• Nanobebe US Inc. v. Mayborn (UK) LimitedInstituted
  PTAB · Jun 16, 2023 · IPR2023-00467 · APJ Michael L Woods · IPR · Institution

  Instituted review of claims 14, 16, 17, and 19 on all asserted grounds; the Meyers and Sepehr obviousness challenge met the reasonable-likelihood threshold.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied

    “Here, the record does not support a finding that Comotomo and Nanobebe have any relationship, let alone a “significant” one. We credit the testimony of Petitioner’s co-founder and executive chairman, Mr. Lanternari, that Petitioner “was not involved in the preparation and/or filing of the Comotomo IPR petitions, nor was Comotomo involved in the preparation and/or filing of [Petitioner’s] petitions.” Ex. 1023 ¶¶ 1, 14. Additionally, Patent Owner accused Petitioner and Comotomo of patent infringement based on different products. See id. ¶ 14. This difference further distinguishes the facts from Valve Corporation. See Valve Corp. 9–10.” slip op. at 10

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

    “Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the Petition, the Preliminary Response, the Reply, the Sur-reply, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the Challenged Claims of the ’930 patent. Accordingly, we institute an inter partes review of claims 14, 16, 17, and 19 of the ’930 patent on the grounds asserted in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “engineering, industrial design, or similar technical field, and with 2 or more years of practical experience related to the design of infant feeding products or comparable industry.” Pet. 15–16 (citing Ex. 1005 ¶ 47). Petitioner further submits that “[a]dditional education could compensate for less practical experience and vice versa.” Id. at 16 (citing Ex. 1005 ¶ 47). Patent Owner does not dispute Petitioner’s definition of a POSITA. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it appears consistent with the ’930 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12

  • Prior constructionPrior construction adoptedDecided for patent owner

    “The Markman Order provided a thorough and reasoned explanation of the construction, citing evidence and argument submitted by both parties. See Ex. 2008, 12–15. For purposes of this Decision, we adopt the District Court’s construction, and conclude that “domed configuration” shall mean “wide circular bottom with an arc-shaped cross-sectional profile.” Id. at 15. If either party disagrees with this construction, that party shall explain why the construction is in error in its next substantive brief. 2. “teat portion” In the Markman Order, the District Court adopted the parties agreed- upon construction that “teat portion” shall mean “the entire part projecting generally perpendicular to the mouth of the vessel and disposed above the areola portion.” Ex. 2008, 5 (citing transcript from Markman hearing). For purposes of this Decision, we adopt the District Court’s construction. 37 C.F.R. § 42.100(b). If either party disagrees with this construction, that party shall explain why the construction is in error in its next substantive brief.” slip op. at 14

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 10,952,930
• Nanobebe US Inc. v. Mayborn (UK) LimitedInstituted
  PTAB · Jun 16, 2023 · IPR2023-00465 · APJ Ulrike W Jenks · IPR · Institution

  The Board instituted IPR on claims 21–24, 26, and 27, finding a reasonable likelihood of obviousness over Ishimaru and Kurkjian; it also instituted the Ishimaru–Atkin ground under the all-or-nothing rule.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied

    “Absent a “significant relationship” between Petitioner and Comotomo, on this record, the General Plastic factors are of “little probative value.” Cf. Samsung Elecs. Co. v. Scramoge Tech. Ltd., IPR2022-00284, Paper 12 at 12 (PTAB Jun. 22, 2022) (finding Factor 2 “of little probative value” where “there is no significant relationship” between petitioners). Furthermore, “[a]ny ‘implicit’ relationship created merely by challenging the same claims of the same patent with similar allegations of unpatentability is not the sort of ‘significant relationship’ contemplated by Valve [Corporation].” See Ebates Performance Mktg., Inc. v. IBM, IPR2022-00646, Paper 10 at 9 (PTAB Oct. 25, 2022).” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the invention (“POSITA” or “POSA”) “would have a B.S. in Mechanical or Industrial Engineering; Materials Science, Product Design, or equivalent field, with 3-5 years of academic or industry experience with fluid dynamics, or a comparable industry.” Pet. 15 (citing Ex. 1005 ¶ 47). Petitioner further submits that “[a]dditional education could compensate for less practical experience and vice versa.” Id. (citing Ex. 1005 ¶ 47). Patent Owner does not dispute Petitioner’s definition of a POSITA. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it appears consistent with the ’244 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). C. Claim Construction” slip op. at 11

  • Prior constructionPrior construction adoptedDecided for petitioner
  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted

    “(i) Domed Shape We are not persuaded by Patent Owner’s repeated arguments that Kurkjian is a narrow nipple and bottle design and thereby cannot meet the dome shaped limitation as recited in claim element 21(H) (Prelim. Resp. 29, 34, 38); and that Petitioner has not provided “argument and evidence as to how the prior art applies to the construed term ‘domed shape.’” See Prelim. Resp. 26. Petitioner identifies that Kurkjian has a nipple and collar design where “the edge of the collar that has the widest circumference” and a sloping outer contour, thereby, meeting the domed shape limitation. Pet. 41 (citing Ex. 1005 ¶ 415). Changes in the size and proportion do not render a product patentable unless it performs differently. See In re Rose, 220 F.2d 459, 463 (CCPA 1955) (Claims directed to a lumber package “of appreciable size and weight [ ] requiring handling by a lift truck” were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.). The ’244 patent Specification does not define “wide” but suggests that the base portion of the teat be shaped like a breast. Ex. 1003, 4:3–5 (“The shape of the teat is also similar to the human breast, the base portion 116 being shaped like a breast and having a wide, domed configuration.”), see also id. at 7:17, 8:19. Suggesting that the design is intended to be shaped like a natural breast says nothing about the requisite width of the dome because breasts come in all shapes and sizes. Increasing the diameter of Kurkjian’s bottle and corresponding nipple and collar would not be expected to change the function of the feeding bottle. We are not persuaded by Patent Owner’s contention that the” slip op. at 25

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR
  Patents in suitUS 11,207,244
• Yita LLC / Jinrong (SH) Automotive Accessory Industrial Development Co. Ltd. v. Macneil IP LLCInstituted
  PTAB · Jun 13, 2023 · IPR2023-00173 · APJ Arthur M Peslak · IPR · Institution

  The Board instituted review of claims 1–6 on the asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

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

    “whether to institute an inter partes review under 35 U.S.C. § 314(a). See also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2

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

    “We need not explicitly construe the term “vehicle floor tray” or any other claim term for the purposes of this decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). However, we offer the following reasons for not adopting Patent Owner’s proposed construction. Claim 1 recites the term “vehicle floor tray” but does not recite any specific structural details of the tray. Ex. 1001, 19:42–60. Thus, nothing in the claim language suggests the structural aspects of a vehicle floor tray included in Patent Owner’s proposed construction.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering, industrial design, or a closely related field, or equivalent formal training, education, or practical experience in a field relating to product design, CAD, or manufacturing.” Pet. 13 (citing Ex. 1003 ¶¶ 27–28). Petitioner further contends that the person of ordinary skill in the art “would also have a minimum of three to five years of experience in plastics engineering, CAD, manufacturing, plastic product design, or a related industry,” but that “a higher level of training or practical experience might make up for less education, and vice-versa.” Id. Patent Owner does not, at this stage of the proceeding, dispute Petitioner’s definition of the person of ordinary skill in the art. Prelim. Resp. 12. For the purposes of this Decision, we apply Petitioner’s proposed level of skill in the art because it appears consistent with the problems addressed in the ’917 patent and the prior art.” slip op. at 12

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “In his testimony concerning background prior art, Mr. Perreault relies on two prior art patents that disclose “floor mats” described similarly to Patent Owner’s description of a “vehicle floor tray.” See Ex. 1003 ¶¶ 29–30 (citing Ex. 1013 (“Bailey”); Ex. 1015 (“Tyler”)). Bailey describes a “floor mat” that is “molded or otherwise preformed into a tray-like shape which conforms to the contour of a portion of the carpeted automobile floor. The mat is dimensioned and configured to nest within and abut against the sides of a carpeted floor well of the vehicle.” Ex. 1013, 2:37–42, Fig. 6. Tyler describes “contoured vehicle floor mats” that “mate[] with the vehicle floorboard to hold the mat in place.” Ex. 1013, code (57), 1:52–54. Based on these exhibits, we find that Mr. Perreault’s testimony is not conclusory and not based on an improper definition of floor tray. Based on the present record and after considering Patent Owner’s contentions, Petitioner sufficiently establishes that Stanesic discloses the subject matter of the preamble. In particular, Stanesic discloses “a tray-like central area” and “the raised wall 22 has two walls that rise about one to about two inches from the base 15” (Ex. 1005, 2:61–62), which sufficiently supports Petitioner’s contention that Stanesic discloses, or at least suggests, a vehicle floor tray.” slip op. at 22

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,138,917
• Yita LLC / Jinrong (SH) Automotive Accessory Industrial Development Co. Ltd. v. Macneil IP LLCInstituted
  PTAB · Jun 13, 2023 · IPR2023-00172 · APJ Arthur M Peslak · IPR · Institution

  The Board instituted inter partes review of claims 1–6 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would be unpatentable.

  RulingsInstitution decision

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

    “whether to institute an inter partes review under 35 U.S.C. § 314(a). See also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “and Cicotte, the dispute for the first prong of the Advanced Bionics framework revolves around whether Rothkop is cumulative of Exhibits 2001, 2002, 2003, and 2004 cited in an IDS considered by the Examiner. Petitioner does not dispute that Cicotte is cumulative of Exhibit 2005 or 2006. See Prel. Reply. For the purposes of the § 325(d) analysis, we will assume, without deciding, that Rothkop is cumulative of at least one of the references Patent Owner relies on, i.e., Exhibits 2001, 2002, 2003, and 2004. We, thus, assume, without deciding, that the first prong of the Advanced Bionics framework is satisfied and move to the second prong. 4. Advanced Bionics Framework, Prong Two: Has Petitioner Demonstrated that the Office Erred in a Manner Material to the Patentability of the Challenged Claims? The ’655 patent issued from an application filed on August 6, 2014.” slip op. at 45

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

    “For the following reasons, we do not adopt Patent Owner’s proposed construction. Claim 1 recites a “vehicle floor tray” but does not recite any specific structural details of the tray. Ex. 1001, 19:46–2:2. Thus, nothing in the claim language suggests the aspects of a vehicle floor tray included in Patent Owner’s proposed construction. Patent Owner does not direct us to an explicit lexicographic definition of the term “vehicle floor tray” in the Specification of the ’655 patent. Rather, Patent Owner relies on descriptions of aspects of the embodiment disclosed in Figure 1 of the ’655 patent. For example, the ’655 patent generally describes that “[f]loor trays have sidewalls.” Ex. 1001, 1:58. The ’655 patent states that in an “aspect” of the invention, “a vehicle floor tray has a central panel for the placement on the floor of a vehicle foot well, and at least first and second upstanding panels.” Id. at 5:28–30. In column 7, the ’655 patent describes that “[d]isposed around the central or floor panel 102 are a series of upstanding side panels, which will vary in number and configuration from one vehicle model to the next.” Id. at 7:47–49 (emphasis added). These portions of the Specification suggest that the term “vehicle floor tray” should not be limited to any particular number of side panels or any particular configuration such as the side panels are joined to the floor panel and each other. In the Summary of the Invention, the ’655 patent discloses “a vehicle” slip op. at 12

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

    “For the following reasons, Patent Owner’s contentions are unavailing based on the present record. First, as discussed above, Patent Owner’s attempt to draw a distinction between floor trays and floor mats is unavailing based on the present record and undercut by its own exhibits describing Patent Owner’s vehicle floor trays as “mats.” See Ex. 2010; Ex. 2012; Ex. 2013; Ex. 2014. Second, as discussed above, the fact that Petitioner has not shown that someone previously scanned a vehicle footwell is unavailing because this challenge is based on obviousness, not anticipation. Third, the sentence in Rothkop that Patent Owner contends discloses a kind of scanner, not what is to be scanned, is “[t]he data input device may comprise a scanner 12 for scanning a physical part such as an existing seat, frame, or vehicle.” Ex. 1006, 4:61– 63. Based on the present record, we do not agree that this sentence discloses a type of scanner. Fourth, Patent Owner’s arguments concerning the claimed invention creating a new product versus reverse engineering an existing product in Rothkop raises potential fact questions that are best resolved at trial based on a fully developed record. Petitioner provides numerous reasons why a person of ordinary skill in the art would have been motivated to combine Stanesic, Rothkop, and Cicotte in such a manner that teaches or suggests all limitations of claim 1. Pet. 29–34. Petitioner sufficiently supports this reasoning with the testimony of Mr. Perreault that he supports with reference to Stanesic, Rothkop, Cicotte, and other references showing the background art. Ex. 1003 ¶¶ 147–157. Further, Patent Owner does not dispute Petitioner’s conclusion that the combination of Stanesic, Rothkop, and Cicotte “would be nothing more than applying known techniques . . . to a known method of producing a custom-fit vehicle floor tray . . . that is ready for improvement, yielding the predictable result of generating a custom-fit floor tray.” Compare Pet. 33, with Prelim. Resp. Based on the present record and after considering all of Patent” slip op. at 32

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,899,655
• Walt Disney Parks And Resorts U.S., Inc. v. Raven Sun Creative, Inc.Instituted
  PTAB · Apr 3, 2023 · IPR2022-01605 · APJ Michael L Woods · IPR · Institution

  The Board instituted IPR of claims 1 and 2 on all asserted grounds, finding a reasonable likelihood that both claims would have been obvious over Schreibfeder.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. 5 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. Interim Procedure 9 (emphasis added); see also PO Sur-Reply 5 (acknowledging that Petitioner stipulated after the Patent Owner’s Preliminary Response was filed). Under the Interim Procedure, “the PTAB will not deny institution of an IPR . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). This is what Petitioner stipulates. Ex. 1021; see Reply 4 n.1 (stating that Petitioner is filing a “Sotera stipulation,” which “precludes discretionary denial” under the Interim Procedure); Sur-Reply 5. Accordingly, we decline to deny institution under Fintiv.” slip op. at 8

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “an inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under Section 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). Turning to the first prong of Advanced Bionics, neither Schreibfeder nor Threlkel was cited during prosecution of the ’028 patent. See Ex. 1002; see also Ex. 1001, code (56). Further, we do not find anything in the prosecution history of the ’028 patent, such as an office action on the merits, that suggests the Examiner considered “the same or substantially the same prior art” as these references. See Ex. 1002. We disagree with Patent Owner that the Examiner considered “the same prior art” simply because Schreibfeder or Threlkel may have fallen within the same classes searched by the Examiner. See Sur-Reply 3. We are aware of no authority, and Patent Owner cites none, to support this position. Because we do not find that the same or substantially the same art or” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had a minimum of a B.S. in engineering or a related field, as well as four to six years of industry experience designing or building amusement rides or motion simulator systems. Higher education by way of advanced degrees in a related field could substitute for years of experience. Pet. 6 (citing Ex. 1003 ¶ 43). Patent Owner does not dispute Petitioner’s definition of a POSITA. See generally, Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as we find that it is consistent with the ’028 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11

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

    “controller” “should be construed as ‘one or more computer-based devices that issue control signals to engage and control the projector, the motor system, and actuator system.’” Pet. 7 (citing Ex. 1020). Patent Owner similarly proposes that the term “controller” should be construed as “one or more computer-based devices that issue control signals to engage and control the projector, the motor system, and actuator system.” See Prelim. Resp. 12. As both parties propose identical interpretations of the term “controller” (compare Pet. 7, with Prelim. Resp. 2), and Patent Owner at this time does not dispute that the asserted prior art (Schreibfeder) teaches the recited “controller,” this term is not in controversy, and we do not construe it in this Decision. See infra Section III.E.3.h; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). slip op. at 12

  Claim construction§ 103 obviousnessDiscretionary denialcites Graham
  Patents in suitUS 9,266,028
• Unified Patents, LLC v. Virtual Creative Artists, LLCInstituted
  PTAB · Mar 22, 2023 · IPR2022-01263 · APJ Paul J Korniczky · IPR · Institution

  The Board instituted IPR of claims 1, 2, 4–7, 10–12, 15, 16, 21, and 22 because Petitioner showed a reasonable likelihood that claim 1 is obvious over Ziff, Saito, and Ferrel.

  RulingsInstitution decision

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

    “authority to institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). After considering the Petition and other evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of showing the unpatentability of at least one of the challenged claims. Thus, we institute an inter partes review on all challenged claims on all asserted grounds. 37 C.F.R. § 42.108(a). Specifically, we grant Petitioner’s request to institute an inter partes review of claims 1, 2, 4–7, 10, 12, 15, 16, 21, and 22 of the ’576 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner states a person of ordinary skill in the art would have had (1) at least an undergraduate degree in electrical engineering, computer science, a closely related scientific field, or similar advanced post-graduate education in this area; (2) a working knowledge of electronic content distribution systems; and (3) at least two years of experience with such systems. Additional education may substitute for lesser work experience and vice-versa. Pet. 10 (citing Ex. 1003 ¶¶ 71–74). We adopt Petitioner’s definition of the level of ordinary skill for the purposes of institution.” slip op. at 8

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

    “In its Petition, Petitioner proposes that the “claim terms of the ’576 Patent [should] be given their ordinary and accustomed meaning.” Pet. 10– 11. For purposes of institution, we determine that we do not need to expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 9

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

    “According to Petitioner, because Ziff’s CPU 42 executes its software applications and Saito teaches a distributed processor system for cooperatively executing a plurality of disparate programs, a skilled artisan would have been motivated to make the simple modification allowing Ziff’s non-distributed subsystems to execute on distributed processors as taught by Saito. Id. at 37. Petitioner explains that “Ziff’s various software components are subsystems in a cooperative system, but Ziff does not expressly teach that each software application—which perform the respective functions of Ziff’s story creation subsystems—are implemented on separate processors.” Id. at 20. Petitioner states that, while Ziff expressly teaches its distinct subsystems are executed on the same CPU, a person of ordinary skill in the art would have been motivated to utilize the well-known benefits of Saito’s distributed processing architecture to implement Ziff’s subsystems. Id. at 20–21 (citing Ex. 1003 ¶¶ 104–114; Ex. 1004, 6:37–41). Petitioner further explains that Saito expressly teaches the benefit in distributed computer systems of being able to utilize distributed processors to take advantage of different computers’ “performance, load, and type.” Id. at 22 (citing Ex. 1005, 3:36–49; Ex. 1003 ¶ 112). According to Petitioner, a person of ordinary skill in the art would have understood that it would have been an obvious design choice to use either distributed or nondistributed processors to execute Ziff’s subsystems, and this skilled artisan would have understood that implementing a distributed system with multiple processors, as in Saito, would enhance Ziff’s goals of improving speed as well as efficiency. Id. at 21–22 (citing Ex. 1004, 2:45–60; Ex. 1003 ¶¶ 107– 110).” slip op. at 13

  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,339,576
• Xinial Systems GmbH & Co. KG v. Medmix Switzerland AGInstituted
  PTAB · Mar 2, 2023 · IPR2022-01462 · APJ Jeffrey N Fredman · IPR · Institution

  Instituted IPR of claims 1–3, 9–13, 16, and 17 on all petition grounds; Petitioner showed a reasonable likelihood of prevailing on obviousness over Keller ’574 and Yu.

  RulingsInstitution decision

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

    “Based on the preliminary record, Petitioner has met its institution burden and demonstrated to a reasonable likelihood that it will prevail in showing the claim 1 would have been obvious over Keller ’574 and Yu.” slip op. at 31

  • Skill levelOther

    “While we appreciate that the parties differ on the number of years of experience, we do not find a difference that affects our Decision. The parties may provide briefing at trial, if appropriate, to explain why adoption of one definition over the other changes the remaining analysis. We also note the level of ordinary skill in the art usually is evidenced by the prior art references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 8

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

    “We agree with Patent Owner because on the current record, there is no controversy over the meaning of the term and Petitioner does not identify any way that claim construction impacts the decision. If the parties believe that further argument on any claim term’s interpretation is needed to resolve any disputed issue, they may and are encouraged to provide such argument in briefing permitted in trial.” slip op. at 9

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

    “On this record, we agree with Petitioner that the ordinary artisan concerned with separation of the nozzle during operation, whether due to backpressure or other reasons, would have found it obvious based on Yu’s teaching to include Yu’s tangs to engage the nozzle and lock and seal at locations disclosed by Keller ’574. On this record, Patent Owner does not persuasively explain why the ordinary artisan would have found these disclosures of a locking location in Keller ’574 and tangs in Yu insufficient to select tang locations in Keller ’574 that would function to enforce locking and sealing of the combined device.” slip op. at 24

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,010,578
• Unified Patents, LLC v. Joseph Y. Yoon Intellectual Property LLCAll claims unpatentable
  PTAB · Mar 2, 2023 · IPR2022-00002 · APJ Michael L Woods · IPR · Final written decision

  Claims 1–12 are unpatentable as obvious: claims 1, 4, 6, and 9 over Foo; claims 1, 2, 4–9, 11, and 12 over Foo and Mazur; claim 3 over Foo and Canterberry; and claims 1, 4, …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends, and is supported by the accompanying declaration testimony of Mr. Andrews, that a POSITA would have had “at least a [B]achelor’s degree in electrical engineering, or a related field, and at least two years of practical experience in automotive safety systems.” Pet. 9 (citing Ex. 1003 ¶¶ 80–83). Petitioner adds that “[t]hese descriptions are approximate, and a higher level of education or skill might make up for less experience, and vice-versa.” Id. In our Institution Decision, we adopted Petitioner’s definition of the level of ordinary skill in the art. Pet. 9. We invited the parties to address this definition in further briefing if there was any disagreement. See id. Neither party disputed the initial definition and we maintain that definition in this Decision. In particular, we adopt Petitioner’s proposed definition of the level of ordinary skill in the art.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner

    “limitation by reciting a function to be performed rather than by reciting structure or materials for performing that function.” Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346, 1350 (Fed. Cir. 2003). Use of the term “means” creates a rebuttable presumption that a claim term is a means-plus- function limitation. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). This presumption may be rebutted if the claim recites structure sufficient to perform the described functions in their entirety. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008). A term written in means-plus-function form is construed to cover “the corresponding structure, material, or acts described in the specification and equivalents thereof” for performing the recited functions. 35 U.S.C. § 112, ¶ 6. Construction of means-plus-function claim terms is a two-step process. Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012). First, we determine the claimed function. Id. Second, we “identify the corresponding structure in the written description of the patent that performs the function.” Id.; see also Williamson, 792 F.3d at 1351. A “[s]tructure disclosed in the specification qualifies as ‘corresponding structure’ if the intrinsic evidence clearly links or associates that structure to the function recited in the claim.” Williamson, 792 F.3d at 1352. In conducting this analysis, we may not incorporate structure from the written description beyond that which is necessary to perform the claimed function(s). See Micro Chemical, Inc. v. Great Plains Chemical Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999). Because the claim limitation recites the term “means,” there is a rebuttable presumption that the claim term is a means-plus-function limitation. Williamson, 792 F.3d at 1348. Furthermore, claim 1 does not identify sufficient structure for the “means for detecting a vehicle occupant.” Accordingly, on the record, we agree with Petitioner that this limitation should be interpreted as a means-plus-function term. Cf. TriMed, 514 F.3d at 1259. Based on the evidence in the record, we further agree with Petitioner’s proposed claim construction. In particular, we identify the claimed function as “detecting a vehicle occupant” and the structure corresponding to the function is a “seat mounted sensor,” such as, but not necessarily including, one “used to detect the approximate size of the passenger occupant by weight,” and equivalent structures. Ex. 1001, 6:56– 58; see also Micro Chemical, 194 F.3d at 1258 (“[T]he statute [does not] permit incorporation of structure from the written description beyond that necessary to perform the claimed function.”). For these reasons, we adopt Petitioner’s proposed construction that the “means for detecting a vehicle occupant” shall be construed under 35 U.S.C. § 112, ¶ 6, and that the corresponding structure for performing the function of “detecting a vehicle occupant” is “a weight sensor located in a seat, and equivalents thereof.” See Pet. 9.” slip op. at 10

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

    “We agree with Petitioner. The claim language does not use the word “means” or other nonce words and does not recite a function to be performed. Rather, the language connotes structure. The ’076 patent uses the term “sensing and diagnostic module” (see, e.g., Ex. 1001, 11:4–5) and we find persuasive Mr. Andrews’s unrebutted testimony that a “POSITA would have understood that a ‘sensing and diagnostic module’ or ‘SDM’ was the name for a known component of vehicle restraint system—namely, the airbag microcontroller that was typical as of the asserted priority date” (Ex. 1003 ¶ 93). We further agree with Mr. Andrews’s testimony that an “airbag microcontroller” is often referred to as a “sensing and diagnostic module.” Id. ¶ 94. Giving the claim language “airbag module controller” its ordinary and customary meaning, in light of the Specification and in agreement with Mr. Andrews’s testimony, we interpret the term “airbag module controller” as an airbag microcontroller, including, but not limited to, the “sensing and diagnostic modules” described in the ’076 patent. Phillips, 415 F.3d at 1312–17.” slip op. at 12

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

    “In the alternative, Petitioner reasons that, to the extent that Foo does not expressly disclose this limitation, it would have been obvious to a POSITA “at the time of filing to ensure that no unfired initiator remained following airbag deployment, for example, to prevent the risk of unintentional follow-on explosions at the crash scene, which could harm the vehicle occupants and emergency responders.” Pet. 20. Mr. Andrews testifies that “[i]t was also critical that no unreacted propellant remained in the air bag module and that the combustion reaction went to completion to prevent the risk of unintentional follow-on explosions at the crash scene, which could cause further harm to the vehicle occupants and emergency responders.” Ex. 1003 ¶ 158 (citing as evidence Ex. 1011, 4:17–23). Although we do not find that Foo explicitly discloses that there will be no unfired initiator remaining in Foo’s airbags are actuated, Petitioner has demonstrated by a preponderance of the evidence that it would have been obvious to modify Foo’s airbag module controller, if necessary, so that it provides “a sequential firing of both said pair of initiators such that there will be no unfired initiator left in said airbag module” for the purpose of improving safety, thereby satisfying the limitations recited in 1.2.” slip op. at 20

  Patent outcomesUS 9,376,076 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,376,076
• Comotomo Inc. / Comotomo Corporation v. Mayborn (UK) LimitedInstitution denied
  PTAB · Jan 24, 2023 · IPR2022-01326 · APJ Ulrike W Jenks · IPR · Institution

  The Board denied institution for claims 1–31 because the petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “III. CONCLUSION After considering the evidence and arguments presented in the record, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that the challenged claims of the ’244 patent are unpatentable. We, therefore, deny the Petition requesting institution of an inter partes review of claims 1–31 of the ’244 patent. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner’s request for an inter partes review, pursuant to 35 U.S.C. § 314(a), of claims 1–31 of the ’244 patent is denied.” slip op. at 24

  • Skill levelSkill level petitioner adoptedOther

    “problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner asserts that a person of ordinary skill in the art would have had “a bachelor’s degree in mechanical engineering or a related field, with at least two years of professional experience working in bottle manufacturing” but “[w]ith more education, such as additional graduate degrees or study, less professional experience is needed to attain the ordinary level of skill” and “[s]imilarly, with more experiential knowledge of bottle manufacturing, less professional experience is needed to attain the ordinary level of skill.” Pet. 8 (citing Ex. 1003 ¶ 25). Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill. Prelim. Resp., passim. Because Petitioner’s proposed definition is unopposed and appears consistent with the Specification and art of record, we apply it here.” slip op. at 9

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

    “Based on these disclosures in the ’244 specification, we agree with Patent Owner that the “flex region” is understood to be more than just a region made of flexible material. See Prelim. Resp. 9–12. Specifically, we agree with Patent Owner that the “flex region” contains structural components that provide the “surface characteristics that control flexing.” Id. at 12. Accordingly, based on the ’244 specification, we determine that the “flex region” is reasonably interpreted to contain structural components that provide characteristics that control flexing of the structure, such as grooves or flex channels surrounding the teat portion, these grooves or flex channels can be either on the inner or outer surface of the teat portion, forming circular thinned regions of parallel/concentric channels, providing for a bellows action as well as flexing in a direction perpendicular to the fluid flow direction.” slip op. at 13

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

    “would prevent liquid from flowing out of the product.” Id. Hakim further explains that the second valve opening seals “when the user is not applying negative pressure at the spout (i.e. when the user is not drinking).” Id. at 6. Hakim teaches that “[t]he nipple itself is made of a flexible material, and has the no-spill valve provided inside the nipple.” Id. at 11. Hakim, however, does not teach a nipple containing structural elements such as grooves or flex channels surrounding the teat portion, forming circular thinned regions of parallel/concentric channels, providing for a bellows action as well as flexing in a direction perpendicular to the fluid flow direction. For the reasons discussed above in the claim construction section (II.C), we are not persuaded by Petitioner’s contention that merely describing that the nipple is made of flexible material supports the “flex region” limitation as recited in the claims and described in the ’244 specification. See Pet. 23–24; Ex. 1003 ¶ 71. Petitioner also has not identified a reason to add structural elements, such as grooves or flex channels surrounding the teat portion, forming circular thinned regions of parallel/concentric channels to Hakim’s nipple. Based on our review of this record, Petitioner has not sufficiently shown a reasonable likelihood that Hakim would have rendered claim 1 obvious.” slip op. at 20

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 11,207,244
• Comotomo Inc. / Comotomo Corporation v. Mayborn (UK) LimitedInstituted
  PTAB · Jan 24, 2023 · IPR2022-01325 · APJ Michael L Woods · IPR · Institution

  The Board instituted IPR on claims 1–20; Petitioner showed a reasonable likelihood that claim 13 would have been obvious over Hakim.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the Challenged Claims of the ’930 patent. Accordingly, we institute an inter partes review of claims 1–20 of the ’930 patent on the grounds asserted in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “III. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art at the time of the invention (“POSITA”) would have had a bachelor’s degree in mechanical engineering or a related field, with at least two years of professional experience working in bottle manufacturing. With more education, such as additional graduate degrees or study, less professional experience is needed to attain the ordinary level of skill. Similarly, with more experiential knowledge of bottle manufacturing, less professional experience is needed to attain the ordinary level of skill.” slip op. at 7

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

    “Neither Petitioner nor Patent Owner proposes formal construction of any term. See Pet. 7; see also generally Prelim. Resp. For purposes of this Decision, we need not and do not formally construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

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

    “We agree with Patent Owner. Petitioner gives no reason why a skilled artisan would have relocated Hakim’s air valve from the lower right corner (see Ex. 1005, Fig. 4e (depicting “vent” at the lower right corner)) to the location in Petitioner’s annotated figure, reproduced above and circled in red. We agree with Patent Owner that “Petitioner does not explain why its cherry-picked located marked by a red circle is consistent with Hakim’s directive to locate the air valve ‘at the bottom of the bottle nipple.’” Prelim. Resp. 15 (citation omitted); see also Ex. 1005, 13, 28. Although Mr. Goldman provides a reason why a skilled artisan would not have located the valve at the top of the teat (Ex. 1003 ¶ 81), Mr. Goldman provides no reason for relocating the valve to its proposed location. We further agree that the proposed location would appear to promote leaking by transplanting the air valve—‘a slit or cross-cut’ in a shallow surface depression . . . from a protected location at the ‘bottom rim,’ which is ‘covered by the hard portion of [a] screw cap,’ . . . to an exposed location amongst Hakim’s teething bumps, where the valve would be susceptible to inadvertent actuation by an infant squeezing or gnawing on the nipple. Prelim. Resp. 17 (citing Ex. 1005, 29–30). Accordingly, Petitioner fails to show a reasonable likelihood that a skilled artisan would have had reason to modify Hakim by relocating its vent valve to satisfy an “air valve extending through said nipple and disposed (i) radially inwardly from the collar and (ii) above the flange,” as recited in claim 1.” slip op. at 18

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,952,930

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.