• Johns Manville Corporation / Johns Manville, Inc. v. Knauf Insulation, Inc. And Knauf Insulation SPRLInstitution denied
  PTAB · Dec 17, 2015 · IPR2015-01598 · APJ Fred E Mckelvey · IPR · Institution

  The Board denied institution on both § 103 grounds because Petitioner did not clearly articulate the differences or show the proposed combinations would meet the challenged claims.

  RulingsInstitution decision

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

    “D. Claims 3, 16–21, 27, 34, 43, 45–49, 51–56, 63, and 73 1. Failure to articulate a clear difference Petitioner has failed to set out precise differences between Swift and the subject matter of the challenged claims. As we explained in declining to institute on Ground 2 in Johns Manville Corp. v. Knauf Insulation, Inc., IPR2015-01402 (PTAB Oct. 21, 2015) (Paper 18, pages 12–14), failure of a petitioner to set out differences in a § 103 context complicates consideration of a petition, both for the Board and the patent owner. Due to Petitioner’s failure to articulate a clear difference between the subject matter of the challenged claims and Swift, we decline to institute an IPR trial in this case. See also 35 U.S.C. § 312(a)(3) (petition identifies with particularity) and 37 C.F.R. 41.104(b)(4) (set out how claim is unpatentable).” slip op. at 9

  • BurdenNot shown unpatentable

    “those observations at best prove that one would have found it obvious to use an ammonium phosphate in place of ammonium sulfate described in Gogek Example 3. But, those observations in no way purport to prove that use of mono-ammonium phosphate would produce a block having the characteristics of the material of claim 27 as it depends from claim 1. We believe our concern, and that of Patent Owner, is more than theoretical. Gogek indicates a preference for using ammonium sulfate. Ex. 1004, col. 1:72. Once Example 3 is replicated with a change to something that would not be the preferred embodiment, it is not unreasonable to assume that a block made according to Example 3 with ammonium phosphate would have properties that might differ from those made in accordance with Example 3 with ammonium sulfate. Petitioner bears the burden of proof. We have not been given sufficient evidence to support a finding that it is likely that a block made from Example 3, modified by using mono-ammonium phosphate, would meet claim 27 as it depends from claim 1.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “The testimony in support of obviousness of the subject matter of claim 27 is that of Dr. Hirsekorn. Ex. 1006, ¶ 105: At the time of the purported invention of the ’089 Patent, it would have been obvious to a person of ordinary skill in the art to add a monoammonium phosphate to the binder composition of Example 3 of Gogek in order to reduce the corrosivity of the binder and preserve . . . manufacturing equipment. In the continuous manufacturing process disclosed in Swift, some manufacturing equipment will be in contact with the solution at all times, amplifying the need to include a corrosion inhibitor to extend the life of the manufacturing equipment. Accordingly, in order to prevent corrosion and “decrease the cost of manufacturing bound materials” (Ex. 1003, ¶ [0073]), it would have been obvious to a person of ordinary skill in the art to add a mono-ammonium phosphate as disclosed in Swift to the binder of Example 3 of Gogek to inhibit corrosion. Assuming arguendo that Dr. Hirsekorn’s observations are correct, those observations at best prove that one would have found it obvious to use an ammonium phosphate in place of ammonium sulfate described in Gogek Example 3. But, those observations in no way purport to prove that use of mono-ammonium phosphate would produce a block having the characteristics of the material of claim 27 as it depends from claim 1. We believe our concern, and that of Patent Owner, is more than theoretical. Gogek indicates a preference for using ammonium sulfate. Ex. 1004, col. 1:72. Once Example 3 is replicated with a change to something that would not be the preferred embodiment, it is not unreasonable to assume that a block made according to Example 3 with ammonium phosphate would have properties that might differ from those made in accordance with Example 3 with ammonium sulfate. Petitioner bears the burden of proof. We have not been given” slip op. at 11

  § 103 obviousness
  Patents in suitUS 8,940,089
• Coalition For Affordable Drugs V LLC. v. Biogen Ma Inc.Rehearing denied
  PTAB · Oct 23, 2015 · IPR2015-01136 · APJ Fred E Mckelvey · IPR · Rehearing

  The Board denied the Petitioner’s rehearing request, leaving in place its decision not to institute because the petition did not establish a reasonable likelihood of success on the asserted obviousness theories.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “to be” on page 9 of the Decision. We gave more weight to pre-litigation statement by Kappos than to post-litigation conclusory expert testimony. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (holding that Board did not abuse its discretion in giving more weight to documentary evidence vis-à-vis witness testimony). Furthermore, as Patent Owner points out, the word “appear” is also synonymous with “seem” (http://www.merriam-webster.com/dictionary/appear), and is consistent with our statement that what counts is what is described, not what appears or seems to have been tested. Decision, page 9.” slip op. at 3

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

    “Decision misapprehended or overlooked Dr. Linberg’s statement that the Kappos 2005 dose-ranging study would not have been undertaken unless BG00012 had been determined to be therapeutically active in treating patients with MS and that the Decision cites no substantial evidence for interpreting Kappos in a fundamentally different way. The reference to “substantial evidence” is curious since “substantial evidence” is an appellate standard of review for fact finding. The argument should have been that our finding was not supported by a preponderance of the evidence. In any event, Petitioner, in effect, attempts to reargue a case it attempted to make out in the petition and fails to point out how we misunderstood Dr. Linberg’s testimony. Petitioner failed to explain adequately in the Petition why one of ordinary skill in the art, based on Kappos, would have understood that DMF was useful for treating multiple sclerosis (MS).” slip op. at 3

  • Strike new argumentNew argument disregardedOther

    “stating a fact, i.e., that DMF had been determined to be effective, which is why there would have been a reasonable expectation of success. The argument concerning reasonable expectation of success, as pointed out by Patent Owner in the opposition, is new and therefore could not have been overlooked. Keebler Co. v. Murray Bakery Products, 866 F.2d 1386, 1388 (Fed. Cir. 1989) (prescience is not a required characteristic of the board and the board need not divine all possible afterthoughts of counsel that might be asserted for the first time on appeal). Moreover, in our view Petitioner has not pointed out where there is a clear statement in Kappos 2005 that those skilled in the art knew that DMF was useful in treating MS.” slip op. at 4

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “to be” on page 9 of the Decision. We gave more weight to pre-litigation statement by Kappos than to post-litigation conclusory expert testimony. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (holding that Board did not abuse its discretion in giving more weight to documentary evidence vis-à-vis witness testimony). Furthermore, as Patent Owner points out, the word “appear” is also synonymous with “seem” (http://www.merriam-webster.com/dictionary/appear), and is consistent with our statement that what counts is what is described, not what appears or seems to have been tested. Decision, page 9.” slip op. at 3

  None
  Patents in suitUS 8,399,514
• Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCAll claims unpatentable
  PTAB · Oct 22, 2015 · IPR2014-01554 · APJ Fred E Mckelvey · IPR · Final written decision

  Claims 1–8 and 11 are unpatentable because Joy, Tauster, and Rieck each anticipate them.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “On the record before us, we find that Dr. Farrauto is qualified to testify on the subject matter involved and to offer scientific opinions concerning that subject matter. Ex. 1007A ¶ 1–6. His testimony is consistent with the disclosures of the three references upon which his scientific opinions are based.” slip op. at 8

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

    “C. Anticipation To establish anticipation, a party must show by a preponderance of the evidence that a prior art reference expressly or inherently describes each claim limitation arranged as in the claim said to be anticipated. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334–35 (Fed. Cir. 2008); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008 ).” slip op. at 7

  Patent outcomesUS 6,037,307 unpatentable
  § 102 anticipation
  Patents in suitUS 6,037,307
• Flir Systems, Inc. v. Leak Surveys, Inc.All claims unpatentable
  PTAB · Sep 3, 2015 · IPR2015-00065 · APJ Trevor M Jefferson · IPR · Final written decision

  Claims 1–28 and 30–58 of the ’813 patent and claims 1–7 and 9–20 of the ’496 patent are unpatentable as obvious under § 103.

  RulingsFinal written decision

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

    “construction of “leak” deviates from the ordinary meaning of the term. PO Resp. 31–33. LSI relies on extrinsic evidence to supports its contention that the ordinary meaning of “leak” as recited in the ’813 and ’496 patents is limited to unintended or fugitive emissions. PO Resp. 33. LSI’s contention fails to recognize and distinguish the express teaching that chemicals of interest from flares, exhausts, vents or blow off valves are expressly described as uses of the claimed invention. Ex. 1001, 12:17–25. Indeed, one portion of the specification that LSI relies on to distinguish known versus unknown emissions, indicates that the invention is used to survey known emissions of gas from vents. Ex. 1001, 20:28–31; see PO Resp. 34. Although LSI admits that exhaust valves and flares will have known emissions and that the invention is used to survey these structures (PO Resp. 32), LSI argues that the term “leak” does not include the known emissions from these structures, as the ordinary use of the term is limited to fugitive or unknown emissions. We disagree, concluding that a person of ordinary skill in the art would understand that the specification describes a chemical of interest that is present in valves and exhausts that have known emissions. Ex. 1001, 12:22, 20:28–32.15 Under the broadest reasonable interpretation, LSI’s extrinsic evidence does not persuade us that a person of ordinary skill in the art would understand that “leak” as used in the specification and claims is limited to only unknown or fugitive emissions. Accordingly, on the full record, we maintain our construction of “leak” as including both fugitive and non-fugitive emissions.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for petitioner

    “PO Resp. 27. Specifically, LSI argues that “in the context of the full claims, this limitation should be construed to mean that an infringing method must operate to image gas leaks under real-world field conditions, without taking steps to artificially control any variables such as background temperature, wind, etc.” Id. at 25. LSI does not provide any argument or evidence that the patent describes the range of “real-world” versus “artificially controlled” conditions. Instead, LSI’s construction merely seeks to eliminate any conditions obtained in a lab or test setting from ambient conditions in other settings. We are not persuaded that the patent claims’ references to variable ambient conditions are limited to “real-world” conditions. As we previously noted, a person having ordinary skill in the art would understand that the claimed system and method would typically be used outdoors, where environmental conditions change, at the point where a leak may occur. Dec. ’411, 18. For example, in the summer, a chemical of interest may be present at higher temperature than the same chemical of interest in the winter. Id. Similarly, exhaust temperature may vary depending on conditions. LSI admits that “the claim does not specify what the normal operating conditions would be” under given circumstances. Oral Argument Transcript (“Tr.”) 62:23–24. LSI also admits that a smokestack, for example, would have “a different range of normal operating conditions.” Tr. 63:6–8. Because these conditions vary and the ’813 and ’496 patent specifications are silent on the range or limits of normal operating conditions, we are not persuaded by LSI’s attempt to exclude controlled environments from the claimed ambient conditions. See PO Resp. 26–27. We find no support for LSI’s contention that “variable ambient conditions” or “normal operating in variable ambient conditions” is limited to those instances that are not constrained or controlled in some artificial manner. Id. On the full record, we maintain our constructions of “produce a visible image of the chemical emanating from the component under variable ambient conditions of the area around the leak” as meaning “being able to produce a visible image under the ambient conditions of the area around the leak.”” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We are not persuaded by LSI’s arguments. The case LSI relies on, Virginia Innovation, is neither binding authority nor persuasive authority. The facts in Virginia Innovation can be distinguished from the facts of the present case, as the prior art in question in Virginia Innovation was not sufficiently shown to be generally on sale to the interested public, and was instead “restricted” to members of a publishing organization, which required membership dues for access. See 983 F. Supp. 2d at 737–38. Indeed, the district court in Virginia Innovation noted that there was no evidence that the document was available for sale to the general public outside of the publishing organization members. Id. In the present case, no membership fee or organization membership is required for access to the Merlin User’s Guide, which testimony shows was available and sold to the interested public as early as late 2000. See Ex. 1026 ¶¶ 17–19; Ex. 1024 ¶¶ 12–14; Ex. 1016 ¶ 12. Based on the complete record, we find by a preponderance of the evidence that distribution of the Merlin User’s Guide with the sale of the Merlin MID camera shows sufficient public accessibility and distribution. The cost to obtain the camera does not negate the evidence that the camera and accompanying user’s guide was available to the interested public. The testimony evidence shows that the Merlin User’s Guide was available for sale and distribution to the interested as early as 2000. Thus, FLIR has shown by a preponderance of the evidence that the Merlin User’s Guide was a publicly available printed publication.” slip op. at 22

  • Skill levelSkill level board ownOther

    “relevant experience with passive IR (infrared) systems in addition to the requisite engineering or physics education. Paper 2, 10–11 (IPR ’065); Reply 19–20. LSI contends that in addition to the requisite physics or optical science/engineering education a person of ordinary skill the art would have experience developing IR camera systems generally. PO Resp. 22. LSI’s contention is that FLIR’s definition of a person of ordinary skill is too narrowly focused on passive IR systems and is evidence of hindsight bias. PO Resp. 23. LSI’s arguments are contradictory and confusing; asserting not only that FLIR’s person of ordinary skill in art is overly narrow and defined as a “specialist in the [’813 and ’496 patents’] specific solution to the problem being solved,” but also that FLIR’s artisan “would not [] have been familiar with the technical problem being addressed by the invention.” PO Resp. 22 (emphasis omitted). Regardless, FLIR argues that the invention would have been obvious under either FLIR’s or LSI’s proposed person of ordinary skill in the art. Reply 20. Based on the full record, we find that the level of ordinary skill in the art is evidenced by the prior art references and the type of problems and solutions described in the ’813 and ’496 patents (Ex. 1001, 1:25–2:34), and includes experience in imaging of chemical gases using IR camera systems generally in addition to the requisite engineering, physics or optical science education. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Moreover, and apart from any differences of opinion between FLIR and LSI on the precise background and knowledge of one skilled in the art, the prior art itself is highly indicative of the level of skill. See id. (“the level of ordinary skill in the art . . . was best determined by appeal to the references of record”). In any event, we do not find that a person of ordinary skill’s understanding of the teachings of the prior art would differ if an ordinarily skilled artisan possessed knowledge of both active and passive IR systems rather than knowledge of passive IR systems alone. See PO Resp. 22–24.” slip op. at 23

  Patent outcomesUS 8,426,813 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,426,813
• Flir Systems, Inc. v. Leak Surveys, Inc.All claims unpatentable
  PTAB · Sep 3, 2015 · IPR2014-00434 · APJ Trevor M Jefferson · IPR · Final written decision

  Claims 1–28 and 30–58 of the ’813 patent and claims 1–7 and 9–20 of the ’496 patent are unpatentable as obvious over the instituted prior-art combinations.

  RulingsFinal written decision

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

    “construction of “leak” deviates from the ordinary meaning of the term. PO Resp. 31–33. LSI relies on extrinsic evidence to supports its contention that the ordinary meaning of “leak” as recited in the ’813 and ’496 patents is limited to unintended or fugitive emissions. PO Resp. 33. LSI’s contention fails to recognize and distinguish the express teaching that chemicals of interest from flares, exhausts, vents or blow off valves are expressly described as uses of the claimed invention. Ex. 1001, 12:17–25. Indeed, one portion of the specification that LSI relies on to distinguish known versus unknown emissions, indicates that the invention is used to survey known emissions of gas from vents. Ex. 1001, 20:28–31; see PO Resp. 34. Although LSI admits that exhaust valves and flares will have known emissions and that the invention is used to survey these structures (PO Resp. 32), LSI argues that the term “leak” does not include the known emissions from these structures, as the ordinary use of the term is limited to fugitive or unknown emissions. We disagree, concluding that a person of ordinary skill in the art would understand that the specification describes a chemical of interest that is present in valves and exhausts that have known emissions. Ex. 1001, 12:22, 20:28–32.15 Under the broadest reasonable interpretation, LSI’s extrinsic evidence does not persuade us that a person of ordinary skill in the art would understand that “leak” as used in the specification and claims is limited to only unknown or fugitive emissions. Accordingly, on the full record, we maintain our construction of “leak” as including both fugitive and non-fugitive emissions.” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We are not persuaded by LSI’s arguments. The case LSI relies on, Virginia Innovation, is neither binding authority nor persuasive authority. The facts in Virginia Innovation can be distinguished from the facts of the present case, as the prior art in question in Virginia Innovation was not sufficiently shown to be generally on sale to the interested public, and was instead “restricted” to members of a publishing organization, which required membership dues for access. See 983 F. Supp. 2d at 737–38. Indeed, the district court in Virginia Innovation noted that there was no evidence that the document was available for sale to the general public outside of the publishing organization members. Id. In the present case, no membership fee or organization membership is required for access to the Merlin User’s Guide, which testimony shows was available and sold to the interested public as early as late 2000. See Ex. 1026 ¶¶ 17–19; Ex. 1024 ¶¶ 12–14; Ex. 1016 ¶ 12. Based on the complete record, we find by a preponderance of the evidence that distribution of the Merlin User’s Guide with the sale of the Merlin MID camera shows sufficient public accessibility and distribution. The cost to obtain the camera does not negate the evidence that the camera and accompanying user’s guide was available to the interested public. The testimony evidence shows that the Merlin User’s Guide was available for sale and distribution to the interested as early as 2000. Thus, FLIR has shown by a preponderance of the evidence that the Merlin User’s Guide was a publicly available printed publication.” slip op. at 22

  • Skill levelSkill level board ownOther

    “relevant experience with passive IR (infrared) systems in addition to the requisite engineering or physics education. Paper 2, 10–11 (IPR ’065); Reply 19–20. LSI contends that in addition to the requisite physics or optical science/engineering education a person of ordinary skill the art would have experience developing IR camera systems generally. PO Resp. 22. LSI’s contention is that FLIR’s definition of a person of ordinary skill is too narrowly focused on passive IR systems and is evidence of hindsight bias. PO Resp. 23. LSI’s arguments are contradictory and confusing; asserting not only that FLIR’s person of ordinary skill in art is overly narrow and defined as a “specialist in the [’813 and ’496 patents’] specific solution to the problem being solved,” but also that FLIR’s artisan “would not [] have been familiar with the technical problem being addressed by the invention.” PO Resp. 22 (emphasis omitted). Regardless, FLIR argues that the invention would have been obvious under either FLIR’s or LSI’s proposed person of ordinary skill in the art. Reply 20. Based on the full record, we find that the level of ordinary skill in the art is evidenced by the prior art references and the type of problems and solutions described in the ’813 and ’496 patents (Ex. 1001, 1:25–2:34), and includes experience in imaging of chemical gases using IR camera systems generally in addition to the requisite engineering, physics or optical science education. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Moreover, and apart from any differences of opinion between FLIR and LSI on the precise background and knowledge of one skilled in the art, the prior art itself is highly indicative of the level of skill. See id. (“the level of ordinary skill in the art . . . was best determined by appeal to the references of record”). In any event, we do not find that a person of ordinary skill’s understanding of the teachings of the prior art would differ if an ordinarily skilled artisan possessed knowledge of both active and passive IR systems rather than knowledge of passive IR systems alone. See PO Resp. 22–24.” slip op. at 23

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

    “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the [inventor].” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We will not, however, “read into a reference a teaching away from a process where no such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). LSI’s evidence that the Merlin references disclose an emission based instrument and that Kulp and Strachan disclose an absorption based instrument, does not show that the references teach away from their combination. Indeed, LSI’s citation to the testimony of Dr. Martini does not demonstrate that the Merlin references discourage their combination with Strachan or Kulp. To the contrary, the record shows that a person of ordinary skill in the art would have combined the filter teachings of Strachan with the camera disclosed in the Merlin references. Ex. 1030, 50:1–16, 84:14–85:19, 87:16–88:19, 160:4–14; see Ex. 1036 ¶ 22. Although LSI’s witness, Dr. Hossack, disputes where the filter would have been placed on a Merlin camera, he does not dispute that Strachan discloses modifying a similar camera to detect gas. Ex. 1030, 50:1–16, 84:14–85:19, 87:16–88:19; 160:4–14. LSI’s argument that the combinations of the Merlin camera disclosed in the Merlin references would destroy the intended functionality of the camera and fundamentally alter its principle of operation is equally unpersuasive. See PO Resp. 49–52. LSI has not shown that modification of the Merlin camera as disclosed in the Merlin User’s Guide or Brochure would no longer be useful for imaging gas as described. We credit the testimony of Dr. Sandsten in finding that the Merlin MID operates on the principles of thermography before and after modification as disclosed in Kulp and Strachan. Ex. 1036 ¶ 74. In addition, modification of such a camera is expressly taught by Strachan and Kulp. Therefore, regardless of whether the possibility of modifying the Merlin MID camera was disclosed in the Merlin references, the combination of Kulp and/or Strachan with the Merlin references teaches one of ordinary skill in the art that the standard filter could be replaced in a passive IR camera, such as the Merlin MID, to improve imaging. See, e.g., Ex. 1030, 50:1–16, 84:14–85:19, 87:16–88:19; 160:4–14; Reply 15. Indeed, Strachan and Kulp both disclose that gas can be successfully imaged by optimizing the spectral selectivity of a passive IR system using a narrow bandpass filter tuned to the gases of interest. Kulp specifically discloses that a cold filter and Strachan includes a Dewar flask for cooling. Ex. 1008, 493; Ex. 1012, 270. LSI’s arguments regarding the modifications of the camera disclosed in the Merlin references fail to address the teachings of the Merlin references in combination with Kulp and/or Strachan. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (attacking references individually cannot demonstrate nonobviousness; rather, the test is what the combined teachings of the references would have suggested to one of ordinary skill in the art). slip op. at 35

  Patent outcomesUS 8,193,496 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,193,496
• Flir Systems, Inc. v. Leak Surveys, Inc.All claims unpatentable
  PTAB · Sep 3, 2015 · IPR2014-00411 · APJ Trevor M Jefferson · IPR · Final written decision

  Claims 1–28 and 30–58 of the ’813 patent and claims 1–7 and 9–20 of the ’496 patent are unpatentable as obvious over the listed prior-art combinations.

  RulingsFinal written decision

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

    “construction of “leak” deviates from the ordinary meaning of the term. PO Resp. 31–33. LSI relies on extrinsic evidence to supports its contention that the ordinary meaning of “leak” as recited in the ’813 and ’496 patents is limited to unintended or fugitive emissions. PO Resp. 33. LSI’s contention fails to recognize and distinguish the express teaching that chemicals of interest from flares, exhausts, vents or blow off valves are expressly described as uses of the claimed invention. Ex. 1001, 12:17–25. Indeed, one portion of the specification that LSI relies on to distinguish known versus unknown emissions, indicates that the invention is used to survey known emissions of gas from vents. Ex. 1001, 20:28–31; see PO Resp. 34.” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We are not persuaded by LSI’s arguments. The case LSI relies on, Virginia Innovation, is neither binding authority nor persuasive authority. The facts in Virginia Innovation can be distinguished from the facts of the present case, as the prior art in question in Virginia Innovation was not sufficiently shown to be generally on sale to the interested public, and was instead “restricted” to members of a publishing organization, which required membership dues for access. See 983 F. Supp. 2d at 737–38. Indeed, the district court in Virginia Innovation noted that there was no evidence that the document was available for sale to the general public outside of the publishing organization members. Id. In the present case, no membership fee or organization membership is required for access to the Merlin User’s Guide, which testimony shows was available and sold to the interested public as early as late 2000. See Ex. 1026 ¶¶ 17–19; Ex. 1024 ¶¶ 12–14; Ex. 1016 ¶ 12. Based on the complete record, we find by a preponderance of the evidence that distribution of the Merlin User’s Guide with the sale of the Merlin MID camera shows sufficient public accessibility and distribution. The cost to obtain the camera does not negate the evidence that the camera and accompanying user’s guide was available to the interested public. The testimony evidence shows that the Merlin User’s Guide was available for sale and distribution to the interested as early as 2000. Thus, FLIR has shown by a preponderance of the evidence that the Merlin User’s Guide was a publicly available printed publication.” slip op. at 22

  • Skill levelSkill level board ownDecided for patent owner

    “relevant experience with passive IR (infrared) systems in addition to the requisite engineering or physics education. Paper 2, 10–11 (IPR ’065); Reply 19–20. LSI contends that in addition to the requisite physics or optical science/engineering education a person of ordinary skill the art would have experience developing IR camera systems generally. PO Resp. 22. LSI’s contention is that FLIR’s definition of a person of ordinary skill is too narrowly focused on passive IR systems and is evidence of hindsight bias. PO Resp. 23. LSI’s arguments are contradictory and confusing; asserting not only that FLIR’s person of ordinary skill in art is overly narrow and defined as a “specialist in the [’813 and ’496 patents’] specific solution to the problem being solved,” but also that FLIR’s artisan “would not [] have been familiar with the technical problem being addressed by the invention.” PO Resp. 22 (emphasis omitted). Regardless, FLIR argues that the invention would have been obvious under either FLIR’s or LSI’s proposed person of ordinary skill in the art. Reply 20. Based on the full record, we find that the level of ordinary skill in the art is evidenced by the prior art references and the type of problems and solutions described in the ’813 and ’496 patents (Ex. 1001, 1:25–2:34), and includes experience in imaging of chemical gases using IR camera systems generally in addition to the requisite engineering, physics or optical science education. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Moreover, and apart from any differences of opinion between FLIR and LSI on the precise background and knowledge of one skilled in the art, the prior art itself is highly indicative of the level of skill. See id. (“the level of ordinary skill in the art . . . was best determined by appeal to the references of record”). In any event, we do not find that a person of ordinary skill’s understanding of the teachings of the prior art would differ if an ordinarily skilled artisan possessed knowledge of both active and passive IR systems rather than knowledge of passive IR systems alone. See PO Resp. 22–24.” slip op. at 23

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

    “Based on the full record, we find, by a preponderance of the evidence, that FLIR has provided articulated reasons with rational underpinnings for the proposed combinations of prior art. FLIR’s evidence shows that combinations of the Merlin Brochure with Strachan or the Merlin User’s Guide with Kulp is the combination of known elements that yield predictable results. See Paper 2, 17–18 (citing Ex. 1006 ¶ 55), 20–21 (citing Ex. 1006 ¶ 60) (IPR ’065); Paper 2, 37–38 (citing Ex. 1006 ¶ 81) (IPR ’411). In addition, we find by a preponderance of the evidence that the prior art demonstrates that it would have been an obvious design choice to one skilled in the art to replace the filters disclosed in Strachan and Kulp to target hydrocarbon gases of interest using the camera disclosed in the Merlin Brochure and Merlin User’s Guide. Paper 2, 38–39 (citing Ex. 1006 ¶¶ 81– 82) (IPR ’411). Accordingly, we do not agree with LSI that FLIR’s expert testimony is conclusory. PO Resp. 23, 61, 67–68.” slip op. at 39

  Patent outcomesUS 8,426,813 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,426,813
• Allscripts Healthcare Solutions, Inc. v. Mymedicalrecords, Inc.All claims unpatentable
  PTAB · Aug 26, 2015 · CBM2015-00022 · APJ Barbara A Parvis · CBM · Final written decision

  Claims 8–12 are unpatentable under § 101 as directed to nonstatutory subject matter; the Board did not reach the anticipation or obviousness grounds.

  RulingsFinal written decision

  • BurdenUnpatentable

    “Second, we consider the challenged claims as an ordered combination. Id. at 2359. On this record, when viewed as a whole, the challenged claims 8–12 simply recite the concept of user management performed by a generic computer. The challenged claims, for example, do not purport to improve the functioning of the computer itself. Nor do they improve another technology or technical field. Petitioner additionally relies on the Declaration of Dr. Bysinger (Pet. 20–28), who testifies that the recited elements including “server,” “storing files . . . in a computer readable storage medium,” and “user interface on a computing device” were well-known conventional concepts in 2005. Ex. 1008 ¶¶ 30–32. Dr. Bysinger additionally states “the abstract idea of privately accessing and managing patient medical records . . . [has] existed since at least the promulgation of HIPAA.” Id. ¶ 33. We credit Dr. Bysinger’s statements because they are consistent with the challenged claims. Challenged dependent claims 9–12 add nothing that alters the above analysis under § 101. Claims 9, 10, 11, and 12 recite additional limitations, such as wherein the access information comprises a password, receiving files from a second provider, wherein the files comprise image format files including wills and powers of attorney, respectively. Based on the present record, these comprise either generic limitations, such as using a password for access or sending a file in a known image format, or they relate to organizing human activities, such as user management of legal and financial documents, in addition to health records. Accordingly, we determine that Petitioner has shown by a preponderance of the evidence that claims 8–12 of the ’466 Patent are unpatentable under 35 U.S.C. § 101, because they are directed to non-statutory subject matter.” slip op. at 11

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “Petitioner asserts that claims 8–12 of the ’466 Patent are unpatentable under 35 U.S.C. § 101, because they are directed to the abstract concept of allowing individuals to manage and access their health records and other medical or legal files privately. Pet. 19. We agree with Petitioner that the claimed invention is directed to an abstract idea: privately managing files by the user. The preamble and all claim limitations of the challenged claims support this view of the claims, and the ’466 Patent consistently describes the invention as allowing an individual to control access to their medical records. See, e.g., Ex. 1001, 5:21–23. Management or control by the user or patient rather than by the health care provider is a method of organizing a human activity. On this record, the concept is an abstract idea, just like the basic hedging concept at issue in Bilski and the abstract idea of intermediated settlement in Alice.3” slip op. at 8

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “We conclude that receiving and sending data is a routine and conventional computer function. As explained in Alice, “use of a computer to obtain data . . . and issue automated instructions . . . are ‘well-understood, routine, conventional actitiv[ies]’ previously known to the industry.” Alice, 134 S. Ct. 2359; see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the information over a network—with no further specification—is not even arguably inventive.”). Restricting access by password also is routine and conventional. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 712–13, 717 (Fed. Cir. 2014) (determining that representative claim 1 is patent ineligible although it recites “a fourth step of restricting general public access.”). Similarly, providing a user interface is an insignificant activity. See Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1342–43 (Fed. Cir. 2013) (determining that claim 1 is patent ineligible although it recites a “claim folder,” which “manages claim information . . . by providing a structured and easy to use interface.”). Claim 8 includes additional recitations relating to how data is stored and managed on the server. We determine that these limitations recite generic functions performed by a generic server and computing device. Storing files is a basic computer function. See Alice, 134 S. Ct. at 2359 (“Using a computer to create and maintain ‘shadow’ accounts amounts to electronic recordkeeping—one of the most basic functions of a computer.”). Additionally, regarding the recitation in challenged claim 8 of “wherein the files are maintained on the server independently from any files maintained by the health care provider” (Ex. 1001, 17:18–19 (emphasis added)), we note the representative claim in Alice had a similar recitation. See Alice, 134 S. Ct. at 2352. In particular, in Alice, the representative claim included the following:” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Petitioner additionally relies on the Declaration of Dr. Bysinger (Pet. 20–28), who testifies that the recited elements including “server,” “storing files . . . in a computer readable storage medium,” and “user interface on a computing device” were well-known conventional concepts in 2005. Ex. 1008 ¶¶ 30–32. Dr. Bysinger additionally states “the abstract idea of privately accessing and managing patient medical records . . . [has] existed since at least the promulgation of HIPAA.” Id. ¶ 33. We credit Dr. Bysinger’s statements because they are consistent with the challenged claims.” slip op. at 11

  Patent outcomesUS 8,301,466 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Bilski
  Patents in suitUS 8,301,466
• Merial Limited v. VirbacRehearing denied
  PTAB · May 4, 2015 · IPR2014-01279 · APJ Fred E Mckelvey · IPR · Rehearing

  The Board denied the Patent Owner’s rehearing request without prejudice to presenting its patentability arguments in the Patent Owner’s Response on the merits.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Upon consideration of a Petition for Rehearing filed by the Patent Owner on 29 April 2015 (Paper 20), it is ORDERED that the Petition for Rehearing is denied without prejudice to Patent Owner presenting patentability arguments made in the Petition for Rehearing as part of its Patent Owner’s Response on the merits.” slip op. at 1

  None
  Patents in suitUS 8,501,799
• Merial Limited v. VirbacRehearing granted
  PTAB · Apr 15, 2015 · IPR2014-01279 · APJ Fred E Mckelvey · IPR · Rehearing

  Rehearing was granted and review instituted on claims 1–15 under § 103 over Huet ’333 combined with Saito and over Huet ’333 combined with Sirinyan.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “We agree with Petitioner that we overlooked the significance of that portion of Huet ʼ333 indicating that use of a cosolvent is optional. Upon consideration of the Petition for Rehearing1 and the Response, we grant the Petition for Rehearing and order institution of an inter partes review.” slip op. at 2

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

    “solvent must include any C1-C4 alcohol. The cosolvent, which can be absolute ethanol, isopropanol, or methanol (Ex. 1005, 6:19–20), is optional (Ex. 1005, 10:45).” slip op. at 11

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

    “We recognize in circumstances similar to those present in this case that it often is questioned why one skilled in the art would “pick and choose” particular ingredients (solvents and crystallization inhibitors in this case) where a reference describes several alternatives. There is an answer. First, the entire disclosure of Huet ʼ333 is in the public domain. One skilled in the art should be free to use any combination described by Huet ʼ333 in proportions that Huet ʼ333 characterizes as being within the skill of the art. Claim 1 of the ’799 patent presumptively removes from that public domain a portion of what is described by Huet ʼ333. Absent some unexpected result obtained by the subgenus of claim 1 of the ʼ799 patent vis-à-vis the broader genus described by Huet ʼ333, it is likely that the subject matter of claim 1 of the ʼ799 patent would have been obvious within the meaning of 35 U.S.C. § 103(a). Patent Owner, in responding on the merits, is free to present evidence of unexpected results.” slip op. at 11

  § 103 obviousness
  Patents in suitUS 8,501,799
• Corning Incorporated v. DSM IP Assets B.V.Some claims unpatentable
  PTAB · May 9, 2014 · IPR2013-00048 · APJ Scott E Kamholz · IPR · Final written decision

  Claims 5, 13, 17, 29, 33, 37, 45, and 49 are unpatentable; the remaining challenged claims are not shown unpatentable, principally because key material-property limitations were not proved.

  RulingsFinal written decision

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

    “The evidence supports a conclusion that the broadest reasonable interpretation of the term “moisture” is liquid water—that is, a condition of 100% relative humidity. The written description uses the term “moisture” in a context that suggests liquid water. See, e.g., Ex. 1001, 28:65-67 (applying a “wax/water slurry” to surface of sample film in order “to retain moisture”); 35:17-18 (applying heat to remove “moisture” from samples, suggesting removal of liquid water). Moreover, where the written description discusses water in vapor form, the inventors use the word “humidity” or “atmospheric moisture,” but not “moisture” alone. See, e.g., id. at 21:47 (referring to “atmospheric moisture”); 28:48, 60, 65 (referring to “humidity”). The ’189 patent further discloses that a “ribbon assembly can be buried under ground or water for long distance connections, such as between cities,” which is consistent with the proposition that an optical fiber coating must endure long periods of immersion in liquid water without delaminating. Ex. 1001, 67:43-45. In light of the context in which the term “moisture” appears in the specification, we conclude that the inventors used that term in its ordinary sense to refer to liquid water. The ’189 patent, thus, is directed to a coating composition that, after radiation cure, has sufficient adhesion to glass to prevent delamination in the presence of liquid water. We decline to resolve what temperature, or length of time of exposure to liquid water the coating must endure, without delaminating, in order to satisfy the claimed adhesion property. Resolving those conditions is not necessary to our analysis, which focuses on whether Corning’s wet adhesion test, conducted under conditions of 95% relative humidity, is probative of the extent to which a cured coating delaminates from glass when exposed to liquid water.” slip op. at 10

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

    “We do not agree with Corning that the ’189 patent defines the term “stripping temperature” as “about 90°C to about 120°C.” Rather, the patent indicates that stripping temperature is “typically” within this range. Ex. 1001, 13:32-34; accord id. at 14:21-25 (“[F]or most coating compositions the design ribbon stripping temperatures are usually about 90° C. to about 120° C., but may be different depending on the specific design parameters for the particular coating composition.”). This disclosure is too imprecise to serve as a definition. See Paulsen, 30 F.3d at 1480. The ’189 patent does refer repeatedly, however, to 90°C as an exemplary stripping temperature. E.g., Ex. 1001, 31:14-15, 31:41-42, 50:55. The ’189 patent also identifies 100°C as an exemplary stripping temperature, particularly in the context of measuring change in length. Id. at 14:46-47, 18:44-45. Whatever other temperatures this term encompasses, it certainly encompasses at least the ones specifically identified. See Oatey Co. v. IPS Corp., 514 F.3d 1271, 1276 (Fed. Cir. 2008) (“We normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification.”). The limitation requires no further construction.” slip op. at 11

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “plots is whether they exhibit a linear region of negative slope. Corning argues that they do, and the description in Exhibit 2015 that a region of the Shustack Example I plot showing a “linear relationship” was used to calculate slope bears out this argument. See Ex. 2015, 1. DSM, in contrast, argues that Corning’s plots lack “a substantially smooth linear region” but offers little evidence to support this assertion beyond Dr. Taylor’s statements that the plots “have no linear region from which to measure a slope” and that they lack any “substantial linear region.” See Resp. 31; Ex. 2032 ¶ 86. Dr. Taylor gives no credible explanation for the basis on which he reaches these conclusions. Even if Dr. Taylor provided some underlying facts or data for this conclusion, Dr. Taylor’s statements do not support DSM’s argument that there is no substantially smooth linear region. As between the conflicting evidence on this point, we credit Corning’s evidence, particularly from Exhibit 2015, in which Corning’s Mr. Gleason identifies the region of linear relationship as extending between displacements of 2.76 mm and 7 mm. DSM does not explain why this determination is invalid. We agree with Corning that the plots for Shustack Example I show a linear region of negative slope from 2.76 mm to 7 mm. To be sure, the signal is noisy, and the plots are jagged, but that does not mean that a linear relationship is not discernible in that region.” slip op. at 23

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundNot shown unpatentable

    “For these reasons, we credit Corning’s testing evidence over DSM’s. We are persuaded that Corning has shown that Shustack Example I and Szum ’928 Example 5B each inherently possess a fiber pull-out friction within the scope of every challenged claim. 2. “Sufficient Adhesion” As discussed above in section II.A.1, each of claims 1-4 and 9-12” slip op. at 27

  Patent outcomesUS 6,298,189 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,298,189

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.