- Baker Hughes Oilfield Operations, Inc. v. Smith International, Inc.Institution deniedPTAB · Dec 22, 2016 · IPR2016-01451 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution: it exercised discretion as to claims 43–46, 49, 50, 62–69, and 72, and found no reasonable likelihood of obviousness for claims 55–58.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“determining whether to institute or order a proceeding under this chapter . . . the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” In light of § 325(d), we consider whether the reexamination contains the same or substantially the same art or arguments as presented in the Petition. Patent Owner argues that we should decline to institute inter partes review under 35 U.S.C. § 325(d) because the Petition raises the same or substantially the same prior art or arguments that were presented previously to the Office. Prelim. Resp. 19–26. In particular, Patent Owner contends that each of the claims in the reexamination was rejected based on Eddison, under either 35 U.S.C. § 102(b) and/or in combination with Jewkes under § 103(a), and that Petitioner relies upon Jewkes again under § 102(b) in its Petition. Id. at 23–26. Petitioner makes no attempt to explain why the references that form the bases for Petitioner’s challenge here are not the same or substantially similar prior art to that presented during the reexamination or why the arguments are not the same or substantially similar to those presented previously to the Office. Eddison and Jewkes were relied upon in the reexamination. See id. at 141–60 (Office Action (mailed Aug. 25, 2014)). Additionally, Tandberg was presented to the Office in conjunction with the original prosecution of the ’817 patent. See Ex. 2003; Prelim. Resp. 28.” slip op. at 9
- Other 314aInstitution denied discretionary otherInstitution denied
“Patent Owner makes a valid point. Section 1.530(k) of Title 37 of the Code of Federal Regulations provides: “Amendments not effective until certificate. Although the Office actions will treat proposed amendments as though they have been entered, the proposed amendments will not be effective until the reexamination certificate is issued and published.” This places us in a difficult position. If Patent Owner ultimately succeeds in the appeal of the reexamination, a certificate will issue and the amendments to claim 43 and its dependents will be “effective.” See id.; see Ex. 1007, 166 (showing the amendments to claim 43). Yet Petitioner provides no analysis of the amended limitations of claim 43. See, e.g., Pet. 16. Alternatively, if Patent Owner is unsuccessful in its appeal to the Federal Circuit, claim 43 and its dependents, as challenged in the reexamination, will be declared unpatentable. In either circumstance, any review we undertake of the unamended version of claim 43, and the claims depending therefrom, will be for naught. Accordingly, in light of the above circumstances, reviewing these claims on the record presented would waste judicial resources as well as the resources of the parties.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that Petitioner has not articulated a clear reason as to why one of ordinary skill in the art would have modified Jewkes’s drilling assembly to include the additional structures taught by Tandberg and Eddison. We recognize that Petitioner points to Tandberg’s teaching that employing the same fundamental structure as an underreamer and as a stabilizer has an advantage, but Petitioner never explains what that advantage is or why it would have prompted one of ordinary skill in the art to modify Jewkes.5 Accordingly, on the record before us, Petitioner has not established a reasonable likelihood that it would prevail in showing that the combination of Jewkes, Tandberg, and Eddison would have rendered the subject matter of claims 55–58 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“We agree with Patent Owner that Petitioner has not articulated a clear reason as to why one of ordinary skill in the art would have modified Jewkes’s drilling assembly to include the additional structures taught by Tandberg and Eddison. We recognize that Petitioner points to Tandberg’s teaching that employing the same fundamental structure as an underreamer and as a stabilizer has an advantage, but Petitioner never explains what that advantage is or why it would have prompted one of ordinary skill in the art to modify Jewkes.5 Accordingly, on the record before us, Petitioner has not established a reasonable likelihood that it would prevail in showing that the combination of Jewkes, Tandberg, and Eddison would have rendered the subject matter of claims 55–58 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 12
§ 103 obviousnessDiscretionary denialPatents in suitUS 6,732,817 - H&S Manufacturing Company, Inc. v. Oxbo International CorporationInstitution deniedPTAB · Oct 26, 2016 · IPR2016-00926 · APJ James A Tartal · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood of proving claims 28, 32, or 44 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Upon consideration of the Petition and the Preliminary Response, we conclude the information presented does not show a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any claim of the ’929 patent. Accordingly, the Petition is denied and no trial is instituted.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“assemblies being aligned side by side when each of the pickup assemblies is positioned in the extended use position such that the first, second, and third pickup assemblies provide a continuous line of material pickup.” Petitioner contends that “‘a continuous line of material pickup’ is: ‘a pickup face uninterrupted by gaps.’” Pet. 9 (citing Ex. 1009 ¶¶ 35–36). Patent Owner argues that “the claims require the pickup assemblies be aligned such that they pickup material continuously along the width of the merger,” and that introducing “gaps” to the meaning of the term “adds unnecessary vagueness to an otherwise definite phrase.” Prelim. Resp. 11. We agree with Patent Owner, and, for purposes of this decision, we determine no express construction is necessary for “continuous line of material pickup.”” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Beougher Figure 1 illustrates combine 10 (folded for transit) equipped with folding header assembly 11, including center section 17 and wing sections 18, which Petitioner contends correspond to the recited three pickup assemblies. Ex. 1010, 3:57–4:8, 6:5–10. As Petitioner notes, “each of the header sections carries an auger section,” and more particularly, “center section 17 rotatably supports auger section 45, and wing sections 18 carry auger sections 46.” Pet. 16 (quoting Ex. 1010, 5:10–13). Petitioner offers no additional explanation in support of its contention that each of the three auger sections of Beougher corresponds to one of the three conveyors recited in claim 44. See Pet. 16; see also Ex. 1009 ¶¶ 46–53. According to Beougher, during combine operation the center and wing sections “of the auger” are in general alignment. Ex. 1010, 6:1–3. The “structure for automatically coupling and uncoupling the auger sections, and for maintaining positive driving connection in all three auger sections during upward and downward pivoting of the header’s wing sections” is shown in Beougher in Figures 6–9. Id. at 5:31–35. Although the three auger sections permit “flexing,” the “parts are nevertheless locked against relative rotational movement by means of springloaded pins 68 received within grooves or keyways 61 of shaft extension 56.” Id. at 6:12–15. In light of these disclosures in Beougher, we agree with Patent Owner that Petitioner has not sufficiently shown that Beougher discloses the three conveyors of claim 44, as opposed to a single auger “that can be separated into sections when the combine harvester header is retracted.” See Prelim. Resp. 35. We have also considered Petitioner’s argument that “the pertinency of Beougher as an anticipatory reference was confirmed by the Patent Office during prosecution of an application related to the ’929 patent,” but find Patent Owner’s decision to cancel a claim during prosecution of a related application does not further support Petitioner’s contentions in this case. See Pet. 17; see also Prelim. Resp. 35–36 (explaining that Patent Owner accepted the allowed claim in the related application and filed a continuing application to prosecute additional claims directed to windrow mergers rather than present arguments in response to the Examiner’s rejection). Accordingly, the information presented by Petitioner does not show a reasonable likelihood that Petitioner would prevail in showing claim 44 of the ’929 patent is anticipated by Beougher.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“(citing Ex. 1012, p. 2, l. 8, Fig. 4; see also additional description of Zhavoronkin in section II.E. below). Petitioner argues that “[o]ne of ordinary skill in the art would have been motivated to modify the second pickup assembly of Schnittjer to include a transverse conveyor as taught by Zhavoronkin, to provide the device with additional options for discharging the material being picked up and moved as taught by Zhavoronkin, to arrive at claim 44 of the ’929 Patent.” Pet. 53 (citing Ex. 1009 ¶ 75 (stating the same)). Petitioner offers no additional explanation for this asserted rationale, which we find not sufficient to support the asserted combination of Schnittjer and Zhavoronkin. As explained above, the apparatus of Schnittjer operates to mix and combine material into a windrow behind its center conveyor 20. On its face, adding a transverse conveyor behind center conveyor 20 of Schnittjer, as Petitioner proposes, would preclude the apparatus from operating as intended. Petitioner provides no sufficient explanation for why Schnittjer would be modified as proposed for the purported benefit of “provid[ing] the device with additional options for discharging the material being picked up and moved,” when the modification would prevent the apparatus from discharging the material as intended. See also Prelim. Resp. 69 (arguing that “adding a middle conveyor would eliminate the device’s ability to invert the compost core on top of that side material, thereby rendering the combined apparatus inoperable for its intended purpose.”). Petitioner further argues that the asserted combination “would merely involve combining prior art elements according to known methods to yield predictable results,” “would have been predictable for at least the reason that Schnittjer already discloses pickup assemblies having transverse conveyors,” and “would merely involve the use of a known technique to improve a similar device in the same way.” Pet. 53–54. Petitioner identifies no testimony from Mr. Shirley in support of the additional arguments. We are not persuaded that the additional generic arguments offered by Petitioner in support of the asserted combination are sufficient in this case because Petitioner has not shown that its proposed modification of Schnittjer would still permit Schnittjer to operate as intended. Petitioner has identified no persuasive predictable result or improvement corresponding to its asserted combination. Accordingly, the information presented by Petitioner does not show a reasonable likelihood that Petitioner would prevail in showing claim 44 of the ’929 patent would have been obvious over Schnittjer and Zhavoronkin.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,310,929 - H&S Manufacturing Company, Inc. v. Oxbo International CorporationInstitution deniedPTAB · Oct 18, 2016 · IPR2016-00909 · APJ James A Tartal · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable; the asserted references did not establish the claimed trough feature.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“requesting an inter partes review of claims 1–4 and 6–8 of U.S. Patent No. 8,511,052 B2 (“the ’052 patent”). Paper 2 (“Pet.”). Patent Owner, Oxbo International Corporation, filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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.” Upon consideration of the Petition and the Preliminary Response, we conclude the information presented does not show a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any claim of the ’052 patent. Accordingly, the Petition is denied and no trial is instituted.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“The determination of whether a given reference qualifies as a prior art “printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); In re Wyer, 655 F.2d 221, 226 (CCPA 1981). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (citation omitted). Petitioner offers little explanation or evidence in support of its contention that the 2004 Oxbo Manual and the 2006 Oxbo Manual are prior art printed publications. With respect to the 2004 Oxbo Manual, Petitioner does no more than identify a copyright date which does not correspond to the date of revision that also appears on the document. Pet. 18. With respect to the 2006 Oxbo Manual, Petitioner further contends that “by its nature, the repair parts manual was made available to the public.” Id. at 35. The statement of Mr. Shirley, to which the Petition cites as support, offers no evidence specific to the manuals asserted as prior art, but instead consists of a general observation that Patent Owner sold windrow mergers, and a conclusory statement that “manuals such as these were distributed to the consuming public by Oxbo as manufacturers typically do.” Ex. 1010 ¶ 34. Mr. Shirley is not explicit in what “manuals such as these” he is referring to, but the paragraph cited by Petitioner addresses “similar manuals for its 2003 and 2005 Model Year 310 Windrow Mergers,” not explicitly the 2004 Oxbo Manual and the 2006 Oxbo Manual. We are not persuaded, based on the facts of this case, that the presence of a copyright notice dated prior to the revision date of the document and a generic reference to the “nature” of a document as a manual is sufficient evidence to support a threshold showing of public accessibility as of a particular date to support institution of inter partes review. See, e.g., ServiceNow, Inc. v. Hewlett-Packard Co., Case IPR2015-00716, slip op. at 17 (PTAB Aug. 26, 2015) (Paper 13) (finding a copyright notice insufficient); but see Ford Motor Co. v. Cruise Control Techs. LLC, Case IPR2014-00291, slip op. at 7–8 (PTAB June 29, 2015) (Paper 44) (finding a copyright notice sufficient evidence of publication) (citing FLIR Sys., Inc. v. Leak Surveys, Inc., Case IPR2014-00411, slip op. at 18–19 (PTAB Sept. 5, 2014) (Paper 9)). While Petitioner argues that the copyright date and the revision date of both manuals predate the priority date of the ’052 patent, Petitioner has provided no evidence that the references at issue were disseminated as of any particular date, and does not otherwise explain why these particular manuals were “sufficiently accessible to the public interested in the art” before the critical date. See In re Cronyn, 890 F.2d at 1160; see also ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 865–66 (Fed. Cir. 2010) (finding no error in district court’s determination that user manuals were not printed publications in the absence of evidence of the source, publication, or public accessibility of either manual). Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any challenged claims of the ’052 patent based on the 2004 Oxbo Manual or the 2006 Oxbo Manual.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“The photo above from the 2004 Oxbo Manual appears to show a portion of the 310 Windrow Merger. Neither Petitioner nor Mr. Shirley further explains why the photo shows the trough feature, as claimed. See Ex. 1010 ¶ 37 (stating that “[t]he trough can be seen in the figure” (referring to third photo on page 23224 of the 2004 Oxbo Manual), and that “[i]n my opinion one of ordinary skill in the art would view these assemblies as the pickup and transfer unit as claimed in the ‘052 Patent”). Contrary to Petitioner’s conclusory assertions, we agree with Patent Owner that Petitioner has not sufficiently identified any structure in the 2004 Oxbo Manual corresponding to the trough feature. See Prelim. Resp. 27–32. The figures and photos cited by Petitioner all show that the pickup head of the 2004 Oxbo Manual “does not form a wall on the forward side of the conveyor and that the conveyor belt is horizontally flush with the pickup head.” Prelim. Resp. 28. Petitioner has not shown how the pickup head depicted in the 2004 Oxbo Manual, together with the conveyor and cover, “defines a trough” because the conveyor belt is horizontally flush with the pickup head. As explained in our claim construction discussion above, we agree with Patent Owner that the recited trough feature requires a depth formed by two sides. Petitioner has not shown how the 2004 Oxbo Manual satisfies this limitation.5” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“Dow Figure 15 shows pickup transfer assembly 108, including merger head 128, arcing shroud 160. Ex. 1008, 4:42–44, 4:66–5:1, 6:18–20. Neither Petitioner nor Mr. Shirley further explains why the Dow apparatus shows the trough feature, as claimed. See Ex. 1010 ¶ 69 (stating that “[t]he trough can be seen in [Dow] Figure 15,” and that “[i]t is my opinion that one of ordinary skill in the art would understand these assemblies to be the pickup and transfer unit disclosed in the ’052 Patent”). Patent Owner contends that Dow does not disclose a trough, as shown in Figure 3 of Dow, reproduced below. Dow Figure 3 shows merger apparatus 100, including head unit 124 and conveyor 134. Ex. 1008, 4:35–37, 62–66. We agree with Patent Owner that Dow, as shown in Figure 3, illustrates “a pickup head and conveyor belt on the same horizontal plane,” and that the belt conveyor “is not located in a depth or depression between the pickup heads and front of shrouds.” Prelim. Resp. 45–46. As noted above, we agree with Patent Owner that the recited trough feature requires a depth formed by two sides. Petitioner has not shown how the pickup head depicted in Dow, together with the conveyor and shroud, “defines a trough” because the conveyor belt is horizontally flush with the pickup head. As explained in our claim construction discussion above, we agree with Patent Owner that the recited trough feature requires a depth formed by two sides. Petitioner has not shown how Dow satisfies this limitation. Petitioner has not sufficiently shown that any of the asserted references discloses “a pickup and transfer unit defining a trough in which material is conveyed,” as recited in claim 1, the only challenged independent claim. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any challenged claims of the ’052 patent based on the 2004 Oxbo Manual, the 2006 Oxbo Manual, Pourchet, or Dow.” slip op. at 15
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,511,052 - Aisin Seki Co. Ltd. v. Signal IP, Inc.Institution deniedPTAB · Jun 17, 2016 · IPR2016-00369 · APJ James A Tartal · IPR · Institution
The Board denied institution on claim 11 because the petition did not show a reasonable likelihood that any of its three obviousness grounds established unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“conclude the information presented does not show a reasonable likelihood that Petitioner would prevail in showing the unpatentability of the challenged claim. Accordingly, we do not authorize an inter partes review to be instituted as to claim 11 of the ’375 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“2015. See Pet. 13. “[T]he Board’s review of the claims of an expired patent is similar to that of a district court’s review.” In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). Specifically, because the expired claims of the patent are not subject to amendment, we apply the principle set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)), that “words of a claim ‘are generally given their ordinary and customary meaning,’” as understood by a person of ordinary skill in the art in question at the time of the invention. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,” slip op. at 7
- BurdenNot shown unpatentable
“Pet. 30–31. Contrary to Petitioner’s argument, there is no express disclosure in Tokuyama that it is “adding up” the number of sensors that are ON. We are not persuaded that Petitioner has carried its burden by merely arguing that “[i]n other words, Tokuyama’s apparatus determines a ‘total load rating’ by adding up the number of sensors that are ON,” or that “this determination amounts to adding up the sensors’ load ratings.” Pet. 30; Ex. 1009, ¶ 66 (emphasis added). Petitioner’s interpretation of Tokuyama is supported only by a limited explanation in the Declaration of Dr. Rouhana, which states:” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner offers no sufficient reason why Mano’s “binary logic” would have been used at the time of the invention in Zeidler’s device or simple algorithm. Nor does Petitioner explain any sufficient rationale for why one of ordinary skill in the art would have applied the binary logic of Mano to Zeidler. Indeed, Petitioner offers no sufficient explanation for how its purported use of Boolean arithmetic comports with “summing,” as that term is used in the ’375 patent.” slip op. at 15
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 5,732,375 - Toyota Motor Corporation v. Signal IP, Inc.Institution deniedPTAB · Jun 10, 2016 · IPR2016-00291 · APJ James A Tartal · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claim 11 was obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Upon consideration of the Petition and the Preliminary Response, we conclude the information presented does not show a reasonable likelihood that Petitioner would prevail in showing the unpatentability of the challenged claim. Accordingly, we do not authorize an inter partes review to be instituted as to claim 11 of the ’375 patent.” slip op. at 2
- BurdenNot shown unpatentable
“Pet. 29. Contrary to Petitioner’s argument, there is no express disclosure in Tokuyama that it is “adding up” the number of sensors that are ON. We are not persuaded that Petitioner has carried its burden by arguing in a conclusory manner that “[i]n other words, Tokuyama’s apparatus determines a ‘total load rating’ by adding up the number of sensors that are ON,” or that “this determination amounts to adding up the sensors’ load ratings.” Pet. 29; Ex. 1009, ¶ 66 (emphasis added). Petitioner’s interpretation of Tokuyama is supported only by a limited explanation in the Declaration of Scott Andrews, which states: Again, step (b) in Tokuyama determines whether at least four of the nine sensors are on (i.e., are sensing the minimum pressure required to activate the sensor). Viewing the “on” sensors as binary “1” values and the “off” sensors as binary “0” values, this determination amounts to adding up the sensors’ load ratings; the sum of these binary values represents the number of sensors in the “on” state. Therefore, Tokuyama’s system computes a “total load rating.” By determining whether that number is at least 4, it compares the total load rating to a “total load threshold.” Ex. 1009, ¶ 66. Thus, from the evidence relied on by Petitioner, Tokuyama determines whether a certain number of sensors is on, but Tokuyama provides no indication that it is “adding up” sensor ON information. 13 Mr. Andrews testimony is not persuasive because it is conclusory and provides no explanation of why one of ordinary skill in the art at the time of the invention would have understand Tokuyama to be applying a binary system based on numerical values for ON and OFF, much less summing those numerical values to add up the load ratings of the sensors. Tokuyama does not state that it assigns a numerical value to any load rating, and in fact utilizes information to make determinations based not only on how many of the twelve load detection units are ON or OFF, but also about which of those units are ON or OFF. Petitioner does not explain how such location information would be reflected were Tokuyama properly viewed as a simple binary system. Petitioner also neglects to address how Tokuyama’s exclusion of three of the twelve sensors from its determination of whether four or more of the load detection units are ON relates to the requirement of claim 11 of summing the assigned load ratings for all the sensors. Petitioner’s contentions are not supported by sufficient evidence to suggest that any set of load rating values is summed, or needs to be summed, for Tokuyama to operate, even if Petitioner contends that conceptually it “amounts to” adding values up.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot reached
“Any judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). In this 14 case, Petitioner provides no persuasive explanation or sufficient evidence that Tokuyama contemplated “summing the assigned load ratings,” as claimed, and instead suggests that by considering the disclosure of the ’375 patent, Tokuyama can be thought of as accomplishing the same task. There is no persuasive evidence that such reasoning is limited to the level of ordinary skill in the art at the time of the claimed invention. Moreover, reasoning that the disclosure of Tokuyama “amounts to” what is disclosed in the ’375 patent necessarily includes knowledge gleaned from the ’375 patent. As a result, we are not persuaded that Petitioner has sufficiently demonstrated Tokuyama discloses “summing the assigned load ratings for all the sensors to derive a total load rating,” as required by claim 11. Accordingly, we conclude that Petitioner has not presented sufficient information to establish a reasonable likelihood of prevailing in showing the unpatentability of claim 11 of the ’375 patent as obvious over Schousek and Tokuyama. slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“For purposes of this Decision, the only term requiring specific discussion is “load rating,” recited in claim 13. According to Petitioner: The ’375 patent does not expressly define the term “load rating.” An example is provided in the specification where a “load rating” varies between 0 and 4. (See [Ex. 1001] at 4:6–9; see also 6.) Claim 11, however, is not limited to this example. Instead, the ’375 patent confirms that “[t]he load rating is a measure of whether the sensor is detecting some load….” (Id. at 4:2–4.) Thus, while a load rating can vary between 0 and 4 (or 0 and some other number), it can also simply be binary value that varies between 0 and 1. In other words, a “load rating” is simply a numerical value indicating “whether [each] sensor” in the “sensor array” is “detecting some load.” (See Ex. 1009, Andrews Dec. at ¶ 34.) Pet. 8. Patent Owner does not dispute Petitioner’s proposed construction, stating “a load rating, according to the ’375 [p]atent is a measure of whether a given sensor is detecting some load.” Prelim. Resp. 3, 13 (citing Ex. 1001, 4:1–4). For purposes of this decision, we agree with the parties that a “load rating” is a measure of whether a given sensor is detecting some load.” slip op. at 9
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 5,732,375 - Broad Ocean Technologies, LLC v. Nidec Motor CorporationRehearing deniedPTAB · Apr 4, 2016 · IPR2015-01663 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied rehearing, finding no overlooked or misapprehended matter supporting institution on the challenge to claims 1, 21, and 39 over Ballard and Collins.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Although Petitioner is correct that the Petition’s claim charts identify both Ballard and Collins as disclosing a variable speed motor, Petitioner provides insufficient reasoning in the Petition that explains how a combination of Ballard and Collins is to be effected by relying on Collins’s purported disclosure of a variable speed motor—an omission that is especially pertinent in light of the Petition’s express and otherwise exclusive reliance on Ballard for the “variable speed motor.” See, e.g., Pet. 26 (“A [person having ordinary skill in the art] would have been motivated to, and have found it obvious to, apply the improvement of Collins’ digital switches to Ballard’s variable speed motor.”) For example, Petitioner identifies no argument in the Petition that involves substitution of Ballard’s multiple fixed speed motor with the motor disclosed by Collins. To the extent that the Request for Rehearing now implies such a substitution, it represents a shift in position from that taken in the Petition.” slip op. at 3
- Obviousness (§103) › Analogous artNon analogous artDecided for patent owner
“not demonstrated sufficiently that Collins is analogous art, as necessary for a reference to qualify as prior art for an obviousness determination under 35 U.S.C. § 103(a).” Dec. 13. In reaching that conclusion, we stated that Petitioner has not shown that controlling various stages of an injection molding machine [as described in Collins] is within the same field of endeavor as the ’194 patent, which is concerned with HVAC systems and “an improved variable speed control . . . designed to be connected to the standard power terminals used for a permanent split capacitor (PSC) motor.” Id. (citing Ex. 1001, col. 1, ll. 9–10).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Although Petitioner is correct that the Petition’s claim charts identify both Ballard and Collins as disclosing a variable speed motor, Petitioner provides insufficient reasoning in the Petition that explains how a combination of Ballard and Collins is to be effected by relying on Collins’s purported disclosure of a variable speed motor—an omission that is especially pertinent in light of the Petition’s express and otherwise exclusive reliance on Ballard for the “variable speed motor.” See, e.g., Pet. 26 (“A [person having ordinary skill in the art] would have been motivated to, and have found it obvious to, apply the improvement of Collins’ digital switches to Ballard’s variable speed motor.”) For example, Petitioner identifies no argument in the Petition that involves substitution of Ballard’s multiple fixed speed motor with the motor disclosed by Collins. To the extent that the Request for Rehearing now implies such a substitution, it represents a shift in position from that taken in the Petition.” slip op. at 3
§ 103 obviousnessPatents in suitUS 5,818,194 - Broad Ocean Technologies, LLC v. Nidec Motor CorporationRehearing deniedPTAB · Mar 7, 2016 · IPR2015-01617 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied rehearing, leaving claims 1–6 uninstituted because Beifus did not disclose adjusting all motor torque settings with the adjustment factor.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On rehearing, the burden of showing that the Decision should be modified lies with Petitioner, the party challenging the Decision. 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 previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“diamonds and squares) of an induction-motor speed-torque curve that may be stored within the memory of an electrically commutated motor (“ECM”) circuit, including breakdown speed, no-load or synchronous speed, and a “shape description number” used in calculating new torque demands. Ex. 1007 ¶ 36. The drawing illustrates scaling of the torque by a factor less than one between a breakdown speed of 1050 RPM and a no-load speed of 1200 RPM, with no scaling at speeds less than the breakdown speed. Id. That is, when Beifus adjusts torque settings at any particular operating speed that is between the breakdown speed and the no-load speed, the same adjustment factor is applied; consequently, torque settings of the motor are adjusted “with the adjustment factor to obtain proportionally reduced torque settings,” as recited in independent claim 1.” slip op. at 4
- BurdenDecided for patent owner
“On rehearing, the burden of showing that the Decision should be modified lies with Petitioner, the party challenging the Decision. 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 previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
§ 102 anticipationPatents in suitUS 7,990,092 - Meyer Products, LLC v. Douglas Dynamics, L.L.C.Rehearing deniedPTAB · Feb 29, 2016 · IPR2015-01247 · APJ James A Worth · IPR · Rehearing
The Board denied rehearing, leaving institution on claims 18 under Pruss and Keeler and claims 1, 4–7, and 18 under Coates and Hetrick; other grounds failed the institution threshold.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW 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 request must identify, specifically, all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsMixed
“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). As applied here, the Petition must have specified which prior art structures are being relied on in the asserted ground such that “said lift frame, trunnion, A-frame and motion generating device all being attachable to and detachable from a vehicle as one assembly,” as recited by claim 1 and similarly required by claims 4–7 and 18. The Petition did not. slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“back bar and a pair of side bars arranged in a triangular or ‘A’ configuration,” the Board misapprehended or overlooked the fact that the Specification of the ’757 patent does not define the term “A-frame,” that the Specification states that the patent is “limited . . . by the scope of the following claims and their equivalents,” and that the Specification also uses the term “frame” without the prefix “A-” or uses the term preceded by “mount,” “lift,” or “A-”. Request 3–6. Petitioner argues that this misapprehension causes the Board’s construction to be divorced from the Specification and the record evidence. Request 6 (Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)). As an initial matter, we note that Petitioner only cited to two portions of the Specification in the Petition in supporting its construction of “A-frame”: Ex. 1001, 4:62–64, 8:36–40. Pet. 8–9. Accordingly, we restrict ourselves to reconsideration of only this portion of the Specification. And upon reconsideration, we determine that the Board did not misapprehend or overlook the aforementioned cited portions of the Specification in construing “A-frame”; instead, the Board considered those portions expressly, but came to a different conclusion. Specifically, as set forth in the Decision, the fact that other shapes may be referred to in the Specification does not broaden the “A” shape of the “A-frame,” as recited in claims 1 and 4–7. The Decision notes Patent Owner’s suggestion that other claims, not at issue, might still allow for use of the invention with another shape for the frame. Decision 7. Petitioner argues that these other claims do not refer to an “A-frame.” Request 6. We agree. This argument is misplaced, however, as the lack of specificity of shape for the corresponding frame in the other claims is fully consistent with the notion that these other frames use a non-A-frame shape. Therefore, we are not persuaded that the Decision misapprehended or overlooked any arguments with respect to the asserted ground of anticipation by Pruss.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). As applied here, the Petition must have specified which prior art structures are being relied on in the asserted ground such that “said lift frame, trunnion, A-frame and motion generating device all being attachable to and detachable from a vehicle as one assembly,” as recited by claim 1 and similarly required by claims 4–7 and 18. The Petition did not. slip op. at 8
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 6,928,757 - Apple Inc. v. Tracbeam, LLCInstitution deniedPTAB · Feb 19, 2016 · IPR2015-01702 · APJ James A Tartal · IPR · Institution
Instituted review in IPR2015-01703 on specified Loomis grounds for claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215; denied institution in IPR2015-01702.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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.” Upon consideration of the Petition and the Preliminary Response, we conclude the information presented shows there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215, but not of claims 17, 40, or 72. Accordingly, we authorize an inter partes review to be instituted only as to claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215 of the ’231 patent. Our factual findings and conclusions at this stage of the proceeding are based on the evidentiary record developed thus far (prior to Patent Owner’s Response). This is not a final decision as” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“and second location estimation determiners determine geographical indications “independently of one another.” Independent claim 17, similar to claim 40, requires that “wherein the second instance does not depend on a geographical location of the mobile station obtained from information indicative of a distance between the mobile station and at least one of the one or more satellites.” Petitioner’s sole contention with respect to claim 40 and the cited portions of claim 17 is: “Location determiners can be independent of each other. See, e.g., 5:7–9; Figs. 6, 9.” 1703-Pet 39, 44. The portion of Loomis cited by Petitioner states that “[t]he outdoor LD system operates independently of the radio LD signal system, and each of these systems can determine the present location of the user at selected times.” IPR-1703, Ex. 1008, 5:7–9. Thus, Petitioner has shown that the outdoor LD system of Loomis is independent of the radio LD signal system, but has not shown that the radio LD signal system is independent of the outdoor LD system. Accordingly, Petitioner has not shown that the determiners are “independent of each other,” as required by claim 40, or that “second instance does not depend on a geographical location . . . obtained from information indicative of a distance between the mobile station and at least one of the one or more satellites,” as required by claim 17 and claim 72, which depends from claim 17.” slip op. at 15
- Other 314aInstitution denied discretionary other
“E. Additional Grounds We decline to institute an inter partes review of claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215 based on Bruno, in combination with Olsson and/or Geier. We also decline to institute an inter partes review of claims 1, 3, 6, 7, 11, 17, 18, 20, 24, 25, 27, 39, 40, 72, 78, 81, 155, 162, 165, and 215 based on Green and Hashimoto, and additional art, as asserted in IPR-1702. Petitioner asserts multiple grounds to each challenged claim of the ’231 patent across two separate petitions, but does not address the duplicative nature of its arguments across petitions. The Board’s rules for AIA inter partes proceedings, including those pertaining to institution, are “construed to secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b); accord 35 U.S.C. §§ 316(b) (regulations for AIA inter partes proceedings take into account “the efficient administration of the Office” and “the ability of the Office to timely complete [instituted] proceedings”). Because we institute an inter partes review of these claims based on the grounds discussed above, we exercise our discretion not to institute a review based on these grounds for reasons of administrative necessity to ensure timely completion of the instituted proceeding. See 37 C.F.R. § 42.108(a).” slip op. at 23
§ 103 obviousnessDiscretionary denialPatents in suitUS 7,764,231 - Broad Ocean Technologies, LLC v. Nidec Motor CorporationInstitution deniedPTAB · Feb 12, 2016 · IPR2015-01663 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for patent owner
“First, we are not persuaded that the preamble’s recitation of a “variable speed blower motor” in claim 1 is limiting because “the body of the claim fully and intrinsically sets forth the complete invention, including all of its limitations.” See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Because “the preamble offers no distinct definition of any of the claimed invention’s limitations, but rather merely states . . . the purpose or intended use of the invention, . . . the preamble is of no significance to claim construction.” Id. (citing Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997); Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989); Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951)). Accordingly, we do not construe expressly “variable speed blower motor.”” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“’194 patent expressly distinguishes between multiple-speed and variable speed motors: The discussion to this point has concerned fixed speed motors, or multiple-speed motors, the speeds of which are controlled by the selection of taps on the motor winding. Today, state-of-the-art HVAC systems use electronic variable speed motor controllers. The standard approach for implementing variable speed motors is different from and generally more complex than the system used for fixed speed motors. Ex. 1001, col. 1, l. 65–col. 2, l. 5. We further agree with Patent Owner that Dr. Sidman relies on insufficient intrinsic evidence to support the broader construction proposed by Petitioner. Prelim. Resp. 7 (citing Ex. 1008 ¶ 28). For purposes of this Decision, we construe “variable speed motor” as a motor that can be controlled to produce a range of speeds rather than one or more fixed or preset speeds.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“2. “multiplexing unit” Each of independent claims 1 and 21 recites a “multiplexing unit.” Petitioner proposes that the term be construed as “a unit that is capable of providing, at an output, different electrical signals based on one or more inputs.” Pet. 17 (citing Ex. 1008 ¶ 31). Patent Owner does not propose a construction of the term. Because our analysis does not require that we do so, we do not construe the term expressly for purposes of this Decision.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the foregoing reasons, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge of independent claims 1, 21, or 39 as unpatentable under 35 U.S.C. § 103(a) over Ballard and Collins, nor has it demonstrated a reasonable likelihood of prevailing on its challenge of claims 3, 6, 8, 13, 23, or 32–34, which suffers from the same deficiencies.” slip op. at 14
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 5,818,194
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.