims 1, 2, and 6. Claim 1 requires an actuator, mounted to an irrigation tower and separate from the anchor member, that has a retracted position and an extended position. According to claim 1, the anchor member is mounted to the actuator. Also according to claim 1, when the actuator is in its retracted position, the anchor member is retracted above the soil surface, and when the actuator is in its extended position, the anchor member penetrates the soil surface. The invention conceived by Petitioner and as communicated by Petitioner to Respondent, as identified above, however, includes no such actuator. More particularly, lacking from the Petitioner’s conceived and communicated invention is a sufficient disclosure or description of an actuator that, itself, translates between extended and retracted positions, and lacking from the Petition is any reasoning to account for the obviousness of such a feature to one with ordinary skill in the art. Similarly, claim 2 requires a motor, in an actuator, that is slidably mounted to the frame for movement between a retracted position and an extended position. The invention conceived by Petitioner and communicated by Petitioner to Respondent, as identified above, however, includes no such actuator and motor, and the Petition does not account for such a feature. Claim 6 requires a motor movably mounted to a frame for translation between a retracted position and an extended position, and a control unit that causes both the motor and the anchor member to move from a retracted position to an extended position and from an extended position to a retracted position. The invention conceived by Petitioner and communicated by Petitioner to Respondent, as identified above, however, includes no such motor and control module, and the Petition does not account for such a feature.” slip op. at 8
- Adverse judgmentAdverse judgmentDenied
“II. Discussion In its Response to the Show Cause Order, Petitioner argues that 35 U.S.C. § 135 does not require a petitioner’s involved application to be maintained after a derivation petition has been filed, that Petitioner’s entire purpose for filing the Petition was for the Board to direct that “the Petitioner be added as a named inventor [in] Respondent[’s] Application,” and that “the Respondent be removed as a named inventor from the Respondent Application.” Paper 6, 1–2. Under the circumstances here, we do not enter adverse judgment against Petitioner for having abandoned the ’929 Application. Hereinafter, we discuss the merits of the Petition for purposes of determining whether a derivation proceeding should be instituted.” slip op. at 2
- BurdenNot shown unpatentable
“required to show (1) that the challenged claims are drawn to the same or substantially the same invention as the invention he disclosed to Respondent, (2) that Petitioner has at least one claim that is the same or substantially the same as the Respondent’s claimed invention, and (3) that Petitioner has at least one claim that is the same or substantially the same as the invention Petitioner disclosed to the Respondent. For these requirements, the Petition contains only a general citation to “Ex. 1003; Ex. 1004; Ex. 1005.” Pet. 7–11. As noted above, Exhibit 1003 is a declaration from Petitioner; Exhibit 1004 is a declaration of Tyler Brockman; and Exhibit 1005 is an affidavit of Scott Sproul. None of the testimony from Petitioner, Tyler Brockman, and Scott Sproul, however, addresses the specifics of any claim. With regard to the first requirement, it cannot simply be assumed that the challenged claims are drawn to the same or substantially the same invention as that which Petitioner has conceived and communicated to Respondent. The Petitioner provides no reasoning or analysis in that regard. Several features in the challenged claims demand a meaningful accounting by Petitioner, relative to the invention conceived by Petitioner and communicated by Petitioner to Respondent. Challenged claims 1, 2, and 6 are independent and all other challenged claims depend, directly or indirectly, from one of claims 1, 2, and 6. Claim 1 requires an actuator, mounted to an irrigation tower and separate from the anchor member, that has a retracted position and an extended position. According to claim 1, the anchor member is mounted to the actuator. Also according to claim 1, when the actuator is in its retracted position, the anchor member is retracted above the soil surface, and when the actuator is in its extended position, the anchor member penetrates the soil surface. The invention conceived by Petitioner and as communicated by Petitioner to Respondent, as identified above, however, includes no such actuator. More particularly, lacking from the Petitioner’s conceived and communicated invention is a sufficient disclosure or description of an actuator that, itself, translates between extended and retracted positions, and lacking from the Petition is any reasoning to account for the obviousness of such a feature to one with ordinary skill in the art. Similarly, claim 2 requires a motor, in an actuator, that is slidably mounted to the frame for movement between a retracted position and an extended position. The invention conceived by Petitioner and communicated by Petitioner to Respondent, as identified above, however, includes no such actuator and motor, and the Petition does not account for such a feature.” slip op. at 8
NonePatents in suitUS 9,215,847 - PTAB · Dec 22, 2016 · DER2016-00022 · APJ Joni Y Chang · DER · Order
The Board denied institution because Shukh had no pending claim substantially the same as the Respondents’ claimed invention or the invention allegedly disclosed to them.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“is required to show that the petitioner has at least one claim that is: (1) the same or substantially the same as the respondent’s claimed invention; and (2) the same or substantially the same as the invention disclosed to the respondent. In the instant Petition, Petitioner asserts that claim 19 of Petitioner’s” slip op. at 3
NonePatents in suitUS 9,853,053 - Mastercraft Boat Company, LLC v. Malibu Boats, LLCInstitution deniedPTAB · Nov 16, 2016 · IPR2016-01058 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution because MasterCraft did not show a reasonable likelihood of success on any challenge to claims 27–29.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted unless the information presented in the Petition shows “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). For the reasons set forth below, we conclude that the information presented in the Petition does not establish a reasonable likelihood of success with respect to claims 27–29 of the ’873 patent. We do not institute an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“wake surfing” appears in the preamble of claim 27, the body of the claim includes recitation of particular structures, i.e. “first and second upright wake modifiers” that operate to form left side and right side “asymmetrical wakes.” We determine that the preamble of claim 27 provides informative context for the type of asymmetrical wakes that are generated by the upright wake modifiers. In that respect, the produced asymmetrical wakes must be understood as suitable for surfing. Indeed, that determination is also consistent with other language of claim 27. In particular, the body of claim 27 further recites that each of the asymmetrical wakes generated are “different from a non-surf wake.” It follows logically that if asymmetrical wakes must be different from non-surf wakes, then the asymmetrical wakes are understood as surf wakes, or wakes suitable for surfing. Accordingly, we conclude that the asymmetrical wakes produced by the upright wake modifiers in claim 27 must be those recognizable as suitable for surfing. We turn now to the meaning of “wakes suitable for surfing”” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“suitable for surfing.” For the following reasons, we agree with the meaning that is offered by Malibu. At the outset, we do observe that the ’873 patent describes that “[o]ne aspect of the present invention is directed to a surf wake system for modifying a wake formed by a watercraft travelling through water.” Ex. 1001, 2:11–13. We, however, do not share MasterCraft’s view that such description establishes the meaning of the type of “wakes” described in claim 27. We agree with Malibu that an asymmetrical wake of claim 27 that is “different from a non-surf wake” and which is characterized as being “suitable for surfing” is a wake that must be suitable for surfing. MasterCraft’s proposal that simply any wake that has been “modified” amounts to a “wake suitable for surfing” is not correct, in our view, as that meaning would encompass wakes that, although modified, are not suitable for surfing.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“plus-function limitation subject to 35 U.S.C. § 112, ¶6 (pre-AIA), because it fails to ‘recite sufficiently definite structure’ and recites ‘function without reciting sufficient structure for performing that function.’” Pet. 5 (citations omitted). To that end, MasterCraft contends that the allegedly corresponding structure disclosed in the Specification are variants of types of “water diverters” or “flaps.” Id. at 8. Malibu disagrees that the noted phrase invokes § 112, ¶ 6, contending instead that the noted phrase describes structural details of a wake modifier. PO Resp. 26–27. For purposes of this Decision, we determine that it is not necessary to ascertain whether the pertinent phrase is a means-plus-function limitation. In particular, we determine that it is only necessary to consider that the noted phrase requires that the wake modifiers are components that are structured and configured to create asymmetrical wakes that are suitable for surfing.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,578,873 - Mastercraft Boat Company, LLC v. Malibu Boats, LLCInstitution deniedPTAB · Nov 16, 2016 · IPR2016-01057 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution because MasterCraft did not show a reasonable likelihood that claims 1, 2, 6, 7, 17–20, 22, and 23 were unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted unless the information presented in the Petition shows “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). For the reasons set forth below, we conclude that the information presented in the Petition does not establish a reasonable likelihood of success with respect to claims 1, 2, 6, 7, 17–20, 22, and 23 of the ’873 patent. We do not institute an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“At the outset, we observe that the ’873 patent describes that “[o]ne aspect of the present invention is directed to a surf wake system for modifying a wake formed by a watercraft travelling through water.” Ex. 1001, 2:11–13. We, however, do not share MasterCraft’s view that such description establishes the meaning of “surf wake.” We agree with Malibu that, at its core, a surf wake must be a wake that is suitable for surfing. MasterCraft’s proposal that simply any wake that has been “modified” amounts to a “surf wake” is not correct as that meaning would encompass wakes that, although modified, are not suitable for surfing.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“2. Anticipation by Svensson Anticipation is established only when a single prior art reference discloses all elements of the claimed invention. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). Here, MasterCraft contends that all of the features of” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not found
“In light of that testimony, we understand that Dr. Savander’s computer modeling is based on specific assumptions as to sizing and positioning of flaps when placed on a vessel hull so as to allegedly produce a surf wake. Dr. Savander provides no persuasive reasoning as to why those assumptions are derived appropriately from the teachings of the prior art. Indeed, while noting that Svensson, itself, provides “no geometric guidance as to the height and width of the flaps,” as noted above, Dr. Savander proceeds to “estimate[]” without adequate reasoning that a flap height of “approximately 50% of the hull side height, or 18.2 inches” would be used “in order for the flap to start at the lower chine and extend above the water surface.” Id. Dr. Savander also theorizes that flap width would “fall into the range of 2, 3, and 4 inches.” Id. It simply does not follow on the record before us that the particular flap dimensions and positioning would have been derived from the teachings of the prior art. Yet, those parameters are crucial to MasterCraft’s position that claims of the ’873 patent would have been obvious based on Svensson. We are not satisfied that those obviousness challenges are guided by the teachings of the prior art rather than formulated, in-part, from hindsight with the intention of creating the upright water diverters disclosed in the ’873 patent. We also find lacking in the Petition suitable articulated reasoning as to why a skilled artisan would have adequate reason to combine the teachings of the prior art. In particular, MasterCraft simply concludes that Svensson’s teachings have “broad applicability” and on that basis a person of ordinary skill in the art generally would have been motivated to apply those teachings to any given boat hull, such as that disclosed in Clement. Pet. 31. That is not, in our view, sufficiently articulated reasoning with rational evidentiary underpinnings that is necessary to demonstrate an adequate reason to combine prior art teachings. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,578,873 - Vista Outdoor Operations LLC v. Liberty Ammunition, LLCRehearing deniedPTAB · Oct 31, 2016 · IPR2016-00539 · APJ Michael L Woods · IPR · Rehearing
The Board denied rehearing and left in place the denial of institution for claims 1–42 on all six grounds, finding no overlooked or misapprehended matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request 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, opposition, or a reply. Furthermore, when rehearing a decision on a motion, the Board will review the decision for an abuse of discretion. Id. at § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Board found that these embodiments were distinct, and determined that Petitioner failed to establish a reasonable likelihood of success on its challenges when combining features from these distinct embodiments. See Decision 13–16, 19, 20. With respect to the anticipation ground (Ground 1), the Board explained that “it is not enough that the prior art reference discloses multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 13 (citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371–72 (Fed. Cir. 2008)). With respect to Grounds 2 and 3, the Board determined that Petitioner failed to explain adequately how Woodring’s distinct embodiments are being combined with one another and the cited art to arrive at the claimed invention. Id. at 18, 20.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“The Board found that these embodiments were distinct, and determined that Petitioner failed to establish a reasonable likelihood of success on its challenges when combining features from these distinct embodiments. See Decision 13–16, 19, 20. With respect to the anticipation ground (Ground 1), the Board explained that “it is not enough that the prior art reference discloses multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 13 (citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371–72 (Fed. Cir. 2008)). With respect to Grounds 2 and 3, the Board determined that Petitioner failed to explain adequately how Woodring’s distinct embodiments are being combined with one another and the cited art to arrive at the claimed invention. Id. at 18, 20.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“determined that Petitioner failed to establish a reasonable likelihood of success on its challenges when combining features from these distinct embodiments. See Decision 13–16, 19, 20. With respect to the anticipation ground (Ground 1), the Board explained that “it is not enough that the prior art reference discloses multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 13 (citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371–72 (Fed. Cir. 2008)). With respect to Grounds 2 and 3, the Board determined that Petitioner failed to explain adequately how Woodring’s distinct embodiments are being combined with one another and the cited art to arrive at the claimed invention. Id. at 18, 20.” slip op. at 4
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,748,325
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.