- BMW Of North America, LLC v. Carrum Technologies, LLCInstitution deniedPTAB · Nov 5, 2019 · IPR2019-00928 · APJ Lynne H Browne · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim, relying on Winner’s existing methods for detecting turns.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless 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.”” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“6. Analysis We agree with Patent Owner. As Winner discloses methods for identifying when a vehicle has entered a curve (measuring transverse acceleration and using the forward facing radar), it is not evident why one of ordinary skill in the art would have looked to Fukada to obtain additional Petitioner is relying on alleged AAPA7 to provide reasoning in support of the proposed combination, we note that identification of a problem “is not an admission that this problem was known or appreciated by others.” Endo Pharm. Inc. v. Actavis LLC, 922 F.3d 1365, 1376 (Fed. Cir. 2019) (quoting Innogenics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008))). Thus, we are not persuaded by Petitioner’s argument.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In view of our analysis discussed below, we do not discern a need to construe explicitly any claim term of the ’416 patent, because construing these terms is not necessary for us to assess the asserted grounds of unpatentability. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“A person of ordinary skill in the art (“POSITA”) at the time the ’416 patent was filed would have a bachelor’s degree in electrical engineering, computer engineering, or a related engineering discipline and two to three years of industry experience in the field of automotive control systems or automotive engineering, or equivalent experience, education, or both.” Pet. 9 (citing Ex. 1004 ¶ 22). Petitioner asserts further that “[t]he person would also have knowledge or familiarity with in-vehicle computing.” Id. Patent Owner “does not dispute Petitioner’s definition of a POSA.” Prelim. Resp. 2 (citing Pet. 9). Accordingly, for the purposes of this Decision, we 6 We note that at this time no objective evidence of nonobviousness has been presented by Patent Owner. consistent with the evidence at this stage of the proceeding, including the ’416 patent and the asserted prior art.” slip op. at 7
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,925,416 - Agamatrix, Inc. v. Dexcom, Inc.Institution deniedPTAB · Mar 13, 2019 · IPR2018-01718 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because AgaMatrix did not show a reasonable likelihood of proving any challenged claim obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For these reasons, there is not a reasonable likelihood that AgaMatrix would prevail with respect to the challenge to claim 14 in the Petition.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the related ITC proceeding, Dexcom submitted expert testimony of a slightly different level of ordinary skill in the art, but Dexcom argues in its Preliminary Response that at this stage in this proceeding, the differences between the proposed levels of skill in the art are “not material to the Board’s decision whether Petitioner has met its burden for institution of IPR.” Prelim. Resp. 5; see also Ex. 1016, 5 (Dexcom’s level of ordinary skill in the art as submitted in the ITC proceeding). We adopt AgaMatrix’s asserted level of ordinary skill in our determination of whether there is a reasonable likelihood that AgaMatrix would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 9
- Prior constructionPrior construction adoptedDecided for petitioner
“AgaMatrix submitted proposed interpretations for various claim terms based on either claim interpretations made by Judge Bullock in the related ITC proceeding, or claim interpretations stipulated to by the parties in the related ITC proceeding, or interpretations offered by Dexcom in the related ITC proceeding. Pet. 15‒16. AgaMatrix stated that “the broadest reasonable interpretation of the [listed] claim terms is at least as broad as the listed definitions.” Id. at 15. Dexcom does not dispute that the stipulated constructions and the constructions ordered by the ITC should control at this stage of the IPR proceedings. Prelim. Resp. 6. For purposes of this decision, we employ the claim constructions ordered by the ITC and stipulated to by the parties in the related ITC proceeding, as presented in the Petition.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Under the third theory (“Case 3”), the Petition asserts that in light of White’s and Beaty’s express teachings, a POSITA would have understood that an error condition can be reported and a glucose measurement can be discarded if an impedance value and/or the corresponding correction factor indicative of the effect of temperature, hematocrit, and/or another interfe[r]rent (i.e., the value associated with the severity of the erroneous signal) is too high (i.e., outside of) compared to a predetermined threshold value, such as that stored in a second look-up table in memory. Pet. 42–43 (citing Ex. 1003 ¶ 367). Dexcom disputes this assertion for three reasons. Prelim. Resp. 12–15. First, Dexcom contends “the Petition utterly fails to explain the purported combination or an alleged motivation for creating that combination.” Id. at 12. Dexcom adds that the Petition’s assertion of what “can” be done falls far short of the required showing that one of ordinary skill in the art would have been motivated to combine the references in a particular way that would have satisfied the claim. Id.at 12–13 (citing Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)). Second, Dexcom argues that Case 3 fails to identify a “glucose measurement” in the alleged combination or explain how the proposed combination discards a glucose measurement. Id. at 13. Third, Dexcom argues that Case 3 rests on the unsupported and conclusory propositions of Case 1 and Case 2, and Case 1 and Case 2 both are deficient for the reasons argued earlier in its Preliminary Response. Id. at 14. We agree with Dexcom that the Petition fails to explain adequately how the proposed combination of White and Beaty would result in a device that discards a glucose measurement. As discussed above, AgaMatrix’s arguments that White and Beaty individually disclose discarding a glucose measurement are not persuasive. The Petition does not explain how combining these teachings would overcome those deficiencies. In addition, although the Petition provides a rationale for combining White and Beaty in general (Pet. 43–46), the Petition does not explain adequately why one of ordinary skill in the art would have been led to modify White in view of Beaty in the particular manner proposed for Case 3.” slip op. at 20
Claim construction§ 103 obviousnessPatents in suitUS 9,750,460 - 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 - Smith & Nephew, Inc. v. Conformis, Inc.Rehearing deniedPTAB · Jan 12, 2018 · IPR2017-00780 · APJ James A Worth · IPR · Rehearing
The Board denied the petitioner’s rehearing request, finding no overlooked or misapprehended arguments concerning the denied grounds for claims 9, 10, 12–19, and 38.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Industries, Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The panel addressed Petitioner’s theory of modifying Radermacher’s teachings with Kenna’s teachings on, inter alia, pages 20–21 of the Decision, as referred to by Petitioner immediately above. Id.; see also id. at 16–21. Although we are mindful that issues of bodily incorporation may be irrelevant to a combination, see In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc), the Decision considered the fact that Kenna’s surgical approach is based on intra-operative alignment while Radermacher’s surgical approach is directed to pre-operative alignment, and that Petitioner did not identify a sufficient rationale to combine the different disclosed approaches. Dec. 18–21. We are not persuaded that this difference is irrelevant to whether a person of ordinary skill would have combined these approaches. The Petition does not explain adequately how to adapt Kenna’s teachings to Radermacher’s template, or why this would have been obvious to a POSITA, in light of the references’ different alignment approaches. Pet. 71–73; see Dec. 20–21. Accordingly, we conclude that the Decision did not misapprehend or overlook any arguments in the Petition.” slip op. at 5
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,062,302 - Smith & Nephew, Inc. v. Conformis, Inc.Rehearing deniedPTAB · Jan 12, 2018 · IPR2017-00779 · APJ James A Worth · IPR · Rehearing
The Board denied Smith & Nephew’s rehearing request, leaving in place the denial of institution on claims 9, 10, 12–19, and 38.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Industries, Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“an inter partes review of claims 1–3, 5–8, 11, 20, 21, 24, 25, 28–37, 39–43, 47, and 95–125 as obvious over Radermacher, Alexander, and Woolson, and denied institution of the remaining grounds presented in the Petitions. Dec. 1, 3, 6, 39–40. For example, we found that Petitioner had failed to make a threshold showing that claims 13, 18, and 38 of the ’302 patent are unpatentable under 35 U.S.C. § 103(a) over the combination of Radermacher, Alexander, Woolson, and Kenna, or over the combination of Radermacher, Fell, Woolson, and Kenna. See id. at 16–23. Additionally, we found that Petitioner had failed to make a threshold showing that claims 9, 10, and 12 of the ’302 patent are unpatentable under 35 U.S.C. § 103(a) over the combination of Radermacher, Alexander, and Woolson. See id. at 23–24. We also found that Petitioner had failed to make a threshold showing that claims 14–17 and 19 of the ’302 patent are unpatentable under” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“16–21. Although we are mindful that issues of bodily incorporation may be irrelevant to a combination, see In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc), the Decision considered the fact that Kenna’s surgical approach is based on intra-operative alignment while Radermacher’s surgical approach is directed to pre-operative alignment, and that Petitioner did not identify a sufficient rationale to combine the different disclosed approaches. Dec. 18–21. We are not persuaded that this difference is irrelevant to whether a person of ordinary skill would have combined these approaches. The Petition does not explain adequately how to adapt Kenna’s teachings to Radermacher’s template, or why this would have been obvious to a POSITA, in light of the references’ different alignment approaches. Pet. 71–73; see Dec. 20–21.” slip op. at 6
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,062,302 - Smith & Nephew, Inc. v. Conformis, Inc.Rehearing deniedPTAB · Jan 12, 2018 · IPR2017-00778 · APJ James A Worth · IPR · Rehearing
The Board denied rehearing, leaving in place the institution decision that instituted review of some claims and denied the remaining grounds, including challenges to claims 9, 10, 12–19, and 38.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Industries, Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3
Discretionary denialPatents in suitUS 8,062,302 - Smith & Nephew, Inc. v. Conformis, Inc.Institution deniedPTAB · Sep 12, 2017 · IPR2017-00984 · APJ James A Worth · IPR · Institution
The Board denied institution after finding no reasonable likelihood that claims 1–25, 28, 29, 32–46, and 50–64 were unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 311 and any response filed under [35 U.S.C. §] 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108. For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that claims 1–25, 28, 29, 32–46, and 50–64 are unpatentable. Accordingly, we do not institute an inter partes review of claims 1–25, 28, 29, 32–46, and 50–64 of the ’827 patent based on the grounds asserted in the petitions.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“As to “references the osteophyte,” Petitioner states that the ’827 patent does not define the term “reference,” but argues the broadest reasonable construction of the limitation includes “at least a patient-specific surface that engages or avoids an osteophyte.” Id. Patent Owner does not address this issue directly in this proceeding. For purposes of this Decision, we determine that the broadest reasonable construction of the “references the osteophyte” limitation includes a patient specific surface that “engages or avoids the osteophyte,” consistent with the embodiments of Figures 32 and 33 of the ’827 patent. We note that dependent claims 2 and 3 use the phrase “not engage” with respect to a “second osteophyte.” Ex. 1001, 119:30, 119:36–37 (claims 2, 3). Nevertheless, dependent claims 4 and 5 require that the patient-specific surface “substantially engage[s]” an osteophyte (id. at 119:41–46), and therefore the principle of claim differentiation indicates that independent claim 1 has a broader scope than dependent claims 4 and 5.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“The next question is whether referencing osteophytes is the “natural result flowing from” Radermacher’s technique, under the aforementioned Oelrich test, or whether it otherwise would have been obvious to apply Radermacher’s technique to a bone surface with osteophytes. Petitioner argues that it would have been obvious to apply Radermacher’s technique to a bone surface with osteophytes because (1) such a template would be a negative of the “natural (i.e. not pre-treated) surface”; (2) referencing any osteophyte would, in some cases, aid in alignment because the unique structure of the osteophyte would help ensure that the template was placed in the proper position; and (3) it would eliminate the need to pre-treat the joint to remove the osteophyte in a preliminary surgical step, thus reducing surgical time and improving patient safety. Pet. 30 (citing, e.g., Ex. 1003, 10, 12; Ex. 1002 ¶¶ 116–117).” slip op. at 14
- BurdenNot shown unpatentable
“Thus, the prior art relied upon in the asserted ground does not disclose referencing an osteophyte, expressly or inherently. Additionally, Petitioner does not provide adequate evidence that it would have been obvious to apply the technique of Radermacher in patients with osteophytes to engage (or avoid or reference) the osteophyte, as opposed to performing an alternate technique, such as first removing the osteophytes. In particular, Petitioner has not provided adequate evidence of a reasonable likelihood of success of applying Radermacher’s technique to a bone surface with osteophytes beyond unsupported and conclusory assertions thereof. For these reasons, we determine that Petitioner has not demonstrated a reasonable likelihood that the combination of Radermacher and Alexander renders obvious independent claim 1. Accordingly, we determine that Petitioner has failed to establish a reasonable likelihood that it would prevail in its assertion that independent claim 1, or dependent claims 2–13, 32, 38, and 44–46, are unpatentable as obvious over Radermacher and Alexander.5” slip op. at 17
Claim construction§ 103 obviousnessPatents in suitUS 8,657,827 - Smith & Nephew, Inc. v. Conformis, Inc.Institution deniedPTAB · Sep 12, 2017 · IPR2017-00983 · APJ James A Worth · IPR · Institution
The Board denied both petitions and instituted no trial, finding no reasonable likelihood that claims 1–25, 28, 29, 32–46, or 50–64 were unpatentable on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 311 and any response filed under [35 U.S.C. §] 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108. For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that claims 1–25, 28, 29, 32–46, and 50–64 are unpatentable. Accordingly, we do not institute an inter partes review of claims 1–25, 28, 29, 32–46, and 50–64 of the ’827 patent based on the grounds asserted in the petitions.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“unexpired patent according to the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs. v. Lee, LLC, 136 S. Ct. 2131, 2142–46 (2016). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must be set forth with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner requests a construction of the term “references the osteophyte.” Pet. 17–18. Patent Owner does not propose construction of any terms. As to “references the osteophyte,” Petitioner states that the ’827 patent does not define the term “reference,” but argues the broadest reasonable construction of the limitation includes “at least a patient-specific surface that engages or avoids an osteophyte.” Id. Patent Owner does not address this issue directly in this proceeding. For purposes of this Decision, we determine that the broadest reasonable construction of the “references the osteophyte” limitation includes a patient specific surface that “engages or avoids the osteophyte,” consistent with the embodiments of Figures 32 and 33 of the ’827 patent. We note that dependent claims 2 and 3 use the phrase “not engage” with respect to a “second osteophyte.” Ex. 1001, 119:30, 119:36–37 (claims 2, 3). Nevertheless, dependent claims 4 and 5 require that the patient-specific surface “substantially engage[s]” an osteophyte (id. at 119:41–46), and therefore the principle of claim differentiation indicates that independent claim 1 has a broader scope than dependent claims 4 and 5.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“The next question is whether referencing osteophytes is the “natural result flowing from” Radermacher’s technique, under the aforementioned Oelrich test, or whether it otherwise would have been obvious to apply Radermacher’s technique to a bone surface with osteophytes. Petitioner argues that it would have been obvious to apply Radermacher’s technique to a bone surface with osteophytes because (1) such a template would be a negative of the “natural (i.e. not pre-treated) surface”; (2) referencing any osteophyte would, in some cases, aid in alignment because the unique structure of the osteophyte would help ensure that the template was placed in the proper position; and (3) it would eliminate the need to pre-treat the joint to remove the osteophyte in a preliminary surgical step, thus reducing surgical time and improving patient safety. Pet. 30 (citing, e.g., Ex. 1003, 10, 12; Ex. 1002 ¶¶ 116–117).” slip op. at 14
Claim construction§ 103 obviousnessPatents in suitUS 8,657,827 - Lavelle Industries, Inc. v. Danco, Inc.Institution deniedPTAB · May 4, 2017 · IPR2017-00159 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1, 6, 11, or 14 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have jurisdiction under 35 U.S.C. § 314, which provides that inter partes review may not be instituted unless “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are not persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review of any claim.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the time it was made, 35 U.S.C. § 103 requires us to resolve the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in determining the level of ordinary skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. In a given case, one or more factors may predominate. Id. Petitioner does not propose a level of ordinary skill in the art. Relying on the testimony of Mr. Jones, Patent Owner, asserts that a person of ordinary skill in the art “typically would have had (a) a bachelor’s degree in mechanical engineering, or a related field, and at least two years of experience in the design of plumbing components; or (b) a high school degree and at least four years of experience in the design of plumbing components.” Prelim. Resp. 19 (citing Ex. 2003 ¶ 24). Mr. Jones testifies that his opinion is based on his “experiences working in the field of product design in the plumbing industry in addition to the specification and claims of the ‘455 Patent in light of the state of the art in the 2012 time frame.” Ex. 2003 ¶ 24. We determine that the level of ordinary skill proposed by Mr. Jones is consistent with the challenged patent and the asserted prior art, and we therefore adopt this definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 10
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We are not persuaded by Petitioner’s arguments and evidence that Turner’s sleeves 20, 52 are collapsible. We agree with Patent Owner and Mr. Jones that “flexibility is not the same as collapsibility,” and that Turner thus does not disclose that flexible sleeves 20, 52 necessarily are collapsible. Furthermore, Mr. Jones testifies that one of ordinary skill in the art would not find Turner’s sleeves to be collapsible and “a cylindrical polyethylene wall that is 1/16 or 5/32 of an inch [as disclosed in Turner] would actually be relatively rigid (although still capable of flexing).” Ex. 2003 ¶¶ 65–66. We find this testimony, which is based on Mr. Jones’ “experiences with polyethylene and similar materials and how they have been used in the plumbing industry,” credible and persuasive. See Ex. 2003 ¶ 66. Petitioner, on the other hand, offers no objective evidence supporting its assertion that Turner’s sleeves are collapsible.” slip op. at 28
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Having considered Petitioner’s argument and evidence, we are not persuaded that Schwartz’s intermediate portion 24 is collapsible. Instead, we agree with Patent Owner that the passage of Schwartz cited by Petitioner as disclosing collapsibility (line 21 of column 2), fails to suggest that intermediate portion 24 is collapsible. Indeed, this passage merely discloses that ferrule 12 is shaped with radial flange 18. Ex. 1002, 2:21. As such, we are not directed to any disclosure in Schwartz that suggests intermediate portion 24—or any part of ferrule 12—is collapsible. Schwartz discloses that ferrule 12 is made of “chemically inert plastic material” (Ex. 1002, 2:13–14), but insufficient reasoning is given to establish that this material necessarily would be collapsible. Regarding Petitioner’s argument noted above that intermediate portion 24 “must” be collapsible, we agree with Patent Owner that this argument is not persuasive. The assertion that the intermediate portion must at least partially collapse to provide a sealing force against the soil pipe and to take up any variable space present above the pipe is not supported sufficiently by objective evidence or analysis. Furthermore, this assertion is contradicted by Mr. Jones’ testimony, which we credit. See Ex. 2003 ¶ 51.” slip op. at 14
§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 9,273,455 - PTAB · Apr 3, 2017 · IPR2016-01516 · APJ John A Hudalla · IPR · Rehearing
The Board denied LG’s rehearing request and left in place the denial of institution on claims 1–12 and 58–67 because neither four-reference obviousness ground established each challenged reference’s prior-art status.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“we denied institution on both grounds presented in the Petition. Dec. 13. In particular, we found that LG had failed to make a threshold showing that one reference from each of its two obviousness grounds—namely, Callaghan Book and Microsoft SMB—qualified as prior art under 35 U.S.C. § 102(b). See id. at 11, 13. Accordingly, we determined that LG had not established a reasonable likelihood that it would prevail in asserting that claims 1–12 and 58–67 would have been obvious over the cited references. Id. LG filed a Request for Rehearing asking that we reconsider our decision not to institute a trial on these obviousness grounds. Paper 24 (“Req. Reh’g”).” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“requirements are met.1 Specifically, we may not institute inter partes review unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (emphasis added). LG did not meet this threshold requirement in its Petition, because LG merely asserts that Callaghan Book and Microsoft SMB are printed publications under 35 U.S.C. § 102(b) with no supporting analysis whatsoever. See Pet. 5. In the absence of any showing that these references qualify as printed publications, and based on the relevant dates for Callaghan Book, we found that LG had not met the threshold showing for institution under § 314(a). See Dec. 10–13. Thus, we are not persuaded by LG’s arguments. III. CONCLUSION For the reasons above, we conclude that LG has not met its burden of showing an abuse of discretion, or that we misapprehended or overlooked any of LG’s arguments, in our determinations (1) that LG put forth two fourreference obviousness grounds, and (2) that LG failed to establish the prior art status of one reference in each of the grounds, namely, Callaghan Book and Microsoft SMB. See Dec. 4–5, 10–13. We, therefore, deny LG’s request to modify our determinations and institute an inter partes review of the challenged claims in the ’511 patent.” slip op. at 7
- BurdenDecided for patent owner
“numbered grounds in LG’s chart really represents eight distinct challenges, meaning the Petition includes sixteen grounds of unpatentability. Under this logic, eight grounds would remain even if LG failed to establish the prior art status of Callaghan Book in “Ground 1” or Microsoft SMB in “Ground 2.” See Req. Reh’g 4–5. LG’s argument belies its requirement to “[p]rovide a statement of the precise relief requested for each claim challenged” in the Petition, including identifying “[t]he specific statutory grounds . . . on which the challenge to the claim is based and the patents or printed publications relied upon for each ground.” 37 C.F.R. § 42.104(b) (emphases added); see also 35 U.S.C. § 312(a)(3) (a petition is required to “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim”). LG’s failure to identify specifically and clearly its alleged sixteen grounds is further illustrated by its color-coded Exhibit 1037, wherein LG invites us to parse the discussion of “Ground 1” and “Ground 2” in the Petition by color to construct the eight permutations of grouped references that do not include Callaghan Book or Microsoft SMB. We decline to comb through the Petition to determine the strongest arguments or particular combinations of references that might survive LG’s failure to establish the prior art status of certain references. Instead, we fairly read LG’s “Ground 1” and “Ground 2” to be two grounds. We also stated that each of these two grounds relied on the secondary references throughout the analysis (see Dec. 4–5), which is supported by LG’s color-coded Exhibit 1037. Accordingly, we properly interpreted the Petition as including two four-reference obviousness grounds. Id. at 5. Under these circumstances, LG’s arguments do not persuade us that we misapprehended or overlooked additional grounds in our Decision on Institution.” slip op. at 4
§ 102 anticipationPatents in suitUS 7,149,511
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.