• TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution denied
  PTAB · Dec 21, 2015 · IPR2015-01428 · APJ Robert J Weinschenk · IPR · Institution

  The Board denied institution because TRW did not show a reasonable likelihood of proving claims 38, 39, 42, 48, and 49 obvious over either asserted ground.

  RulingsInstitution decision

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

    “reasonable interpretation in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015). On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 5

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

    “obvious over the ’287 patent. Pet. 2. The ’659 patent is a continuation of the ’287 patent. Id. at 19; Ex. 1002, col. 1, ll. 7–23. Petitioner argues that the ’287 patent is prior art to the ’659 patent because the ’287 patent does not satisfy the written description requirement with respect to the challenged claims of the ’659 patent. Pet. 13–18. Patent Owner argues that the ’287 patent satisfies the written description requirement, and, thus, is not prior art with respect to the challenged claims of the ’659 patent. Prelim. Resp. 5–19. We have reviewed the parties’ assertions and supporting evidence, and, for the reasons discussed below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that the ’287 patent is prior art.” slip op. at 6

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

    “a forked portion 8513a, such as an inverted V-shaped or U-shaped portion, which straddles a mirror mounting button 8536 that is mounted to windshield W. Optionally, the downwardly extending portion of header/header console 8512 may be mounted to the inner surface of windshield W, such as by an adhesive or may be releasably, mechanically attached such as by being received by and/or supported by one or more attaching members adhered to the inner surface of the windshield, such as by attachment members, including rails, channels, or the like. Ex. 1012, col. 28, ll. 15–28 (emphasis added). The above disclosure in the ’287 patent describes a console that straddles (and thus is local to) a mirror mounting button and is mounted to a vehicle windshield using attachment members, such as rails or channels. Id. As such, the above disclosure in the ’287 patent is sufficient to show that the inventors had possession of the claimed attachment member. See Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).” slip op. at 7

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

    “obvious to combine the cited teachings of Schofield and Klappenbach. Petitioner argues that it would have been obvious to use the vehicle headlight dimming control in Schofield rather than the rain sensor in Klappenbach because the vehicle headlight dimming control in Schofield provides more functionality. Id. at 44–46 (citing Ex. 1413 ¶¶ 56, 59). Petitioner’s argument explains why one of ordinary skill in the art would select the vehicle headlight dimming control in Schofield rather than the rain sensor in Klappenbach, but does not explain why it would have been obvious to mount the vehicle headlight dimming control in Schofield using the fastening device and housing in Klappenbach.” slip op. at 11

  Claim construction§ 103 obviousness
  Patents in suitUS 8,692,659
• TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution denied
  PTAB · Dec 21, 2015 · IPR2015-01436 · APJ Robert J Weinschenk · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 78–80 and 83–89 were unpatentable under § 103.

  RulingsInstitution decision

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

    “Pet.”) requesting inter partes review of claims 78–80 and 83–89 of U.S. Patent No. 8,692,659 B2 (Ex. 1002, “the ’659 patent”). Magna Electronics Inc. (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to the Petition. An inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 78–80 and 83–89 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. slip op. at 2

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

    “written description of an attachment member attached to a vehicle windshield and local to a mirror mounting button, as recited in the challenged claims. Pet. 10–13 (citing Ex. 1913 ¶¶ 31–33, 40, 44–46). Petitioner’s argument is not persuasive. The ’287 patent discloses the following: As best understood from FIG. 16B, extension 8513 of header console 8512 extends downwardly behind the upper portion of windshield W (such portion of windshield W which typically includes a shadeband element as known in the art) and includes a forked portion 8513a, such as an inverted V-shaped or U-shaped portion, which straddles a mirror mounting button 8536 that is mounted to windshield W. Optionally, the downwardly extending portion of header/header console 8512 may be mounted to the inner surface of windshield W, such as by an adhesive or may be releasably, mechanically attached such as by being received by and/or supported by one or more attaching members adhered to the inner surface of the windshield, such as by attachment members, including rails, channels, or the like. Ex. 1012, col. 28, ll. 15–28 (emphasis added). The above disclosure in the ’287 patent describes a console that straddles (and thus is local to) a mirror mounting button and is mounted to a vehicle windshield using attachment members, such as rails or channels. Id. As such, the above disclosure in the ’287 patent is sufficient to show that the inventors had possession of the claimed attachment member. See Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).” slip op. at 7

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

    “camera.” Ex. 1002, col. 53, l. 63–col. 54, l. 2. Petitioner argues that the housing in Klappenbach corresponds to the claimed structure configured to accommodate a forward facing camera, and that the vehicle headlight dimming control in Schofield includes the claimed forward facing camera. Pet. 39–42. The housing in Klappenbach is designed specifically to accommodate transmitter 10 and receiver 11, as shown in Figure 1. Ex. 1010, col. 3, ll. 46–67, Fig. 1. Petitioner does not provide a specific explanation or identify specific evidence showing that the housing in Figures 1 and 2 of Klappenbach also is configured to accommodate a forward facing camera. Pet. 39–42. Therefore, on this record, Petitioner has not shown sufficiently that the combined teachings of Blank, Schofield, Klappenbach, and Carter would have taught or suggested the limitation “said structure is configured to accommodate a forward facing camera” to one of ordinary skill in the art.” slip op. at 11

  § 103 obviousness§ 112 disclosure
  Patents in suitUS 8,692,659
• TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution denied
  PTAB · Dec 21, 2015 · IPR2015-01431 · APJ Phillip J Kauffman · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 62–66 and 69 were unpatentable under § 103.

  RulingsInstitution decision

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

    “For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 62–66 and 69 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. B.” slip op. at 2

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

    “§ 112, first paragraph, does not require the description to be literally the same as the claim language at issue. In re Wertheim, 541 F.2d 257, 265 (CCPA 1976); In re Lukach, 442 F.2d 967, 969 (CCPA 1971). Rather, by whatever language, the specification only must convey with reasonable clarity to those skilled in the art that, as of the filing date of the application, the inventor was in possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991); see also Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (citing with approval the standard in Vas Cath, and stating “the 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.”). Petitioner contends that pursuant to the holding in Lockwood, the specific combination found in each of the challenged claims of the ’659 patent must be disclosed in the ’287 patent in order to meet the written description standard. See Pet. 10–17 (citing Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997)). To the extent that Petitioner suggests that the combination must be disclosed in a single embodiment, we disagree. Rather, in Lockwood, the court relied upon the written description standard found in Vas-Cath, and held that because one of the continuations in the chain of five applications did not describe the claim features, the later patent could not claim priority to the earlier patent. Lockwood, 107 F3d at 1571–72 (citing Vas-Cath Inc., 935 F.2d at 1563–64). Consequently, we agree with Patent Owner that the written description requirement does not compel that a single embodiment fully describe the invention. See Prelim. Resp. 9–12. With this standard in mind we analyze Petitioner’s contentions.” slip op. at 7

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artDecided for patent owner

    “We have reviewed the parties’ assertions and supporting evidence, and, for the reasons discussed below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that the ’287 patent is prior art.” slip op. at 6

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

    “b) Rationale Petitioner’s rationale for the proposed modification is not persuasive. First, Petitioner contends that it would have been obvious to utilize Klappenbach’s housing 2 in Blank’s device to provide rain sensor functionality. Pet. 37. Then Petitioner reasons it would have been obvious to replace Klappenbach’s rain sensor with the improved functionality of Schofield’s camera that includes rain sensing capability. See id. at 43. Petitioner’s argument explains why one of ordinary skill in the art would select Schofield’s camera, rather than the Klappenbach’s rain sensor, but does not explain why it would have been obvious to mount Schofield’s camera in Klappenbach’s housing. See Prelim. Resp. 32–33. Second, Petitioner reasons that Klappenbach’s housing would advantageously seal the components of Schofield’s camera to prevent intrusion of elements from the environment. Pet. 38, 43–44 (citing Ex. 1713 ¶ 59). However, Schofield’s camera already is protected from such intrusions. See Ex. 1007, 3:67–4:4; Prelim. Resp. 32, 34. Third, Petitioner reasons that Klappenbach’s technique of attaching the fastening device during windshield manufacture is a manufacturing advantage because the sensor is not mounted until after the motor vehicle is built. Pet. 37–38 (citing Ex. 1010, 2:11–16; Ex. 1713 ¶ 58). As discussed above, Klappenbach’s device is mounted pressed against and at the angle of the windshield, while Schofield’s is mounted spaced from the windshield and horizontal. Petitioner does not explain persuasively how Klappenbach’s technique provides a manufacturing advantage for a device such as Schofield’s camera that is mounted in a different manner. See Prelim. Resp. 32 (noting this advantage is particular to a refractive rain sensor). Further, Petitioner’s reasoning is contradictory in that it touts that Schofield’s camera “advantageously eliminates the requirement for optical coupling,” yet relies upon Klappenbach’s mounting technique for optical coupling. See Ex. 1713 ¶ 59. 5. Conclusion For at least the foregoing reasons, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that claims 62, 63, 65, 66, and 69 would have been obvious over Blank, Schofield, Klappenbach, and Batavia. C. OBVIOUSNESS OVER BLANK, SCHOFIELD, KLAPPENBACH, BATAVIA, CARTER, AND ADMITTED PRIOR ART” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 8,692,659
• TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution denied
  PTAB · Dec 21, 2015 · IPR2015-01430 · APJ Phillip J Kauffman · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 14–21 and 24 were unpatentable under § 103.

  RulingsInstitution decision

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

    “For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 14–21 and 24 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. B.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “specific combination found in each of the challenged claims of the ’659 patent must be disclosed in the ’287 patent in order to meet the written description standard. See Pet. 10–16 (citing Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997)). To the extent that Petitioner suggests that the combination must be disclosed in a single embodiment, we disagree.. Lockwood contains no such explicit holding. Rather, in Lockwood, the court relied upon the written description standard found in Vas-Cath, and held that because one of the continuations in the chain of five applications did not describe the claim features, the later patent could not claim priority to the earlier patent. Lockwood, 107 F3d at 1571–72 (citing Vas-Cath Inc., 935 F.2d at 1563–64). Consequently, we agree with Patent Owner that the written description requirement does not compel that a single embodiment fully describe the invention. See Prelim. Resp. 9–12. With this standard in mind we analyze Petitioner’s contentions.” slip op. at 7

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

    “a) Structure Configured to Accommodate a Camera Independent claim 1 requires a structure configured to accommodate a forward facing camera. Petitioner relies on Klappenbach’s housing 2 as the claimed structure to accommodate Schofield’s forward facing camera (dimming control 12 having image sensor module 14 that may be a video camera). Pet. 40–44. As Petitioner acknowledges, Klappenbach’s rain sensor does not include a camera; rather, Klappenbach’s outer housing part 2 is designed specifically to accommodate transmitter 10 and receiver 11. See id. at 43; Ex. 1010, 3:46–67, Figs. 1, 2. Rather, Klappenbach’s outer housing part 2 is designed specifically to accommodate transmitter 10 and receiver 11, as shown in Figure 1. Ex. 1010, 3:46–67, Fig. 1. Klappenbach’s sensor is pressed against, and at the angle of the windshield. Id. at 1:45–59; Figs. 1, 2. In contrast, Schofield’s camera is spaced from the windshield, and oriented horizontally. See Ex. 1007, Fig. 1; Prelim. Resp. 27–28. Petitioner does not provide a specific explanation or identify specific evidence showing that the housing in Figures 1 and 2 of Klappenbach also is configured to accommodate a forward facing camera. See Pet. 36–38, 41– 44. Consequently, Petitioner has not addressed persuasively this difference between the prior art and the claimed subject matter, nor explained sufficiently how claim 56 is unpatentable. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966) (factor 2); 37 C.F.R. § 42.104(b)(4).” slip op. at 13

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

    “b) Rationale Petitioner’s rationale for the proposed modification is not persuasive. First, Petitioner contends that it would have been obvious to utilize Klappenbach’s housing 2 in Blank’s device to provide rain sensor functionality. Pet. 37. Then Petitioner reasons it would have been obvious to replace Klappenbach’s rain sensor with the improved functionality of Schofield’s camera that includes rain sensing capability. See id. at 43. Petitioner’s argument explains why one of ordinary skill in the art would select Schofield’s camera rather than the Klappenbach’s rain sensor, but does not explain why it would have been obvious to mount Schofield’s camera in Klappenbach’s housing. See Prelim. Resp. 32–33. Second, Petitioner reasons that Klappenbach’s housing would advantageously seal the components of Schofield’s camera to prevent intrusion of elements from the environment. Pet. 38, 43–43 (citing Ex. 1613 ¶ 58). However, Schofield’s camera already is protected from such intrusions. See Ex. 1007, 3:67–4:4; Prelim. Resp. 32, 34. Third, Petitioner reasons that Klappenbach’s technique of attaching the fastening device during windshield manufacture is an advantage because the sensor is not mounted until after the motor vehicle is built. Pet. 38 (citing Ex. 1010, 2:11–16; Ex. 1613 ¶ 58). As discussed above, Klappenbach’s device is mounted pressed against and at the angle of the windshield, while Schofield’s is mounted spaced from the windshield and horizontal. Petitioner does not explain persuasively how Klappenbach’s technique provides a manufacturing advantage for a device such as Schofield’s camera that is mounted in a different manner. See Prelim. Resp. 32 (noting this advantage is particular to a refractive rain sensor). Further, Petitioner’s reasoning is contradictory in that it touts that Schofield’s camera “advantageously eliminates the requirement for optical coupling,” yet relies upon Klappenbach’s mounting technique for optical coupling. See Ex. 1613 ¶ 59.” slip op. at 14

  § 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 8,692,659
• TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution denied
  PTAB · Dec 21, 2015 · IPR2015-01451 · APJ Robert J Weinschenk · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 90–97 were unpatentable under § 103.

  RulingsInstitution decision

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

    “Pet.”) requesting inter partes review of claims 90–97 of U.S. Patent No. 8,692,659 B2 (Ex. 1002, “the ’659 patent”). Magna Electronics Inc. (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to the Petition. An inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 90–97 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. slip op. at 2

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

    “reasonable interpretation in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015). On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 6

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “written description of the attachment members attached to a vehicle windshield and local to a mirror mounting button, as recited in the challenged claims. Pet. 11–13 (citing Ex. 2013 ¶¶ 31–33, 40, 44–46). Petitioner’s argument is not persuasive. The ’287 patent discloses the following: As best understood from FIG. 16B, extension 8513 of header console 8512 extends downwardly behind the upper portion of windshield W (such portion of windshield W which typically includes a shadeband element as known in the art) and includes a forked portion 8513a, such as an inverted V-shaped or U-shaped portion, which straddles a mirror mounting button 8536 that is mounted to windshield W. Optionally, the downwardly extending portion of header/header console 8512 may be mounted to the inner surface of windshield W, such as by an adhesive or may be releasably, mechanically attached such as by being received by and/or supported by one or more attaching members adhered to the inner surface of the windshield, such as by attachment members, including rails, channels, or the like. Ex. 1012, col. 28, ll. 15–28 (emphasis added). The above disclosure in the ’287 patent describes a console that straddles (and thus is local to) a mirror mounting button and is mounted to a vehicle windshield using attachment members, such as rails or channels. Id. As such, the above disclosure in the ’287 patent is sufficient to show that the inventors had possession of the claimed attachment members. See Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). Petitioner argues that the ’287 patent does not contain sufficient written description of “how the ‘rails, channels or the like’ would adhere to the windshield to permit co-engagement as the inverted U or V-shaped portion 8513a engages the mirror mounting button 8536.” Pet. 13 (citing Ex. 2013 ¶¶ 33, 40). Petitioner’s argument is not persuasive because the challenged claims of the ’659 patent do not recite that the attachment members or structure supported by the attachment members engage the mirror mounting button. See Ariad, 598 F.3d at 1351 (“[T]he test for sufficiency is whether the disclosure . . . reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter.”) (emphasis added). Further, as discussed above, the ’287 patent explains that the console supported by the attachment members straddles the mirror mounting button. Ex. 1012, col. 28, ll. 15–28.” slip op. at 7

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

    “We also are not persuaded, on this record, that it would have been obvious to combine the cited teachings of Schofield and Klappenbach. Petitioner argues that it would have been obvious to use the vehicle headlight dimming control in Schofield rather than the rain sensor in Klappenbach because the vehicle headlight dimming control in Schofield provides more functionality. Id. at 42–44 (citing Ex. 2013 ¶ 56). Petitioner’s argument explains why one of ordinary skill in the art would select the vehicle headlight dimming control in Schofield rather than the rain sensor in Klappenbach, but does not explain why it would have been obvious to mount the vehicle headlight dimming control in Schofield using the fastening device and housing in Klappenbach. Petitioner argues that the housing in Klappenbach would advantageously seal the components of the camera in Schofield to prevent intrusion of elements from the environment. Pet. 43–44 (citing Ex. 2013 ¶ 58). Petitioner’s argument is not persuasive because Schofield teaches that the imaging sensor module disclosed therein already is protected from such intrusions. Ex. 1007, col. 3, l. 67–col. 4, l. 4. Further, the housing in Klappenbach is not just a protective housing for sensor components, but, rather, a structure designed specifically to accommodate transmitter 10 and receiver 11, as shown in Figure 1. Ex. 1010, col. 3, ll. 46–67, Fig. 1. Petitioner also argues that the fastening device in Klappenbach can be preinstalled. Pet. 44 (citing Ex. 2013 ¶ 58). Petitioner does not explain, though, why that would have made it obvious to use the fastening device and housing in Klappenbach with the vehicle headlight dimming control in Schofield. Moreover, Petitioner does not provide a specific explanation or identify specific evidence showing that it would have been obvious to one of ordinary skill in the art that the housing in Figures 1 and 2 of Klappenbach is, or can be, configured to accommodate a forward facing camera generally or the vehicle headlight dimming control in Figure 1 of Schofield particularly. Pet. 41–44. Therefore, on this record, Petitioner has not shown sufficiently that it would have been obvious to one of ordinary skill in the art to combine the cited teachings of Blank, Schofield, Klappenbach, and Carter in the manner proposed by Petitioner.” slip op. at 11

  Claim construction§ 103 obviousness§ 112 disclosure
  Patents in suitUS 8,692,659
• TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution denied
  PTAB · Dec 21, 2015 · IPR2015-01429 · APJ Phillip J Kauffman · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 56–61 were unpatentable under § 103.

  RulingsInstitution decision

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

    “For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 56–61 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. B.” slip op. at 2

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

    “1002, 1:7–23. For a claim to gain the benefit of the filing date of an earlier filed application under 35 U.S.C. § 120, each application in the chain leading back to that earlier application must comply with the written description requirement of 35 U.S.C. § 112, first paragraph. See, e.g., Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007). Satisfaction of the written description requirement under 35 U.S.C. § 112, first paragraph, does not require the description to be literally the same as the claim language at issue. In re Wertheim, 541 F.2d 257, 265 (CCPA 1976); In re Lukach, 442 F.2d 967, 969 (CCPA 1971). Rather, by whatever language, the specification only must convey with reasonable clarity to those skilled in the art that, as of the filing date of the application, the inventor was in possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991); see also Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (citing with approval the standard in Vas Cath, and stating “the 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.”).” slip op. at 6

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

    “and, for the reasons discussed below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that the ’287 patent is prior art.” slip op. at 6

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

    “b) Rationale Petitioner’s rationale for the proposed modification is not persuasive. First, Petitioner contends that it would have been obvious to utilize Klappenbach’s housing 2 in Blank’s device to provide rain sensor functionality. Pet. 37. Then Petitioner reasons it would have been obvious to replace Klappenbach’s rain sensor with the improved functionality of Schofield’s camera that includes rain sensing capability. See id. at 43. Petitioner’s argument explains why one of ordinary skill in the art would select Schofield’s camera rather than the Klappenbach’s rain sensor, but does not explain why it would have been obvious to mount Schofield’s camera in Klappenbach’s housing. See Prelim. Resp. 32–33. Second, Petitioner reasons that Klappenbach’s housing would advantageously seal the components of Schofield’s camera to prevent intrusion of elements from the environment. Pet. 38, 44–45 (citing Ex. 1513 ¶ 58). However, Schofield’s camera already is protected from such intrusions. See Ex. 1007, 3:67–4:4; Prelim. Resp. 32, 34. Third, Petitioner reasons that Klappenbach’s technique of attaching the fastening device during windshield manufacture is an advantage because the sensor is not mounted until after the motor vehicle is built. Pet. 37–38 (citing Ex. 1010, 2:11–16; Ex. 1513 ¶ 58). As discussed above, Klappenbach’s device is mounted pressed against and at the angle of the windshield, while Schofield’s is mounted spaced from the windshield and horizontal. Petitioner does not explain persuasively how Klappenbach’s technique provides a manufacturing advantage for a device such as Schofield’s camera that is mounted in a different manner. See Prelim. Resp. 32 (noting this advantage is particular to a refractive rain sensor). Further, Petitioner’s reasoning is contradictory in that it touts that Schofield’s camera “advantageously eliminates the requirement for optical coupling,” yet relies upon Klappenbach’s mounting technique for optical coupling. See Ex. 1513 ¶ 59.” slip op. at 14

  § 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 8,692,659
• Boston Scientific Neuromodulation Corporation v. Nevro CorporationInstitution denied
  PTAB · Nov 30, 2015 · IPR2015-01203 · APJ James A Worth · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 11–15, 17–23, 25, and 26 were unpatentable.

  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 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); 37 C.F.R. § 42.108. For the reasons set forth below, we conclude that the information presented in the Petition does not establish a reasonable likelihood that BSNC would prevail in showing that claims 1, 2, 11–15, 17–23, 25 and 26 of the ’102 patent are unpatentable. Accordingly, we do not institute an inter partes review for any of these challenged claims.” slip op. at 2

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

    “All of the evidence presented supports an understanding that paresthesia includes various manifestations of a “pins and needles” feeling, often described as “tingling.” Patent Owner’s dictionaries also refer to “pricking,” “formication,” and “creeping on the skin,” which is consistent with Petitioner’s Declarant’s observation the same sensation may manifest itself as “prickling.” See Ex. 1105 ¶ 14. Although we recognize that Patent Owner has not had the opportunity to submit any “new testimonial evidence” at this stage of the proceeding, see 37 C.F.R. § 42.107(c), Patent Owner does not here provide support for “pressure” as it might be understood apart from “pricking,” “formication,” and “creeping on the skin.” For purposes of this Decision on Institution, we determine that the broadest reasonable construction consistent with the Specification of “does not create paresthesia” is “does not create tingling.” We are guided by the submitted dictionaries as well as the Specification which criticizes prior art techniques for causing “tingling or paresthesia.” Ex. 1001, 1:50–52. We credit the statement of Petitioner’s Declarant that the same sensation may be 5 Formication is a hallucination in which a patient feels as if insects are crawling on his or her skin. variously perceived. However, we do not include “pressure” itself within that construction.” slip op. at 7

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

    “11–14, 17–22, 25, and 26 would be understood to be disclosed by MacDonald. Pet. 13–27. The parties first dispute whether MacDonald discloses any examples of electrical stimulation that “does not create paresthesia in the patient,” as recited by claims 1 and 26. See Pet. 14–17; Prelim. Resp. 24–25. When MacDonald discloses electronic stimulation lower than the threshold for tingling, MacDonald also discloses a “feeling of warmth and painless, light pressure.” 5:51–63. Applying the above claim construction of “paresthesia,” we determine, on the current record, that Petitioner has shown sufficient evidence that MacDonald discloses a lack of paresthesia in that example. However, we agree with Patent Owner that Petitioner has not sufficiently demonstrated that MacDonald anticipates because Petitioner has not shown that MacDonald’s transcutaneous therapy is applicable for an implantable signal delivery device or that MacDonald teaches the claimed frequency ranges with sufficient specificity. Prelim. Resp. 25–29. MacDonald’s disclosure results from an experiment using “surface electrodes,” and “at a rate of 100 pulses per second.” Ex. 1002, 5:33–37. Therefore, even though Petitioner relies on a disclosure in MacDonald that electrodes may be implanted (id. at 3:49–51, 8:55–57), and that frequencies of up to 150 kHz or 250 kHz may be used (id. at 4:9–21, 8:39–43), Petitioner does not provide evidence that the patient would feel no paresthesia under such conditions, i.e., under conditions different than those described in the first set of experiments. See Pet. 14–20. Nor does Petitioner direct us to persuasive evidence from Dr. McIntyre’s testimony (Ex. 1015) that MacDonald discloses this claim element. In sum, although the various disclosures relied upon by Petitioner are in the same reference, Petitioner has not sufficiently shown that the conditions were arranged together in the same way as recited in the claim. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). We, therefore, conclude that Petitioner has not shown a reasonable likelihood of prevailing on its assertion that claims 1, 2, 11–14, 17–22, 25, and 26 are anticipated by MacDonald.” slip op. at 11

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

    “one of ordinary skill in the art to implement MacDonald’s therapy in a way that does not cause paresthesia, and De Ridder describes tests that were performed on patients using spinal cord stimulation parameters that successfully treated pain without causing paresthesia. Pet. 46–47 (citing Ex. 1005 ¶¶ 41–44; Exhibit 1115 ¶¶ 138–141; KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.”)). Petitioner also reasons that it was known from such references as De Ridder that paresthesia was undesirable. Pet. 47 and n.3. However, we agree with Patent Owner that De Ridder teaches that high frequency stimulation causes, rather than avoids, paresthesia. Prelim. Resp. 43 (citing Ex. 1005 ¶ 4). Further, De Ridder’s data reporting suppression of paresthesia was conducted at an “inter-burst” frequency of 40 Hz and an “intra-burst” frequency of 500 Hz, rather than the recited frequencies. Ex. 1005 ¶ 41–42; Table 1. With respect to Sluitjer and Royle, we address these references individually in the sections above. Further, we agree with Patent Owner that the Petition does not articulate the obviousness ground inasmuch as the Petition does not explain which aspects of MacDonald would have been retained and which aspects of De Ridder, Sluitjer, and Royle would have been the basis for a modification, and the rationale for the choice of any such elements. See Prelim. Resp. 45; Pet. 45–50; 37 C.F.R. §§ 42.104(b)(4), (b)(5), 42.108(c); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We determine, on the current record, that Petitioner has not established a reasonable likelihood of prevailing on its assertion that claims 1, 2, 11–15, 17–23, 25, and 26 are rendered obvious by the combination of MacDonald, either alone or in view of De Ridder, Sluijter and/or Royle.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,359,102
• Boston Scientific Neuromodulation Corporation v. Nevro CorporationInstitution denied
  PTAB · Nov 30, 2015 · IPR2015-01204 · APJ James A Worth · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 11-15, 17-23, 25, and 26 were unpatentable over Knudson alone or in the asserted combinations.

  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 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); 37 C.F.R. § 42.108. For the reasons set forth below, we conclude that the information presented in the Petition does not establish a reasonable likelihood that BSNC would prevail in showing that claims 1, 2, 11–15, 17–23, 25, and 26 of the ’102 patent are unpatentable. Accordingly, we do not institute an inter partes review for any of these challenged claims.” slip op. at 2

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We are persuaded by Patent Owner that Knudson does not disclose a paresthesia-free therapy, either explicitly or inherently. Prelim. Resp. 10– 13. We have reviewed Kilgore and Perruchoud and do not find that they support a reading that Knudson’s nerve blocking necessarily resulted in the patient feeling no paresthesia. The Petition relies primarily on the testimony of Dr. McIntyre for the proposition that Knudson’s method of nerve blocking inherently discloses an application “without causing paresthesia in the patient.” See Pet. 16–24. However, Dr. McIntyre offers no support for the proffered testimony that “one of ordinary skill would have understood that by describing his therapy signal as applying a ‘blocking’ signal, Knudson was teaching application of a signal that would not cause the patient to perceive paresthesia.” Ex. 1115 ¶ 44. To the extent that Petitioner and Petitioner’s Declarant rely on a mechanism of nerve block as blocking a nerve action potential, Petitioner has not adduced persuasive evidence as to what a patient would necessarily have perceived or sensed in the Knudson experiment. See 37 C.F.R. § 42.65 (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAOther

    “All of the evidence presented supports an understanding that paresthesia includes various manifestations of a “pins and needles” feeling, often described as “tingling.” Patent Owner’s dictionaries also refer to “pricking,” “formication,” and “creeping on the skin,” which is consistent with Petitioner’s Declarant’s observation the same sensation may manifest itself as “prickling.” See Ex. 1115 ¶ 14. Although we recognize that Patent Owner has not had the opportunity to submit any “new testimonial evidence” at this stage of the proceeding, see 37 C.F.R. § 42.107(c), Patent Owner does not here provide support for “pressure” as it might be understood apart from “pricking,” “formication,” and “creeping on the skin.” For purposes of this Decision on Institution, we determine that the broadest reasonable construction consistent with the Specification of “does not create paresthesia” is “does not create tingling.” We are guided by the submitted dictionaries as well as the Specification which criticizes prior art techniques for causing “tingling or paresthesia.” Ex. 1101, 1:50–52. We credit the statement of Petitioner’s Declarant that the same sensation may be variously perceived. However, we do not include “pressure” itself within that construction.” slip op. at 6

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

    “We are persuaded by Patent Owner that Knudson does not disclose a paresthesia-free therapy, either explicitly or inherently. Prelim. Resp. 10– 13. We have reviewed Kilgore and Perruchoud and do not find that they support a reading that Knudson’s nerve blocking necessarily resulted in the patient feeling no paresthesia. The Petition relies primarily on the testimony of Dr. McIntyre for the proposition that Knudson’s method of nerve blocking inherently discloses an application “without causing paresthesia in the patient.” See Pet. 16–24. However, Dr. McIntyre offers no support for the proffered testimony that “one of ordinary skill would have understood that by describing his therapy signal as applying a ‘blocking’ signal, Knudson was teaching application of a signal that would not cause the patient to perceive paresthesia.” Ex. 1115 ¶ 44. To the extent that Petitioner and Petitioner’s Declarant rely on a mechanism of nerve block as blocking a nerve action potential, Petitioner has not adduced persuasive evidence as to what a patient would necessarily have perceived or sensed in the Knudson experiment. See 37 C.F.R. § 42.65 (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We conclude that Petitioner has not adequately shown that Knudson discloses application of electricity “without causing paresthesia in the patient,” as required by independent claims 1 and 26. See In re Robertson, 169 F.3d 743 (Fed. Cir. 1999) (“Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”). We, therefore, determine that Petitioner has not established a reasonable likelihood of prevailing on its assertion with respect to claims 1, 2, 17–22, 25, and 26.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,359,102
• Tempur Sealy International, Inc. v. Select Comfort Corp.Institution denied
  PTAB · Feb 17, 2015 · IPR2014-01419 · APJ Phillip J Kauffman · IPR · Institution

  The Board denied institution because the Petition did not establish a reasonable likelihood of showing claims 2, 3, 6, 9, 12, 13, 16, and 20–25 unpatentable.

  RulingsInstitution decision

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

    “Petitioner includes any citation to specific portions of the references themselves.9 Rather, the Petition cites only to the Declaration of Mr. Bernard Kuchel (Ex. 1011). See e.g., Pet. 12 (citing Ex. 1001 ¶¶ 50– 62,10 64, and 71). Citation in the Declaration does not correct this deficiency because the requirement applies to the petition itself. See 35 U.S.C. §§ 312(a)(3), (4); 37 C.F.R. §§ 42.104(b)(4), (5); 37 C.F.R. § 42.22(a)(2) (requiring a petition to include a detailed explanation of the significance of the evidence); see generally Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-00003, slip op. at 10, 14 (P.T.A.B. Oct. 25, 2012)” slip op. at 6

  • BurdenDenied

    “Petitioner includes any citation to specific portions of the references themselves.9 Rather, the Petition cites only to the Declaration of Mr. Bernard Kuchel (Ex. 1011). See e.g., Pet. 12 (citing Ex. 1001 ¶¶ 50– 62,10 64, and 71). Citation in the Declaration does not correct this deficiency because the requirement applies to the petition itself. See 35 U.S.C. §§ 312(a)(3), (4); 37 C.F.R. §§ 42.104(b)(4), (5); 37 C.F.R. § 42.22(a)(2) (requiring a petition to include a detailed explanation of the significance of the evidence); see generally Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-00003, slip op. at 10, 14 (P.T.A.B. Oct. 25, 2012)” slip op. at 6

  Nonecites KSR · Graham
  Patents in suitUS 5,904,172
• Target Corporation v. Destination Maternity CorporationInstitution denied
  PTAB · Sep 25, 2014 · IPR2014-00509 · APJ Michael J Fitzpatrick · IPR · Institution

  The Board denied institution because the petition was filed more than one year after Target was served with an infringement complaint, barring review under § 315(b).

  RulingsInstitution decision

  • PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied

    “The instant Petition, accorded a filing date of March 14, 2014, was filed more than one year after Petitioner was served with the complaint alleging infringement of the ’531 patent. See Paper 5. We may not institute an inter partes review when “the petition . . . is filed more than 1 year after the date on which the petitioner, . . . is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). Section 315(b) further states this “time limitation . . . shall not apply to a request for joinder under subsection (c).” Id. Thus, it does not apply to a person’s request to “join as a party to that [i.e., a previously instituted] inter partes review.” 35 U.S.C. § 315(c).2 However, the time limitation does apply to that person’s petition.” slip op. at 3

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “filed more than one year after Petitioner was served with the complaint alleging infringement of the ’531 patent. See Paper 5. We may not institute an inter partes review when “the petition . . . is filed more than 1 year after the date on which the petitioner, . . . is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). Section 315(b) further states this “time limitation . . . shall not apply to a request for joinder under subsection (c).” Id. Thus, it does not apply to a person’s request to “join as a party to that [i.e., a previously instituted] inter partes review.” 35 U.S.C. § 315(c).2 However, the time limitation does apply to that person’s petition.” slip op. at 3

  Discretionary denial

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.