• PNC Bank, N.A. v. United Services Automobile AssociationInstitution denied
  PTAB · Jan 20, 2022 · IPR2021-01071 · APJ Terrence W Mcmillin · IPR · Institution

  Institution was denied for claims 1–23 because Petitioner did not show a reasonable likelihood that Oakes and Roach qualify as prior art.

  RulingsInstitution decision

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

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioner cannot satisfy its 2 US 7,873,200 B1, filed Oct. 31, 2006, issued Jan. 18, 2011 (Ex. 1038). 3 US 2013/0155474 A1, published June 20, 2013 (Ex. 1040). burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 10

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008). “To satisfy the written description requirement [in § 112,] the disclosure of the prior application must ‘convey with reasonable clarity to those skilled in the art that, as of the filing date sought, [the inventor] was in possession of the invention.’” Id. (alteration in original) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991)). “[T]he hallmark of written description is disclosure.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The sufficiency of written description support is based on “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. “Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. “The level of detail required to satisfy the written description requirement” necessarily “varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. The invention need not be described in haec verba, but a disclosure that merely renders obvious the claims does not provide adequate written description support. Id. at 1352.” slip op. at 14

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We have considered Dr. Noble’s testimony, but it suffers from the same deficiencies as Petitioner’s arguments. See Ex. 1002 ¶¶ 42–59. Moreover, in our view, Dr. Noble does not sufficiently explain his conclusions regarding what a person of ordinary skill would have understood the inventor of the ’247 application to possess (or not possess), and accordingly, we assign little weight to that testimony. E.g., id. ¶¶ 47, 53, 55; see TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1358 (Fed. Cir. 2019) (“Conclusory expert testimony does not qualify as substantial evidence.”).” slip op. at 21

  • ExcludeGranted

    “In the first Joint Motion to Seal, the parties request entry of a Protective Order that is substantially the same as the Board’s Default Protective Order (see Consolidated Trial Practice Guide12 at 107–122 (App. B, Protective Order Guidelines and Default Protective Order)). Paper 9, 2.13 The parties also request sealing of Exhibit 2006 and sealing of portions of the Preliminary Response relating to that exhibit. Id. at 2–3. The portions of the Preliminary Response (Paper 8) requested to be sealed can be identified from the redacted version of the Preliminary Response filed as Paper 11. Based on the representations in the Joint Motion to Seal (Paper 9), the parties have shown good cause for entering the Protective Order and for sealing Exhibit 2006 and the identified portions of the Preliminary Response. Paper 14 (Joint Motion to Seal the Reply) and Paper 19 (Joint Motion to Seal the Sur-reply) request sealing of the portions of the Reply and Sur-reply relating to Exhibit 2006. The portions of the Reply (Paper 13) and Sur-reply (17) requested to be sealed can be identified from the redacted version of the Reply filed as Paper 16 and from the redacted version of the Sur-reply filed as Paper 20. Based on the representations in these two Joint Motion to Seal (Papers 14 and 19), the parties have shown good cause for sealing the identified portions of the Reply and Sur-reply.” slip op. at 27

  § 112 disclosurecites KSR · Graham
  Patents in suitUS 10,482,432
• Human Power Of N Company v. Heartbeet Ltd.Institution denied
  PTAB · Jan 11, 2022 · PGR2021-00094 · APJ Devon Zastrow Newman · PGR · Institution

  The Board denied institution because Petitioner did not show that any challenged claim had an effective filing date on or after March 16, 2013, as required for PGR eligibility.

  RulingsInstitution decision

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

    “To institute a post-grant review, we must determine whether the information presented in the Petition, “if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). Upon consideration of the Petition and the Preliminary Response, for the reasons set forth below, we determine that Petitioner has not shown that the ’813 patent is eligible for post-grant review. Accordingly, we do not institute a post-grant review of the challenged claims of the ’813 patent.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.200(b) (2021). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). Petitioner proposes construction of two terms, “inorganic nitrate” and “requiring a reduction in systolic blood pressure.” Pet. 26–27. Of these terms, Patent Owner does not propose a construction for “inorganic nitrate” (Prelim Resp. 7). For purposes of determining whether to institute trial of the challenged claims, we determine it is not necessary to construe “inorganic nitrate.” 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., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an AIA proceeding).” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “We are persuaded that Petitioner’s proposed definition is unduly restrictive. The claims do not clarify the meaning of “requiring a reduction in systolic blood pressure”; hence, we rely on relevant disclosures in the specification and prosecution history. Phillips, 415 F.3d at 1312–19. The prosecution history adds no clarity to the meaning of this term. As noted by Patent Owner, the specification states that the claimed method seeks to lower the systolic blood pressure in a subject needing such a reduction “preferably to normal levels (about 140/80 mmHg”) and provides an example of a 43-year-old with hypertension whose “blood pressure was 142/99 on the day when the experiment started.” Prelim. Resp. 8–9. We agree with Patent Owner that these disclosures provide general guidance to the person of ordinary skill in the art that the upper bounds of normal systolic blood pressure is about 140 mmHg, and that a person “requiring a reduction in systolic blood pressure” is someone whose systolic blood pressure exceeds that general measurement. Moreover, as discussed above, Petitioner states that a person of ordinary skill in the art would have had a medical degree or equivalent study in fields such as “biochemistry, pharmacology, nutrition chemistry, or kinesiology” (Pet. 13) such that the term would have been interpreted by persons with a sophisticated understanding of human physiology according to the facts and circumstances presented and with the guidance of “about 140 mmHg” providing a general measurement guideline. We conclude that the plain and ordinary meaning of a person “requiring a reduction in systolic blood pressure” is a person having higher than about 140 mmHg systolic blood pressure.” slip op. at 9

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateNot shown unpatentable

    “The test for written description support is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date” based on an “objective inquiry into the four corners of the specification.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc). If this test fails, the application is not entitled to the benefit of the earlier filing date.” slip op. at 14

  Claim construction§ 112 disclosurecites Phillips
  Patents in suitUS 10,842,813
• 3shape A/S / 3shape Inc. v. Align Technology, Inc.Institution denied
  PTAB · Jan 11, 2022 · IPR2021-01120 · APJ Neil T Powell · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 were obvious over Babayoff ’529 and Atiya.

  RulingsInstitution decision

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

    “2. Summary Regarding Obviousness Challenge Because Patent Owner’s arguments and evidence persuasively rebut Petitioner’s assertion that the Ancestral Applications do not provide written description support for the challenged claims, Petitioner has not shown adequately that Babayoff ’529 is prior art to the challenged claims. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 would have been obvious over Babayoff ’529 and Atiya. III. CONCLUSION For the foregoing reasons, we determine that the information presented in the record does not establish there is a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim of the patent ’151 patent. Accordingly, we do not institute an inter partes review. IV. ORDER For the reasons given, it is: ORDERED that the Petition is denied; and FURTHER ORDERED that no inter partes review is instituted.” slip op. at 26

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill is supported by expert testimony and appears consistent with the technology at issue, for purposes of this Decision, we apply Petitioner’s definition of a person of ordinary skill in the art.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “In response, Patent Owner objects that “Petitioners’ interpretation of the claims as requiring the use of unfiltered white light to determine depth data is plainly at odds with the claims themselves.” Prelim. Resp. 4. Patent Owner argues that “[t]his interpretation leads to a contradiction between the independent and dependent claims: the same light illuminating the intraoral structure would have to be simultaneously filtered (as recited in the dependent claims) and unfiltered (as Petitioners presume to be required by the independent claims).” Id. Patent Owner also suggests the possibility that the Petition’s arguments mean “the independent claims encompass using unfiltered white light to obtain depth data.” Id. at 7. We do understand the Petition’s arguments to mean that the independent claims encompass using unfiltered white light to illuminate an intraoral structure, not that the independent claims require using white light to illuminate an intraoral structure. And we agree with that understanding of the independent claims’ scope. Consistent with Patent Owner’s explanation, if we construed the independent claims to require using unfiltered white light to illuminate an intraoral structure, that would conflict directly with the dependent claims’ express requirement to use colored filters.” slip op. at 15

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached

    “2. Summary Regarding Obviousness Challenge Because Patent Owner’s arguments and evidence persuasively rebut Petitioner’s assertion that the Ancestral Applications do not provide written description support for the challenged claims, Petitioner has not shown adequately that Babayoff ’529 is prior art to the challenged claims. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 would have been obvious over Babayoff ’529 and Atiya.” slip op. at 26

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 10,750,151
• Kiosoft Technologies, LLC / Techtrex, Inc. v. Payrange Inc.Institution denied
  PTAB · Dec 16, 2021 · PGR2021-00084 · APJ Meredith C Petravick · PGR · Institution

  The Board denied institution because Petitioner did not show that any of claims 1–20 was more likely than not unpatentable on the asserted § 112, § 102, or § 103 grounds.

  RulingsInstitution decision

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

    “instituted unless “the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”1 After considering the Petition, the Preliminary Response, Reply, Sur- reply and the evidence of record, we determine that Petitioner fails to demonstrate that it is more likely than not that at least one of the claims challenged in the Petition is unpatentable. Accordingly, we do not institute a post-grant review.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “We are not persuaded by Petitioner’s arguments because Petitioner’s proposed construction improperly attempts to read a particular embodiment described in the ’608 patent into the claims. It is not proper to read limitations from the ’608 patent into the claims: Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). “[A]lthough the specification often describes very specific embodiments of the invention, [the Federal Circuit has] repeatedly warned against confining the claims to those embodiments.” Phillips, 415 F.3d at 1323. As Mr. Smith points out, the ’608 patent does describe offline- payment operated machine 1500 as an electro-mechanical machine capable of accepting currency (e.g., coins), which is not connected to any networks (e.g., telephone, cellular, or Wi-Fi). Ex. 1005 ¶ 84 (citing Ex. 1002, 39:39– 45). But, the ’608 patent describes offline-payment operated machine 1500 as merely one example of an offline-payment operated machine in some implementations. The ’608 patent states: FIG. 28A illustrates a block diagram of an offline-payment operated machine 1500 in accordance with some implementations. For example, the offline-payment operated machine 1500 (e.g., a form of the machine 120) is an electro-mechanical machine capable of accepting currency (e.g., coins), which is not connected to any networks (e.g., telephone, cellular, or Wi-Fi). For example, the offline-payment operated machine 1500 is a washer or dryer at a laundromat, a parking meter, a car wash payment kiosk, or other offline-payment operated machine that dispenses goods and/or services. Ex. 1002, 39:38–48 (emphases added). The ’608 patent emphasizes that offline-payment operated machine 1500 is merely an example. Id. at 39:52– 56 (“The components of the offline-payment operated machine 1500 in FIG. 28A are examples and one of skill in the art will appreciate that various” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A [person having ordinary skill in the art (“POSITA”)], as of the date of the alleged invention, would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Electrical Engineering, Computer Science, Information Technology, or a related/equivalent field and at least three years of work experience in electronic payment systems, vending machine technologies, or telecommunication solutions. Pet. 29 (citing Ex. 1005 ¶ 52). Patent Owner does not dispute Petitioner’s contention in its Preliminary Response. See generally Prelim. Resp. Based on the record before us, we adopt Petitioner’s asserted level of ordinary skill to determine whether it is more likely than not that at least one of the claims challenged in the Petition is unpatentable. This level of skill in the art is consistent with the disclosure of the ’608 patent and the prior art of record. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 7

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable

    “Under 35 U.S.C. § 112(a), “[t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same . . . .” To satisfy the written description requirement, the disclosure must reasonably convey to skilled artisans that the patentee possessed the claimed invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The requirement under § 112 does not demand that the specification recite the claimed invention verbatim. Id. at 1352 (citations omitted). The “claimed subject matter need not be described in haec verba in the specification in order for that specification to satisfy the description requirement.” In re Smith, 481 F.2d 910, 914 (CCPA 1973). “Original claims are part of the original specification and in many cases will satisfy the written description requirement.” Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1297 (Fed. Cir. 2017). We agree with Patent Owner. Petitioner, itself, indicates that the specification of the ’608 patent discloses an interface module counting the electrical pulses generated by a coin receiving switch. The Petition states: “Specifically, the objective inquiry reveals that it is only the ‘first interface module’ that is mentioned as counting one or more electrical pulses generated by the coin receiving switch.” Pet. 32; see also Ex. 1005 ¶ 125 (corresponding testimony of Mr. Smith). In this regard, the ’608 patent states: In FIG. 28A, the first interface module 1522 is configured to sample payment acceptance signals from the microswitch 1502 (e.g., a coin receiving switch) via lead 1532 of the offline-payment operated machine 1500. For example, the payment acceptance signals are indicative of a coin being received by the microswitch 1502 which depress lever 1504. Ex. 1002, 40:35–40. The ’608 patent also describes FIG. 28B as illustrating signals sampled by the first interface module 1522, “[f]or example, the preset sequence of payment acceptance signals indicative of the preset number of coins include pulses (i.e., payment acceptance signals) 1552, 1554, 1556, and 1558.” Id. at 40:50–58; see also id. at 41:59–42:4 (“payment acceptance signals are indicative of a preset number of coins received by the coin receiving switch”); 42:49–55 (describing identifying a count of pulses). The ’608 patent further states: “[T]he terms used for labels (e.g., ‘first,’ ‘second,’ and ‘third’) are meant solely for purposes of designation and not for order or limitation.” Id. at 46:11–14. Claim 19, as originally filed, recited limitation (b), with the coin counting interface module being labeled as the second interface module. Ex. 1003, 283. Given the originally filed claim 19 and the above disclosures of the ’608 patent, Petitioner does not persuade us that the ’608 patent does not reasonably convey to skilled artisans that the patentee did not possess the claimed invention as of the filing date. Petitioner does not show sufficiently that claims 19–20 are more likely than not unpatentable under 35 U.S.C. § 112(a) for lack of written description.” slip op. at 15

  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · Nautilus
  Patents in suitUS 10,891,608
• Schlumberger Technology Corporation v. Dynaenergetics Europe GmbHInstitution denied
  PTAB · Dec 14, 2021 · PGR2021-00089 · APJ Frances L Ippolito · PGR · Institution

  The Board denied institution on all claims because the petition did not show a reasonable likelihood that any challenged claim was unpatentable.

  RulingsInstitution decision

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

    “We are authorized to institute a post-grant review where a petition demonstrates that it is more likely than not that at least one challenged patent claim is unpatentable. See 35 U.S.C. § 324. We are never compelled to institute a review, however, because institution is discretionary. Id.; cf. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that under § 314(a), “the PTO is permitted, but never compelled, to institute an IPR proceeding”). As in an IPR proceeding, we deny post-grant review, for example, where a petition fails to identify “with particularity” the challenges or evidence supporting them. Cf. Harmonic, 815 F.3d at 1363; 35 U.S.C. § 322(a)(3); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3)). For the reasons discussed below, we deny the institution of post-grant review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art (“POSITA”) “would be expected to have at least a Bachelor’s of Science degree in Mechanical or Electrical Engineering and at least two years of industry experience related to assembling, operating, and/or designing perforating tools.” Pet. 10 (citing Parrott Decl. ¶ 28). Patent Owner “believes that Petitioner’s definition suggests that a field technician who merely assembles guns could be a POSITA, which is incorrect,” and instead proposes “a POSITA would be expected to have a Bachelor’s of Science degree in Mechanical or Electrical Engineering and at least two (2) years of industry experience related to designing perforating gun systems.” Prelim. Resp. 35–36 (citing Ex. 2001 ¶ 52). For the purposes of institution, we do not see a material difference between the parties’ proposed definitions. Nonetheless, because Petitioner’s proposed definition of the level of ordinary skill in the art appears consistent with the record, including the prior art, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner for purposes of this Decision. See GPAC Inc., 57 F.3d at 1579.” slip op. at 7

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

    “D. Claim Construction We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.200(b) (2020). This standard requires that we construe claims “in accordance with the ordinary and customary meaning of such claim[s] as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an AIA trial proceeding). Patent Owner proposes constructions for “shaped charge receptacle” and “retention mechanism extending from a portion of the body.” Prelim. Resp. 36–38; see also PO Sur-reply 1–5. In its Reply, Petitioner disputes Patent Owner’s proposed constructions. Pet. Reply 2–3. For purposes of this Decision, we determine that no claim term requires explicit construction. See Vivid Techs., 200 F.3d at 803 (construing explicitly only those claim terms in controversy and only to the extent necessary to resolve the controversy).” slip op. at 8

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

    “In addition, we determine that Petitioner has not sufficiently explained its alternative argument based on the “simple substitution of the circular openings (for inserting the shaped charges) in Vann for the circular openings with tabs in Von Kaenel.” Pet. 90 (citing Parrott Decl. ¶ 485). As an initial matter, Petitioner’s proposed substitution lacks sufficient clarity because it remains unclear which of Vann’s structures remain in the resulting combination. By emphasizing substitution of the “circular openings” alone in Vann, Petitioner suggests that Vann’s tabs 62 remain without explaining why the tabs are necessary if Von Kaenel’s tabs retain the shaped charges. See id. As discussed, Vann requires that the plurality of charge holders are placed in tandem and jointly cooperate together to make up a charge carrier 48. Ex. 1009, 5:50–56. To do so, tabs 62 formed by extended lateral edges 56, 58 are aligned in an overhanging relationship relative to the central lateral face 70 of the two adjacent charge holders. Id. at 6:61–64, Fig. 5. If the proposed combination employs Von Kaenel’s tabs to retain the charges, preserving the overhanging relationship of Vann’s tabs 62 to retain the charges would appear superfluous, and if Petitioner proposes retaining Vann’s tabs 62 but removing the overhanging relationship, Petitioner does not describe such a structure. In either case, a substitution of Vann’s circular openings alone while Vann’s tabs 62 remain in the resulting combination lacks adequate specificity and support. For completeness, we assess Petitioner’s argument based on the assumption that Petitioner proposes removing Vann’s tabs 62 entirely from the proposed combination. Per this theory, a POSITA would have simply substituted Von Kaenel’s side locking tabs 610 for Vann’s tabs 62 because a POSITA would have recognized the advantages of having the retention mechanisms be a part of the body in order reduce the number of tools and assembly required, to allow for differing offsets, as well as to simplify manufacturing, as discussed in each of Vann, Brooks, and Von Kaenel. Pet. 89–90 (emphasis added) (citing Parrott Decl. ¶ 484; Ex. 1013, Abstract, 2:60–3:16, 5:20–41, 8:41–58; Ex. 1009, 1:18–21, 2:22–29, 1:66–67, 1:41– 43, 3:63–68, 4:14–24; Ex. 1010, 9:48–53, 1:52–64). However, Petitioner has not explained sufficiently how this substitution would “simplify manufacturing” for Vann’s specific stacked formation. Indeed, Vann’s charge carrier is formed by a plurality of charge holders that jointly cooperate in tandem, which includes the cooperation of extended lateral edges that overhang the central lateral face of adjacent charge holders. See Ex. 1009, 6:61–64; Fig. 5. Substitution of Vann’s tabs 62 with Von Kaenel’s side locking tabs 610 would affect Vann’s tandem construction if tabs 62 are removed. See Pet. 80–95. More importantly, Petitioner has failed to explain adequately why a POSITA would have sought to make this combination to simplify manufacturing or reduce assembly given Vann’s specific charge carrier design, which is dependent on the overhanging relationship between separate, stacked charge holders. Id. Further, Mr. Parrott’s testimony is not helpful on this point. In paragraph 485 (cited by Petitioner), Mr. Parrott states that Von Kaenel’s tabs (retention mechanisms) would have been applied with ease to Vann’s perforating gun apparatus, which would have yielded predictable results. A POSITA would have recognized the combination as a simple substitution of the circular openings for inserting the shaped charges in Vann for the circular openings with tabs in Von Kaenel, and a POSITA would have had a reasonable expectation of success. Parrott Decl. ¶ 485 (emphases added). Like the Petition, these statements by Mr. Parrott are conclusory and do not explain the basis for his conclusions. See id. Looking elsewhere, paragraph 484 mirrors statements and citations in the Petition, which as discussed, are insufficient. Id. ¶ 484. And although paragraph 483 articulates the advantages of using “Von Kaenel’s superior teachings in order to better achieve the goal of reliably securing and positioning the shaped charges,” Mr. Parrott neglects to explain the proposed substitution in the context of Vann’s specific charge carrier design that relies on the overhanging edges/tabs of the charge holders for the in tandem assembly and construction. Id. ¶ 483 (citing Ex. 1013, Fig. 6B, 8:59–67). The Supreme Court has made clear that we apply “an expansive and flexible approach” to the question of obviousness. KSR, 550 U.S. at 415. Whether a patent claiming the combination of prior art elements would have been obvious is determined by whether the improvement is more than the predictable use of prior art elements according to their established functions. Id. at 417. Reaching this conclusion, however, requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. Id. Here, Petitioner has failed to make the threshold showing for the” slip op. at 21

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,844,696
• Neurocrine Biosciences, Inc. v. Spruce Bosciences, Inc.Institution denied
  PTAB · Dec 10, 2021 · PGR2021-00088 · APJ John G New · PGR · Institution

  The Board denied institution on all five grounds, finding the petition did not show any challenged claim was likely unpatentable.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 324, the Board “may not authorize a post-grant review to be instituted unless … the information presented in the petition … if such information is not rebutted would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon consideration of the Petition, the Preliminary Response, and the evidence presently before us, we determine that Petitioner has failed to demonstrate that it is more likely than not that it would prevail in establishing the unpatentability of at least one challenged claim of the ’908 patent. We consequently deny institution of post-grant review.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “The Specification expressly teaches that, with respect to the clinical phase 2 trial described in Example 4, “Patients will have overnight [pharmacokinetic/pharmacodynamics] PK/PD assessments performed at baseline, which include an [sic] pre-dose overnight assessment and a post-dose overnight assessment for PK/PD following administration of the first dose.” Ex. 1001 col. 42, ll. 12–16. This is the same quotation and clinical trial relied upon by Dr. Barnes in his Declaration, and is the only definition of a “baseline” in the ’908 patent. See Ex. 1002, 36–37. We note that placebos were evidently not employed in the phase 2 clinical study of Example 4.3 Given the sole exemplary description of “baseline” in Example 4 of the Specification, we construe the claim term reciting “reduced by at least 10% from baseline” as meaning “a reduction of at least 10% in the level of ACTH (claim 1) or 17-OHP (claim 11) compared to measurements of ACTH or 17-OHP made prior to, and/or at the beginning of, administration of the drug.”” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “likely than not that independent claims 1 and 11 are anticipated by Grigoriadis. “For a claim to be anticipated, each claim element must be disclosed, either expressly or inherently, in a single prior art reference, and the claimed arrangement or combination of those elements must also be disclosed, either expressly or inherently, in that same prior art reference.” Therasense, Inc. v. Becton, Dickinson and Co., 593 F.3d 1325, 1332–33 (Fed. Cir. 2010). The single clinical trial taught by Example 6 of Grigoriadis does not establish a baseline value for patients against which to compare the data obtained from patients receiving 300 mg or 600 mg of the test drug, NBI- 77860 (verucerfont). See Ex. 1006 ¶¶ 90–94. Specifically, Example 6 does not establish a baseline “which include[s] an [sic] pre-dose overnight assessment and a post-dose overnight assessment for PK/PD following administration of the first dose,” as disclosed by the ’908 patent. See Ex. 1001, col. 42, ll. 12–16. We therefore conclude that Grigoriadis fails to disclose expressly the limitations of claims 1 and 11 severally reciting “wherein [the] … hormone … level in the human is reduced by at least 10 % from baseline.”” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “A reference may anticipate if a claim limitation that is not expressly disclosed is inherently disclosed because it “is necessarily present, or inherent, in the single anticipating reference.” Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010); see also Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed. Cir. 2009) (holding that the “very essence of inherency is that one of ordinary skill in the art would recognize that a reference unavoidably teaches the property in question”).” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 10,849,908
• Satco Products, Inc. v. The Regents Of The University Of CaliforniaInstitution denied
  PTAB · Nov 8, 2021 · IPR2021-00661 · APJ Steven M Amundson · IPR · Institution

  The Board denied institution of review for claims 1 and 2 under § 314(a), finding the Fintiv factors weighed against review because of the advanced, overlapping ITC investigation.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “The Fintiv factors “relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Fintiv, IPR2020-00019, Paper 11 at 6. A stay of parallel litigation pending resolution of a Board proceeding “allays concerns about inefficiency and duplication of efforts.” Id. That the E.D.N.Y. case was stayed “at its earliest stage,” however, does not “allay[] concerns about inefficiency and duplication of efforts” in view of the 1220 investigation. Additionally, the E.D.N.Y. case was stayed “pending completion” of the 1220 investigation, not because of any Board proceeding. Ex. 3002, 1. With dates set in the 1220 investigation for the ALJ’s initial determination and the ITC’s final determination, a stay seems highly unlikely, especially with the initial determination date about a week away. Hence, factor (1) weighs against institution. See Fitbit, Inc. v. Koninklijke Philips N.V., IPR2020-00771, Paper 14 at 16–17 (PTAB Oct. 19, 2020).” slip op. at 18

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

    “to institute an inter partes review. We may institute an inter partes review only if “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) (2018). But we have discretion to deny a petition even when a petitioner satisfies the “reasonable likelihood” threshold standard for instituting trial. See, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). Based on the current record and for the reasons explained below, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Not reached

    “essentially the same argument about the ’557 patent’s effective filing date for its challenge based on Nakamura-959 and Nakamura-949 as for its invalidity defense based on insufficient written-description support for claim 1. See Pet. 7, 12–21, 37; Ex. 2004, 29–33; Ex. 2005, 245–48; Ex. 2014, 64–65, 70. As we understand the arguments, resolving the ’557 patent’s effective filing date does not require interpreting any part of § 1.57. See Pet. 12–21; Prelim. Resp. 29–31. Instead, the issue turns on whether the ’154 application supports claim 1 according to § 112’s first paragraph. See Pet. 12–21; Prelim. Resp. 29–31. Also, the challenges based on Tanda present a similar issue whether the ’447 provisional supports claim 1 according to § 112’s first paragraph. See Pet. 12–21, 61; Prelim. Resp. 29–31, 36–37. “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Under the circumstances here, the ITC can apply the test for sufficiency of disclosure to the ’154 application and the ’447 provisional just as well as the Board.” slip op. at 27

  § 112 disclosureDiscretionary denial
  Patents in suitUS 10,658,557
• Innovative Intelligent Products, LLC D/B/A GPS Lockbox v. National Products Inc.Institution denied
  PTAB · Oct 21, 2021 · IPR2021-00767 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–3, 7–11, and 14–18 were unpatentable on any asserted ground.

  RulingsInstitution decision

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

    “It is the petitioner’s burden from the outset to show with particularity why a challenged claim is unpatentable. Harmonic Inc. v. Avid Tech. Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). In that regard, a petition for inter partes review must identify how the challenged claims are unpatentable, and must specify where each element of the claim is found in the relied-upon prior art. 37 C.F.R. § 42.104(b); see also 35 U.S.C. § 312(a)(3) (a petition must identify “with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for challenge to each claim”). A petition must also include “a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). Here, the Petition does not identify sufficiently where each element of claim 1 is found in GPS 1, and does not include a detailed explanation of the significance of the evidence.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art would have had either “a Bachelor’s Degree in mechanical engineering or a related discipline and at least two years of experience in the design or development of interlocking products (e.g. docking cradles and adapters for portable electronic devices),” or “five years or more of experience in the design or development of interlocking products.” Pet. 10. At this stage of the definition, nor provides a definition of its own. See Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed definition, which is undisputed on this record, except that we delete the qualifiers “at least” and “or more” to eliminate vagueness as to the amount of practical experience. The qualifier, if not deleted, expands the range indefinitely without an upper bound, and thus would preclude a meaningful indication of the level of ordinary skill in the art.” slip op. at 7

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

    “We construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure.2 Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). 2 Petitioner incorrectly states that claims in an inter partes review are to be construed using the broadest reasonable construction standard, which applied to proceedings filed prior to November 13, 2018. Pet. 10–11; see also 83 Fed. Reg. 51,340, 51,341 (Oct. 11, 2018) (adopting “the same claim construction standard used by Article III federal courts and the ITC, both of which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and its progeny”). See Prelim. Resp.; Pet. 10–11. For purposes of this Decision, based on the record before us, we determine that none of the claim terms requires an explicit construction.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)

    “Claim 1 requires that (1) the adapter comprises a contactor and male positioning interface; (2) the contactor comprises a contactor surface and a plurality of contacts exposed and arranged on the surface that are electrically coupleable to the electronic device; (3) the male positioning interface defines a rim surrounding, and in contact with, a perimeter of the contactor surface of the contactor of the adapter; and (4) the rim guides the proper mating of the contactor of the adapter to the external connector. Ex. 1001, 34:3–13. Petitioner identifies components in the images of the Flex 8 taken from GPS 1 that it purports to be an adapter comprising a contactor with contacts, but does not explain why or how those identified components meet GPS 1 from which we can identify, or discern the function of, any component of the device identified in those images. See Pet. 16–18 (Petitioner’s contentions regarding the adapter limitation of claim 1); see also Ex. 1003 (GPS 1, nowhere identifying any feature of the device by reference to the images). Additionally, Petitioner does not identify anything in the images corresponding to the recited “male positioning interface” or “rim surrounding, and in contact with, a perimeter of the contactor surface . . . to guide proper mating of the contactor of the adapter to the external connector” limitations of claim 1. It is the petitioner’s burden from the outset to show with particularity why a challenged claim is unpatentable. Harmonic Inc. v. Avid Tech. Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). In that regard, a petition for inter partes review must identify how the challenged claims are unpatentable, and must specify where each element of the claim is found in the relied-upon prior art. 37 C.F.R. § 42.104(b); see also 35 U.S.C. § 312(a)(3) (a petition must identify “with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for challenge to each claim”). A petition must also include “a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). Here, the Petition does not identify sufficiently where each element of claim 1 is found in GPS 1, and does not include a detailed explanation of the significance of the evidence. Specifically, Petitioner fails to explain with any particularity how or why the images reproduced above support its view that GPS 1 discloses “an adapter coupleable to a portable electronic device for mating with an states that “[u]nder PO’s theories of infringement, GPS 1 discloses these recitations” and provides the annotated images reproduced above. Id. Patent Owner’s infringement contentions, however, are directed to a different product (the ATMOS Temperature Controlling Cradle Kit for Samsung Galaxy TAB A 8" Product), and Petitioner does not explain how that product relates, if at all, to the Flex 8 depicted in GPS 1. Moreover, Petitioner’s citation to Patent Owner’s infringement contentions to support conclusory statements not otherwise supported in the Petition amounts to an improper incorporation by reference. 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). The Petition, therefore, falls short of adequately establishing the identity or function of any component in the images of the Flex 8 from GPS 1. Petitioner states that, although the Petition primarily focuses on GPS 1 because “webpages are most easily reproduced” therein, “the same analysis applies to each of the AP Publications.” Pet. 16. As was the case with Petitioner’s challenge based on GPS 1, the Petition fails to explain with any particularity how the products depicted in GPS 2, GPS 3, and GPS 4 support its view that GPS 2, GPS 3, and GPS 4 each discloses “an adapter coupleable to a portable electronic device for mating with an external connector” as recited in claim 1. Pet. 18–21. Petitioner provides two still images from each of GPS 2, GPS 3, and GPS 4, which appear to show the Flex 8, without annotations or further explanation. Id. The Petition, therefore, also does not identify sufficiently where each element of claim 1 is found in GPS 2, GPS 3, and GPS 4. establishes that any of the AP Publications discloses the recitations of claim 1 directed to “an adapter coupleable to a portable electronic device for mating with an external connector.” Accordingly, we determine that the Petition does not establish a reasonable likelihood that Petitioner will prevail in showing that claim 1, and claims 2, 3, and 7–9 that depend directly or indirectly therefrom, are anticipated by the AP Publications.” slip op. at 12

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 10,630,334
• Falkbuilt Ltd. v. Dirtt Environmental Solutions Ltd.Institution denied
  PTAB · Sep 24, 2021 · PGR2021-00067 · APJ Stacy B Margolies · PGR · Institution

  The Board denied institution because Petitioner did not show that claims 1–5, 8–12, and 15–17 were more likely than not unpatentable as indefinite or obvious.

  RulingsInstitution decision

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

    “review under 35 U.S.C. § 324 and 37 C.F.R. § 42.4(a) (2020). We may not institute a post-grant review unless “the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). After considering the Petition, the Preliminary Response, Patent Owner’s Certificate of Correction Brief, and Petitioner’s Certificate of Correction Response Brief, we determine that Petitioner has not demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we deny institution of post-grant review.” slip op. at 2

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteNot shown unpatentable

    “indefinite. “[A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014); see also id. at 910 (The definiteness requirement “require[s] that a patent’s claims, when viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of invention with reasonable certainty.”). Petitioner has not sufficiently shown that, when viewed in light of the specification and the prosecution history, claims 2 and 3 fail to inform a skilled artisan about the scope of the invention with reasonable certainty. Petitioner fails to address the amendment of claim 2 leading up to the issuance of the patent.” slip op. at 13

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

    “Petitioner fails to sufficiently explain how the references are combined to teach this limitation or the reason one of ordinary skill in the art would have made such a combination. For example, Petitioner fails to explain how one would have “[a]ppli[ed] the teachings of Shingu to Scranton.” Id. Such a combination is not readily apparent from the references themselves because Shingu relates to moving a camera so that it can take a repeat photograph and does not describe determining the architectural space surrounding the user. Petitioner also does not provide a reason why one of ordinary skill in the art would have combined the cited teachings of Shingu and Scranton to arrive at the claimed features. See id. at 41–42. Nor does Petitioner’s declarant, Dr. Welch, provide testimony explaining how the teachings would have been combined or a reason to make the combination. See Ex. 1002 ¶¶ 79–81. Indeed, as Patent Owner notes, Dr. Welch does not even reference Scranton in his analysis of this claim limitation. See id.; Prelim. Resp. 19–20. Petitioner therefore fails to sufficiently show that the combination of Shingu and Scranton teaches “the particular physical location and the virtual predetermined position comprising the same relative view position within the architectural design file and an architectural space surrounding the user.”” slip op. at 25

  • Expert testimonyPetitioner expert discountedOther

    “and Scranton teaches the “receive a communication” limitation. Petitioner relies on Dr. Welch’s testimony to fill in gaps for what is not expressly disclosed in Shingu. As explained above, Shingu discloses an augmented reality system “that helps users take pictures from the same position and camera angle as a previous photo.” Ex. 1003, 272. Shingu discloses “us[ing] an existing method to estimate camera position as implemented in ARToolKit.” Id. at 271 (emphasis added). Shingu—which describes aiming a camera on an object at a certain angle—does not disclose having a user located within a particular physical space. Petitioner therefore relies on Dr. Welch to assert that it was known ARToolKit could provide the claimed functionality—indicating a relative direction that the virtual reality module (the camera in Shingu) is facing, and a location of a user with respect to the one or more position tracking sensors, wherein the user is located within the particular physical space. Pet. 34–35 (citing Ex. 1002 ¶¶ 69, 72). Dr. Welch’s testimony, in turn, is based on Wagner (Exhibit 1018), which appears to have been downloaded in February 2021. See Ex. 1002 ¶¶ 69 (citing Ex. 1018), 72; Ex. 1018 (footer). Although Dr. Welch gives a date of 2002 for Wagner (see Ex. 1002 ¶ 69), that date does not appear in Exhibit 1018. See Ex. 1018. Petitioner fails to explain in its Petition what evidence supports its assertion that Wagner shows that ARToolKit had been applied to the creation of a floor of a building “more than a decade before the time of the alleged invention” or that the techniques described in Welch were “well known by the time of the alleged invention.” See Pet. 34–35. Nor does the cited testimony from Dr. Welch identify evidence or otherwise provide support for the 2002 date or that the functionality described in Wagner was “well known.” See Ex. 1002 ¶¶ 69, 72. Thus, Petitioner’s assertions and Dr. Welch’s testimony regarding what was known to a person of ordinary skill in the art about the functionality of ARToolKit goes well beyond the express disclosures of Shingu—using “an existing method to estimate camera position” (Ex. 1003, 271)—and, on the current record, are not sufficiently supported by contemporaneous evidence. Petitioner therefore does not sufficiently show that the combination of Shingu and Scranton teaches “receiv[ing] a communication from the one or more position tracking sensors, wherein the communication comprises an indication of a relative direction that the virtual reality module is facing, and a location of the user with respect to the one or more position tracking sensors, wherein the user is located within the particular physical space.”” slip op. at 22

  § 103 obviousness§ 112 disclosurecites Phillips · Nautilus
  Patents in suitUS 10,783,284
• Neosales Corp LP v. Allan WendlingInstitution denied
  PTAB · Sep 14, 2021 · PGR2021-00058 · APJ Wesley B Derrick · PGR · Institution

  The Board denied institution because Petitioner did not show that any challenged claim was more likely than not unpatentable on the asserted obviousness or written-description grounds.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 324. The standard set forth in 35 U.S.C. § 324(a) requires Petitioner to demonstrate that it is more likely than not that at least one challenged patent claim is unpatentable. Petitioner has not met that standard and, accordingly, we do not institute a post grant review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have had at least a High School Diploma with 5 years of experience in the flooring industry” and that they “would also understand that there is a requirement that many accessible surfaces must be slip resistant to minimize hazards to users of the surface.” Pet. 13–14 (citing Ex. 1003 ¶¶ 21–26). On this record, for purposes of this decision, we agree that a person of ordinary skill in the art would have had at least the qualifications set forth in Patent Owner and appears, on this record, to be consistent with the disclosures of the ’285 patent and the asserted prior art references. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 8

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

    “Only those claim terms that are in controversy need to be construed and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (holding claim construction is not necessary when it is not “directed to, or has been shown reasonably to affect, the determination of obviousness”). accordance with their ordinary meaning except for “laminate structure” and “laminated.” Pet. 14–15 (citing Ex. 1003 ¶¶ 36–41). As to these terms, the Petition relies on a quotation, describing what is shown in Figure 3, that includes the term “laminate structure” from the ’285 patent.5 Id. at 15 (“As best shown in FIG. 3, the body is a laminate structure and comprises a bottom elastomeric layer 24 of an elastomeric material . . . floor surface 26.”); Ex. 1001, 2:16–20, Fig. 3. Petitioner also relies on Merriam- Webster’s definition of “laminate” as ‘a product made by laminating,’” where “laminating” means “to unite (layers of material) by an adhesive or other means.” Pet. 15 (quoting Ex. 1013) (citing Ex. 1011 [sic] Ex. 1013). Petitioner contends that “the term ‘laminate structure’ should be construed to mean a ‘body having an adhered elastomeric material’” and that “the term ‘laminated’ should be construed as ‘adhered.’” Id. On this record, and for purposes of this decision, we decline to construe any claim terms beyond the limited extent we do so below in our analysis, because it is not necessary to do so in reaching our decision on institution.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “On this record, Petitioner fails to establish a basis for the recited “sticky polyurethane gel layer.” Although it is evident that Haas’ “bonding layer 2” can itself be formed of an adhesive material (see, e.g., Ex. 1009, 5:48–50), it can also be formed of material that is not adhesive (or sticky) (see, e.g., id. at 5:61–63). Petitioner offers no support for Haas’ polyurethane foam layer itself being an adhesive or sticky material. Pet. 21– 24. Further, the disclosure relating to Haas’ polyurethane layer is contrary to the polyurethane being an adhesive or sticky material because Haas teaches applying an adhesive to the polyurethane layer. See, e.g., Ex. 1009, 8:36–38, 11:32–12:43 (Examples I–IV). Likewise, Petitioner offers no support for the polyurethane foam being a polyurethane gel. See, e.g., Pet. 21–24. Petitioner rather merely asserts that its “augmented carpet-to-floor contact system would produce the same effect claimed by a ‘sticky [bonding] polyurethane gel [foam] layer,’” which falls short of establishing that the polyurethane foam meets the limitation requiring gel. Pet. 24. The Phillips Declaration essentially repeats arguments set forth in the Petition, including as to the “sticky polyurethane gel layer that includes a Compare Ex. 1003 ¶¶ 61–67, with Pet. 20–24. The cited testimony, thus, lacks the necessary objective evidence to support the opinions expressed as to Haas teaching or suggesting a “sticky polyurethane gel layer.” See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”).” slip op. at 16

  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,806,285

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.