• Trove Brands, LLC v. Camelbak Products, LLCSome claims unpatentable
  PTAB · Jun 2, 2026 · IPR2025-00140 · APJ Carl M Defranco · IPR · Final written decision

  Claims 1–6 are unpatentable as obvious; claims 7–18 were not shown unpatentable because Ribarits does not disclose a mouthpiece disposed on the pivotal mount.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Trove contends that a person of ordinary skill in the art “would have had an undergraduate degree in mechanical engineering or equivalent coursework, and a year or more of experience in designing, prototyping, and/or manufacturing fluid containers or similar products” and that “[m]ore work experience may substitute for a lower level of education, and vice versa.” Pet. 15 (citing Ex. 1002 ¶ 25). While CamelBak offers “a similar, though slightly different level,” it nonetheless “discerns no material difference between the definitions provided by the parties for purposes of the Board’s decision in this proceeding.” PO Resp. 27. That being the case, we adopt Trove’s proposed definition of the level of skill in the art, as it is 2 JP 2002-211613A, published July 31, 2002 (Ex. 1004, “Nakajima”). 3 WO 2004/063042 A2, published July 29, 2004 (Ex. 1006, “Ribarits”). 4 US 4,485,963, issued Dec. 4, 1984 (Ex. 1007, “Panicci”). 5 US 6,523,711 B1, issued Feb. 25, 2003 (Ex. 1008, “Hughes”). reasonable and consistent with what is reflected in the asserted prior art and the specification of the ’250 patent. B. Claim Construction” slip op. at 7

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

    “We will not bite. CamelBak’s original assertion—that the plain and ordinary meaning of the constituent parts of “mouth” and “piece” is “a piece (or part) that goes in the mouth”—underscores the fallacy of CamelBak’s additional physical contact requirement. PO Resp. 28 (emphasis added). Indeed, in support of that earlier assertion, CamelBak pointed to the very dictionary definition that we relied on at institution in construing “mouthpiece” as a part that either “goes in the mouth or to which the mouth is applied.” See id. at 31 (citing Ex. 2005 (emphasis added)). Even the original testimony of CamelBak’s own expert confirms that one skilled in the art “would understand that the term ‘mouthpiece’ is commonly known in the art as a part designed for a user’s mouth,” without any requirement for physical contact with the mouth. Ex. 2016 ¶ 58 (citing Ex. 2005) (emphasis added)). And nothing in the Specification limits that common understanding. Although, indisputably, the Specification contemplates an embodiment where the user physically contacts the mouthpiece with their teeth (i.e., a bite-actuated mouthpiece), it also contemplates an embodiment where the user simply inserts the bottle in their mouth and commences fluid flow by squeezing it. See Ex. 1001, 10:9–13. That disclosure supports a meaning of “mouthpiece” that simply requires placement in the opening of the user’s mouth without necessarily incurring physical contact with some portion of the mouth, such as the teeth, tongue, or lips. Indeed, had CamelBak wished to premise the meaning of “mouthpiece” on some sort of physical contact with the mouth, it knew how to do so. For instance, the independent claims of CamelBak’s earlier ’255 patent, which is the subject of the related 1137 IPR, are limited in just such a manner, as they recite “wherein the resilient mouthpiece is adapted to resiliently compress responsive to compressive forces applied to the resilient mouthpiece by a user’s teeth.” Ex. 2023, at 20–25 (emphasis added). Thus, we reject CamelBak’s attempt to narrow our construction of “mouthpiece” to something other than “a part (as of an instrument) that goes in the mouth or to which the mouth is applied.” Neither the intrinsic nor extrinsic evidence supports the narrower construction proposed by CamelBak.” slip op. at 11

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “In reply, Trove argues that CamelBak’s “novel” construction that the mouthpiece moves with rotational motion about that same axis of rotation defined by the two joint as the pivotal mount and in the same direction as the pivotal mount “are inconsistent with the claim language’s plain and ordinary meaning and find no support in the intrinsic and extrinsic record.” See Pet. Reply 16. But, because we find that, when properly construed, the claimed “pivotal movement with the pivotal mount” about “two joints that define a pivotal axis” requires that the mouthpiece rotate about the same axis and in the same direction as the pivotal mount, we reject Trove’s argument as unavailing. And, although we agree with Trove that Nakajima’s mouthpiece engages in counter-clockwise rotation about a “Second Pivot Axis” when Nakajima’s lid 4 is opened (id. at 20–22), that rotation is about a different axis—one defined by Nakajima’s protrusions 24 rather than the claimed “pivotal axis” defined by Nakajima’s hinge shafts 19—and in a different manner—an upward and counterclockwise path rather than the claimed “pivotal movement with the pivotal mount” defined by Nakajima’s lid 4. Finally, in an alternative theory, Trove and its expert use “image- manipulation tools” in an attempt to show that Nakajima’s mouthpiece engages in some initial “clockwise-rotation” with Nakajima’s lid as it is opened. See Pet. Reply 18–24. We reject that theory as entirely conjectural and unsupported by the evidence.” slip op. at 39

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

    “We disagree. As discussed above, the proper construction of “for pivotal movement with the pivotal mount” requires that the mouthpiece mirror the rotational movement of the pivotal mount, i.e., rotate about the same axis as the pivotal mount and in the same direction as the pivotal mount. See supra § II.B.3. But Nakajima’s mouthpiece does neither, and, thus, does not exhibit the claimed “pivotal movement with the pivotal mount” about “two joints that define a pivotal axis for . . . the pivotal mount axis,” as properly construed.” slip op. at 36

  Patent outcomesUS 11,851,250 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 11,851,250
• Lenovo (United States), Inc. v. University Of RochesterSome claims unpatentable
  PTAB · Feb 2, 2026 · IPR2024-01225 · APJ Thu A Dang · IPR · Final written decision

  Claims 1 and 3–7 are unpatentable as obvious; claims 8–12 were not shown unpatentable because the asserted grounds did not establish asynchronous operation between domains.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “specification is the ‘single best guide to the meaning of a disputed term,’ . . . and ‘is, thus, the primary basis for construing the claims.’” Trs. of Columbia Univ. in City of New York v. Symantec Corp., 811 F.3d 1359, 1362 (Fed. Cir. 2016) (citations omitted). Although Patent Owner contends that the Specification disparages systems that impose significant restrictions on the possible choices of frequencies (PO Resp. 21), we find availing Petitioner’s contention that “[s]upport for Patent Owner’s construction is absent from the specification.” Pet. Reply 10. As Petitioner points out, Patent Owner’s claim construction “appears to be based on a single paragraph of the ’443 patent referring to preexisting ‘synchronization schemes [that] restrict the phase relationship and relative frequencies of the clocks.” Id. That is, the only reference by Patent Owner to the Specification is that the Specification states that “Some synchronization schemes restrict the . . . relative frequencies of the clocks, thereby eliminating the need for hardware arbitration [27]. Unfortunately, these schemes impose significant restrictions on the possible choices of frequences.” PO Resp. 26 (citing Ex. 1001, 6:32–36). We agree with Petitioner that such disclosure in the Specification “does not describe how these synchronization schemes ‘restrict the phase relationship and relative frequencies’ with any specificity.’” Pet. the Specification that some schemes impose restrictions on the possible choices of frequency is not a disparagement of any system that has limited choices of frequency or would preclude the claims from covering such prior art techniques. Instead, as Petitioner points out, the Specification of the ’443 patent states “[t]he preferred embodiment uses four domains […] so that domains may vary somewhat in size and still be covered by a single clock.” Id. (citing Ex. 1001, 5:57–59). As Dr. Baker testified in support of Petitioner’s contention, “the preferred embodiment of the ’443 patent relies on a single external master clock that distributes a signal to the local PLL of each domain.” See Ex. 1032 ¶ 9. Thus, although Patent Owner contends that clock signals generated based on a master clock cannot be interpreted to be generated independently of the clock signals generated for others of the plurality of domains (PO Resp. 49), we agree with Petitioner that such claim construction would “exclude[] the preferred embodiment of the ’443 patent,” which is disfavored. Pet. Reply 11. For the reasons discussed above, we conclude that “changeable independently” of the other domains does not require that the separate clocks in the plurality of domains be globally-asynchronous.” slip op. at 12

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner

    “As both parties recognize, (PO Resp. 5; Pet. Reply 12), “[actual] [r]eduction to practice in the United States requires that the invention be embodied in tangible form.” Scott v. Koyama, 281 F.3d 1243, 1247 (Fed. Cir. 2002). In particular, actual reduction to practice requires a showing of the invention in a physical or tangible form that shows every element. not sufficient. See Kimberly-Clark v. Johnson & Johnson, 745 F.2d 1437, 1445 (Fed. Cir. 1984). Here, Patent Owner does not provide any evidence showing every element of the claims in physical or tangible form, as required, but rather contends that the Specification refers to the Paper, wherein the Paper stated that simulation using a software, SimpleScalar, was performed. PO Resp. 16. We are persuaded by Petitioner’s contention that the SimpleScalar simulation was not an actual reduction to practice of the claimed invention. Pet. Reply 12. As Petitioner points out, claim 1, for example, is directed to a “microprocessor,” wherein “Patent Owner has presented no evidence and has not alleged that any physical microprocessor was ever produced or operated.” Id. at 13; see PO Resp. 15–17. And as Petitioner points out, “Patent Owner has produced no evidence of any physical prototype of the claimed microprocessor that could have validated the simulation.” Pet. Reply 13–14. We agree with Petitioner that, at most, such simulation “demonstrated feasibility for prototyping of a microprocessor,” but not a tangible form of the microprocessor itself as required for an actual reduction to practice. Id. at 14; see also Standard Mfg. Co. v. United States, 25 Cl. Ct. 1, 67 (1991) (“The feasibility of the optical alignment system may have been proven by the optical mock-up, but the optical mock-up was not a reduction to practice of the proposed MHU–145/M trailer.”).” slip op. at 36

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

    “Here, we find that Petitioner has not met its burden to prove that one of ordinary skill in the art would have recognized that “the functional units of Georgiou operate asynchronously since they have different clocks.” Pet. 74 (citing Ex. 1002 ¶¶ 53–56, 211–219). Specifically, although Petitioner relies on Georgiou for teaching different clocks, Petitioner’s conclusory statement that such application would operate asynchronously requires gapfilling. Id. As Patent Owner points out, Georgiou discloses a clocking architecture in which “all domain clocks are derived from a shared master clock through predetermined rational dividers.” PO Resp. 49. Petitioner concedes during the oral hearing that, in systems such as Georgiou, each domain clock is set a fraction of a master clock, and thus, the various domain clocks are “possibly” synchronous with each other. Tr. 59:4–14 (JUDGE DANG: . . . would being fractions of the master, wouldn’t they be synchronized with each other? MR UHR: They may be, . . . the answer is possibly.”) Thus, we find Petitioner’s contention that a POSITA would have recognized that the functional units of Georgiou operate “asynchronously” lacks sufficient support in the record. We find the testimony of Dr. Baker insufficient to support Petitioner’s position. Ex. 1002 ¶¶ 53–56, 213, 215–219. In his declaration, Dr. Baker testified that he “provided several references . . . that explain operating domains asynchronous to one another while the domains operate synchronously.” Id. ¶¶ 215–219. However, although such references explain “globally asynchronous, local synchronous (GALS) systems” (id. ¶ 216), Dr. Baker does not explain why a POSITA “would have known that a functional unit of Georgiou also operates asynchronous with respect to at different frequencies.” Id. ¶ 217. Without evidentiary support, we are left with speculation and impermissible hindsight. See in Re Wagner, 379 F.2d 1011, 1017 (CCPA 1967). We decline to engage in speculation. See, e.g., In re Vaidyanathan, 381 F. App’x 985, 993 (Fed. Cir. 2010); In re Wallen, 565 F. App’x 867, 869 (Fed. Cir. 2014), both citing In re Zurko, 258 F.3d 1379, 1386 (Fed. Circ. 2001) ([T]he Board must point to some concrete evidence in the record in support of these findings.”). In sum, based on our review of the record, we find Petitioner’s showing is insufficient. Thus, based on the complete record presented, we determine that Petitioner has not persuasively shown that Georgiou teaches “operating the microprocessor such that each domain operates synchronously, while the domains operate asynchronously relative to one another,” as recited in claim 8.” slip op. at 28

  • BurdenMixed

    “of ordinary skill in the art would have recognized that “the functional units of Georgiou operate asynchronously since they have different clocks.” Pet. 74 (citing Ex. 1002 ¶¶ 53–56, 211–219). Specifically, although Petitioner relies on Georgiou for teaching different clocks, Petitioner’s conclusory statement that such application would operate asynchronously requires gapfilling. Id. As Patent Owner points out, Georgiou discloses a clocking architecture in which “all domain clocks are derived from a shared master clock through predetermined rational dividers.” PO Resp. 49. Petitioner concedes during the oral hearing that, in systems such as Georgiou, each domain clock is set a fraction of a master clock, and thus, the various domain clocks are “possibly” synchronous with each other. Tr. 59:4–14 (JUDGE DANG: . . . would being fractions of the master, wouldn’t they be synchronized with each other? MR UHR: They may be, . . . the answer is possibly.”) Thus, we find Petitioner’s contention that a POSITA would have recognized that the functional units of Georgiou operate “asynchronously” lacks sufficient support in the record. We find the testimony of Dr. Baker insufficient to support Petitioner’s position. Ex. 1002 ¶¶ 53–56, 213, 215–219. In his declaration, Dr. Baker testified that he “provided several references . . . that explain operating domains asynchronous to one another while the domains operate synchronously.” Id. ¶¶ 215–219. However, although such references explain “globally asynchronous, local synchronous (GALS) systems” (id. ¶ 216), Dr. Baker does not explain why a POSITA “would have known that a functional unit of Georgiou also operates asynchronous with respect to at different frequencies.” Id. ¶ 217. Without evidentiary support, we are left with speculation and impermissible hindsight. See in Re Wagner, 379 F.2d 1011, 1017 (CCPA 1967). We decline to engage in speculation. See, e.g., In re Vaidyanathan, 381 F. App’x 985, 993 (Fed. Cir. 2010); In re Wallen, 565 F. App’x 867, 869 (Fed. Cir. 2014), both citing In re Zurko, 258 F.3d 1379, 1386 (Fed. Circ. 2001) ([T]he Board must point to some concrete evidence in the record in support of these findings.”). In sum, based on our review of the record, we find Petitioner’s showing is insufficient. Thus, based on the complete record presented, we determine that Petitioner has not persuasively shown that Georgiou teaches “operating the microprocessor such that each domain operates synchronously, while the domains operate asynchronously relative to one another,” as recited in claim 8.” slip op. at 28

  Patent outcomesUS 7,089,443 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,089,443
• Google LLC v. Dialect, LLCSome claims unpatentable
  PTAB · Oct 20, 2025 · IPR2024-00752 · APJ George R Hoskins · IPR · Final written decision

  Claims 1–7, 12–17, and 19–23 are unpatentable; claims 8–11, 18, and 24–27 were not shown unpatentable, because Coffman’s domain-agent disclosure was deficient for the latter claims.

  RulingsFinal written decision

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

    “recites one or more processors programmed with instructions to “synchronize the first context stack with a second context stack . . . such that the context information of the first context stack is updated based on related context information of the second context stack.” Ex. 1001, 38:43–45, 38:50–54. This language focuses on synchronizing the two context stacks by updating the context information of the first stack based on related context information of the second stack. See id. The only potential textual support in claim 1 for Patent Owner’s position that the claim requires duplicating the order of the context entries in the two stacks are the terms “synchronize” and “context stack.” See id. We discern nothing in the plain and ordinary meaning of those terms that would require duplicating the order of context entries in the two stacks as part of the claimed synchronizing.” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not oppose Petitioner’s formulation of ordinary skill. See PO Resp.; Ex. 2013 ¶¶ 28–31. We are satisfied that Petitioner’s unopposed formulation of ordinary skill generally comports with the level of skill necessary to understand and implement the teachings of the ’652 patent and the asserted prior art. Therefore, we apply that formulation here.” slip op. at 9

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “We have also considered the expert testimony. Patent Owner’s expert Mr. Occhiogrosso opines that synchronizing context stacks must include duplicating the order of entries in the stacks. See Ex. 2013 ¶¶ 36–41, 50, 67–74. However, the only documentary evidence cited to support this opinion is the ’652 patent specification disclosures we have addressed above. See id. ¶¶ 39, 70, 72 (citing Ex. 1001, 20:10–12, 20:19–22). Thus, Mr. Occhiogrosso’s extrinsic testimony on this point is overly conclusory, and we accordingly give it little weight here. Moreover, although extrinsic evidence such as expert witness testimony “can shed useful light on the relevant art,” it is “less significant than the intrinsic record in determining ‘the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317 (citations omitted); see also id. at 1318 (“We have viewed extrinsic evidence in general as less reliable than the patent . . . in determining how to read claim terms.”); Seabed Geosolutions (US) Inc. v. Magseis FF LLC, 8 F.4th 1285, 1287 (Fed. Cir. 2021) (“Given the clarity of the intrinsic evidence, resort to extrinsic evidence is unnecessary” so “to the extent the Board relied on extrinsic evidence to alter the meaning of ‘fixed’ that is clear from the intrinsic evidence, that was error.”).” slip op. at 29

  • Strike new argumentNew argument disregardedNew argument consideredMixed

    “Mr. Schmandt’s initial Declaration (Exhibit 1002) entirely fail to address how Coffman’s processor(s) might be programmed to “identify” one or more conversationally-aware applications per claim 8. As a result, the additional argument in the Petitioner Reply concerning this claim requirement is untimely and should not be considered. See PO Sur-reply 4, 13; e.g., Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1002 (Fed. Cir. 2023) (“[T]he expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition” and “the Board is not permitted to entertain ‘[s]hifting arguments’ but must, instead, reject any ‘entirely new theory of prima facie obviousness absent from the petition,’ if the petitioner attempts to inject such a theory into the proceeding post-petition.” (citations omitted)); Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017) (“Here, [the petitioner] did not make out its obviousness case in its petition” and “[a]fter [the patent owner] pointed out the flaws of [the petitioner’s] position, [the petitioner’s] ensuing arguments to the Board and to us effectively abandoned its petition in favor of a new argument” thereby “amount[ing] to an entirely new theory of prima facie obviousness” which “is foreclosed by statute, our precedent, and Board guidelines.”). Nonetheless, in order to provide a complete record for federal court review if sought by Petitioner, we will go on to consider the substantive merit of the arguments in the Petitioner Reply. We conclude those arguments and Mr. Schmandt’s supporting testimony (Exhibit 1017) do not satisfy Petitioner’s burden to demonstrate obviousness by a preponderance of the evidence, for the following reasons.” slip op. at 59

  Patent outcomesUS 8,849,652 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,849,652
• Crusoe Energy Systems, LLC v. Upstream Data Inc.Some claims unpatentable
  PTAB · Jan 21, 2025 · PGR2023-00039 · APJ Matthew S Meyers · PGR · Final written decision

  Claims 1 and 24 are unpatentable under § 101 as directed to an abstract idea without an inventive concept; the petitioner did not prove the remaining challenged claims unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Best Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (citations omitted). “The patent’s purpose can also be informative.” Id. (citation omitted). Petitioner asserts that one of ordinary skill in the art (“POSITA”) would have had “a degree in chemical engineering, petroleum engineering, process engineering, mechanical engineering, or a similar field with 1–2 years of experience in designing power generation systems, Blockchain mining systems, or other comparable hands-on experience.” Pet. 7 (citing Ex. 1003 ¶ 19). Petitioner adds that “[a]lternatively, a person having 3–5 years of experience in the Blockchain mining industry would also qualify as a POSITA” and “[a]dditional education could substitute for professional experience, or vice versa.” Id. at 7–8 (citing Ex. 1003 ¶ 19).” slip op. at 10

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

    “We apply the same claim construction standard used in district court actions under 35 U.S.C. § 282(b), namely that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.200(b) (2024). In applying that standard, claim terms generally are given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).” slip op. at 11

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

    “To address that “the mining processors are connected to the network interface and adapted to mine transactions associated with the blockchain database and to communicate with the blockchain database,” as recited by limitation [1c_iii], Petitioner asserts that CryptoKube’s system includes “Bitcoin miners such as spondooliestech SP35 servers.” Pet. 25 (citing Ex. 1006, 1–4). And, relying on the declaration testimony of Mr. Kasdorf, Petitioner concludes that one of ordinary skill in the art would have understood that to mine Bitcoin, the mining processors need to be connected to a network interface and adapted to mine transactions associated with the blockchain database and to communicate with the blockchain database, which is implemented as a public ledger distributed among many peer-to-peer devices connected to the Internet. Id. (citing Ex. 1004 ¶¶ 108–109; Ex. 1010 ¶ 419). Mr. Kasdorf’s declaration testimony is nearly verbatim to the Petition and similarly provides no indication as to what in CryptoKube constitutes a “mining processor” other than his conclusory opinion that one of ordinary skill in the art “would have understood that to mine bitcoin, the mining processors need to be connected to a network interface and adapted to mine transactions associated with the 19 We note that Mr. Kasdorf’s reliance on Kheterpal is limited to Kheterpal’s background discussion regarding the Bitcoin protocol inasmuch as it “defines a system in which the creation and distribution of the bitcoin cryptocurrency is governed by consensus among a peer-to-peer network” and includes “a public ledger in which new transactions are verified and recorded by members of the network via cryptography.” Ex. 1010 ¶ 4. Ex. 1004 ¶ 108 (citing Ex. 1010 ¶ 4). Thus, we agree with Patent Owner that in the Petition, neither Petitioner nor Mr. Kasdorf explains or “cite[s] any evidence regarding which component is the ‘necessarily’ present mining processor (limitation 1[c_i]) or how this unspecified mining processor is ‘connected to the network interface and adapted to . . . communicate with the blockchain database’ (limitation 1[c_iii]).” PO Resp. 42–43 (citing Ex. 1004 ¶¶ 104–105, 108–109).” slip op. at 21

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner’s contention that “a combination of an ASIC chip and a controller would meet the ‘mining processor’ limitation” (Pet. Reply 11 (citing Ex. 1036 ¶ 21)) is an improper new argument. In determining whether an argument is a proper argument in reply, we look to see if the Reply argument is responsive to an argument from Patent Owner and expands on a position in the Petition. See Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1384 (Fed. Cir. 2023) (“[W]e have held that a reply may be proper if it is responsive and simply expands on previously raised arguments.”). Or, if Petitioner relies on previously unidentified disclosure “to make a meaningfully distinct contention.” Id. at 1383 (“[W]e held that a petitioner who asserted in its reply previously unidentified prior-art disclosures ‘to make a meaningfully distinct contention’ was impermissibly raising a new theory of unpatentability.”). We find that Petitioner’s argument in reply is closer to the later situation. Here Petitioner does not expand on a position from the Petition that Patent Owner criticizes based on the merits of the contentions. Rather, Petitioner supplements its conclusory assertion that a “mining processor” is necessarily present in CryptoKube’s spondooliestech SP35 servers (Pet. 23, 25 (citing Ex. 1006, 1–4)) with its new assertion that that “a combination of an ASIC chip and a controller would meet the ‘mining processor’ limitation.” Pet. Reply 11. Petitioner does not purport to have presented this theory in the Petition. Id. Instead, Petitioner argues that this theory was properly raised in response to what Petitioner alleges to be an admission by” slip op. at 27

  Patent outcomesUS 11,574,372 mixed
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Berkheimer · Electric Power · Phillips · KSR · Graham
  Patents in suitUS 11,574,372
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Smart Mobile Technologies LLCSome claims unpatentable
  PTAB · Jan 23, 2024 · IPR2022-01248 · APJ Aaron W Moore · IPR · Final written decision

  Claims 14–21 and 23–26 are unpatentable under §103; claims 1–13 and 27–30 were not shown unpatentable because the asserted combinations failed to establish multiplexing.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “education.” Id. (citing Ex. 1003 ¶¶ 27–28). Patent Owner does not propose a level of ordinary skill and does not dispute Petitioner’s proposal. As Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art, and because we find it generally consistent with the disclosures of the ’653 patent and the cited prior art, we adopt it. C.” slip op. at 10

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

    “Claim Construction Petitioner states that “no formal claim constructions are necessary in this proceeding.” Pet. 2. Patent Owner does seek an express construction of any claim term, and we thus conclude that we need not expressly construe any terms to resolve the issues before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (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)). D.” slip op. at 10

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

    “d. Multiplexing Being “Well-Known” Petitioner additionally argues that multiplexing techniques were well- known. See Pet. 34; Pet. Reply 18. Even if that is correct, however, it is insufficient because Petitioner must show that it would have been obvious to modify Yegoshin to add multiplexing, and merely establishing that multiplexing was known in other contexts is insufficient to show how or why Yegoshin should be modified.” slip op. at 22

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “Patent Owner filed an opposition to the motion. See Paper 24. Patent Owner contends that the declaration is untimely and unfairly prejudicial because it circumvents our word count limitations and amounts to an additional brief because it analyzes claim construction and includes new cites to the record. See id. at 2–10. Having reviewed the parties’ positions, we grant the Motion. We note, however, that in view of the full record, and for the reasons below, our determination would not change even if we denied the motion. B.” slip op. at 9

  Patent outcomesUS 8,842,653 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,842,653
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Smart Mobile Technologies LLCSome claims unpatentable
  PTAB · Dec 1, 2023 · IPR2022-01005 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–3 are unpatentable over Raleigh, Sainton, and Gernert; claims 4–16 are not shown unpatentable because the proposed combination lacks adequate support for the challenged limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We preliminarily adopted Petitioner’s proposed level of ordinary skill in the art. Inst. Dec. 8. Patent Owner does not dispute Petitioner’s proposal and does not propose its own level of ordinary skill in the art. See generally PO Resp.; see also Ex. 2004 ¶ 21 (Patent Owner’s declarant accepting Petitioner’s proposed level of ordinary skill in the art). Based on the full record, we maintain and affirm that one of ordinary skill in the art “would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience related to the design or development of wireless communication systems, or the equivalent” and that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 2 (citing Ex. 1003 ¶¶ 27–28).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “The ’291 patent addresses a problem with a cellular telephone or mobile device and the objects of the ’291 patent are related to the cellular telephone or mobile device. See, e.g., Ex. 1001, 1:22–55, 2:53–58. Thus, “what the inventors actually invented and intended to encompass by the claim” was related to a cellular telephone or mobile device. The ’291 patent indicates that the “portable handheld mobile device with a plurality of antennas” of the preamble of claim 5 should be treated as a limitation. We also agree with Patent Owner that “the preamble is limiting because several limitations in claim 5’s body ‘rely upon and derive antecedent basis from the preamble,’” specifically “a communication system” and “a plurality of antennas.” PO Resp. 6. The body of claim 5 recites “the system” repeatedly, and “the system” relies upon and derives antecedent basis from the preamble. Ex. 1001, 12:40, 12:44, 12:48, 12:54. The body also recites “the plurality of antennas” that also relies upon and derives antecedent basis from the preamble. Id. at 12:46, 12:50. Because the preamble of claim 5 recites that the “communication system includ[es] one or more communication modules and processors for use in a portable handheld mobile device with a plurality of antennas,” the preamble “recites essential structures for the claimed system,” as argued by Patent Owner. PO Resp. 6–7.” slip op. at 10

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

    “Petitioner’s citations to the record do not explain or support why Raleigh’s remote unit 170a would have been “easily modified as a mobile wireless device, such as those shown in Sainton or other similar references.” Ex. 1003 ¶ 70; Ex. 1004, Fig. 4; Ex. 1005, Figs. 4A, 4B; Ex. 1008, 1:34–37, 6:38–53; Ex. 1010, 1:16–27; Ex. 1036 ¶¶ 11–20. would not have been “easily modified as a mobile wireless device.” See, e.g., Ex. 2007, 1 (stating that, for MIMO, “[t]here are numerous situations where this degree of hardware complexity is undesirable – this is especially important for the mobile station (MS)”); Ex. 2008, 68 (stating that “[t]he introduction of MIMO techniques into wireless communication systems introduces a number of implementation challenges” “[t]he greatest challenges, however, lie within the terminal where the size, power and cost constraints must be overcome,” and “[r]esearch initiatives must address the viability of terminals employing MIMO or diversity techniques, with particular emphasis being placed on maximizing the performance of the terminal antenna system in realistic macrocellular deployment scenarios and within the restricted form factors of future terminals such as laptops, PDAs and handsets”). Petitioner does not address directly Patent Owner’s evidence that shows technical difficulties of implementing a system such as Raleigh’s in a portable handheld mobile device with its practical limitations on size to accommodate an antenna array, power and battery capacity for all the components of Raleigh combined with Sainton, and required heat dissipation for the proposed combination. See generally Pet. Reply. In view of the full record that includes scant argument and evidence supporting Petitioner’s argument that Raleigh’s remote unit 170a would have been “easily modified as a mobile wireless device” and Patent Owner’s extensive argument and evidence to the contrary, Petitioner does not show by a preponderance that one of ordinary skill in the art would have had a reasonable expectation of success in implementing Raleigh’s remote unit as a portable handheld mobile device. Pet. 14–15; PO Resp. 15–23; Ex. 1003 ¶ 70; Ex. 1004, Fig. 4; Ex. 1005, Figs. 4A, 4B; Ex. 1008, 1:34–37, 6:38–53; 40:4–7, 63:6–11, 63:24–66:6, 70:11–19; Ex. 1036 ¶¶ 11–20; Ex. 2004 ¶¶ 47–63; Ex. 2007, 1; Ex. 2008, 11, 68; Ex. 2009, 187; Ex. 2010, 2; Ex. 2011, 297; Ex. 2012, 1; Ex. 2013, 1804; Ex. 2016, 277; Ex. 2017, 206. Additionally, based on the full record, Petitioner’s proposed level of ordinary skill in the art would have been insufficient for modifying Raleigh’s remote unit into a portable handheld mobile device in view of Patent Owner’s evidence of technical challenges and practical limitations. See generally Pet.; Pet. Reply.” slip op. at 31

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

    “obviousness] involves weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1361 (Fed. Cir. 2017). Above, based on full record before us, we provide our factual findings regarding (1) the level of ordinary skill in the art, (2) the scope and content of the prior art, (3) any differences between the claimed subject matter and the prior art, and (4) objective evidence of nonobviousness. is consistent with the prior art of record, (2) Raleigh, Sainton, and Gernert teach or suggest all the limitations of claim 1, (3) one of ordinary skill in the art would have combined these references with a reasonable expectation of success, and (4) no objective evidence of nonobviousness has been presented in relation to any challenged claim. Weighing these underlying factual determinations, Petitioner persuades us by a preponderance of the evidence that claim 1 of the ’291 patent is unpatentable over Raleigh, Sainton, and Gernert. Arctic Cat, 876 F.3d at 1361.” slip op. at 62

  Patent outcomesUS 9,084,291 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,084,291
• Lego Systems, Inc. / Warner Bros. Home Entertainment Inc. v. Figurefun LLCSome claims unpatentable
  PTAB · Sep 26, 2019 · IPR2018-00755 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1, 3, 5, 7, 10, and 25 are unpatentable as obvious over each listed reference combination; claim 8 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We find Patent Owner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We, therefore, find that a person of ordinary skill in the art “would have at least a Bachelor’s Degree in Computer Science with courses and experience in relevant mathematics and three to five years of experience with designing and developing coin-operated electronic gaming devices with electronic displays (such as slot machines).” Ex. 2001 ¶ 19. Any differences regarding additional experience in the parties’ competing proposals for the level of ordinary skill does not affect our analysis of Petitioner’s challenges.” slip op. at 8

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

    “action figure.” See, e.g., id. at 10:21–24 (“Here, it is not necessary that the token with built-in IC chip is configured so integrally with the action figure that the action figure may be fixed firmly and cannot be removed from the token.”), 10:24–25 (“The action figure may be configured so as to be detachable from the token, which is disk-shaped.”). As discussed above, the claims require a “token for a gaming machine” that comprises an integrated circuit chip or a storage section being “detachable from a figure.” Id. at 23:58–62, 26:9–13. The Specification also describes figures with integrated tokens with built-in IC chips (id. at 5:49–54), but the claims are directed by their express terms to embodiments of tokens with detachable figures. We, thus, agree with Patent Owner that “token” does not include a “figure.” Thus, the term “token” cannot include within its scope a “figure.” To resolve the parties’ dispute regarding patentability, we need only determine that the term “token” does not include an “figure.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (construing only those claim terms in controversy and only to the extent necessary to resolve the controversy); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). Any further express interpretation is not required for our analysis. Vivid Techs., 200 F.3d at 803. slip op. at 12

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

    “As discussed above, we find that Lee teaches that, in the embodiment shown in its Figure 2, “transducer 64 can be attached to a preexisting wrestling figure” so that “a child who has a collection of various action figures can use those figures as part of the activity center.” Ex. 1004, 6:44– 51. Lee, thus, supports Petitioner’s declarant testimony that one of ordinary skill in the art would have modified Levy so that its integrated circuit chip is detachable in the same manner as Lee so that “various action figures can be used with the token.” Ex. 1002 ¶ 88 (citing Ex. 1006, 6:46–51). We also find that modifying Levy as proposed by Petitioner is within ordinary skill. See, e.g., Ex. 1002 ¶ 59. Thus, Petitioner demonstrates that one of ordinary skill in the art would have had a reasonable expectation of success in making the proposed modification.” slip op. at 34

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “G. Objective Evidence of Nonobviousness The parties do not direct us to any objective evidence of nonobviousness. See generally Pet.; PO Resp.; Tr. 72:19–22 (Patent Owner’s counsel stating it did not submit objective evidence of non-obviousness).” slip op. at 64

  Patent outcomesUS 7,338,377 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,338,377
• Resmed Limited / Resmed Inc. et al. v. Fisher & Paykel Healthcare LimitedSome claims unpatentable
  PTAB · Mar 8, 2018 · IPR2016-01716 · APJ Carl M Defranco · IPR · Final written decision

  Claim 7 is unpatentable as obvious over Netzer and Levine; ResMed did not prove claim 11 unpatentable over Netzer and Bahr.

  RulingsFinal written decision

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

    “We disagree with FPH that the term “urges” requires a pressing force that results from an angled slide-on direction for the water chamber. Rather, we understand FPH’s reference to the angled slide-on direction as applying only to “other configurations of the present invention,” and not to “preferred embodiments” where the slide-on direction for the water chamber is clearly horizontal, as shown in Figure 1 and required by “slot 17” in “chamber receiving bay 47.” Compare Ex. 1002, 8:10–13 (“other configurations” having angled slide-on motion for water chamber), with id. at 4:19–46 (“preferred embodiments” having horizontal slide-on motion for water chamber). Nowhere does the specification of the ’072 patent suggest that the horizontal slide-on motion for the preferred embodiments applies an additional bias or other pressing force to the water chamber. As such, we do not find that the specification supports a definition of “urges” that differs from its plain and ordinary meaning, which Merriam-Webster’s Dictionary defines as “to force or impel in an indicated direction or into motion.” Ex. 1031, 4.” slip op. at 7

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

    “Based on our interpretation of the claim 7 limitation “urges . . . in contact with,” we find that Netzer, when combined with Levine, satisfies this limitation. Specifically, we find that Netzer discloses the claimed “single motion” limitation by describing that the water chamber has “lateral guide profiles” and moves in “insertion direction (arrow E)” to engage with “corresponding guide grooves” in a chamber heater (Ex. 1008, 8, 10, Fig. 1), and Levine teaches the claimed “urges . . . in contact with” limitation by disclosing a conductive base of a water chamber that is “operationally engaged with” and “in operational alignment upon the heating surface” of a conventional heating unit for a humidifier (Ex. 1009, 2:48–51, 4:33–37). We further find that a skilled artisan would have combined these teachings in a manner that would result in Netzer’s horizontal slide-on chamber moving in a direction that “urges” a base of the water chamber “in contact with” a heater unit, as taught by Levine, in order “to implement the well-known and conventional means of applying heat to the base of a water container.” Ex. 1012 ¶¶ 78–80. Indeed, this combination “‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 417 (2007). Based on those findings, we conclude that claim 7 would have been obvious over the combination of Netzer and Levine. The record evidence fully supports that the combination of Netzer and Levine teaches all the limitations of claim 7 and that a skilled artisan would have combined those teachings in a manner resulting in the claimed invention. As such, we are persuaded that ResMed has demonstrated by a preponderance of the evidence that claim 7 is unpatentable as obvious over Netzer and Levine. C.” slip op. at 16

  Patent outcomesUS 8,550,072 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,550,072
• Resmed Limited / Resmed Inc., And Resmed Corp. v. Fisher & Paykel Healthcare LimitedSome claims unpatentable
  PTAB · Mar 7, 2018 · IPR2016-01727 · APJ Michael L Woods · IPR · Final written decision

  Claim 3 is unpatentable over HC200 and Netzer; claim 7 was not shown unpatentable over HC200, Netzer, and Bahr because the combination lacked a supported motivation to add electrical connections.

  RulingsFinal written decision

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

    “We agree with Mr. Virr’s testimony that “pressing is not . . . mentioned in the specification” (Ex. 1035 ¶ 7) and agree with Petitioner’s construction that “pressing is not required by the claims” (Pet. Reply 2). We do not agree with Patent Owner’s proposed construction for the following reasons.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Nevertheless, based on our review of the ’624 patent, the types of problems and solutions described in the ’624 patent and applied prior art, and the testimony of Mr. Virr and Dr. Schneider, we adopt Petitioner’s asserted level of ordinary skill and find that a: person of ordinary skill in the art (“POSITA”) as of any of the claimed priority dates as early as March 2000 would have had a bachelor’s degree in mechanical engineering, biomedical engineering, or a related discipline, and at least five years of relevant product design experience in the field of medical devices or respiratory therapy, or an equivalent advanced education. Pet. 14 (citing Ex. 1012 ¶¶ 22–23). We also agree with Patent Owner that any differences in the parties’ proposed level of ordinary skill does not impact our analysis. See PO Resp. 14–15; see also Transcript at 47:11–14.” slip op. at 13

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

    “Further, Petitioner articulately reasons with rational underpinnings that a person of ordinary skill in the art would have modified “HC200 to move the patient outlet tube from the humidifier chamber to the housing, as taught by Netzer, so that the humidifier chamber could slide in and out of the housing without requiring the patient to disconnect the outlet tube and masked every time he needed to fill or clean the humidifier.” Pet. 25 (citing Ex. 1012 ¶ 74); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418 (“rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). For the foregoing reasons, and as set forth in the Petition supported by the underlying evidence cited therein, we find that the combination of HC200 and Netzer satisfies the limitations of claim 3 and are persuaded that a preponderance of the evidence supports the conclusion that claim 3 is unpatentable over HC200 and Netzer.” slip op. at 24

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “CPAP machine would use “electrical components of the hose” (Ex. 1012 ¶ 86) or “a heater wire in the hose” (id. at ¶ 87), neither Petitioner nor Mr. Virr cites to any portion of HC200 or Netzer to support this assertion. See Pet. 16–19 (asserted teachings of HC200), 19–24 (asserted teachings of Netzer), 48–49; see also Ex. 1012 ¶¶ 49–57 (Mr. Virr’s testimony describing Netzer); see also id. at ¶¶ 58–62 (Mr. Virr’s testimony describing HC200). Petitioner also does not explain adequately how its proposed combination results in “any electrical components of the hose” (Pet. 48) or “a heater wire in the hose” (id. at 49) so that an electrical connection would be needed. Upon weighing Dr. Schneider’s testimony (Ex. 2004 ¶¶ 104–105) and Mr. Virr’s testimony (Ex. 1012 ¶¶ 86–87; Ex. 1035 ¶ 21), we are not persuaded that one of ordinary skill in the art would have added an “electrical component of the hose” or “heater wire in the hose” to the HC200/Netzer combination, much less Bahr’s electrical connections, as proposed by Petitioner. Bahr teaches contacts for “sensor 28, such as a solid state pressure transducer or a flow meter” (Ex. 1011 ¶ 20) “to provide a visible indication on a display 54 of monitored properties of the gas” (id. ¶ 24), or “detector 56 . . . in order to detect whether a sensor is connected” (id. ¶ 25). See also Ex. 2004 ¶ 104 (“Bahr teaches a detector attached to its electrical contacts to detect whether a sensor is connected”); PO Resp. 37 (stating the same in an argument why references would not be combined). Unlike Bahr, however, neither HC200 nor Netzer discloses a display for providing “monitored properties of the gas,” let alone a similar pressure transducer or flow meter for measuring such properties. Because HC200 indicates that the patient monitors if air is leaking around the mask visually (see Ex. 1017, 14), we are not persuaded that a POSITA would have added a separate electrical sensor to monitor air leakage, either. Turning to Netzer, although Netzer discloses a “spring-loaded electric switch” to turn off Netzer’s humidifier upon removal of its liquid chamber (Ex. 1008, 6), Netzer does not describe this switch as requiring any “electrical components of the hose” or “a heater wire in the hose.” Accordingly, we are not persuaded that one of ordinary skill in the art would have further modified Netzer and HC200 to include Bahr’s electrical connections, as Petitioner proposes, when doing so would needlessly add cost and complexity to the combined device. See Ex. 2004 ¶ 105. As such, Petitioner’s reasoning has insufficient rational underpinnings (KSR, 550 U.S. at 418), and Petitioner has failed to establish by a preponderance of the evidence that claim 7 is unpatentable over HC200, Netzer, and Bahr.” slip op. at 27

  Patent outcomesUS 7,111,624 mixed
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,111,624
• Resmed Limited / Resmed Inc. et al. v. Fisher & Paykel Healthcare LimitedSome claims unpatentable
  PTAB · Mar 7, 2018 · IPR2016-01725 · APJ Michael L Woods · IPR · Final written decision

  Claim 3 is unpatentable as obvious over Netzer and Levine; Petitioner did not show claim 7 unpatentable over Netzer, Levine, and Bahr.

  RulingsFinal written decision

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

    “Upon reviewing the claim language, the Specification, the prosecution history, the testimony of Dr. Schneider (e.g., Ex. 2004 ¶¶ 54–60), the testimony of Mr. Virr (e.g., Ex. 1028 ¶ 7), and Petitioner’s definition of “urge” (Ex. 1031), giving the claimed terms their ordinary and customary meaning under the broadest reasonable construction standard, we construe the claimed phrase “said single motion of engagement urges the base of said water chamber adjacent and in contact with said chamber heater,” as requiring a single motion of engagement that moves the chamber base in a direction so that the chamber base is adjacent and in contact with the chamber heater. We do not agree with Patent Owner’s proposed construction that the claim limitation requires the “single motion . . . to . . . also press the chamber base against the chamber heater,” which requires application of some pressing force not claimed or otherwise described in the Specification. See PO Resp. 16 (emphasis added).” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Nevertheless, based on our review of the ’624 patent, the types of problems and solutions described in the ’624 patent and applied prior art, and the testimony of Mr. Virr and Dr. Schneider, we adopt Petitioner’s asserted level of ordinary skill and find that a: person of ordinary skill in the art (“POSITA”) as of any of the claimed priority dates as early as March 2000 would have had a bachelor’s degree in mechanical engineering, biomedical engineering, or a related discipline, and at least five years of relevant product design experience in the field of medical devices or respiratory therapy, or an equivalent advanced education.” slip op. at 13

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “or Levine’s humidifier would use “electrical components” or “a heater wire” in their hoses (see Ex. 1012 ¶¶ 99–100), neither Petitioner nor Mr. Virr cites to any portion of Netzer or Levine to support this assertion. See Pet. 15–19 (asserted teachings of Netzer), 27 (asserted teachings of Levine), 28–31; see also Ex. 1012 ¶¶ 49–57 (Mr. Virr’s testimony describing Netzer), ¶¶ 69–70 (Mr. Virr’s testimony describing Levine). Petitioner also does not explain adequately how its proposed combination results in “any electrical components of the hose” (Pet. 39) or “a heater wire in the hose” (id. at 43) so that an electrical connection would be needed. Upon weighing Dr. Schneider’s testimony (Ex. 2004 ¶¶ 104–105) and Mr. Virr’s testimony (Ex. 1012 ¶¶ 99–100; Ex. 1028 ¶ 21), we are not persuaded that one of ordinary skill in the art would have added an “electrical component of the hose” or “heater wire in the hose” to the Netzer/Levine combination, let alone Bahr’s electrical connections, as proposed by Petitioner. Bahr teaches contacts for “sensor 28, such as a solid state pressure transducer or a flow meter” (Ex. 1011 ¶ 20) “to provide a visible indication on a display 54 of monitored properties of the gas” (id. ¶ 24), or “detector 56 . . . in order to detect whether a sensor is connected” (id. ¶ 25). See also Ex. 2004 ¶ 104 (“Bahr teaches a detector attached to its electrical contacts to detect whether a sensor is connected”); PO Resp. 37 (stating the same in an argument why references would not be combined). Levine, on the other hand, discloses “temperature sensor inputs 91 and 92” and “various temperature warning lights and alarm indicators” to “provide water to a patient at a temperature which is as comfortable as possible” (see Ex. 1009, 4:14–23), and that “[i]t has been found that the temperature of humidified gas measured at the outlet 24 [of the humidifier 10] is approximately 99° F” (id. at 5:3–4; see also id. at Figs. 1, 2, 5). Petitioner does not direct us to any disclosure within Levine (Pet. 27; Ex. 1012 ¶¶ 69–70) that describes the wires or sensors that connect to temperature sensor inputs 91 and 92 as residing within Levine’s humidifier hose, or that temperature is measured anywhere other than at Levine’s outlet 24 of humidifier 10 (see Ex. 1009, 5:3–4). Turning to Netzer, while Netzer discloses a “spring-loaded electric switch” to turn off Netzer’s humidifier upon removal of its liquid chamber (Ex. 1008, 6), Netzer does not describe this switch as requiring any “electrical components of the hose” or “a heater wire in the hose.” Accordingly, we are not persuaded that one of ordinary skill in the art would have further modified Netzer and Levine to include Bahr’s electrical connections, as Petitioner proposes, when doing so would needlessly add cost and complexity to the combined device. See Ex. 2004 ¶ 105. As such, Petitioner’s reasoning has insufficient rational underpinnings (KSR, 550 U.S. at 418), and Petitioner has failed to establish by a preponderance of the evidence that claim 7 is unpatentable over Netzer, Levine, and Bahr.” slip op. at 27

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

    “or Levine’s humidifier would use “electrical components” or “a heater wire” in their hoses (see Ex. 1012 ¶¶ 99–100), neither Petitioner nor Mr. Virr cites to any portion of Netzer or Levine to support this assertion. See Pet. 15–19 (asserted teachings of Netzer), 27 (asserted teachings of Levine), 28–31; see also Ex. 1012 ¶¶ 49–57 (Mr. Virr’s testimony describing Netzer), ¶¶ 69–70 (Mr. Virr’s testimony describing Levine). Petitioner also does not explain adequately how its proposed combination results in “any electrical components of the hose” (Pet. 39) or “a heater wire in the hose” (id. at 43) so that an electrical connection would be needed. Upon weighing Dr. Schneider’s testimony (Ex. 2004 ¶¶ 104–105) and Mr. Virr’s testimony (Ex. 1012 ¶¶ 99–100; Ex. 1028 ¶ 21), we are not persuaded that one of ordinary skill in the art would have added an “electrical component of the hose” or “heater wire in the hose” to the Netzer/Levine combination, let alone Bahr’s electrical connections, as proposed by Petitioner. Bahr teaches contacts for “sensor 28, such as a solid state pressure transducer or a flow meter” (Ex. 1011 ¶ 20) “to provide a visible indication on a display 54 of monitored properties of the gas” (id. ¶ 24), or “detector 56 . . . in order to detect whether a sensor is connected” (id. ¶ 25). See also Ex. 2004 ¶ 104 (“Bahr teaches a detector attached to its electrical contacts to detect whether a sensor is connected”); PO Resp. 37 (stating the same in an argument why references would not be combined). Levine, on the other hand, discloses “temperature sensor inputs 91 and 92” and “various temperature warning lights and alarm indicators” to “provide water to a patient at a temperature which is as comfortable as possible” (see Ex. 1009, 4:14–23), and that “[i]t has been found that the temperature of humidified gas measured at the outlet 24 [of the humidifier 10] is approximately 99° F” (id. at 5:3–4; see also id. at Figs. 1, 2, 5). Petitioner does not direct us to any disclosure within Levine (Pet. 27; Ex. 1012 ¶¶ 69–70) that describes the wires or sensors that connect to temperature sensor inputs 91 and 92 as residing within Levine’s humidifier hose, or that temperature is measured anywhere other than at Levine’s outlet 24 of humidifier 10 (see Ex. 1009, 5:3–4). Turning to Netzer, while Netzer discloses a “spring-loaded electric switch” to turn off Netzer’s humidifier upon removal of its liquid chamber (Ex. 1008, 6), Netzer does not describe this switch as requiring any “electrical components of the hose” or “a heater wire in the hose.” Accordingly, we are not persuaded that one of ordinary skill in the art would have further modified Netzer and Levine to include Bahr’s electrical connections, as Petitioner proposes, when doing so would needlessly add cost and complexity to the combined device. See Ex. 2004 ¶ 105. As such, Petitioner’s reasoning has insufficient rational underpinnings (KSR, 550 U.S. at 418), and Petitioner has failed to establish by a preponderance of the evidence that claim 7 is unpatentable over Netzer, Levine, and Bahr.” slip op. at 27

  Patent outcomesUS 7,111,624 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,111,624

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.