• Cisco Systems, Inc. / Oclaro, Inc. v. Oyster Optics, LLCSome claims unpatentable
  PTAB · Jan 24, 2019 · IPR2017-01719 · APJ Rama G Elluru · IPR · Final written decision

  Claims 7, 8, and 12–20 are unpatentable as obvious; claims 1–6 and 9–11 were not shown unpatentable, principally because Nortel was not established as prior art.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “We agree that Petitioner cannot introduce new argument in a reply. Our regulations require the Petition to identify “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable.” 37 C.F.R. § 42.104(b)(3),(4). The Supreme Court also has acknowledged that “petitioner’s contentions [in a petition] . . . define the scope of the litigation all the way from institution through to conclusion.” SAS, 138 S. Ct. at 1357. Furthermore, Petitioner’s Reply is limited to responding to arguments raised in the Patent Owner Response. See 37 C.F.R. § 42.23(b). Petitioner provided the specific explanation of why Bauch satisfies the limitation “the electronic feedback loop being fed back to the electronic input data stream” for the first time in the Reply. In the Petition, Petitioner stated that “Petitioner[] do[es] not believe that construction of any claims is required for, or material to, the resolution of this IPR.” Pet. 22. In contrast, in its Reply, Petitioner provides for the first time an express claim construction, which is the basis of Petitioner’s explanation as to why the limitation at issue is met. Reply 1–2 (“Thus, the proper construction must include . . . .”); id. at 3 (“Even if this claim element were construed to include feeding the feedback loop directly into the input data, it should be construed to also include . . . .”); id. at 3–4 (“[T]he claim language and specification provide that the meaning of Claim 1[b] includes separate inputs of an exclusive-or gate that receive the feedback and the input data stream.”). Petitioner’s Reply, however, does not sufficiently explain why the assertion of this express construction is consistent with its “plain and ordinary” claim construction position in the Petition. See id. at 1–4. Given that an electronic input data stream is neither a location nor a circuit or device, with regard to having the electronic feedback loop “fed back to the electronic input data stream,” Petitioner should have provided its claim construction and corresponding explanation as to why Bauch satisfies the limitation in the Petition. We conclude that in the circumstances here, Petitioner providing its explanation based on its claim construction, for the first time, in its Reply is improper and not acceptable. A reply is not an opportunity to start anew, to fill in gaps or to remedy omissions in a petition.” slip op. at 23

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Our regulations require the Petition to identify “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable.” 37 C.F.R. § 42.104(b)(3),(4). The Supreme Court also has acknowledged that “petitioner’s contentions [in a petition] . . . define the scope of the litigation all the way from institution through to conclusion.” SAS, 138 S. Ct. at 1357. Furthermore, Petitioner’s Reply is limited to responding to arguments raised in the Patent Owner Response. See 37 C.F.R. § 42.23(b).” slip op. at 23

  • Skill levelSkill level board ownOther

    “B. Level of Ordinary Skill in the Art Neither party has proposed an articulation for the level of ordinary skill in the art. We determine that no express finding is necessary, and that the level of ordinary skill in the art, in this case, is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 18

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “not sufficiently explain, either in the Petition or the Reply, why Bauch’s disclosure of inputting the electronic feedback and the input data steam to separate inputs of an exclusive-OR gate teaches the claimed “the electronic feedback loop being fed back to the electronic input data stream.” We, therefore, are not persuaded that the limitation “the electronic feedback loop being fed back to the electronic input data stream” is met by Bauch, as proposed by Petitioner. Thus, Petitioner has not shown that Bauch teaches this limitation of claim 1. Petitioner does not rely on the additional references for this limitation of claim 1. Accordingly, we determine that Petitioner has not established by a preponderance of the evidence that claim 1 would have been obvious over Bauch and Heflinger. 3. Summary In sum, we determine that Petitioner has not established by a preponderance of the evidence that claim 1, and for the same reasons dependent claims 4 and 64, would have been obvious over Bauch and Heflinger. Likewise, for the same reasons, with respect to asserted Ground 3, we determine that Petitioner has not established by a preponderance of the evidence that claims 1 and 4–65 would have been obvious over the combination of Bauch, Heflinger, and Nortel.6” slip op. at 27

  Patent outcomesUS 6,469,816 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,469,816
• Pfizer, Inc. v. Chugai Pharmaceutical Co. Ltd.No claims unpatentable
  PTAB · Nov 28, 2018 · IPR2017-01358 · APJ Jacqueline T Harlow · IPR · Final written decision

  Claims 1–7, 12, and 13 were not shown unpatentable because Shadle did not establish the claimed molarity and conductivity limitations, and the obviousness showing was insufficient.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “and several years of postgraduate training or practical experience in a relevant discipline such as biochemistry, process chemistry, protein chemistry, chemical engineering and/or biochemical engineering, among others.” Pet. 6 (citing Ex. 1002 ¶ 28). Petitioner further contends that “[s]uch a person would also understand that protein purification is a multidisciplinary field, and could take advantage of the specialized skills of others using a collaborative approach.” Id. (citing Ex. 1002 ¶ 28). Patent Owner does not address Petitioner’s position on this matter and does not propose its own description for a person of ordinary skill in the art at the time of the invention. We agree with Petitioner, and adopt Petitioner’s description of the level of ordinary skill in the art at the time of invention of the ’815 patent. We also note that the applied prior art reflects a level of skill at the time of the claimed invention consistent with our determination. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

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

    “Consistent with the Institution Decision, we determine that “the plain language of the claims, as well as the specification of the ’815 patent, indicates that the term ‘molarity’ refers to the total concentration of solute present in the solution, rather than the concentration of one particular solute.” Id. at 10–11. The claims of the ’815 patent refer consistently to the overall molarity of solutions, and not of any particular solute in a given solution. For example, claim 1 requires “an acidic aqueous solution of low conductivity . . . having a molarity of 100 mM or less” (Ex. 1001, 12:42–44 (emphasis added)), and further recites that the molarity of the “adjusted sample is 100 mM or less” (id. at 12:45–47 (emphasis added)). Claim 2 9 similarly limits the molarity of the “acidic aqueous solution.” Id. at 12:50– 52. Notably, these claims do not identify any particular solute to which the term molarity refers; rather, the claims of the ’815 patent describe solutions having certain characteristics, of which solution molarity is one. As we stated in our Institution Decision: Similarly, the specification of the ’815 patent refers to the molarity of the complete solution, rather than one solute in that solution. See, e.g., id. at 4:61–64 (“As used herein, a ‘neutral aqueous solution . . .’ generally refers to an aqueous solution . . . which has a molarity of 0 to 100mM”), 5:28–31 (“an ‘acidic aqueous solution of low conductivity’ generally refers to an aqueous solution . . . , which has a molarity of 0 to 100 mM”). The file history of the ’815 patent likewise references the molarity of the solution, rather than of a given solute in the solution. See e.g., Ex.1005, 82 (“an important feature of the present invention is to adjust pH value of the solution, the eluate, to from 4 to 8 while maintaining the molarity of the solution at 100mM or less.”), 107 (“0.1 M buffer was used as an eluent, and 1 M Tris-HCl was used to adjust the pH of the eluted fraction, that is, the fact that 0.1 M and 1 M solutions were used means that the molarity of the eluted fration [sic] must be over 0.1 M (100 mM)”). Inst. Dec. 11.” slip op. at 9

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

    “In the Institution Decision, we concluded that the claim terms “conductivity” and “ionic strength,” for which Petitioner proffered constructions in its Petition (Pet. 30, 35–36), did not require express construction for purposes of this proceeding. Dec. 8. Neither Petitioner nor Patent challenges that determination. See PO Resp. 11–22; Reply, passim. In its Response, Patent Owner proposes constructions for several additional 11 terms. Namely, Patent Owner contends that the preambles of claims 1 and 13 should be construed as limiting (PO Resp. 12), “to form particles” should be construed to require that the solution becomes clouded (id. at 16), and “the treated sample containing a physiologically active protein,” as recited in claim 5, should be interpreted to mean “the sample resulting from performing the method of claim 1, which concludes with removing particles in step 3” (id. at 17). Because interpretation of these claim terms is not necessary to our anticipation or obviousness analyses, we need not construe them. See Nidec, 868 F.3d at 1017.” slip op. at 11

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

    “To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either expressly or inherently. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016). “To establish that a prior art reference inherently—rather than expressly— discloses a claim limitation, ‘the limitation at issue necessarily must be present, or [is] the natural result of the combination of elements explicitly disclosed by the prior art.’” Endo Pharm. Sols., Inc. v. Custopharm Inc., 894 F.3d 1374, 1381 (Fed. Cir. 2018) (alteration in original) (quoting PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014)). 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.” slip op. at 14

  Patent outcomesUS 7,927,815 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,927,815
• Pfizer, Inc. v. Chugai Pharmaceutical Co. Ltd.No claims unpatentable
  PTAB · Nov 28, 2018 · IPR2017-01357 · APJ Jacqueline T Harlow · IPR · Final written decision

  Claims 1–8 and 13 were not held unpatentable because Petitioner failed to prove anticipation by Shadle or obviousness over Shadle.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “According to Petitioner, a person of ordinary skill in the art at the time of the invention would have had “at least a graduate degree, such as a Ph.D., 6 and several years of postgraduate training or practical experience in a relevant discipline such as biochemistry, process chemistry, protein chemistry, chemical engineering and/or biochemical engineering, among others.” Pet. 6 (citing Ex. 1002 ¶¶ 28–29). Petitioner further contends that “[s]uch a person would also understand that protein purification is a multidisciplinary field, and could take advantage of the specialized skills of others using a collaborative approach.” Id. (citing Ex. 1002 ¶¶ 28–29). Patent Owner does not address Petitioner’s position on this matter and does not propose its own description for a person of ordinary skill in the art at the time of the invention. We agree with Petitioner, and adopt Petitioner’s description of the level of ordinary skill in the art at the time of invention of the ’289 patent. We also note that the applied prior art reflects a level of skill at the time of the claimed invention consistent with our determination. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 6

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

    “Consistent with the Institution Decision, we determine that “the plain language of the claims, as well as the specification of the ’289 patent, indicates that the term ‘molarity’ refers to the total concentration of solute present in the solution, rather than the concentration of one particular solute.” Id. at 10. The claims of the ’289 patent refer consistently to the overall molarity of solutions, and not of any particular solute in a given solution. For example, claim 1 requires “an acidic aqueous solution of low conductivity having a molarity of 100 mM or less” (Ex. 1001, 12:50–51 (emphasis added)), and further recites that the “molarity of the neutralized 9 eluate is 100 mM or less” (id. at 12:54 (emphasis added)). Claim 2 similarly limits the molarity of the “acidic aqueous solution.” Id. at 12:59–61. Notably, these claims do not identify any particular solute to which the term molarity refers; rather, the claims of the ’289 patent describe solutions having certain characteristics, of which solution molarity is one. As we stated in our Institution Decision: Similarly, the specification of the ’289 patent refers to the molarity of the complete solution, rather than one solute in that solution. See, e.g., id. at 4:61–66 (“As used herein, a ‘neutral aqueous solution . . .’ generally refers to an-aqueous [sic] solution . . . which has a molarity of 0 to 100mM”), 5:28–31 (“an ‘acidic aqueous solution of low conductivity’ generally refers to an aqueous solution . . . , which has a molarity of 0 to 100 mM”). The prosecution history of the ’289 patent likewise references the molarity of the solution, rather than of a given solute in the solution. See e.g., Ex.1005, 12 (“an important feature of the present invention is to adjust pH value of the solution, the eluate, to from 4 to 8 while maintaining the molarity of the solution at 100mM or less.”), 37 (“0.1 M buffer was used as an eluent, and 1 M Tris-HCl was used to adjust the pH of the eluted fraction, that is, the fact that 0.1 M and 1 M solutions were used means that the molarity of the eluted fration [sic] must be over 0.1 M (100 mM)”). Inst. Dec. 10–11.” slip op. at 9

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

    “In its Response, Patent Owner proposes constructions for several additional terms. Namely, Patent Owner contends that the preamble of claim 1 should be construed as limiting (PO Resp. 12), “to form particles” should be construed to require that the solution becomes clouded (id. at 17), and “the treated sample containing an antibody,” as recited in claim 5, should be interpreted to mean “the sample resulting from performing the method of claim 1, which concludes with removing particles in step 4” (id. 11 at 18). Because interpretation of these claim terms is not necessary to our anticipation or obviousness analyses, we need not construe them. See Nidec, 868 F.3d at 1017.” slip op. at 11

  • ExcludeOther

    “Petitioner asserts that Patent Owner untimely introduced Exhibits 2201–2207 for the first time during the deposition of Petitioner’s Reply declarant, Dr. Przybycien. Paper 36, 4. Petitioner additionally asserts that the challenged exhibits are inadmissible because they are irrelevant. Id. Patent Owner responds that the objected-to exhibits were timely introduced because they were used to challenge opinions presented by Dr. Przybycien for the first time in conjunction with Petitioner’s Reply. Paper 44, 2. Patent Owner further asserts that the exhibits are relevant because they illuminate gaps in Dr. Przybycien’s Reply testimony. Id. at 3. Because we have not relied on Exhibits 2201–2207, or Dr. Przybycien’s testimony regarding those exhibits in this Final Written Decision, we dismiss Petitioner’s Motion to Exclude Exhibits 2201–2207 as moot.” slip op. at 33

  Patent outcomesUS 7,332,289 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,332,289
• Kvk-Tech, Inc. / Flat Line Capital, LLC v. Silvergate Pharmaceuticals, Inc.Rehearing denied
  PTAB · May 7, 2018 · PGR2017-00039 · APJ Grace Karaffa Obermann · PGR · Rehearing

  The Board dismissed Patent Owner’s rehearing request as moot after granting the parties’ joint motion for adverse judgment and terminating the proceeding.

  RulingsRehearing decision

  • RehearingRehearing, deniedNot reached

    “our decision instituting a post grant review. Paper 11. On April 16, 2018, the parties filed a Joint Motion for Adverse Judgment. Paper 16 (“Joint Motion”). In the Joint Motion, Patent Owner informed the Board that, in the event that we grant the Joint Motion and terminate the proceeding, Patent Owner “considers its request for rehearing to be moot and withdraws its request.” Id. at 1. Concurrently herewith, we issue a Judgment and Final Written Decision that grants the Joint Motion and terminates the proceeding. Accordingly, on this record, we dismiss Patent Owner’s Request for Rehearing (Paper 11) as moot. It is ORDERED that Patent Owner’s Request for Rehearing (Paper 11) is dismissed as moot.” slip op. at 2

  • Adverse judgmentAdverse judgmentGranted

    “our decision instituting a post grant review. Paper 11. On April 16, 2018, the parties filed a Joint Motion for Adverse Judgment. Paper 16 (“Joint Motion”). In the Joint Motion, Patent Owner informed the Board that, in the event that we grant the Joint Motion and terminate the proceeding, Patent Owner “considers its request for rehearing to be moot and withdraws its request.” Id. at 1. Concurrently herewith, we issue a Judgment and Final Written Decision that grants the Joint Motion and terminates the proceeding. Accordingly, on this record, we dismiss Patent Owner’s Request for Rehearing (Paper 11) as moot.” slip op. at 2

  None
  Patents in suitUS 9,463,183
• Kvk-Tech, Inc. / Flat Line Capital, LLC v. Silvergate Pharmaceuticals, Inc.Adverse judgment
  PTAB · May 7, 2018 · PGR2017-00039 · APJ Grace Karaffa Obermann · PGR · Adverse judgment

  The Board entered adverse judgment against Petitioner after the parties agreed Petitioner had abandoned its challenge to claims 1–13.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “DISCUSSION A party may request entry of adverse judgment against itself at any time during a proceeding. See 37 C.F.R. § 42.73(b). On April 16, 2018, the parties filed a Joint Motion for Adverse Judgment against Petitioner. Paper 16 (“Joint Motion”). On May 3, 2018, the parties indicated that they “jointly continue to consent to entry of adverse judgment against” Petitioner as advanced in the Joint Motion. Paper 18, 1. The parties direct us to 37 C.F.R. § 42.73(b)(4), which we construe as an admission that Petitioner has abandoned the contest. Paper 16, 1; Paper 18, 1. CONCLUSION Under these circumstances, entry of judgment adverse to Petitioner is appropriate, and thus, granted. It is ORDERED that adverse judgment is entered against Petitioner under 37 C.F.R. § 42.73(b)(4); and” slip op. at 2

  • PTAB / AIA Trials › Motions to amend / substitute claimsGranted

    “On May 3, 2018, with our prior authorization, the parties filed a Joint Motion to Limit the Petition. Paper 18. Concurrently herewith, we issue an order granting the parties’ Joint Motion to Limit the Petition to remove the two grounds of unpatentability based on 35 U.S.C. § 112, leaving the challenge to claims 1–13 based on 35 U.S.C. § 103 as the sole ground remaining in dispute.” slip op. at 2

  None
  Patents in suitUS 9,463,183
• Alcatel-Lucent USA Inc. / Ciena Corporation et al. v. Oyster Optics, LLCInstitution denied
  PTAB · May 1, 2018 · IPR2017-02173 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because petitioner had not shown a reasonable likelihood of prevailing on any challenged claim, chiefly because it did not establish a reason to loop transmitted signals back to the receiver.

  RulingsInstitution decision

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

    “In each of independent claims 1, 14, 25, and 36, prior to the recitation of “the optical signals,” there is only one introduction of an element as “optical signals.” That element is the signals transmitted by the transmitter. Independent claims 1, 14, 25, and 36 each recite “the transmitter transmitting optical signals for telecommunication as a function of the input data.” Ex. 1101, 6:51–53, 7:32–34, 8:12–14, 8:57–59 (emphasis added). Nothing else is expressly introduced in any of independent claims 1, 14, 25, and 36 as optical signals. Although data carried by the second optical fiber also are optical signals, they are referred to in these claims simply as data and not as optical signals. Thus, in these claims there is clear antecedent basis for the recitation “the optical signals.” The recited term refers to optical signals transmitted by the recited transmitter on the transceiver card.” slip op. at 12

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

    “Petitioner’s explanation does not constitute reasoning with rational underpinning for routing the signals from the first optical fiber, transmitted by the recited transmitter on the transceiver card, to the second optical fiber to be sent back and received by the receiver on the same transceiver card. Notably, Petitioner uses the word “could” to support its reasoning. But the issue is not whether one with ordinary skill in the art “could” perform an operation but whether one with ordinary skill in the art, without hindsight based on the disclosure of the ’327 patent, would have reason to do so. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”); Fresenius USA, Inc. v. Baxter Intern., Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009). Petitioner has not articulated sufficient motivation for one with ordinary skill in the art, without hindsight based on the claims of the ’327 patent, to convert transmitted output into received input on the same transceiver card.” slip op. at 24

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

    “For the foregoing reasons, Petitioner has not shown a reasonable likelihood that it would prevail in establishing that claims 1 and 36 would have been obvious over the combination of Kitano and Choy. 4. Claims 2 and 9 Each of claims 2 and 9 depends directly from claim 1 and thus includes all the limitations of claim 1. 35 U.S.C. § 112, fourth paragraph. All of the Petition’s deficiencies in the context of claim 1 carry through to each of dependent claims 2 and 9. Accordingly, we determine that Petitioner has not shown a reasonable likelihood that it would establish unpatentability of claims 2 and 9 as obvious over Kitano and Choy.” slip op. at 27

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,620,327
• Praxair Technology, Inc. v. Entegris, Inc.All claims unpatentable
  PTAB · Mar 29, 2018 · IPR2016-01845 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–20 are unpatentable under § 103 over the four instituted combinations of Rendon, ATMI VAC or Trace, Gupta, and, for claims 3, 5, 8, and 10, Tempel.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We are not persuaded that the probative weight of Dr. Sinha’s testimony is diminished based solely on Patent Owner’s arguments alleging Dr. Sinha is biased and has a substantial interest in the outcome of these proceedings. To assess the probative value of an expert opinion, we must consider the following factors: (1) the interest of the expert in the outcome of the case; (2) the presence or absence of factual evidence supporting the expert’s opinion, and (3) the strength of any opposing evidence. See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294– 295 (Fed. Cir. 1985).15 Although “the opinion testimony of a party having a direct interest in the pending [proceeding] is less persuasive than opinion testimony by a disinterested party, it cannot be disregarded for that reason alone and may be relied upon when sufficiently [persuasive].” Id.” slip op. at 69

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “6. Constitutionality of Inter Partes Review Patent Owner argues that the Petition should be rejected because the proceeding violates Patent Owner’s constitutional rights under Article III and the Seventh Amendment of the U.S. Constitution. See PO Resp. 47. (citing U.S. CONST. amend. VII; Markman v. Westview Instruments, Inc., 517 U.S. 370, 377 (1996); McCormick Harvesting Mach. Co. v. Autlman & Co., 169 U.S. 606, 609 (1898)). Patent Owner acknowledges that the Supreme Court granted certiorari in Oil States Energy Servcs. LLC v. Greene’s Energy Grp., LLC, No. 16-712, 137 S. Ct. 2239 (2017) to consider the constitutionality of inter partes reviews. SeePO Resp. 47. Patent Owner seeks to preserve this issue pending the outcome in Oil States. See id. At this time, no court has found inter partes review unconstitutional, and we are bound by Federal Circuit precedent. See MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284 (Fed. Cir. 2015), cert. denied, 137 S. Ct. 292 (2016). The matter is before the U.S. Supreme Court, and Patent Owner’s arguments on this basis are premature.” slip op. at 70

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “February 26, 2010 (the earliest priority date for the ’134 Patent) “had at least a bachelor’s of science degree in chemistry, physics, chemical engineering, or materials science engineering with at least two years’ experience in ion implantation.” Pet. 16–17 (citing Ex. 1002 ¶ 79). Petitioner contends that a person of skill in the art “would have had knowledge of ion implantation considerations, including considerations affecting the effectiveness of ion generation and longevity of ion implantation equipment, and be familiar with gas handling related to ion implantation.” Id. at 17 (citing Ex. 1002 ¶ 79). Patent Owner does not contest Petitioner’s definition for a person of ordinary skill in the art. See PO Resp. 8. Moreover, Patent Owner agrees that a person of skill in the art “would have had knowledge of ion implantation considerations, including considerations affecting the effectiveness of ion generation and longevity of ion implantation equipment, and be familiar with gas handling related to ion implantation.” Id. (citing Ex. 2008 ¶¶ 49–51). We agree with and adopt Petitioner’s definition for a person of ordinary skill in the art.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

  Patent outcomesUS 8,237,134 unpatentable
  § 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 8,237,134
• Laird Technologies Inc. v. A.K. Stamping Company Inc.Institution denied
  PTAB · Mar 14, 2018 · IPR2017-02038 · APJ Eleni Mantis Mercader · IPR · Institution

  The Board denied institution on all challenged claims because Laird was not shown to be a prior-art printed publication, defeating the reasonable-likelihood showing for each § 103 ground.

  RulingsInstitution decision

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

    “shifts to the patentee. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). A second and distinct burden, the burden of production, or the burden of going forward with evidence, is a shifting burden. Id. at 1379. Petitioner has the initial burden of production, i.e., “going forward with evidence,” to establish the references relied upon are prior art. See id. (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008)). The burden of production then shifts to Patent Owner to go forward with evidence that either the prior art does not anticipate or make obvious, or, that it is not prior art because it is not entitled to an effective publication date that precedes the claimed invention’s filing date. See id. We address the date appearing on the front page of Laird and Exhibits 1015 and 1016 to determine whether, for purposes of this decision, Petitioner has met the initial burden of production to establish Laird as prior art—i.e., that Laird was a printed publication by being publicly accessible prior to the critical date of March 15, 2013. We note that Petitioner has not addressed where Laird was originally published and asserts that Laird is “a reference published by Petitioner.” Pet. 10. As best as we can determine, Laird appears to be a corporate document as evidenced by the logo “Laird TECHNOLOGIES” on the front cover. Ex. 1014, 1.” slip op. at 8

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (quoting In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989)). A reference is considered “publicly accessible” upon a satisfactory showing that the document has been “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence[] can locate it.” Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (citation and internal quotation marks omitted). “[W]hether information is printed, handwritten, or on microfilm or a magnetic disc or tape, etc., the one who wishes to characterize the information, in whatever form it may be, as a ‘printed publication’ . . . should produce sufficient proof of its dissemination or that it has otherwise been available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.” In re Wyer, 655 F.2d 221, 226 (CCPA 1981).” slip op. at 9

  • Obviousness (§103) › Analogous artNot reached

    “In consideration of the above analysis under sections i–vi, we are not persuaded, for purposes of this decision, that Petitioner has met its initial burden of production of evidence establishing Laird as applicable prior art. We determine Petitioner has not made a threshold showing that Laird qualifies as a prior art printed publication under § 102. Accordingly, we are not persuaded Petitioner demonstrated a reasonable likelihood that it would prevail in its challenge to patentability of claim 1 under 35 U.S.C. § 103(a) over Crotty and Laird.” slip op. at 17

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “that Laird, relied on for every proposed ground in the Petition, was publicly accessible prior to the priority date of the ’693 Patent. Prelim. Resp. 1, 14– 19. Under 35 U.S.C. § 311(b), a petitioner in an inter partes review may only challenge the claims of a patent based on “prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b). In an inter partes review, the burden of persuasion is on petitioner to prove “unpatentability by a preponderance of the evidence,” 35 U.S.C. § 316(e), and that burden never 1 Petitioner also points us to Exhibit 1024, the Declaration of the Petitioner’s Expert, Dr. Deborah D.L. Chung. Pet. 12 (citing Ex. 1024 ¶ 47). Dr. Chung, however, merely accepted counsel’s instruction that Laird is prior art. Ex. 1024 ¶ 47. Accordingly, there is no testimony by Dr. Chung that is relevant to the issue of whether Laird qualifies as prior art. shifts to the patentee. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). A second and distinct burden, the burden of production, or the burden of going forward with evidence, is a shifting burden. Id. at 1379. Petitioner has the initial burden of production, i.e., “going forward with evidence,” to establish the references relied upon are prior art. See id. (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008)). The burden of production then shifts to Patent Owner to go forward with evidence that either the prior art does not anticipate or make obvious, or, that it is not prior art because it is not entitled to an effective publication date that precedes the claimed invention’s filing date. See id.” slip op. at 7

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 9,538,693
• Resmed Limited / Resmed Inc. et al. v. Fisher & Paykel Healthcare LimitedNo claims unpatentable
  PTAB · Mar 7, 2018 · IPR2016-01724 · APJ Rama G Elluru · IPR · Final written decision

  Claims 1, 2, 5–8, 11–13, 21, 22, 26, and 27 were not shown unpatentable under § 103 because motivation to combine and reasonable expectation of success were not established.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had “a bachelor’s degree in electrical engineering or biomedical engineering or a related discipline with an understanding of circuit design principles, and a reasonable amount of relevant product design experience to develop a level of competence in the field of respiratory therapy, or an equivalent advanced education.” Pet. 18; Ex. 1003 ¶ 22. Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art. PO Resp. 9. We adopt Petitioner’s uncontested definition of the level of ordinary skill in the art. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an” slip op. at 6

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

    “For the purposes of this Decision, we determine that no claim term needs express interpretation. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 7

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

    “Tempered against Petitioner’s evidence of an alleged motivation to combine MR810, Gradon, and Edirisuriya is the uncertainty of operability of the proposed combination. With respect to each of the proposed circuit designs that Petitioner contends a skilled artisan would have been aware of to implement the combined teachings, a skilled artisan would have been faced with the real-world fact that there was uncertainty as to the operability of the design. First, the circuit designs that Petitioner proposes a skilled artisan would have utilized are not based on disclosure in the prior art. See Pet. Reply 5–7; Ex. 1032 ¶¶ 13–22. Petitioner does not rely on any prior art showing a circuit that allows a heater wire also to carry measurement signals. Pet. Reply 5–7; Ex. 2018, 19:6–21:17 (Petitioner’s expert, Mr. Bath, confirms that he did not locate any prior art references disclosing a circuit design in which the heater wire is utilized to carry electrical signals from measuring sensors). Moreover, Petitioner does not otherwise sufficiently rely on evidence that any of the proposed circuit designs would have been reasonably expected to be operable in any device, much less a humidification system. See Pet. Reply 5–7. Furthermore, Mr. Bath admits that these proposed designs are incomplete and would require additional non-trivial components. Ex. 2018, 89:13–90:21. He stated, “An engineer designing this system would need to take into account one change in the system by adjusting the rest of it to suit.” Id. at 89:16–18.” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner

    “We further find that Petitioner’s challenges rest on impermissible hindsight reconstruction of the disclosure in the ’641 patent. See Grain Processing Corp. v. Am.-Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983))). All of the circuit designs Petitioner proposes a skilled artisan could have used to implement the asserted combination are hindsight reconstructions based on the disclosure in the ’641 patent. The ’641 patent describes switching the heater wire between two modes of use— carrying temperature measurement signals and heating the gas delivery tube —by inserting a component in parallel with a temperature measuring thermistor to switch the current path of the heater wire between the thermistor and the parallel-connected component. Specifically, the ’641 patent discloses switching the current flowing in heater wire 21, 28 between the parallel paths of thermistor 23 and diode 22, depending on whether heater wire 21, 28 is being used to carry temperature measurement signals or heat gas delivery tube 3, respectively. Ex. 1001, 4:8–21. Each of Petitioner’s proposed circuits, drawn solely from the testimony of Mr. Bath and not supported by the prior art, has a similar purpose. Petitioner’s first proposed circuit contains a capacitor connected in parallel with a thermistor to switch the path of the heating wire current between the thermistor, when the heating wire is being used to carry temperature measurement signals, and the capacitor, when the heating wire is being used to heat the breathing tube. Ex. 1032 ¶¶ 15–16. Petitioner’s second proposed circuit contains a gate-todrain connected MOSFET connected in parallel with a thermistor to switch the path of the heating wire current between the thermistor, when the heating” slip op. at 25

  Patent outcomesUS 8,453,641 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,453,641
• Resmed Limited / Resmed Inc. et al. v. Fisher & Paykel Healthcare LimitedAll claims unpatentable
  PTAB · Mar 7, 2018 · IPR2016-01735 · APJ Tina E Hulse · IPR · Final written decision

  Claims 1–7, 9, 10, 13–15, 19, 20, 27, and 33 are unpatentable as obvious over Makin and Gradon.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “education.” Pet. 14–15; Ex. 1003 ¶ 22. Patent Owner does not contest the level of ordinary skill in the art in its Response. PO Resp. 5. We adopt Petitioner’s uncontested definition of the level of ordinary skill in the art. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 6

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

    “unexpired patent according to the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (affirming applicability of broadest reasonable construction standard to inter partes review proceedings). Under that standard, and absent any special definitions, we generally give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must be set forth with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We determine that it is unnecessary to expressly construe any claim terms for purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Makin’s temperature sensor by adding the sensor housing means of Gradon. Having considered the complete trial record, we find that a person of ordinary skill in the art would have had a reason to combine the temperature sensor of Makin with Gradon’s housing with a reasonable expectation of success to protect the temperature sensor from the flow of humidified gas in the system. See Ex. 1003 ¶ 42; Ex. 1032 ¶¶ 7–11. Bath, support our finding. For example, Gradon expressly provides a reason to combine, stating that the sensor housing means completely encases the thermistor “[t]o protect [the] thermistor.” Ex. 1005, 9:14–15. A person of ordinary skill in the art reading Gradon would have been motivated to apply that suggested housing to protect Makin’s similar temperature sensor. Ex. 1032 ¶ 7. We credit the testimony of Mr. Bath, who explains that the housing “protect[s] the thermistor from the flow of humidified gases while providing reliable and accurate temperature measurement.” Ex. 1003 ¶ 42. This testimony is consistent with Gradon’s disclosure, which refers to the need “to reduce or eliminate the occurrence of liquid water accumulation on the sensors.” Ex. 1005, 10:4–6. As Mr. Bath testified, protecting the thermistor “was a recognizable benefit that would have prompted a [person of ordinary skill in the art] to likewise implement a protective housing suitable for Makin’s system.” Ex. 1032 ¶ 8. Thus, we find that adding a housing to Makin’s temperature sensor amounts to no “more than the predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Nor are we persuaded by Mr. Darby’s testimony that Gradon would have directed one of ordinary skill away from a housing because Gradon teaches that housings reduce sensor accuracy. Ex. 2008 ¶ 50 (citing Ex. 1005, 9:34–38). Mr. Darby’s testimony is not persuasive because the cited portion of Gradon refers to the flow sensing means, which both parties agree cannot be covered by a housing to function properly. Tr. 17:10–15 (Petitioner); 47:1–8 (Patent Owner). In contrast, for the temperature sensing means, Gradon teaches that a housing is appropriate because the material is thin enough such that “the temperature reading obtained is still accurate.” Ex. 1005, 9:13–17. Thus, we are not persuaded that one of ordinary skill reading Gradon would have considered adding a housing to Makin’s temperature sensor to be disadvantageous, as Patent Owner claims. Instead, we find that a person of ordinary skill in the art would have had a reason to combine Gradon’s housing with Makin’s temperature sensor because such a person would recognize the benefit of protecting the temperature sensor from the flow of humidified gases without compromising the accuracy of the temperature reading. Ex. 1003 ¶ 42; Ex. 1005, 9:14–18.” slip op. at 14

  Patent outcomesUS 9,265,902 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,265,902

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.