- PTAB · Jun 13, 2024 · IPR2024-00258 · APJ Carl M Defranco · IPR · Institution
The Board instituted IPR on claims 2, 3, 9, 10, 12, 13, and 16–20, finding a reasonable likelihood that claims 2, 17, and 19 are obvious over Müller and Waffner.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Aside from operability, Weber does not further dispute Provisur’s showing as to how the asserted combination of Müller and Waffner renders obvious the subject matter of independent claims 2, 17, and 19. See Prelim. Resp. 14–24. After analyzing Provisur’s showing, including Provisur’s mapping of the claim elements to Müller and/or Waffner and its reasoning for why one of ordinary skill in the art would have been led to combine their respective teachings (as discussed above), we find that Provisur demonstrates a reasonable likelihood that at least independent claims 2, 17, and 19 are unpatentable as obvious over the combined teachings of Müller and Waffner. See Pet. 28–38 (claim 2), 38–42 (reason to combine), 47–52 (claim 17), 53 (claim 19). Thus, Provisur meets the threshold for institution. At this stage, Weber offers no response to Provisur’s challenge of dependent claims 3, 9, 10, 12, 13, 16, 18, and 20, except presumably to rely on its argument against Provisur’s challenge of their respective base claims 2, 17, and 19. See Prelim. Resp. 14–24. Because Provisur provides an obviousness challenge that satisfies the “reasonable likelihood” threshold with respect to at least the independent claims, we do not address the dependent claims in the absence of any rebuttal from Weber. Further analysis is best left for trial after full development of the record.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“C. Discretionary Denial Under 35 U.S.C. § 314(a) Weber requests that we exercise our discretion under 35 U.S.C. § 314(a) to deny institution due to the advanced state of the parallel Missouri action. See Prelim. Resp. 3–13. Although Provisur argues that discretionary denial is not warranted (Pet. 73–77), it nonetheless submits a Sotera style stipulation (Ex. 1029) in an effort to resolve the issue.8 In light of Provisur’s Sotera stipulation, we will not discretionarily deny institution under § 314(a). See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022), at 3, 7.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“the art reasonably would have understood the advantage of incorporating Waffner’s air-permeable contact surface and vacuum chamber into Müller’s downstream buffer 12, as opposed to its upstream buffer 8, given that both prior art references emphasize the importance of controlling the infeed speed and tension of the interleaver material adjacent the cutting region where rapid acceleration and braking of the interleaver material may result in tearing and wrinkling. See Ex. 1004 ¶¶ 26, 48; Ex. 1006, 2:58–3:4, 6:50–56; see also Ex. 1003 ¶¶ 200–210 (addressing the teachings of Müller and Waffner in view of the existing knowledge in the art). Indeed, Provisur’s expert confirms that “[l]ike many interleaver devices known in the art, Müller discloses creating a buffer loop of web material upstream of the rollers that insert the web material into the cutting area,” and that “[i]t was known in the food slicing and interleaving industry that the tension of interleaver material fed to the cutting region from a loose loop must be controlled.” Ex. 1003 ¶¶ 199, 220. And, like Waffner, Müller describes buffer 12 in terms of being a “loop” buffer for controlling the infeed speed of the interleaver material into the cutting region. See Ex. 1004 ¶ 48 (“Provided downstream of the first buffer 8 is a further buffer 12, a loop here, which . . . preferably buffers only as much interleaver material as is needed for the ejection of an interleaver.”). In contrast, Müller’s buffer 8 is used only “in the event of a[n] emergency stop” for buffering “overrun of the reel.” Id. ¶ 33. Thus, based on the current record, we reject the notion that Provisur’s proposed modification of Müller’s buffer 12, which continuously controls the length of the loop near the cutting region, would have any effect on Müller’s buffer 8, which merely stops unraveling near the reel. Aside from operability, Weber does not further dispute Provisur’s showing as to how the asserted combination of Müller and Waffner renders obvious the subject matter of independent claims 2, 17, and 19. See Prelim. Resp. 14–24. After analyzing Provisur’s showing, including Provisur’s mapping of the claim elements to Müller and/or Waffner and its reasoning for why one of ordinary skill in the art would have been led to combine their respective teachings (as discussed above), we find that Provisur demonstrates a reasonable likelihood that at least independent claims 2, 17, and 19 are unpatentable as obvious over the combined teachings of Müller and Waffner. See Pet. 28–38 (claim 2), 38–42 (reason to combine), 47–52 (claim 17), 53 (claim 19). Thus, Provisur meets the threshold for institution.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Provisur asserts that the claim terms should be construed “according to their plain and ordinary meanings as understood by [one of ordinary skill in the art] in view of the specification and prosecution history” and that “[n]o terms require an explicit construction to resolve the unpatentability controversy between the parties here.” Pet. 18. Weber appears to agree, stating in the parallel Missouri action that “most of [Weber’s] patent claims are plain and ordinary . . . [t]hey’re not difficult or complex claims or claim terms.” Ex. 1028, 5. There being no dispute, we need not expressly construe any claim terms at this stage of the proceeding, because we can decide the threshold question of institution without further construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where the construction is not material to the dispute).” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,647,013 - PTAB · Jun 13, 2024 · IPR2024-00240 · APJ Deborah Katz · IPR · Institution
The Board instituted inter partes review of claims 1–42 on all asserted grounds, finding a reasonable likelihood of success and declining discretionary denial under §§ 314(a) and 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Director may not authorize an inter partes review “unless the Director determines that 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). We determine whether to institute a post grant review on behalf of the Director. See 37 C.F.R. § 42.4(a). The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Upon considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has demonstrated there is a reasonable likelihood that the petition would prevail in showing that at least one challenged is unpatentable. Accordingly, we institute inter partes review of all challenged claims on all asserted grounds. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(a).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“patient is MSI-H after enrollment in a study in which pembrolizumab is to be administered is not within the scope of the claim step “in response to determining that the colorectal cancer is microsatellite instability high or DNA mismatch repair deficient, treating the patient with a therapeutically effective amount of pembrolizumab.” At this point in the proceeding, though, we do not interpret the claim step as meaning anything other than the treatment of colorectal cancer patients after they have been determined to be microsatellite instability high or DNA mismatch repair deficient. Although the term “in response to” in claim 1 requires that treatment of the patient occur after the determination that the colorectal cancer is MSI-H, we do not interpret the term to mean that other patients are not treated or that the recruitment and enrollment of patients for a clinical trial has any bearing on the steps recited in claim 1. 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. § 42.100(b) (2019). Under this standard, we construe the 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.” Id. Patent Owner has not directed us to evidence that one of ordinary skill in the art would have understood treating a patient “in response to” the determination that the patient has a condition excludes treatment of other patients without the condition, although it does require that treatment of the patient occur after the determination that the colorectal cancer is MSI-H. The language of claim 1 refers only to patients that are determined to have microsatellite instability high or DNA mismatch repair deficient colorectal cancer, not to other patients. (See Ex. 1001, 25:40–50.) At this point in the proceeding, the record does not indicate that the treatment of patients determined not to be MSI-H is be factored into whether the teaching of treating patients determined to be MSI-H anticipates the method of claim 1. At this point in the proceeding, we construe the “in response to” limitation of claim 1 to mean that pembrolizumab is administered to a patient after the patient has been determined to be microsatellite instability high or DNA mismatch repair deficient, regardless of whether pembrolizumab is also administered to other patients.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“H Study Record teaches treating colorectal cancer patients after they were determined to be microsatellite instability high or DNA mismatch repair deficient with pembrolizumab. (See MSI-H Study Record, Ex, 1005, 4 (Arms and Interventions); see also id., 2 (Study Identification), 3 (Study Description), 4–5 (Outcome Measures), 5–6 (Eligibility); see Neugut Decl., Ex. 1003, ¶¶ 58–62.) At this point in the proceeding, Petitioner has sufficiently shown that there is a reasonable likelihood of a causal relationship in the MSI-H Study Record between treatment of colorectal cancer patients and the determination of their MSI status — all colorectal cancer patients determined to be microsatellite instability high or DNA mismatch repair deficient were treated. Whether or not other patients were treated or enrolled in the study does not detract from this teaching.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Furthermore, to the extent the MSI-H Study Record does not disclose the limitation of “in response to determining that the colorectal cancer is microsatellite instability high or DNA mismatch repair deficient, treating the patient with a therapeutically effective amount of pembrolizumab,” the record before us supports this limitation being rendered obvious by Pernot and the MSI-H Study Record. Specifically, because Pernot teaches that colorectal cancer patients are good candidates for immunotherapy, the evidence of the current record shows that one of ordinary skill in the art would have had a reason to use to PD-1 inhibitors to treat colorectal cancers. (See Ex. 1006, 3741.) Additionally, the focus in the MSI-H Study Record on a clinical study treating colorectal cancer patients who had been determined to be MSI-H with prembrolizumab indicates that it would have been obvious to test for this condition before treatment. The additional references discussed by Petitioner contribute further to a reasonable likelihood that Petitioner will prevail. For example, Libson reports the successful treatment of a colorectal cancer patient having MSI-H status with a PD- 1 inhibitor (see Ex. 1057, 463-64) and Champiat discusses evaluating the clinical activity of PD-1 agents in DNA mismatch repair, such as MSI+, colorectal cancer (see Ex. 1032, e27817-5). (See Pet. 44.) Thus, based on the entire record before us, Petitioner presents a reasonable likelihood that the method of claim 1 would have been considered obvious by one of ordinary skill in the art.” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,591,393 - PTAB · Jun 10, 2024 · IPR2024-00300 · APJ Frederick C Laney · IPR · Institution
The Board instituted IPR on claims 1–38 on all asserted grounds, finding a reasonable likelihood of prevailing based on the Carr grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may be instituted only if it is determined that there is a reasonable likelihood that the petitioner will prevail with respect to at least one of the claims challenged in the petition. Considering the parties’ arguments and evidence, for reasons explained below, we conclude that Petitioner shows a reasonable likelihood that it will prevail with respect to at least one of the ’770 patent’s challenged claims. We institute an inter partes review on all challenged claims. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018).” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“Here, however, the February 18, 2022 filing date of Krupa (Ex. 1003, code (22)) is indisputably after the priority date for the claims recited in the ’770 patent, which Petitioner concedes is at least May 17, 2021 (Pet. 4, 14, filing date of the Krupa Provisional to qualify Krupa as prior art. See Pet. 4; 35 U.S.C. § 102(d)(2). Under subsection 102(d)(2), to qualify as prior art, a reference patent or published patent application is considered effectively filed as of the filing date of its provisional application only to the extent that the provisional “describes the subject matter” relied on in the reference patent document. 35 U.S.C. § 102(d)(2). We cannot presume that the Krupa Provisional describes the subject matter in Krupa that the Petition relies on, however. See Dynamic Drinkware, 800 F.3d at 1380 (“[B]ecause the PTO does not examine priority claims unless necessary, the Board has no basis to presume that a reference patent is necessarily entitled to the filing date of its provisional application.”). The burden to make this showing falls squarely on Petitioner. But Petitioner does not explain how the Krupa Provisional supports the relevant subject matter relied on in Krupa. In fact, Petitioner did not introduce the Krupa Provisional into the record, so it would not be possible to do so.9” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“But Patent Owner’s arguments do little to undermine the rational underpinning of Petitioner’s reasoning for combining Carr and Beuterbaugh because they improperly focus on what Carr and Beuterbaugh disclose individually, rather what they disclose in combination; and they appear to improperly rely on the bodily incorporation of Beuterbaugh’s pulsing method into Carr. Petitioner contends the motivation for combining Beuterbaugh and Carr in the manner claimed comes from the fact that valve sequencing generally (rather than Beuterbaugh’s specific pulsing method for “overlap of fluid flows to each well [to] be controlled to optimize the downhole pressure waves and minimize the surface impacts.” Pet. 63, 66 (citing Ex. 1005 ¶ 24; Ex. 1002 ¶¶ 496–512). Patent Owner does not dispute, at this preliminary stage, that Beuterbaugh suggests valve sequencing was a known technique that can enhance well operations; nor does Patent Owner dispute that Carr discloses a control system that can control the sequence of opening and closing valves in response to determining that the fluid communicated via the manifold has satisfied one or more conditions. Thus, after considering what Carr and Beuterbaugh teach as a whole, we are persuaded at this stage that Petitioner’s reasoning for combining those reference in the manner claimed has a rational underpinning, which is supported sufficiently by the cited evidence of record.” slip op. at 27
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claims in a civil action before the courts under 35 U.S.C. § 282(b), the terms in the challenged claims carry their ordinary and customary meaning, as understood by an ordinarily skilled artisan in the field of art at the time of the invention, in view of the patent’s specification and prosecution history. 37 C.F.R. § 42.100(b). Here, both parties contend that the challenged claims in this proceeding do not need to be construed further. Pet. 12; Prelim. Resp. 25. This is so, according to the parties, because a resolution in this proceeding does not hinge on a dispute about how the parties are interpretating any particular claim term or phrase. Id. Furthermore, neither Id. And we need only construe terms that are in controversy and only to the extent needed to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019); U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (holding claim construction is for “resolution of disputed meanings”). Therefore, at this stage of the proceeding, the ordinary and customary meaning of each of the challenged claim terms and phrases, viewed in the proper context of the intrinsic record, applies without any further construction.” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,560,770 - PTAB · May 31, 2024 · IPR2024-00235 · APJ Carl M Defranco · IPR · Institution
The Board instituted IPR on claims 1–6, 8, 10, and 14–16 based on a reasonable likelihood that claims 1 and 14 are anticipated by Young and obvious over Young and Norrie.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Provisur proposes that one of ordinary skill in the art typically would have had: (1) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working as an engineer (or similar role) on food processing and/or packaging systems (or in a similar field); or (2) at least seven years of experience working as an engineer (or similar role) on food processing and/or packaging systems (or in a similar field). Pet. 12. Weber does not contest Provisur’s framing of the level of ordinary skill in the art. Because Provisur’s proposed definition is consistent with the level of skill described in the ’321 patent and the prior art of record, we adopt it here for purposes of institution.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Provisur asserts that the claim terms should be construed “according to their plain and ordinary meanings as understood by [one of ordinary skill in the art] in view of the specification and prosecution history” and that “[n]o terms require an explicit construction to resolve the unpatentability 4 US 5,514,032, issued May 7, 1996 (Ex. 1004, “Young”). 5 US 4,979,269, issued Dec. 25, 1990 (Ex. 1005, “Norrie”). 6 US 6,929,540 B2, issued Aug. 16, 2005 (Ex. 1006, “Johnson”). 7 US 6,198,834 B1, issued Mar. 6, 2001 (Ex. 1007, “Belk”). controversy between the parties here.” Pet. 13. Weber appears to agree, its counsel stating in the parallel Missouri action that “most of [Weber’s] patent claims are plain and ordinary . . . [t]hey’re not difficult or complex claims or claim terms.” Ex. 1028, 5. There being no dispute, we need not expressly construe any claim terms at this stage, because we can decide the threshold question of institution without further construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where the construction is not material to the dispute).” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Weber requests that we deny institution under 35 U.S.C. § 314(a) due to the advanced state of the parallel Missouri action. See Prelim. Resp. 6– 17. Provisur disputes that discretionary denial is warranted (Pet. 73–77), but nonetheless submits a Sotera stipulation (Ex. 1029) in an effort to resolve the issue.8 In light of Provisur’s Sotera stipulation, we will not discretionarily deny institution under § 314(a). See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022), at 3, 7.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We disagree with Weber’s position, at least on the current record. Instead, we find that Provisur presents sufficient evidence that Young anticipates all elements of independent claims 1 and 14, including the disputed limitation requiring “automatic determination of the thickness of the fat cover.” In particular, Young’s imaging system 190 includes multiple cameras, including top plan camera 196, end view camera 197, and fat line camera 198, as well as controller 172 and real-time image processor 194. Ex. 1004, 17:34–59, 18:46–56, Figs. 2, 13. As described by Young, top plan camera 196 is primarily used to obtain “physical dimensions and characteristics” of the meat product, end view camera 197 is primarily used to determine the “height” of meat product and “to create a clear delineation along the top edge of the end” of the meat product, whereas fat line camera 198 is primarily used to determine the fat/lean separation line of the meat product. See id. at 17:59–18:39. Those disclosures by Young clearly contemplate determining specific dimensions of the meat product, and not simply identifying the fat/lean separation line, as Weber suggests. See Prelim. Resp. 19. To determine the “thickness” of the fat cover, Young’s imaging system has image processing routine 240, which “generates a fat/lean separation line and an edge line . . . representing the outer surface of the pork side proximate the fat/lean line” and uses those lines to calculate “the height, width, and length of the [meat product].” Ex. 1004, 23:12–25, 24:10–22. As part of routine 240, controller 172 uses that information to set the cutting profile of knife assembly 100 “so that the assembly follows a fixed distance from the separation line to provide the optimum fat cover for the loin.” Id. at 18:35–39 (emphasis added). Notably, according to Young, the “fixed distance” represents the “desired” thickness of fat that remains on the meat, after cutting, and “sufficiently keeps the loin from drying out, but doesn’t make the loin look too fat.” Id. at 20:60–66; see also id. at 10:39–42 (“Through control of the knife blade along several axes, assembly 100 preferably produces an optimum separation between loin and belly, with a desired fat covering left on the loin.” (emphasis added)). Young’s disclosure that image processing routine 240 determines a “fixed distance” from the loin/fat separation line at which to cut the meat product undoubtedly corresponds to the claimed “determination of the thickness of the fat cover . . . in a contactless manner.” See Ex. 1003 ¶¶ 104–112. Indeed, Young discloses specific dimensions for the desired optimum fat cover to remain on the meat—“a fixed distance (preferably 0.1 inch) from the fat/lean separation line 6.” Ex. 1004, 20:55–63.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 8,529,321 - Lululemon USA Inc. v. Nike, Inc.InstitutedPTAB · May 24, 2024 · IPR2024-00159 · APJ Carl M Defranco · IPR · Institution
The Board instituted IPR on claims 1–3, 7–9, and 14–20 because lululemon showed a reasonable likelihood that claim 8 is anticipated by Minami.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In sum, we conclude that lululemon demonstrates a reasonable likelihood that independent claim 8 is unpatentable as anticipated by Minami. lululemon also challenges dependent claims 9, 14, 15, and 19, pointing to content within Minami that satisfies each of the dependent limitations. Pet. 68–74. Nike offers no additional response to lululemon’s challenge of these dependent claims, except to rely on its argument against lululemon’s challenge of base claim 8. See Prelim. Resp. 31. On the current record, we find persuasive lululemon’s showing as to how Minami meets these dependent claims. Thus, we conclude that lululemon demonstrates a reasonable likelihood of proving that dependent claims 9, 14, 15, and 19 are unpatentable as anticipated by Minami and/or obvious over Minami. III. CONCLUSION Because lululemon meets the “reasonable likelihood” threshold for institution under 35 U.S.C.§ 314(a), we institute an inter partes review of all claims as challenged in the petition. See PGS Geophysical AS v. Iancu,” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“lululemon contends, and Nike does not dispute, that a person skilled in the art in the relevant time frame would have had “at least a bachelor’s degree in mechanical engineering, textile engineering, or similar technical degree and at least 3 years of experience working with knitted textiles for use in fabric-based articles, including apparel such as footwear” and such person’s “additional experience compensates for any differences in that person’s education as stated above.” Pet. 13–14 (citing Ex.1003 ¶¶ 33–35); see also Prelim. Resp. 14 (“Nike applies lululemon’s proposed level of skill in the art.”). lululemon’s proposed definition is consistent with the problems and solutions described in the ’046 patent and the prior art of record. Thus, for purposes of institution, we adopt the parties’ agreed-upon definition of the level of skill in the art.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We note another issue regarding the meaning of “tubular structures,” at least as it relates to the challenges relying on Good and Munsing. Although not addressed by the district court, the parties and their experts appear to agree that “tubular structures” comprise “co-extensive and overlapping knit layers that are closed to form the tube.” Compare Pet. 9 (quoting Ex. 1001, 4:58–61 (emphasis added)), with Prelim. Resp. 17 (“The parties agree that, under either construction, a ‘tubular structure’ must be a closed-loop structure that is shaped like a tube.”). Indeed, the specification of the ’046 patent clearly supports such an interpretation. See Ex. 1001, 17:43–46 (“at least one tubular course 804 may be joined by knitting to at least one web course 806 so as to form a loop and close tubular rib structure 126” (emphasis added)); id. at 20:3–5 (“course 1002 may form the second curved portion of tubular rib structure 126 that closes tubular rib structure 126 and forms a hollow tunnel” (emphasis added)); see also id. at 10:20–32 (“first curved portion 416 and second curved portion 418 may be knitted together to define the tube forming tubular rib structure 126” (emphasis added)). Thus, for purposes of institution and consistent with the parties’ positions, we construe the claimed “tubular structures” as at least having a closed periphery or circumference.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“in Good’s Figure 1 and highlighted in red. But, as Nike points out, Good’s rib portions 22 are “C-shaped knitted portions,” rather than “closed-loop tubular structures.” Prelim. Resp. 18–19 (citing Ex. 2002 ¶¶ 39–42). Indeed, when Good’s rib portions 22 are stretched—as shown in annotated Figure 4 of Good (reproduced above right)—it is clear that they are not tubular, but instead go from an essentially C-shaped curve (in Figure 3) to a relatively flat, linear configuration (in Figure 4). Nowhere does Good disclose that the ends of C-shaped rib 22 meet and remain in a closed configuration per our construction of “tubular rib structure,” as discussed above in Section II.B. In at least this way, Good’s C-shaped rib portions 22 differ from the claimed “tubular structures.”5 This is true regardless of whether the claimed “tubular structures” are construed to be hollow, because Good’s rib portions 22 are in fact hollow and nothing is disposed inside of them. Thus, we conclude that lululemon does not demonstrate a reasonable likelihood of prevailing on its Good-based ground.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,375,046 - Lululemon USA Inc. v. Nike, Inc.InstitutedPTAB · Mar 26, 2024 · IPR2023-01460 · APJ Carl M Defranco · IPR · Institution
The Board instituted IPR on claims 1–19, finding a reasonable likelihood that claims 1, 10, and 11 are obvious over Dua, Hong, and Lockwood.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“lululemon proposes, and Nike does not dispute, that one skilled in the art would have had “at least a bachelor’s degree in mechanical engineering, textile engineering, or similar technical degree and at least 3 years of experience working with knitted textiles for use in fabric-based articles, including apparel such as footwear.” Pet. 12–13 (citing Ex. 1002 ¶¶ 43–45); see also Prelim. Resp. 9 (“Nike applies lululemon’s proposed level of skill in the art.”). lululemon’s proposed definition is consistent with the problems and solutions in the ’484 patent and prior art of record. Accordingly, for purposes of institution, we adopt lululemon’s definition of the level of skill in the art.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“lululemon asserts that “the plain and unambiguous language of the claim[s] requires that the flat-knitted element having the claimed features must be formed from a flat-knitting process.” Pet. 13–14. Nike agrees with lululemon’s construction of the claims, i.e., “that the flat-knitted element, including the ‘domed, three dimensional structure,’ ‘must be formed from a flat-knitting process.’” Prelim. Resp. 9–10 (quoting Petition 13–14). In doing so, Nike explains that the claims do not cover “a flat knitted element with a three-dimensional structure formed only after the knitting process is complete.” Id. at 10. Thus, consistent with the parties’ reasoning, we construe the claims to require that the “central portion having a domed, three-dimensional structure” be formed during the flat-knitting process, and not afterward.” slip op. at 6
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Based on the current record, we credit the testimony of lululemon’s expert over that of Nike’s expert. lululemon’s expert points to Hong’s explicit disclosure that “knitting directly the 3D shapes can overcome fabric waste and diminish the labour cost inherent to the use of two-dimensional fabrics.” Ex. 1002 ¶ 91 (citing Ex. 1005, 5) (emphasis added). That disclosure clearly teaches or suggests that the 3D shape is accomplished as part of Hong’s flat-knitting process, and not as part of a post-knitting step. Hong makes this clear not only by its title, “The development of 3D shaped knitted fabrics . . . on a flat knitting machine,” but also throughout its description of the flat-knitting process: - “The use of a new electronic flat knitting machine (Shima Seiki SES 122FF) for producing three-dimensional shaped fabrics for technical purposes is described.” Ex. 1005, Abstract (emphasis added). - “This work describes the use of the new flat knitting machines to knit 3D structures.” Id. at 1 (emphasis added). - “It is not difficult to knit a spherical form in the SES 122FF flat knitting machine.” Id. at 4 (emphasis added). - “By exploiting the capacity of this [flat-knitting] machine, it is possible to knit more types of three-dimensional knitted fabrics.” Id. at 6 (emphasis added). Moreover, we find unpersuasive the testimony of Nike’s expert that Hong’s use of a 2D pattern in the knitting process necessarily means that the article being knitted is a 2D article as opposed to a 3D article. See Ex. 2002 ¶¶ 43–45. To the extent Hong uses a 2D pattern, it appears to be merely to establish the number of needles and courses to be used in the flat-knitting process that produces the actual 3D article. See, e.g., Ex. 1005, 4 (“it is necessary to start by transferring the three-dimensional concept to a two-dimensional pattern, . . . and then establishing the relation between the number of operating needles and the number of knitted courses.”). Nowhere does Hong appear to mention using the 2D pattern to make a 2D article. Rather, as discussed above, Hong is devoted entirely to describing a flat knitting machine that produces three-dimensional shaped fabric articles. We also find unpersuasive the testimony of Nike’s expert that “[t]he pattern shown in [Hong’s] Figure 5(2) . . . is not sufficient to produce the fully formed shape shown in Figure 5(3),” and, thus, one skilled in the art “would not know how to close the tubes shown in Figure 5(3).” Ex. 2002 ¶¶ 46–47. Hong explicitly states that “[d]uring knitting, the two smaller tubes are separately knitted with two cam systems.” Ex. 1005, 4. That disclosure, at this stage, persuades us that Hong teaches or suggests how its flat-knitting process closes the tubular knitted fabrics depicted in the figures. The parties are free to explore this issue further at trial.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“In sum, based on the preliminary record, lululemon sufficiently demonstrates that the asserted Dua-Hong-Lockwood combination teaches or suggests a “domed, three-dimensional structure” that is formed during the “flat knitting process,” as required by claims 1 and 11. Nike does not dispute lululemon’s showing as to the other elements of claims 1 and 11, nor does Nike dispute lululemon’s reason to combine the asserted references. See Prelim. Resp. 26–30. After reviewing lululemon’s showing, we conclude that the record evidence demonstrates a reasonable likelihood that claims 1 and 11 are unpatentable as obvious over the combined teachings of Dua, Hong, and Lockwood. Thus, lululemon meets the threshold for institution.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,730,484 - PTAB · Mar 20, 2024 · IPR2024-00224 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of claims 1–4, 6, 9, 10, 14–16, and 22, finding compelling evidence for anticipation and obviousness challenges and a reasonable likelihood for another obviousness challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the above reasons, we determine that compelling evidence shows that at least claim 1 is unpatentable as anticipated by Konishi and at least claims 1 and 22 are unpatentable as obvious over Konishi in view of either Linde or McLaughlin. We also determine that a reasonable likelihood exists that claims 1 and 22 are unpatentable as obvious over McLaughlin. And because “[e]qual treatment of claims and grounds for institution purposes has pervasive support in SAS,” we institute on all the claims as challenged in the Petition. See 37 C.F.R. § 42.108(a), (c); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (citing SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018)). IV. ORDER Accordingly, it is: ORDERED that an inter partes review of claims 1–4, 6, 9, 10, 14–16, and 22 of the ’487 patent is instituted; and” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“(1) the district court’s scheduled trial date of November 18, 2024, which falls approximately four-months before the projected deadline for a final decision here (Ex. 2003, 4); (2) the overlap of invalidity issues and the lack of a Sotera stipulation by Provisur (Ex. 2004, 3, 7; Pet. 81); and (3) the district court’s familiarity with the parties and the technology at issue due to the parallel action being the third in a line of cases between the parties dating back four years or so (Ex. 3002, 1). On the other hand, several factors weigh heavily against discretionary denial, such as: (1) the district court’s likelihood of granting a stay given it already did so for another patent, i.e., the ’109 patent, asserted by Provisur in the same action (as noted above in Section I.A) (Ex. 3001, Dkt. #95, #102); (2) the fact that the ’487 patent was only recently added to the parallel action via a counterclaim (Ex. 3002, 2) and the district court recently extended several deadlines such that fact discovery is still ongoing and expert discovery is yet to begin (Ex. 3001, Dkt. #355, #364, #365); and (3) the fact that moving forward here on the ’487 patent may greatly simplify the issues and ease the district court’s burden on what has evidently become an increasingly frustrating and complex case for the district court (see, e.g., Ex. 2001, 18:24–22:15). In the end, we find that the sum of these factors is a wash, effectively cancelling each other out and leaving us with no answer on the question of discretionary denial. Nonetheless, out of an abundance of caution and because Textor believes it is warranted, we will proceed with a “compelling merits” analysis of at least the Konishi-based challenges.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“conclusive, evidence that Konishi anticipates all elements of claim 1, including the “relaxing,” “tautening,” and “relative movement” limitations of disputed element 1[C2]. Contrary to Textor’s assertion, Provisur does not “completely ignor[e]” the claimed installation, i.e., “tautening,” limitation. Rather, it is Textor who ignores, and blatantly disregards, Provisur’s clear and overwhelming evidence of Konishi’s disclosure of that particular limitation, not to mention Konishi’s clear and undisputed disclosure of the other undisputed elements of claim 1. Most blatantly, Textor ignores Provisur’s detailed claim chart (as reproduced above), which clearly and concisely maps the recited “relaxing,” “tautening,” and “relative movement” limitations of claim 1 to paragraphs 33–41 of Konishi, as well as to Konishi’s Figures 8 and 9. Pet. 19. Although Textor acknowledges Provisur’s citation to Konishi’s paragraphs 33–35 for teaching the removal, i.e., “relaxing,” limitation of element 1[C2], Textor fails to acknowledge Provisur’s citation to Konishi’s other paragraphs, such as paragraphs 38–41, for teaching the “tautening” and “relative movement” limitations. See Prelim. Resp. 17 (addressing only Provisur’s citation to paragraphs 33–35 of Konishi). Those paragraphs in Konishi describe, in no uncertain terms, the process of “reassembl[ing]” the conveyor belt unit onto the subframe once “cleaning is completed.” Ex. 1004 ¶¶ 33–41. Textor’s complete and utter disregard of key aspects of Provisur’s reliance on Konishi is fatal to its argument that Provisur’s challenge “falls far short” of the “compelling merits” standard. Prelim. Resp. 19. The cited evidence plainly proves otherwise, indeed, to the point that Provisur is highly likely to prevail on its Konishi-based challenges. In particular, Konishi’s paragraphs 33–37 explain the removal process where “the timing belt 49 . . . becomes loose” so that the base 12 “still equipped with the conveyor belt 14 . . . can be separated from the frame 9” and “processed with predetermined cleaning,” while Konishi’s paragraphs 38–41 explain the installation process where the base 12 “is assembled to the frame 9” so that “a predetermined tension is applied to the timing belt 49.” Id.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“In other words, Textor’s sole basis for attacking the Konishi-based obviousness challenges is that the asserted combination lacks claim element 1[C2]. But, as discussed above in Section II.C.1, we reject Textor’s argument that Konishi lacks any teaching or suggestion of that claim element, instead, finding that Konishi discloses it explicitly. Thus, in the absence of any further rebuttal evidence from Textor, we find that Provisur’s Konishi-based obviousness challenges are more than strong enough on their merits to compel our review of at least claims 1 and 22.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,457,487 - PTAB · Feb 28, 2024 · IPR2023-01238 · APJ Brent M Dougal · IPR · Institution
The Board instituted IPR of claims 1–20, finding a reasonable likelihood that claims 1 and 11 are obvious over Van Vliet and Cable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we institute an inter partes review.1” slip op. at 2
- BurdenMixed
“Petitioner does not fully address this limitation. In particular, the Petition does not include a discussion of how the reels are connected to be fed from a manifold. See generally Pet. 26–27. Rather, the Petition argues that the hoses are stored on reels and that the hoses “are connected via fluid outlets 22 to receive fuel from [the] manifold.” Id. at 27. The Petition does say that the hoses are connected to the reels (id.), but does not attempt to establish any type of relationship between the reels and the manifolds. We further note that although indisputably Van Vliet’s schematic diagram shows flow passages through manifolds 36, 38 and hoses 24, nowhere do we discern where or how Van Vliet definitively discloses the reels 30 are connected to be fed from a manifold, as required by claim 1. Indeed, according to Petitioner’s own expert, one skilled in the art would understand that Van Vliet’s schematic diagram “is a high-level representation and is not intended to depict the physical appearance or form” of the system’s components. Ex. 1003 ¶ 132 n.138. At most, the diagram indicates the hose’s flow passage as wrapping around the reel. And, while Van Vliet describes that “hoses 24 are preferably stored on reels 30,” nowhere does it mention or otherwise suggest that the hoses are fluidly connected to the reels. Ex. 1004 ¶ 15. To the contrary, Van Vliet explains that “each hose 24 is connected to a fuel outlet 22 by a dry connection 60 and to a cap 26 by a dry connection 62.” Id. ¶ 22. In other words, Van Vliet’s hose 24 cannot be connected to reel 30 if the ends of the hose are connected to dry connections 60 and 62, which are not part of the reel. In that case, the hose’s flow passage does not run through the reel, and thus the reels 30 are not connected to be fed from a manifold, as required by claim 1. c) Conclusion For the above reasons, the Petition does not sufficiently identify how Van Vliet teaches or suggests the limitations of independent claim 1. 3. Claims 11 and 12 Similar to claim 1, claim 11 requires “a plurality of reels in the container, each said reel individually connected with the at least one manifold.” Ex. 1001, 10:64–65. The Petition relies on the analysis of claim 1 to address this limitation. Pet. 31–32. As noted above, the Petition does not attempt to establish a relationship between the reels and the manifolds, such as arguing that a reel and manifold in Van Vliet are connected. Thus, the Petition fails to show how claim 11 and its dependent, claim 12, would be anticipated by or rendered obvious over Van Vliet.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“In this regard, we preliminarily agree with Petitioner that Patent Owner’s “proposed construction ignores the[] express differences in the claim language chosen by the patentee.” Prelim. Reply 2 (citing Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1370 (Fed. Cir. 2018) (“[W]hen an applicant uses different terms in a claim it is permissible to infer that he intended his choice of different terms to reflect a differentiation in the meaning of those terms”) (citing Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1119 (Fed. Cir. 2004))). Had the patentee desired to limit the claims to fluid connections, the patentee could have used the explicit language throughout, instead of only in choice locations. An example of this is claim 1 where the claim requires the “reels are connected to be fed from the [] manifold.” Ex. 1001, 10:21–23. “To be fed” limits the type of connection to a fluid connection between the manifold and reel, while the word “connected” alone does not infer any particular type of connection.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“the motivation to combine “does not provide any reason in particular that is directed to motivating a POSITA to modify Van Vliet to have a fluid connection to its reels as in Cable.” Id. at 35. Patent Owner is mostly correct, as the majority of the section titled “Rationale and Motivation for Combining Van Vliet and Cable” is directed to aspects of Cable relied on for the dependent claims. However, this section also includes the following: “Incorporating Cable’s . . . reel configuration into Van Vliet’s mobile fuel delivery system would merely involve combining prior art elements according to known methods to yield predictable results.” Pet. 37 (citing Ex. 1003 ¶ 1752). Petitioner’s declarant testifies that Van Vliet and Cable describe similar systems for delivering fluid from a mobile trailer via hoses to multiple destinations. Further, the elements incorporated into Van Vliet from Cable are either already present in Van Vliet (e.g., reels) or were simple elements well-known in the art at the time of the ‘955 Patent. Incorporating Cable’s . . . reel configuration into Van Vliet’s mobile fuel delivery system would merely involve combining prior art elements according to known methods to yield predictable results. Ex. 1003 ¶ 175. Patent Owner does not contest Petitioner’s argument that using Cable’s reel configuration in Van Vliet’s system is a simple substitution that “merely involve[s] combining prior art elements according to known methods to yield predictable results.” Ex. 1003 ¶ 175; Pet. 37.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,974,955 - PTAB · Feb 28, 2024 · IPR2023-01236 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of claims 1–18 after finding a reasonable likelihood that claims 1–3 are obvious over Van Vliet and Coxreels.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Coxreels amount to “conclusory statements,” “hindsight over-generalization,” and “provide[] no underlying factual basis or citation.” Prelim. Resp. 34–36. Although we tend to agree with FAS that Permian’s first reason may be all those things, Permian’s second reason nonetheless carries the day at this preliminary stage. In particular, the current record supports Permian’s assertions that one skilled in the art “designing a system of Van Vliet would have looked to commercially-available reel components like those described in Coxreels . . . as a cost-effective and readily-available option” and “would have recognized the advantage of using Coxreels reel in Van Vliet’s mobile fuel delivery system.” Pet. 35–36 (citing Ex. 1003 ¶¶ 150–153). For instance, Permian proffers the testimony of its expert, which is unrebutted at this stage, that one skilled in the art would have selected Coxreels’ reel as a readily-available option because “Coxreels [was] specifically market[ed] for use in the Oil industry” and provides the advantage of “a non-crimping, flat smooth hose wrap.” Ex. 1003 ¶¶ 150– 152 (citing Exs. 1005, 1035); see also Pet. 38 (“Coxreels also describes a ‘low profile outlet riser, open drum slot design for flat smooth hose wrap’” (second emphasis added)). That evidence, at least on the current record, provides sufficient support for Permian’s reason to combine the teachings of Van Vliet and Coxreels with a reasonable expectation of success of arriving at the claimed invention. Aside from “motivation” for the asserted combination, FAS does not further dispute Permian’s showing as to how the combination of Van Vliet and Coxreels renders obvious the subject matter of claims 1–3. See Prelim. Resp. 34–39. After reviewing Permian’s showing, including Permian’s mapping of the disputed and undisputed claim elements, we find that Permian demonstrates a reasonable likelihood that challenged claims 1–3 are unpatentable as obvious over the combined teachings of Van Vliet and Coxreels. See Pet. 37–43. Thus, Permian meets the threshold for institution.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“FAS requests that we exercise discretion to deny the Petition under 35 U.S.C. § 325(d). See Prelim. Resp. 10–26. We decline. Contrary to FAS’s argument, we do not perceive Coxreels as “cumulative” of either Amann or Harman. Id. at 12–18. Coxreels clearly shows more details about the position of the inlet and outlet on the reel’s spindle than either of those references, which are merely cited but not relied on by the Examiner. See Ex. 2002, 25 (depicting fluid line 70 as terminating at the reel without further disclosure of whether the fluid line is connected directly to the reel or to hose 26); Ex. 2003, 2 (same). Thus, FAS does not persuade us that exercising our § 325(d) discretion is appropriate where, on their face, the asserted references do not appear to be cumulative of the references cited during prosecution.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Permian submits that one skilled in the art would have had either: (1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field as well as at least 2 years of academic or industry experience in the oil and gas industry, including well drilling, completion, or production, or (2) at least four years of industry experience in the oil and gas industry including well drilling, completion, or production. Pet. 16–17 (citing Ex. 1003 ¶¶ 75–78). FAS responds that “at this stage of the proceeding, [it] does not dispute the level of ordinary skill in the art.” Prelim. Resp. 6. Accordingly, for purposes of institution, we adopt the level of skill in the art as defined by Permian.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Claim construction begins and ends with the actual words of the claim. Here, by its plain terms, the claim language contemplates that the tube and the sleeve are separate and distinct structures where one “circumscribes” the other. Tellingly, rather than address FAS’s analysis of the claim language itself, Permian resorts to attacking the extrinsic dictionary definitions cited by FAS. Pet. Reply 2. But, of course, those dictionary citations do not define a tube and a sleeve in terms of being physically separate structures. Construing a claim limitation that includes multiple elements—such as the one disputed here—is not a matter of defining each term alone. Rather, it is a matter of construing those terms together in the context of the entire claim. Permian never addresses that context, which is part of the intrinsic record. Thus, without more, we agree with FAS that the claim language “the sleeve circumscribes the tube” would be rendered meaningless if the tube and sleeve were construed as encompassing the same structure. See Prelim. Resp. 9–10. Moreover, the fact that the tube and sleeve are listed separately in the” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,815,118 - PTAB · Feb 28, 2024 · IPR2023-01237 · APJ Carl M Defranco · IPR · Institution
The Board instituted IPR of claims 1–22 after finding a reasonable likelihood that claim 1 is unpatentable as obvious over Van Vliet and Cable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After reviewing the preliminary record, we determine that Permian demonstrates a reasonable likelihood that at least claim 1 is unpatentable as obvious over the combined teachings of Van Vliet and Cable. Thus, Permian meets the threshold for institution.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“references, FAS never acknowledges what one skilled in the art would have understood from their respective teachings. See id. at 20–23. Thus, Permian’s expert testimony is the only evidence of record on this point. See, e.g., Ex. 1003 ¶¶ 137–140, 169–173. FAS’s argument is also unavailing because there is no evidence that the differences identified by FAS are sufficiently different such that one skilled in the art would disregard Cable’s teachings. For instance, FAS argues that Van Vliet and Cable are different because they handle different fluids—for example, “fuel” versus “waste oil.” Prelim. Resp. 23–24. But FAS never explains why the type of petroleum product in each delivery hose would render the references so dissimilar that one skilled in the art would not consider them together when contemplating ease of access to the hoses. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007) (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill.”).” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We disagree. As discussed above, Permian’s position regarding claim element 1[h] is supported by the cited testimony of its expert, which stands unrebutted at this stage. See Ex. 1003 ¶¶ 169–173. We find that testimony credible, at least on the preliminary record. We find unpersuasive FAS’s argument that Permian’s expert testimony should be disregarded because the expert “does not profess to be a patent attorney . . . informed about any legal standard for ‘design choice.’” Prelim. Resp. 19–20. Permian is not offering its expert as a legal expert here, and, contrary to FAS’s argument, Permian’s expert actually does profess an understanding of the underlying “considerations” used in an obviousness analysis, such as “ordinary creativity,” “predictable results,” “simple substitution,” “obvious to try,” “design incentives,” or “some teaching, suggestion, or motivation in the prior art.” Ex. 1003 ¶¶ 29, 34. It is the distinct role of Permian’s expert to opine on those underlying fact considerations, and they do not need to be a patent attorney to do so, as FAS mistakenly believes. Thus, at this stage, Permian sufficiently shows that the asserted Van Vliet-Cable combination discloses claim element 1[h].” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 12–13 (citing Ex. 1003 ¶ 105). FAS responds, “at this stage of the proceeding, [it] does not dispute the level of ordinary skill in the art.” Prelim. Resp. 8. Permian’s proposed definition is consistent with the 1 US 2011/0197988 A1, published Aug. 18, 2011 (Ex. 1004, “Van Vliet”). 2 US 3,810,487, issued May 14, 1974 (Ex. 1005, “Cable”). 3 AFD PETROLEUM LTD., AFD Onsite Refueling Systems, http://web.archive.org/web/20150922012312/https://www.afdpetroleum.com /fuel/onsite_refuelling (Sept. 22, 2015), published Sep. 22, 2015 (Ex. 1007, “AFD”). 4 COXREELS, INC., Coxreels 1125 Series “Competitor” Hand Crank and Motorized Hose Reels, https://web.archive.org/web/20140408035634/ http://www.coxreels.com/products/hand-crank/1125-series, published Apr. 08, 2014 (Ex. 1008, “Coxreels”). 5 US 2018/0057348 A1, published Mar. 1, 2018 (Ex. 1006, “Lowrie”). problems and solutions in the ’805 patent and prior art of record. Thus, for purposes of institution, we adopt Permian’s definition of the level of skill in the art.” slip op. at 4
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 9,586,805
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.