- Draftkings Inc., A Delaware Corporation v. AG 18, LLCSome claims unpatentablePTAB · Mar 12, 2024 · IPR2022-01446 · APJ George R Hoskins · IPR · Final written decision
Claims 1–17 and 19–30 are unpatentable based on the listed anticipation and obviousness grounds; claim 18 was not shown unpatentable.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“Module Terms each recite a “module” that is configured to perform or to oversee certain recited functionality, without reciting sufficient structure for performing that functionality. See Pet. 32. Further, as in Williamson, the word “module” in the context of the ’205 patent claims and specification is a “nonce” word, used “in a manner that is tantamount to using the word ‘means.’” Williamson, 792 F.3d at 1350–51. We therefore agree with Petitioner’s position that the rebuttable presumption against application of § 112 ¶ 6 is overcome in this case, because the Module Terms are not understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. See Williamson, 792 F.2d at 1349 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”). Patent Owner’s and Dr. Lane’s apparent disagreement with this conclusion in the context of the ’205 patent is unaccompanied by any argument seeking to establish that the Module Terms might be understood to recite a sufficiently definite meaning as the name for structure. See PO Resp. 6; Ex. 2005 ¶ 28.” slip op. at 55
- ExcludeMotion to exclude, deniedDenied
“Petitioner filed a Motion to Exclude Evidence proffered by Patent Owner (Paper 31). Patent Owner filed an Opposition (Paper 32), and Petitioner filed a Reply (Paper 33). We deny Petitioner’s Motion to Exclude Evidence, for reasons provided below.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“k) Conclusion Regarding Claim 12 Thus, based on the record presented, we conclude Petitioner has” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed
“Petitioner relies on Bryson as disclosing the subject matter recited in claim 1, except for limitations 1[g] and 1[h], in substantially similar fashion as discussed above in Ground One in relation to other claims. See Pet. 68–73. Patent Owner’s sole opposition in this regard is whether Bryson discloses the betting range limitation 1[j]. See PO Resp. 49–53 (Patent Owner’s opposition to Ground Four as to claim 1). We conclude a preponderance of the evidence establishes Bryson supports Petitioner’s unopposed contentions in this regard, for the reasons set forth in the Petition which we adopt as our own in this Decision. We accordingly find Bryson discloses the preamble 1[pre] and limitations 1[a]–1[f], 1[i], and 1[k]–1[m].” slip op. at 74
Patent outcomesUS 9,978,205 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,978,205 - Draftkings Inc. v. AG 18, LLCSome claims unpatentablePTAB · Mar 12, 2024 · IPR2022-01448 · APJ Frances L Ippolito · IPR · Final written decision
Claims 1–10 and 12–29 are unpatentable over the asserted anticipation and obviousness grounds; claim 11 was not shown unpatentable.
RulingsFinal written decision- Skill levelOther
“B. Level of Ordinary Skill in the Art In determining the level of skill in the art, we consider the type of” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“C. Claim Construction In an inter partes review, we construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Accordingly, our claim construction standard is the same as that of a district court. See id. Under the standard applied by district courts, claim terms are generally given their plain and ordinary 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 v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).” slip op. at 11
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“generally takes issue with whether Petitioner has sufficiently explained its construction of means-plus-function limitations. See PO Resp. 24–35. Nonetheless, based on the complete record, we find that the Petition “identif[ies] the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function” of this means-plus-function limitation in claim 26. 37 C.F.R. § 42.104(b)(3); see Pet. 22 (citing Ex. 1001, 3:60–66). Moreover, we apply Petitioner’s construction for our prior-art analysis because it is consistent with and supported by the complete record.” slip op. at 38
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“9–11, 20 102(e) Bryson 9, 10 11” slip op. at 110
Patent outcomesUS 10,614,657 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,614,657 - C.R. Bard, Inc. v. Medline Industries, LPAll claims unpatentablePTAB · Nov 23, 2022 · IPR2019-00223 · APJ Mitchell G Weatherly · IPR · Remand
Claims 7, 8, and 11–13 are unpatentable as obvious because the prior-art combinations render them obvious, and the objective evidence does not significantly weigh against that conclusion.
RulingsRemand decision- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“IPR2019-00208 and this proceeding do not involve an “identical issue” despite Patent Owner relying on essentially the same body of objective evidence of nonobviousness in both proceedings. The challenged claims remaining on remand materially differ from those at issue in IPR2019-00208. Compare Ex. 1001, 18:30–19:9, with IPR2019-00208, Ex. 1001, 11:47–12:28; see also PO Remand Br. 23. The material differences in the claims, alone, and thus the issues previously decided, precludes a finding of collateral estoppel. Therefore, we conclude that Patent Owner is not collaterally estopped from relying upon its objective evidence of nonobviousness. Rather, we consider and weigh that evidence as it applies to the claims at issue in this proceeding below.” slip op. at 20
- Skill levelSkill level board ownOther
“skill in the relevant art would have a bachelor’s degree in packaging engineering, mechanical engineering, or industrial design. Pet. 18–19 (citing Ex. 1002 ¶ 14); PO Resp. 13 (citing Ex. 2040 ¶ 37). Alternatively, such a person could have an engineering degree in another technical field along with about two years of experience designing medical packaging. Pet. 18 (citing Ex. 1002 ¶ 14); PO Resp. 13 (citing Ex. 2040 ¶ 37). Neither party contends that a person of ordinary skill needs to be a medical practitioner, but both parties agree that the person of ordinary skill would consult with medical practitioners familiar with catheterization procedures. Pet. 18–19; PO Resp. 14 (citing Ex. 2041 ¶ 78). Slight differences exist in the formulation of the level of ordinary skill between the parties. We, however, discern no meaningful difference because none of those differences would affect the outcome of our analysis. Accordingly, we apply the level of skill set forth in the preceding paragraph.” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedOther
“Based on our careful review of both reports, we find that Dr. Sheridan’s data is more reliable because Dr. Sheridan cites and provides copies of the evidence upon which his numbers for the Legacy product are based. Ex. 1072 ¶ 93 (citing Schedule 5.0, which cites Schedules 6.0 (ERASE CAUTI), 7.0 (SureStep), 8.0 (Advance), and 9.0 (Legacy with Schedule 9.0 citing Schedule 9.6 for unit sales, which cites Bard_1086170 (Ex. 1098)). Dr. Rao cites “BARD_1087970_HIGHLY CONFIDENTIAL.xlsx” as the source of his Legacy information. We, however, cannot verify the accuracy of Dr. Rao’s numbers because we cannot identify a copy of the cited evidence in the record of this proceeding. Ex. 2042, p. 65 (Tab 3).” slip op. at 34
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“evidence of nonobviousness, we conclude that Petitioner has proven by a preponderance of evidence that the combined teachings of either Solazzo and Serany or Solazzo and Disston render claims 7, 11, and 12 unpatentable as obvious.” slip op. at 17
Patent outcomesUS 9,808,596 unpatentable§ 103 obviousnesscites GrahamPatents in suitUS 9,808,596 - C.R. Bard, Inc. v. Medline Industries, Inc.Some claims unpatentablePTAB · Nov 23, 2022 · IPR2019-00035 · APJ Mitchell G Weatherly · IPR · Remand
Claims 1, 2, 6, 8–10, 16, 25–27, 29–37, and 39–44 are unpatentable as obvious; claims 7, 17–19, 28, and 38 were not shown unpatentable.
RulingsRemand decision- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“IPR2019-00208 and this proceeding do not involve an “identical issue” despite Patent Owner relying on essentially the same body of objective evidence of nonobviousness in both proceedings. The challenged claims in this proceeding materially differ from those at issue in IPR2019- 00208. Compare Ex. 1001, 27:47–30:57, with IPR2019-00208, Ex. 1001, 11:47–12:28; see also PO Remand Br. 23. The material differences in the claims, alone, and thus the issues previously decided, precludes a finding of collateral estoppel. Therefore, we conclude that Patent Owner is not collaterally estopped from relying upon its objective evidence of nonobviousness. Rather, we consider and weigh that evidence as it applies to the claims at issue in this proceeding below.” slip op. at 54
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“However, we disagree with Patent Owner’s interpretation of limitation 1a as requiring that the compartment for receiving the medical assembly be “distinct” from the first compartment or that the medical assembly be disposed within the “compartment” of limitation 1a. Limitation 1f requires “at least two compartments,” but expressly recites a functional limitation for only “a first compartment” among the “at least two compartments.” Ex. 1001, 27:60–62. Claim 1 does not further limit the unspecified compartment among the “at least two compartments” or specify what items, if any, are placed within it. See id. at 27:47–67. Two unchallenged dependent claims, claims 4 and 11, further recite that “the at least two compartments” further comprise “a second compartment.” Claim 4 depends directly from claim 1 and further recites, in pertinent part: “the at least two compartments further comprising a second compartment separated from the first compartment by a wall with an opening, further comprising a catheter assembly disposed within the second compartment, the catheter assembly comprising a fluid bag.” Id. at 28:21–25 (emphasis added). Claim 11 depends from claim 10, which depends from claim 1, and similarly recites: “the at least two compartments further comprising a second compartment separated from the first compartment by a wall with an opening, further comprising a catheter assembly disposed within the second compartment.” Id. at 28:47–51 (emphasis added).” slip op. at 18
- Skill levelSkill level board ownDecided for petitioner
“skill in the relevant art would have a bachelor’s degree in packaging engineering, mechanical engineering, or industrial design. Pet. 18 (citing Ex. 1002 ¶¶ 14–16); PO Resp. 15 (citing Ex. 2026 ¶ 38). Alternatively, such a person could have an engineering degree in another technical field along with about two years of experience designing medical packaging. Pet. 18 (citing Ex. 1002 ¶¶ 14–16); PO Resp. 15 (citing Ex. 2026 ¶ 38). Neither party contends that a person of ordinary skill needs to be a medical practitioner, but both parties agree that the person of ordinary skill would consult with medical practitioners familiar with catheterization procedures. Pet. 18; PO Resp. 15 (citing Ex. 2027 ¶ 78). Slight differences exist in the formulation of the level of ordinary skill between the parties. We, however, discern no meaningful difference because none of those differences would affect the outcome of our analysis. Accordingly, we apply the level of skill set forth in the preceding paragraph.” slip op. at 10
- Expert testimonyPatent owner expert creditedPetitioner expert creditedMixed
“Petitioner argues that shallow area 11B “facilitates easy lubrication of the catheter” simply because it is shallow and “it was well-known to ‘(a) apply lubricant directly on the catheter; and (b) use the same compartment where lubricant is stored to lubricate the catheter.’” Pet. Remand Br. 28–29 (citing Pet. 32, 34; Ex. 1002 ¶ 231). Patent Owner persuasively responds, however, that a practitioner would not use the same compartment to collect urine and lubricate the catheter because the lubricant would contaminate the urine specimen collected in the compartment. PO Remand Br. 3–4 (citing PO Resp. 36; Op. *8); see also Ex. 2027 ¶ 175 (Ms. Chiappetta testifying that “lubrication in the portion of the tray that collects urine will contaminate the urine,” which would invalidate any testing of the patient’s urine). Although it may be easier to lubricate a catheter in shallow area 11B than in deep area 11A, we find that Solazzo’s shallow area 11B is not well-suited, configured, or intended for lubricating a catheter; rather, Solazzo recommends using lubricating wells 31 and 33 for that purpose. We credit Ms. Chiappetta’s supporting testimony to that effect. See Ex. 2027 ¶ 175. Accordingly, we conclude that Petitioner has failed to prove by a preponderance of evidence that the combined teachings of Solazzo and Serany render claim 7 unpatentable as obvious.” slip op. at 31
Patent outcomesUS 9,745,088 mixedClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 9,745,088 - Hamilton Technologies LLC v. Fleur TehraniAll claims unpatentablePTAB · Dec 28, 2021 · IPR2020-01199 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1–6, 9–12, 29–33, and 41 are unpatentable as obvious over the Carmichael-Anderson and Taube-based combinations; the Carmichael anticipation ground was not proven.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“We do not agree with Patent Owner that Dr. Imbruce’s testimony should be disregarded. With respect to Patent Owner’s contentions about “technically erroneous disclosures” and the construction of “for a next breath,” those are really about Patent Owner’s disagreements about those matters, not whether Dr. Imbruce was attempting to mislead the Board. Disagreement between the experts is not a basis for disregarding testimony. We have also reviewed the entirety of Dr. Imbruce’s deposition, and, in particular, the various parts identified by Patent Owner. PO Resp. 76–77. And, contrary to Patent Owner’s assertions, we found Dr. Imbruce gave detailed answers in response to Patent Owner’s questions. We found Dr. Imbruce’s testimony to be adequate. See, e.g., Ex. 2016, 107:11–115:8 (discussion of Anderson references, explaining the similarities of the references, but declining to vouch for data he has not seen or collected); 115:9–116:6 (FDA permission, offering to confirm what reference said about FDA approval, but attorney moving on to other questions). Thus, we do not find Dr. Imbruce’s behavior during cross examination as a reason to give no weight to the entirety of his testimony.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(i) a medically trained physician or clinician specializing in treating respiratory failure issues with at least five years of practical clinical ventilator experience treating such conditions; or (ii) a Master’s degree in Electrical Engineering or a related field and about five years of practical experience with developing ventilators for clinical patient treatment; or (iii) a Bachelor’s degree in Electrical Engineering or a related field and about 10 years of practical experience with developing ventilators for clinical patient treatment. Pet. 20‒21 (referencing Ex. 1002 ¶¶ 71‒72). Petitioner proposes that “[a] higher level of education or specific skill might compensate less experience, and vice versa.” Id. at 21. Patent Owner does not present an opposing view of the level of skill of the hypothetical person having ordinary skill in the art of the ’571 patent. See PO Resp. passim. For the purposes of this Decision, we apply Petitioner’s definition of the level of ordinary skill in the art. We determine that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’571 patent, based on our review of the record.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“In our Institution Decision, we determined that only the claim terms “first means” and “second means” required construction. Inst. Dec. 25–27. Neither party disputes those constructions and we maintain and adopt them for the purposes of this Decision. We determine that, for purposes of this decision, no other terms require express construction. 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.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Carmichael lacks adequate disclosure to anticipate the apparatus of claim 1. Specifically, because Carmichael focuses on the result of physician surveys, and not on the description of a ventilation system per se, Carmichael lacks details as to the specific manner in which the assist control mode was being used to control PEEP and FIO2 levels. Specifically, we cannot discern that Carmichael’s discussion of an assist control mode for mechanical ventilation necessarily entails adjustments to FIO2 and PEEP “for a next breath of the patient” as recited in claim 1. As explained by Patent Owner, it is possible that the parameters of PEEP and FIO2 could have been set manually by the physician and/or could have been updated only periodically during treatment. See, e.g., PO Resp. 25‒26. Thus, Petitioner has not shown by a preponderance of evidence that Carmichael anticipates claim 1, or claims 2, 5, 6, and 11 that depend from claim 1.” slip op. at 20
Patent outcomesUS 7,802,571 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,802,571 - Sotera Wireless, Inc. v. Masimo CorporationAll claims unpatentablePTAB · Nov 19, 2021 · IPR2020-01019 · APJ Jennifer Meyer Chagnon · IPR · Final written decision
Claims 1–25 are unpatentable as obvious over Saidara and Malangi, with claims 3–5, 10–12, 14, 16–17, and 24 also obvious over Saidara, Malangi, and Hickle; Baker-1 grounds were not reached.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“embodiment of the claimed invention includes suspension of an activated alarm and no disclosed embodiment includes parameter-specific pre-alarm delays. Based on the overwhelming and clear disclosure in the Specification of the RE353 patent, we agree with Petitioner that “the correct construction—the construction that most accurately delineates the scope of the claimed invention” requires suspension of an activated alarm, and precludes delays or suspensions that occur before activation of an alarm, i.e., pre-alarm delays. See PPC Broadband, Inc. v. Corning Optical Comm’ns RF, LLC, 815 F.3d 734, 740–42 (Fed. Cir. 2016). We recognize that we do not import limitations from the Specification into the claims. Thorner, 669 F.3d at 1366–67 (“We do not read limitations from the specification into claims.”). It is indisputable, however, that claims must be interpreted in light of the Specification of which they are a part. Phillips, 415 F.3d at 1315–1316. This is because the claims “do not stand alone. Rather, they are part of ‘a fully integrated written instrument,’ consisting principally of a specification that concludes with the claims. For that reason, claims ‘must be read in view of the specification, of which they are a part.’” Id. As the Court of Appeals for the Federal Circuit has stated, “the specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Vitrionics Corp. v. Conceptronic, Inc., 90 F.3d 1576,” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person having ordinary skill in the art “would have been a person with at least a B.S. degree in electrical or biomedical engineering or a related field with at least two years’ experience designing patient monitoring systems,” wherein “[l]ess work experience may be compensated by a higher level of education, and vice versa.” Pet. 13 (citing Ex. 1003 ¶¶ 33–41); see Ex. 1040 ¶ 28. Patent Owner applies the level of ordinary skill in the art identified by Petitioner. PO Resp. 8 n.5 (citing Ex. 2011 ¶¶ 18–19). We adopt Petitioner’s assessment, which appears consistent with the level of skill reflected in the Specification and prior art.” slip op. at 12
- Expert testimonyPatent owner expert discountedDecided for patent owner
“Sur-reply 4–5. We recognize Mr. Goldberg’s testimony that, “in reading the patent as a whole, I believe that pre-alarm delays are, in fact, disclosed.” Ex. 1042, 118:2–13. When pressed to show support in the Specification, however, Mr. Goldberg pointed, first, to the disclosed “other suspend initiator” and, second, to the disclosed alarm suspend firmware that, he contends, “implies . . . a[n] ability to suspend the alarm other than by the alarm silence [button].” See id. at 118:20–123:4 (pointing to Ex. 1001, 4:60–63, 5:37, Figs. 2, 4). We do not find this testimony or Patent Owner’s argument persuasive. First, that the claimed system could suspend the alarm in a manner other than the described silence button (i.e., with the “other suspend initiator”), does not alter the fact that the Specification only discloses suspending an alarm after it has been activated. Second, the firmware upon which Mr. Goldberg relies is disclosed as “respond[ing] to an alarm silence button press 288.” Ex. 1001, 5:38–41. Accordingly, we give little weight to Mr. Goldberg’s conclusory testimony that pre-alarm delays are disclosed, because this testimony is unsupported by any persuasive cited evidence. See 37 C.F.R. § 42.65(a).” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundNot shown unpatentableMixed
“The Petition provides limited guidance in this regard. Petitioner contends that it would have been obvious to also monitor blood pressure with Saidara’s device, as taught by Malangi, and provides reasons why such a modification would have been desirable. Pet. 68. Even accepting these reasons, for the sake of argument, the Petition is silent as to how a skilled artisan would have implemented Malangi’s teachings in Saidara. Id. at 67– 69. In its Reply, Petitioner cites testimony that is insufficient to support its contentions. For example, Petitioner relies upon the testimony of its expert, Dr. Bergeron, that a person of ordinary skill in the art “understood how [to] measure blood pressure.” Ex. 1040 ¶ 109; Pet. Reply 23. Petitioner also relies on the testimony of Patent Owner’s expert, Mr. Goldberg, that blood pressure cuffs were prevalent. Ex. 1042, 45:18–46:7; Pet. Reply 23. Both points may well be true. However, neither Petitioner, nor the cited expert testimony, explains persuasively how a skilled artisan would have known how to integrate Malangi’s teaching of monitoring and alarming for blood pressure (whether using a prevalent and well-known blood pressure cuff or any other device) with Saidara’s particular system, nor do they discuss the detriments or benefits of such a modification, e.g., the increased size and complexity of incorporating a blood pressure cuff into Saidara’s device. It is Petitioner’s burden to do so. It is insufficient to merely establish that it was known to use blood pressure cuffs to monitor that parameter.14 For the foregoing reasons, we agree with Patent Owner that Petitioner fails to explain sufficiently how a person of ordinary skill in the art would have modified Saidara to also monitor, alarm, and delay alarms for blood pressure, and leaves it to the Board to piece together the proposed modification. PO Resp. 61–62; but see Pet. Reply 25, and Ex. 1040 ¶¶ 109– 111 (explaining how, apart from blood pressure monitoring, SpO2 monitoring and alarming would have been achieved in the combination).” slip op. at 44
Patent outcomesUS RE47,353 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · Graham - Sotera Wireless, Inc. v. Masimo CorporationAll claims unpatentablePTAB · Nov 19, 2021 · IPR2020-01033 · APJ Amanda F Wieker · IPR · Final written decision
Claims 1–24 are unpatentable; claims 1–24 are shown unpatentable over Saidara and Malangi, with specified dependent claims also obvious over combinations including Hickle.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Analysis Contrary to Patent Owner’s assertions, we find that every disclosed embodiment of the claimed invention includes suspension of an activated alarm and no disclosed embodiment includes parameter-specific pre-alarm delays. Based on the overwhelming and clear disclosure in the Specification of the ’249 patent, we agree with Petitioner that “the correct construction— the construction that most accurately delineates the scope of the claimed invention,” requires suspending or holding an activated alarm, and precludes holds or suspensions that occur before activation of an alarm, i.e., pre-alarm delays. See PPC Broadband, Inc. v. Corning Optical Comm’ns RF, LLC, 815 F.3d 734, 740–42 (Fed. Cir. 2016).” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art “would have been a person with at least a B.S. degree in electrical or biomedical engineering or a related field with at least two years’ experience designing patient monitoring systems,” wherein “[l]ess work experience may be compensated by a higher level of education, and vice versa.” Pet. 13 (citing Ex. 1003 ¶¶ 33–41). Patent Owner applies the level of ordinary skill in the art identified by Petitioner. PO Resp. 9 n.5 (citing Ex. 2011 ¶¶ 18–19). We adopt Petitioner’s assessment, which appears consistent with the level of skill reflected in the Specification and prior art.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed
“As an initial matter, we agree with Patent Owner’s arguments about the proposed modification of Saidara to include blood pressure monitoring and alarming. Primarily, we agree that Petitioner fails to meet its burden of explaining how a person of ordinary skill in the art would have incorporated Malangi’s teaching of blood pressure monitoring and alarming with Saidara’s device. PO Resp. 55–56, 62–63. The Petition provides limited guidance in this regard. Petitioner contends that it would have been obvious to also monitor blood pressure with Saidara’s device, as taught by Malangi, and provides reasons why such a modification would have been desirable. Pet. 68. Even accepting these reasons, for the sake of argument, the Petition is silent as to how a skilled artisan would have implemented Malangi’s teachings in Saidara. Id. at 67– 69. In its Reply, Petitioner cites testimony that is insufficient to support its contentions. For example, Petitioner relies upon the testimony of its expert, Dr. Bergeron, that a person of ordinary skill in the art “understood how [to] measure blood pressure.” Ex. 1040 ¶ 113; Pet. Reply 23. Petitioner also relies on the testimony of Patent Owner’s expert, Mr. Goldberg, that blood pressure cuffs were prevalent. Ex. 1042, 45:18–46:7; Pet. Reply 23. Both points may well be true. However, neither Petitioner, nor the cited expert testimony, explains persuasively how a skilled artisan would have known how to integrate Malangi’s teaching of monitoring and alarming for blood pressure (whether using a prevalent and well-known blood pressure cuff or any other device) with Saidara’s particular system, nor do they discuss the detriments or benefits of such a modification, e.g., the increased size and complexity of incorporating a blood pressure cuff into Saidara’s device. It is Petitioner’s burden to do so. It is insufficient to merely establish that it was known to use blood pressure cuffs to monitor that parameter.13 For the foregoing reasons, we agree with Patent Owner that Petitioner” slip op. at 43
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
Patent outcomesUS RE47,249 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · Graham - Sotera Wireless, Inc. v. Masimo CorporationAll claims unpatentablePTAB · Nov 19, 2021 · IPR2020-00967 · APJ Jennifer Meyer Chagnon · IPR · Final written decision
Claims 1–26 are unpatentable, principally as obvious over Saidara and Malangi; the Board did not reach the alternative Baker-1 grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner
“3. Discussion Contrary to Patent Owner’s assertions, we find that every disclosed embodiment of the claimed invention includes suspension of an activated alarm and no disclosed embodiment includes parameter-specific pre-alarm delays. Based on the overwhelming and clear disclosure in the Specification of the RE244 patent, we agree with Petitioner that “the correct construction—the construction that most accurately delineates the scope of the claimed invention” requires delay or suspension of an activated alarm, and precludes delays or suspensions that occur before activation of an alarm, i.e., pre-alarm delays. See PPC Broadband, Inc. v. Corning Optical Comm’ns RF, LLC, 815 F.3d 734, 740–42 (Fed. Cir. 2016).” slip op. at 24
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“Petition does not provide a means-plus-function construction as required by 37 C.F.R. § 42.104(b)(3). Id. Petitioner replies that “the limitation recites sufficient structure” to perform the specified function (i.e., “outputting a signal responsive to a physiological condition of a patient” (Ex. 1001, 10:39–42)). Pet. Reply 27 (citing Ex. 1040 ¶ 117). In the Sur-reply, Patent Owner contends that Petitioner has the burden on this issue. PO Sur-reply 26–27. We credit Dr. Bergeron’s testimony that a person of ordinary skill in the art “would understand that a ‘physiological sensor means’ is just a physiological sensor that provides signals to a processor for measuring physiological parameters.” Ex. 1040 ¶ 117 (cited at Pet. Reply 27). We find that the limitation includes sufficient structure to perform the claimed function, and thus, is not a means-plus-function limitation. See TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259–1260 (Fed. Cir. 2008) (the presumption that § 112 ¶ 6 applies is overcome if “the claim recites sufficient structure for performing the described functions in their entirety”)).” slip op. at 58
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person having ordinary skill in the art “would have been a person with at least a B.S. degree in electrical or biomedical engineering or a related field with at least two years’ experience designing patient monitoring systems,” wherein “[l]ess work experience may be compensated by a higher level of education, and vice versa.” Pet. 13 (citing Ex. 1003 ¶¶ 33–41); see Ex. 1040 ¶ 28. Patent Owner applies the level of ordinary skill in the art identified by Petitioner. PO Resp. 8 n.5 (citing Ex. 2011 ¶¶ 18–19). We adopt Petitioner’s assessment, which appears consistent with the level of skill reflected in the Specification and prior art.” slip op. at 12
- ExcludeMotion to exclude, deniedDenied
“G. Motion to Exclude Petitioner moves to exclude portions of Exhibits 2017 and 2022. MTE 1, 3, 5. We do not rely upon the identified portions of the exhibits and, as such, dismiss the Motion to Exclude as moot. III. CONCLUSION” slip op. at 62
Patent outcomesUS RE47,244 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · Graham - Intuitive Surgical, Inc. v. Ethicon LLCSome claims unpatentablePTAB · Jan 13, 2020 · IPR2018-01254 · APJ Matthew S Meyers · IPR · Final written decision
Claims 1–10 are unpatentable under § 103; claims 11 and 24 were not shown unpatentable because the proposed combinations did not adequately establish the articulation limitations.
RulingsFinal written decision- BurdenOther
“of proving unpatentability of the challenged claims, and the burden of persuasion never shifts to Patent Owner. To prevail, Petitioner must prove 1 Our decision does not rely on any information deemed confidential by the parties. unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d) (2017). This decision is a Final Written Decision under 35 U.S.C. § 318(a) as to the patentability of claims 1–11 and 24 of the ’969 patent. For the reasons discussed below, we hold that Petitioner has demonstrated by a preponderance of the evidence that claims 1–10 of the ’969 patent are unpatentable under § 103(a). We also hold that Petitioner has not demonstrated by a preponderance of the evidence that claims 11 and 24 of the ’969 patent are unpatentable under § 103(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not appear to dispute Petitioner’s definition of one of ordinary skill in the art. See generally PO Resp. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. In light of the record now before us, we adopt Petitioner’s definition of one of ordinary skill in the art. The level of ordinary skill in the art is also reflected by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“(Fed. Cir. 1993). Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); 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). Here, neither Petitioner nor Patent Owner identifies terms for construction or provides any proposed constructions. Pet. 12; PO Resp. 10; see generally Pet. Reply; Prelim. Resp. 11. Instead, the parties agree that claims of the ’969 patent should be construed according to their broadest reasonable interpretation. Pet. 12; PO Resp. 10. We determine that no claim term needs express interpretation. See Vivid Techs., 200 F.3d at 803 (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 12
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Patent Owner asserts that Petitioner’s expert, Dr. Knodel, “admitted that the tool base shown in Wallace’s figures is not designed to drive an endocutter that clamps and fires.” PO Resp. 36–37 (citing Ex. 2011, 24:20– 23). This admission deserves little weight, however, given that Wallace expressly discloses that “any suitable end effector 66 may be used” in its robotic surgery system depending on the surgical need, including clamps and staplers. Ex. 1008, 7:50–56; see also id. at 2:18–21 (“As used herein, the term ‘end effector’ means the actual working part of the surgical instrument and can include clamps, graspers, scissors, staplers, and needle holders, for example.”); Pet. Reply 18–20; see Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007) (Obviousness “cannot be avoided simply by a showing of some degree of unpredictability in the art so long as there was a reasonable probability of success.”).” slip op. at 33
Patent outcomesUS 8,479,969 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,479,969 - Adidas AG v. Nike, Inc.No claims unpatentablePTAB · Oct 19, 2017 · IPR2016-00921 · APJ James B Arpin · IPR · Final written decision
Petitioner failed to prove claims 1–13 unpatentable as obvious over Reed and Nishida because it did not show a reason to combine their teachings.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Initially, Patent Owner contends that Petitioner has failed to consider appropriate factors identified by our reviewing court and utilized by other panels to assess the level of ordinary skill in the art. Id. at 12–13. We agree with Petitioner that it is not necessary to consider every factor or to weigh the factors equally in order to assess the level of ordinary skill in the art. Reply 2 (quoting In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). Here, we may rely on Petitioner’s declarant’s testimony (Ex. 1003 ¶ 34) and the teachings of the prior art to evaluate Petitioner’s assessment of the level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In particular, Reed and Nishida identify the types of problems encountered in the art prior art solutions to these problems, and the sophistication of the technology. E.g., Ex. 1006, 1:13–55; Ex. 1009, 1:10– 36; see, e.g., Ex. 1007, 1:8–32, 2:12–64; Ex. 1008, 1:11–54; Ex. 1010, 145– 160; see also Ex. 1010, Preface (“The aim of this book is to combine in a single volume the fundamental principles of weft and warp knitting in such a manner that its contents are useful to readers in education, industry or commerce. It thus [fulfills] the long felt need for a comprehensive up-to-date textbook explaining this important sector of textile technology.”). Patent Owner contends that the level of ordinary skill in the art is “low” (PO Resp. 13), but it is not clear whether Patent Owner further contends that Petitioner’s assessment is deficient because Petitioner fails to argue that a person possessing such a “low” level of ordinary skill in the art also would have “experience using knitting technologies to create knitted footwear uppers” (id. at 13–14) or whether the inclusion of such skill would raise the “low” level of skill in the art (id. at 14). Alternatively, Patent Owner may merely be contending that Petitioner’s declarant fails to qualify as a person of ordinary skill in the art. Id. at 14 (“If it was too ‘dangerous’ for Mr. Holden with his nearly forty years of experience, a person with just a “few years of experience” would not have had any knitting experience, let alone experience using knitting technologies to create uppers.”); see Tr. 62:17–22. Patent Owner is not required to help us assess the level of ordinary skill in the art and does not do so here. See PO Resp. 18 (“Petitioner may criticize NIKE for not submitting an expert declaration. But it is Petitioner’s burden to prove unpatentability; it is not NIKE’s burden to prove patentability.”). In response to Patent Owner’s contentions, Petitioner argues that the level of ordinary skill in the art is not low and that hands-on knitting experience is not required. Reply 2–3. Petitioner further argues Patent Owner has not required knitting experience in its previous assessment with respect to a related patent of the level of ordinary skill in the art. Id. (citing IPR2013-00067, Ex. 2010 ¶ 52). Based on the record before us and to the extent necessary, we again adopt Petitioner’s assessment of a person of ordinary skill in the relevant art. Inst. Dec. 8 n.3.” slip op. at 10
- Expert testimonyPetitioner expert creditedMixed
“document.” Reply 3 (quoting Ex. 2004, 12:7–11); see Ex. 2004, 12:12– 13:16. Declarants often have assistance in authoring their declarations. See Square, Inc. v. Think Computer Corp., Case CBM2014-00159, slip op. at 26–27 (PTAB Nov. 27, 2015) (Paper 47) (“the mechanics of declaration preparation is ‘a waste of time, both for the witness and the Board’”). Mr. Holden was not required to be the sole author of his declaration. Rather, the relevant issue regarding the preparation of Mr. Holden’s declaration is whether Mr. Holden adopted the content of his declaration as his own. Here, he has. See Ex. 1003 ¶¶ 3, 4, 209. As Patent Owner suggests, we weigh Mr. Holden’s declaration testimony in light of his testimony on cross-examination. Although Mr. Holden indicated that he was unable to define or was unfamiliar with certain terms during cross-examination, he did name references, including Spencer (Ex. 1010), that he could and would consult to obtain the answers to specific questions. Tr. 63:20–64:13. Moreover, Patent Owner’s counsel acknowledged that persons of ordinary skill in the art (or declarants) do not have to have all of the knowledge relevant to their testimony in their heads and that they are allowed to consult references, as appropriate. Id. at 63:20– 64:2. Although Patent Owner notes that Mr. Holden apparently was not aware of Spencer until this inter partes review (see Ex. 2004, 77:1–3; Tr. 64:1–6), his learning of and relying on a new reference alone is not sufficient reason to disregard, i.e., give no weight to, Mr. Holden’s testimony. Further, the issue here is not whether Mr. Holden is a person of ordinary skill in the art, but rather whether his testimony is of value to the panel. See Tr. 64:15– 18. Thus, as indicated in the discussion below, we determine the appropriate weight to give to Mr. Holden’s testimony.” slip op. at 31
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“8 Patent Owner contends that Reed is not analogous art. PO Resp. 29–31. In particular, Patent Owner contends that Reed is not from the same field of endeavor as the challenged claims and that Reed’s teachings are not reasonably pertinent to the particular problem with which the recited methods are involved. Id. at 29–30. Because Reed is directed to the manufacture of all types of garments, including footwear (Reply 12–14; see Ex. 1006, 1:33–44), and Reed is related directly to preparation of garments layouts from a knitted textile structure (Reply 14–15; see Ex. 1006, 2:29– 35), we are persuaded that Reed is analogous art to the challenged claims.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“i. Failure of Proof Petitioner bears the burden of proving by a preponderance of the evidence that the challenged claims are unpatentable. This includes demonstrating by a preponderance of the evidence that a person of ordinary skill in the art would have had reason to combine the teachings of Reed and Nishida to achieve the methods recited in the challenged claims. As noted above, Petitioner argues that a person of ordinary skill in the art would have had at least three reasons to combine the teachings of Reed and Nishida to achieve the methods recited in the challenged claims. Pet. 12–14; see Tr. 10:12–11:12. First, Petitioner argues that, because Reed teaches that its methods are applicable to “all types of garments” (Ex. 1006, 5:56–57 (emphasis added); see Ex. 1003 ¶ 131), a person of ordinary skill in the art would have had reason to apply the teachings of Reed to the processes and shoe parts of Nishida. Pet. 13 (citing Ex. 1003 ¶ 133). Second, Petitioner argues that, because both Reed and Nishida teach the advantages of reducing cost through the use of computer-controlled knitting machines, a person of ordinary skill in the art would have had reason to combine their teachings. Pet. 13 (citing Ex. 1003 ¶¶ 134–135). Third, Petitioner argues that a person of ordinary skill in the art would have had reason to apply Reed’s methods for producing textile elements, from which to produce garments, to produce Nishida’s shoe upper patterns. Id. at 13–14; see KSR, 550 U.S. at 417. However, none of these reasons or any other reason identified by Petitioner addresses the differences between Reed and Nishida, specifically pre-seaming.” slip op. at 34
Patent outcomesUS 7,814,598 not shown unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,814,598
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.