- Spinal Elements, Inc. v. Spectrum Spine IP Holdings, LLCAll claims unpatentablePTAB · Aug 17, 2022 · PGR2021-00050 · APJ Ulrike W Jenks · PGR · Final written decision
Claims 1–7 are unpatentable over Greenhalgh; claims 8–9 are unpatentable over Greenhalgh alone or with Lynn. Substitute claims 20–28 lack written-description support.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“The parties generally agree that a person of ordinary skill in the art would have been a mechanical or biomedical engineer with several years of 6 We note that a Second Dr. Serhan Declaration is referenced in one of Patent Owner’s exhibit lists, but this document was never filed in this proceeding. See Tr. 33:15–25. experience or an orthopedic surgeon or neurosurgeon with experience designing or developing medical devices. Pet. 18–19; PO Resp. 31. On this record, we adopt the parties’ definition of the level of skill in the art. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We note that “act upon” is not defined in the Specification of the ’575 patent. “Act upon” appears for the first time in claim 1 of the ’575 patent. The Specification describes that “the cage assembly may comprise an expander such as an expansion screw or a shim which, when inserted, selectively expands the body of the cage assembly to a desired size.” Ex. 1001, 4:26–29. The Specification further describes that “translation of the elongate expander proximally toward the trailing end expands the cage body by separating the at least a portion of the upper portion from at least a portion of the lower portion.” Id. at 6:56–59. (emphasis added). We determine that “expander expands the cage” is construed in light of the Specification to mean that the expander acts upon both the upper and lower portion of the cage to move the upper and lower portions further apart. We note, however, there is no requirement that each portion is moved away from the longitudinal expander by the same amount.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for patent owner
“The Specification does not define “unobstructed” or “obstructed.” Based on the disclosure in the Specification, the prosecution history, 7 and the annotated Figure 5A and 5B above, the term “unobstructed” is understood to mean that there are no obstacles or structures lying in the path of the window created by the upper portion, lower portion, and elongate expander that would impede the view through the window. Figure 5B does not show any features that impede the view through the aligned window and thereby shows an “unobstructed view.” Tr. 40:20–41:11, see id. 41:5–6 (“Figure 5B shows nothing extending into the window, and that’s the only 7 Petitioner explains that “the plain meaning of an ‘open’ window is well understood to be a state allowing passage through the window.” Pet. 21 (citing Ex. 1003 ¶ 63). According to Petitioner, Patent Owner expressly defined “unobstructed” during prosecution to “mean there are no features lying in the path and blocking the window.” Id. at 21–22. Patent Owner acknowledges that the term “unobstructed” was added during prosecution in order to distinguish over Baynham (US 2007/0270968 Al, published Nov. 22, 2007). PO Resp. 36–37; Ex. 1002, 29–30. The only example of an obstructing feature identified during prosecution is an axle (or jack screw) that extends down the center of the opening which acts like a bar. Id. at 22 (citing Ex. 1002, 29–30); see Tr. 41:5–8 (“Figure 5B [of the ’575 patent] shows nothing extending into the window, and that’s the only support that there is. There’s no[] qualifying language in the specification that would allow a retreat to specify a particular amount that was considered acceptable.”) support that there is.”). Unobstructed does not refer to the entirety of each window, but rather where they overlap relative to one another. We determine that “unobstructed” means “there are no features lying in the path and blocking the window.”” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“disclose bidirectional cage expansion. We note that “bidirectional” does not 8 Newton’s third law states that for every action (force) in nature there is an equal and opposite reaction. appear in the language of claim 1 of the ’575 patent nor does it appear anywhere in the Specification of the ’575 patent. All that is required by claim 1 is for the cage body to expand, which requires “the expander to act upon portions of the upper portion and the lower portion to expand the cage body by separating at least a portion of the upper portion from at least a portion of the lower portion.” Ex. 1001, 8:27–31. Thus, separation of the upper portion and lower portion upon the longitudinal translation of the elongate expander is all that is required to meet the claim element.” slip op. at 22
Patent outcomesUS 10,709,575 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,709,575 - Nextremity Solutions, Inc. / Zimmer Biomet Holdings, Inc. et al. v. Extremity Medical, LLCInstitutedPTAB · Aug 16, 2022 · IPR2022-00802 · APJ Jeffrey N Fredman · IPR · Institution
The Board instituted IPR of claim 59 on all three asserted § 102(b) anticipation grounds: Brumfield, Marcus, and Chandran.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“XI. CONCLUSION Petitioner has, at this stage, established a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. This determination is, however, based on a preliminary record and is not final on any issues of patentability. We will make a final determination on the patentability of the challenged claims, as necessary and applying the preponderance of the evidence standard, based on a fully developed record through trial. XII. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes review of claim 59 of the ’802 patent is hereby instituted on the grounds set forth in the Petition, commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial.” slip op. at 34
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Determining whether claims are anticipated involves a two-step analysis. The first step involves construction of the claims of the patent at issue. Claim construction is a question of law reviewed de novo.” In re Aoyama, 656 F.3d 1293, 1296 (Fed.Cir.2011). “The second step [of an anticipation analysis] involves comparing the claims to the prior art. Anticipation is a question of fact reviewed for substantial evidence.” In re Aoyama, 656 F.3d at 1296. “A prior art reference anticipates a patent claim under 35 U.S.C. § 102(b) if it discloses every claim limitation.” In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). A reference may anticipate inherently if a claim limitation that is not expressly disclosed “is necessarily present, or inherent, in the single anticipating reference.” Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010). We analyze the asserted grounds of unpatentability in accordance with these principles to determine whether Petitioner has met its burden to establish a reasonable likelihood of success at trial. slip op. at 10
§ 102 anticipationcites PhillipsPatents in suitUS 8,303,589 - Continental AG / Contitech AG et al. v. Gates CorporationAll claims unpatentablePTAB · Jul 29, 2022 · IPR2021-00466 · APJ Scott A Daniels · IPR · Final written decision
Claims 9–26 are unpatentable as obvious over Hasaka; the Board did not reach the remaining obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at the time of the ’934 patent “would have had a Bachelor’s Degree in mechanical engineering, textile engineering, or a similar discipline, with one to two years of experience in this or a related field.” Pet. 5. Patent Owner does not dispute Petitioner’s asserted level of ordinary skill in the art. See PO Resp. 8 (stating that Patent Owner “generally agrees with Petitioner’s definition of a [person of ordinary skill in the art]”). Petitioner’s proposed level of ordinary skill in the art is consistent with our review and understanding of the technology and descriptions in the ’934 patent and the asserted prior art references. We rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“limitation of claim 24 as Patent Owner characterizes it. First, this phrase is in the preamble prior to the word “comprising,” and does not, in our opinion, provide antecedent basis for any subsequent limitations in the body of the claim. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (“[w]hen limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.”). Second, the phrase plainly reads as a desired result or effect of “selecting said first twist multiplier to be at least about 1.5 times said second twist multiplier,” which is the last step recited in the body of claim 24. Ex. 1001, 14:1–2. See Poly-Am., L.P. v. GSE Lining Tech., Inc., 383 F.3d 1303, 1310 (Fed. Cir. 2004) (The Federal Circuit explaining that “a preamble is not limiting where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.”) (citations omitted). Notably, neither “flex fatigue” nor “improved flex fatigue” are mentioned in the specifically recited steps of the claimed method. Ex. 1001, 13:13–14:2. Third, Patent Owner mainly asserts that this phrase “is a fundamental characteristic of the claim and consequently, is a limitation of claim 24.” PO Resp. 7–7. Such a desired result, improving flex fatigue, as it is recited in claim 24, in our view, does not explain satisfactorily why this phrase in “the preamble is necessary to give life, meaning, and vitality” to the claimed method. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1306 (Fed. Cir. 1999). Accordingly, we are not persuaded that this phrase is a limitation.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“would have been motivated to use the disclosed 9.65 TPI first twist rate with the specific example’s 2.82 TPI second twist rate because using the 9.65 first twist rate would be a simple substitution of the specific example’s first twist rate with another first twist rate that was also disclosed in the same patent.” Id. ¶ 68. We are persuaded by Dr. Adanur’s testimony in this case. The motivation to interpolate values in disclosed ranges, such as those in Hasaka, is well-settled in our case law. See In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974) (claimed invention is rendered prima facie obvious by the teachings of a prior art reference that discloses a range that touches the range recited in the claim). Using the values provided by Dr. Adanur which are taken directly from Hasaka’s disclosure, a TM ratio of 1.97 is obtained which falls directly within the range recited in claim 9. Where a claimed range falls within a range disclosed in the prior art, a presumption of obviousness applies. See Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed Cir. 2004) (rehearing denied). To the extent Patent Owner argues that the first twist multiplier is not a result-effective variable, we disagree. PO Resp. 4. It is reasonably clear from Kovac that a person of ordinary skill in the art would have understood that increasing the twist rate of the yarn results in an increase in flex fatigue resistance while decreasing tensile strength of the yarn. Ex. 1007, 4:15–46. Kovac’s disclosure, and Dr. Adanur’s reliance on it to support his testimony as to the knowledge of a person or ordinary skill in the art, is confirmed by Patent Owner’s declarant, Dr. Wu, who testified that “[i]t also was my understanding at the time that the prior art disclosed that both an increase in either the first or second twist resulted in a higher flexural fatigue resistance.” Wu declaration ¶ 7; see also In re Applied Materials, Inc., 692 property is affected by the variable is sufficient to find the variable result-effective.”). We find the evidence and testimony of the declarants for both parties persuasive that a person of ordinary skill in the art understood that increasing the first or second twist rate resulted in a corresponding increase in the respective first and second TMs and a higher flex fatigue resistance which are therefore result-effective variables. Overall, we are persuaded by Petitioner’s optimization argument, becuase the discovery of an optimum value of a result effective variable is ordinarily within the skill of the art, and thus usually obvious. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007) (citing In re Boesch, 617 F.2d 272, 276 (CCPA 1980); Aller, 220 F.2d at 456. slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“for the yarn from of 17 to 38 per 10 cm, and range of the second twist rate (in the opposite direction) for the cord that is 10 to 23 per 10 cm. Ex. 1004, 6:47–48. Dr. Adanur has testified that Hasaka’s disclosed cord twist rates result ultimately in a specific range of TPIs, and hence TMs, given that the denier is constant across both the first and second TM’s, and that a person of ordinary skill in the art “would have been motivated to find the optimal TPI values for the first and second twists that, when combined, produces the optimal cord.” Adanur I ¶ 66. Given the finite ranges disclosed by Hasaka, Dr. Adanur testifies that a person of ordinary skill in the art “would have tried the various first twist TPI values on the disclosed two-1,000 denier strand with a reasonable expectation of success because the materials, configuration of yarn, and the twist rate, would all be easily achieved using standard equipment and materials at the time.” Id. ¶ 67. Dr. Adanur testifies that given Kovac’s disclosure relating to the level of knowledge and skill in the art, i.e., that increasing the twist rate of yarn, i.e. the first twist rate, results in increasing fatigue resistance, up to a point, a person of ordinary skill in the art “would have considered it obvious to try the finite number of disclosed first twist rate TPI values, including the disclosed 9.65 TPI value, to obtain a cord with a first-to-second TM ratio of 1.97.” Id. Pointing to the Background section of the ’934 Dr. Adanur testifies that “there was a market pressure and design need for designing belts and load carrying cords with improved flexural fatigue.” See id. (citing Ex. 1001, 1:46–49 (“The need remains for a high modulus load carrying cord, including for incorporation in an endless belt or similar rubber composite article, which exhibits a good balance of load carrying capability and flexural fatigue resistance.”)). “would have been motivated to use the disclosed 9.65 TPI first twist rate with the specific example’s 2.82 TPI second twist rate because using the 9.65 first twist rate would be a simple substitution of the specific example’s first twist rate with another first twist rate that was also disclosed in the same patent.” Id. ¶ 68. We are persuaded by Dr. Adanur’s testimony in this case. The motivation to interpolate values in disclosed ranges, such as those in Hasaka, is well-settled in our case law. See In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974) (claimed invention is rendered prima facie obvious by the teachings of a prior art reference that discloses a range that touches the range recited in the claim). Using the values provided by Dr. Adanur which are taken directly from Hasaka’s disclosure, a TM ratio of 1.97 is obtained which falls directly within the range recited in claim 9. Where a claimed range falls within a range disclosed in the prior art, a presumption of obviousness applies. See Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed Cir. 2004) (rehearing denied). To the extent Patent Owner argues that the first twist multiplier is not a result-effective variable, we disagree. PO Resp. 4. It is reasonably clear from Kovac that a person of ordinary skill in the art would have understood that increasing the twist rate of the yarn results in an increase in flex fatigue resistance while decreasing tensile strength of the yarn. Ex. 1007, 4:15–46. Kovac’s disclosure, and Dr. Adanur’s reliance on it to support his testimony as to the knowledge of a person or ordinary skill in the art, is confirmed by Patent Owner’s declarant, Dr. Wu, who testified that “[i]t also was my understanding at the time that the prior art disclosed that both an increase in either the first or second twist resulted in a higher flexural fatigue resistance.” Wu declaration ¶ 7; see also In re Applied Materials, Inc., 692 property is affected by the variable is sufficient to find the variable result-effective.”). We find the evidence and testimony of the declarants for both parties persuasive that a person of ordinary skill in the art understood that increasing the first or second twist rate resulted in a corresponding increase in the respective first and second TMs and a higher flex fatigue resistance which are therefore result-effective variables. Overall, we are persuaded by Petitioner’s optimization argument, becuase the discovery of an optimum value of a result effective variable is ordinarily within the skill of the art, and thus usually obvious. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007) (citing In re Boesch, 617 F.2d 272, 276 (CCPA 1980); Aller, 220 F.2d at 456.” slip op. at 32
Patent outcomesUS 7,254,934 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,254,934 - Haas Automation, Inc. v. Olati LLCAll claims unpatentablePTAB · May 13, 2022 · IPR2021-00146 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1–8 are unpatentable: claims 1, 2, 4, and 6 are anticipated by Oraby; claims 7 and 8 are obvious over Oraby and Edie, among other grounds.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“In the Decision on Institution, we agreed with Patent Owner’s arguments and adopted Patent Owner’s proposed level of ordinary skill in the art, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 10. Petitioner indicates that it does not challenge this determination for the purposes of this proceeding. Pet. Reply 1. Based on our review of the complete record, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “at least one controller . . . adjusts the power” In the Decision on Institution, we determined that there was no need to construe explicitly the phrase “at least one controller . . . adjusts the power.” Dec. Inst. 11–12 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). Neither party disagrees with this determination. Pet. Reply 7 & n.4; PO Resp. 8–9. Thus, on the full record, there is no controversy between the parties regarding the construction of this phrase. Furthermore, explicitly construing this phrase would have no effect on the analysis below. Accordingly, we need not construe this phrase to resolve the issues in dispute in this proceeding. See Nidec, 868 F.3d at 1017; see also 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)). After considering the parties’ arguments regarding Patent Owner’s proposed claim construction for the phrase “adjusts the power exerted by at least one of the spindle drive system and the feed drive system in real-time based on the real-time determinations,” we declined to adopt the proposed construction in the Decision on Institution. Dec. Inst. 13–16 (citing Prelim. Resp. 9–11; Paper 8, 2–4; Paper 9, 2–3). Neither party has addressed this proposed construction in their post-institution briefing. Therefore, on the complete trial record before us, we need not construe this phrase to resolve Realtime Data, 912 F.3d at 1375.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“d) Conclusion In summary, we construe “real-time” to mean “autonomously during a machining operation and performed quickly enough to achieve a desired machining system performance.”” slip op. at 18
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Like the database in Lister, the University of Sheffield’s University Library database allowed members of the public, at least as early as 2004, to “electronically search[] the University Library index” via the internet or the library’s computer terminals, and using any of the author, department, date, and, most importantly, title. See Ex. 1010 ¶ 7. Indeed, Ms. Abbs states that, once a thesis such as Oraby is received by the library, “at least the title, author, related department, and date of completion are recorded in the University Library’s records.” Id. ¶ 3 (emphasis added). Furthermore, like the manuscript in Lister, Oraby has a title that is descriptive of its subject matter—“Mathematical Modelling and In-Process Monitoring Techniques for Cutting Tools” (Ex. 1004, 1)—as Oraby indeed covers “mathematical models which describe the cutting tool-workpiece interaction” and “accurate on-line monitoring of tool-state” (see id. at 3). Thus, a reasonably diligent researcher in the field of CNC machining interested in ways to improve the 11 The court ultimately held, however, that the manuscript did not qualify as prior art because there was insufficient evidence that the aforementioned “date that [the manuscript] was included in either [of the two] databases that permitted keyword searching of titles” had actually antedated the patent’s critical date. Lister, 583 F.3d at 1316–17. library’s database by title for references disclosing such improvements. Furthermore, given Oraby’s title that describes its subject matter covering particular improvements in the CNC machining process, Oraby would have been discovered through such an electronic search. As such, Ms. Abbs’ declaration is sufficient evidence to establish by a preponderance of the evidence that Oraby was publicly available before the ’432 patent’s critical date and therefore qualifies as a printed publication.” slip op. at 21
Patent outcomesUS 8,136,432 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,136,432 - Abs Global, Inc. / Genus, PLC v. Cytonome/St, LLCNo claims unpatentablePTAB · Apr 28, 2022 · IPR2021-00088 · APJ James A Worth · IPR · Final written decision
Claims 1, 2, 6, 8, and 9 were not shown unpatentable because Simonnet disclosed split sample streams, and Petitioner did not adequately show a reason to modify it to form a single stream.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedDecided for patent owner
“focused split sample typically would not allow two cells to arrive at the inspection region at once, because there is not enough space for two 10-μm cells to travel side by side.” See Ex. 1054 ¶ 21 (citing Ex. 1005, 5662) (emphasis added). The qualifier “typically” for two cells not arriving at the same time does not indicate that there would be no split stream. And Dr. Issadore seems to concede there could be a split sample. Id. Further, Dr. Issadore does not state which dimensions of which of Simonnet’s channels that he is using as a reference.27 We determine that Dr. Issadore provides insufficient evidence and reasoning for an understanding that there would be a single stream if mammalian cells were used, in addition to making a statement that stops short of that conclusion. Although not argued by Petitioner nor discussed by Dr. Issadore, Simonnet does state: “we expect the HTD to be compatible with cells up to ~15 µm in size.” Ex. 1005, 5662. Simonnet also states: “We expect that with the improvements in optics and detection electronics, a cytometry system based on the HTD would match the throughput, sensitivity, and accuracy of commercial flow cytometers and would be an adequate tool for assaying fluorescently marked live cells.” Id. These statements can be fairly read as a statement of reasonable expectation of success of using mammalian cells in the device. However, Simonnet is silent as to whether the mammalian cells would be in a single stream, and if anything, Simonnet appears to be inviting further experimentation. Accordingly, Petitioner has not provided adequate reasoning to modify Simonnet to form a single sample stream.” slip op. at 52
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Decision on Institution, we set forth our preliminary determination that a person of ordinary skill in the art at the relevant time would have had a bachelor’s or master’s degree in the field of bioengineering, mechanical engineering, chemical engineering, or analytical chemistry, or a related field and at least three years of experience in designing or developing microfluidic systems. See Dec. 10–11. Patent Owner does not dispute this definition. See PO Resp. 4. 6 The parties do not present or address objective evidence of non-obviousness in this proceeding. After considering all evidence and arguments anew, we determine that it is proper to maintain our definition of the level of skill in the art.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“sheath flow does not mean that “focusing” requires sheath flow. In other words, the Specification does not contain a definition of “focusing” that defines “focusing” as requiring “sheath flow.” As discussed above, the Specification does state “focusing (e.g., constricting).” See also Tr. 41:22– 42:8 (discussing the Specification of the ’439 patent). Whether or not this disclosure rises to the level of a definition, it indicates that focusing is understood to be constricting and does not mention “sheath flow.” Although sheath flow may, in certain cases, be a natural result of having multiple fluid focusing features (see Ex. 1001, 14:6), the claim itself does not require that focusing include sheath flow.11 11 In terms of resolving the dispute between the parties, the real question appears to be whether the sample stream that exits the focusing region must be a single sample stream or whether it may encompass split sample streams, a question that we address in the next subsection. Patent Owner’s ultimate argument appears to be that “focusing” requires a single sample stream because “focusing” requires sheath flow and sheath flow requires a single sample stream. However, we agree with Petitioner that persons of ordinary skill could still refer to split streams as having “sheath flow” (see Ex. 1054 ¶ 11; Ex. 1043, 2215, Fig. 10 and caption (“separated two-sample 3D sheath flow”); Ex. 1044, 2 (“multiple core-sheath flow”), and therefore, even if we agreed with Patent Owner that focusing requires sheath flow, that would not clarify whether “focusing” precludes split sample streams. In any event, we conclude that focusing does not require sheath flow. We recognize that there are examples in the Specification where there is sheath flow. E.g., Ex. 1001, 5:30–32 (“Certain embodiments described herein relate [to] systems and methods for producing a sheath flow . . .”), 10:35–37 (“The illustrated core stream forming geometry 400 provides improved sheath flow capabilities and thus improved sample focusing capabilities.”). However, case law generally counsels against importing limitations from the Specification into the claims. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1323 (“To avoid importing limitations from the specification into the claims, it is important to keep in mind that the purposes of the specification are to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so.”).12 We, therefore, do not import “sheath flow” into the definition of focusing.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Therefore, we construe “the sample stream” in the claim phrase “configured to focus the sample stream” to refer to a singular stream. c) Conclusion as to “focusing” and “configured to focus the sample stream” We maintain our construction of “focusing” as “pinching, confining, squeezing, or constricting” and decline to import additional requirements such as sheath flow into the term “focusing.” Nevertheless, we construe “the sample stream” in the claim phrase “configured to focus the sample stream” to refer to a singular stream.” slip op. at 28
Patent outcomesUS 10,583,439 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,583,439 - Peloton Interactive, Inc. v. Ifit, Inc.InstitutedPTAB · Apr 22, 2022 · IPR2022-00029 · APJ George R Hoskins · IPR · Institution
The Board instituted IPR of claims 1, 3–5, 8–11, 15, 16, 21–23, 26–28, 30, 36, 38, 40, 45, 46, and 48 on all petition grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“2. Second Part of Advanced Bionics—Studor Having found Studor was considered during prosecution of the” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“the present Petition, may have gained a tactical advantage by being able to review the patent owner response in IPR2021-00342. However, based on the present record, it appears that the principal reason behind Petitioner’s delay was to wait until Patent Owner identified the claims at issue in the District Court Litigation, rather than filing serial petitions to test theories in an initial petition and adapt accordingly in a later petition. Further, Petitioner had the patent owner response in hand for only a few weeks (September 30 to October 13) before filing the present Petition. In light of these overall circumstances, the potential tactical advantage gained by Petitioner does not merit a discretionary denial of institution.” slip op. at 37
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“before the court’s scheduled trial date. We agree with our colleagues’ conclusion that “this factor favors denial if trial precedes the Board’s Final Written Decision and favors institution if the opposite is true,” “due to the 35 U.S.C. 315(e)(2) estoppel provision.” Huawei Techs. Co., Ltd. v. WSOU Invs., LLC, IPR2021-00225, Paper 11 at 13–14 (PTAB June 14, 2021); see also Google LLC v. Parus Holdings, Inc., IPR2020-00846, Paper 9 at 20–21 (PTAB Oct. 21, 2020) (“Petitioner is the defendant in the parallel proceeding. This fact could weigh either in favor of, or against, exercising discretion to deny institution, depending on which tribunal was likely to address the challenged patent first.”).” slip op. at 48
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires the Petition to demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we institute, on behalf of the Director (37 C.F.R. § 42.4(a)), an inter partes review to determine whether Petitioner demonstrates by a preponderance of the evidence that the challenged claims are unpatentable, considering the two grounds asserted in the Petition.” slip op. at 2
Claim constructionDiscretionary denialcites KSR · GrahamPatents in suitUS 7,166,062 - New World Medical, Inc. v. Microsurgical Technology, Inc.All claims unpatentablePTAB · Apr 20, 2022 · IPR2021-00017 · APJ James A Tartal · IPR · Final written decision
Claims 1–3, 6, 9, and 10 are unpatentable as anticipated by Quintana; claims 4, 5, 7, 8, and 11 are unpatentable as obvious over Quintana.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had either “a medical degree and at least two years’ experience with treating glaucoma and performing glaucoma surgery,” or “an undergraduate or graduate degree in biomedical or mechanical engineering and at least five years of work experience in the area of ophthalmology, including familiarity with ophthalmic anatomy and glaucoma surgery.” Pet. 26 (citing Ex. 1003 ¶ 24). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. Resp. 10 n.5. We adopt Petitioner’s definition as we find it is undisputed and consistent with the level of skill in the art at the time of the invention, as reflected by the prior art and the ’885 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner propose any express construction for a claim term. See Pet. 27; Resp. 10. We find that no express construction of any claim term is necessary for purposes of rendering this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Quintana’s disclosure expressly states that “[o]nly the tip of the instrument is introduced into Schlemm’s canal, and the [trabecular meshwork] is stripped slowly, gently and easily from the canal’s lumen towards the anterior chamber as the needle progresses,” which informs one of ordinary skill in the art that the beveled edges of the needle cut and remove a strip of trabecular meshwork tissue. See Ex. 1004, 4; see also id. at 8 (“[f]urther studies are necessary to disclose the ‘in vivo’ behaviour of the sectioned trabecular meshwork”), caption to Figure 2 (“[t]he tip of the needle stripping the trabecular meshwork”); see also Ex. 1030 ¶¶ 7–10 (Dr. Netland discussing Quintana from the perspective of one of ordinary skill in the art).” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Reasons Supporting Obviousness Over Quintana We find for the reasons provided below that Petitioner has shown by a preponderance of the evidence persuasive reasons the subject matter of the Challenged Claims, as a whole, was taught by Quintana, in light of the knowledge of a person of ordinary skill in the art. We further find that, to the extent a feature of Quintana relied upon by Petitioner would have required modification to correspond to a feature of a Challenged Claim, Petitioner has shown by a preponderance of the evidence a person of ordinary skill not only could have made the modification, but would have had reason to do so in light of the knowledge of a person of ordinary skill in the art. Patent Owner argues a lack of motivation to modify Quintana “to create first and second spaced-apart cutting edges.” Resp. 31–32. As explained above, we find Quintana discloses this feature without modification. See supra Section II.E.1. Patent Owner also broadly argues no motivation for any of the proposed modifications because Quintana “never describes creating and removing a strip of [trabecular meshwork],” and that Petitioner does not show how the asserted modification “would have been advantageous” and are “the product of speculation, conjecture and hindsight.” Resp 33–34. As explained above, we find Quintana discloses cutting a strip of trabecular meshwork and Patent Owner’s argument fails to address the reasons Petitioner identifies for each proposed modification. See supra Section II.E.1. We likewise find no persuasive evidence to support Patent Owner’s undeveloped arguments that any modification proposed by Petitioner of Quintana based on the knowledge in the art would have rendered Quintana’s device “unfit for its intended purpose” or that Quintana “would have taught away . . . for fear of reducing the effectiveness of the device.” Resp. 33–34. We find persuasive Petitioner’s argument in its Reply that Patent Owner “fails to explain how modifying Quintana’s needle as proposed by [Petitioner] would have increased the risk of injury to [Schlemm’s Canal], and no disclosure in Quintana that criticizes, discredits, or discourages “investigation into the modifications proposed by [Petitioner]. Reply 24 (citing Ex. 1004, 4). We further focus our discussion below on any additional determinative issues in dispute.” slip op. at 51
Patent outcomesUS 9,820,885 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,820,885 - New World Medical, Inc. v. Microsurgical Technology, Inc.All claims unpatentablePTAB · Apr 20, 2022 · IPR2020-01711 · APJ James A Tartal · IPR · Final written decision
Claims 1–7 are unpatentable because the Board found them obvious over Quintana and Lee; it did not reach the alternative Quintana and Jacobi grounds.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have jurisdiction to conduct this inter partes review under 35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) (2018) and 37 C.F.R. § 42.73 (2020). For the reasons discussed below, we determine New World Medical, Inc., (“Petitioner”)1 has shown by a preponderance of the evidence that claims 1–7 (“the Challenged Claims”) of U.S. Patent No. 9,358,155 B2 (“the ’155 patent,” Ex. 1001) are unpatentable. I. INTRODUCTION A. Summary of Procedural History Petitioner filed a Petition pursuant to 35 U.S.C. §§ 311–319 requesting an inter partes review of the Challenged Claims. Paper 1 (“Pet.”). We instituted an inter partes review of the Challenged Claims on all grounds of unpatentability asserted in the Petition. Paper 11. MicroSurgical Technology, Inc., (“Patent Owner”)2 filed a Patent Owner Response. Paper 17 (“Resp.”). Petitioner filed a Reply to the Patent Owner Response. Paper 27 (“Reply”). Patent Owner filed a Sur-reply in support of the Patent Owner Response. Paper 34 (“Sur-reply”).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“angling the end of the device “depending on surgical requirements.” Id. at 55 (citing Ex. 1006, 4:49–54). We note this portion of Lee states “[t]he angle of cutting edge 14, however, may vary from as little as 0 degrees to greater than 45 degrees depending on surgical requirements,” which evidences that such an angle is a result-effective, optimizable variable, which would have been obvious to modify in Quintana’s or Lee’s devices, which are disclosed as used for the same purpose. Ex. 1006, 4:49–54; see also Ex. 1003 ¶¶ 206–211 (reaching this conclusion on modifying the bend angle of Quintana’s device).” slip op. at 71
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“angling the end of the device “depending on surgical requirements.” Id. at 55 (citing Ex. 1006, 4:49–54). We note this portion of Lee states “[t]he angle of cutting edge 14, however, may vary from as little as 0 degrees to greater than 45 degrees depending on surgical requirements,” which evidences that such an angle is a result-effective, optimizable variable, which would have been obvious to modify in Quintana’s or Lee’s devices, which are disclosed as used for the same purpose. Ex. 1006, 4:49–54; see also Ex. 1003 ¶¶ 206–211 (reaching this conclusion on modifying the bend angle of Quintana’s device).” slip op. at 71
Patent outcomesUS 9,358,155 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,358,155 - Boston Scientific Corp. And Boston Scientific Neuromodulation Corp. v. Nevro Corp.Some claims unpatentablePTAB · Mar 14, 2022 · IPR2020-01563 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 1–7 and 9–21 are unpatentable as anticipated by Bradley857 and obvious over Bradley857, Bradley384, and Meadows; claim 8 was not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“At the outset, we find that the plain language of clauses 1[i], 12[k], and 18[e], in isolation, requires only that the displayed image of one lead is aligned with the displayed image of the other lead without requiring any “repositioning” of previously displayed images. However, Patent Owner argues that other language recited in each independent claim requires first “establishing” the positions of the first and second leads, which necessarily means that “aligning” the images of the first and second leads refers to repositioning them on the display. Sur-reply 2–3. However, Patent Owner’s argument fails to recognize the distinction between establishing the physical “position” of the leads relative to a physical frame of reference and aligning computer-based images of those leads. For example, clauses 18[b] and 18[c] of independent claim 18 recite: “[b] establishing a first positional relationship between a location of a first signal delivery device and an anatomical feature of a patient” and “[c] establishing a second positional relationship between a location of a second signal delivery device and at least one of the location of the first signal delivery device or the anatomical feature of the patient.” Ex. 1001, 40:34–41. None of clauses 18[b] or 18[c] or the substantively identical clauses 1[d], 1[f], 12[h], 12[i]5 from the other independent claims mentions displaying an image of either lead on a computer screen. Rather, these clauses encompass establishing the spatial position of each of the first and second physical leads relative to a physical frame of reference (e.g., an anatomical feature of a patient or another lead). These limitations may be met without displaying leads on a computer screen at all. Accordingly, we reject Patent Owner’s argument that the claims first require positioning images of the leads on a display before aligning those images on the display. Rather, we find that a plain reading of “align” or” slip op. at 10
- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
“II. PATENT OWNER’S MOTION TO AMEND Patent Owner filed a contingent motion to amend claims. Paper 25. Patent Owner affirmatively withdrew its motion, Paper 36, after we issued Preliminary Guidance on the motion, Paper 32. Accordingly, Patent Owner’s motion to amend is moot, and we do not reach any issue presented in that motion.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest Petitioner’s definition of the ordinary level of skill. PO Resp. 17. For purposes of this Decision, we adopt Petitioner’s undisputed definition. We also find that Petitioner’s proposed definition is consistent with the level of skill demonstrated in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). E. CLAIMS 1–21: ANTICIPATION BY BRADLEY857” slip op. at 17
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner
“which electrodes are selected for delivering therapy. Reply 10. Petitioner also responds that Bradley857’s reference to Meadows incorporates Meadows method for determining whether an electrode is “available” to the user for delivering therapy by first confirming that impedance of the electrode is within a pre-established range. Id. For example, Meadows indicates that the “number of implanted and available electrodes is typically automatically determined by impedance measurements during hardware interrogation,” Ex. 1006, 34:57–59, and that impedance of an electrode “is a general measure of the fitness of the system to perform its required function,” id. at 46:61–64. Dr. Stone, Patent Owner’s expert, agrees that Meadows’s system does not deliver therapy to an electrode if the measured impedance for that electrode is too high or too low, that is, outside a pre-established range. Ex. 1040, 82:8–87:8.” slip op. at 33
Patent outcomesUS 10,076,665 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,076,665 - Boston Scientific Corp. / Boston Scientific Neuromodulation Corp. v. Nevro Corp.All claims unpatentablePTAB · Mar 14, 2022 · IPR2020-01562 · APJ Mitchell G Weatherly · IPR · Final written decision
The Board held claims 1–24 unpatentable: claims 1–10 and 18–24 as obvious over Bradley and Zhu, and claims 11–17 as obvious over Bradley, Zhu, and Alataris.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“supplemental briefing on claim construction for claim 1, and in particular, on the antecedent basis of “the positional relationship,” whether the limitations must follow a temporal sequence, and whether the “third input” clause is a required element of the claim even if there is no “requested change.” Id. at 4.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“For these reasons, we determine that a person of ordinary skill would” slip op. at 62
- PTAB / AIA Trials › Motions to amend / substitute claimsOther
“III. PATENT OWNER’S MOTION TO AMEND Patent Owner filed a contingent motion to amend claims. Paper 25. Patent Owner affirmatively withdrew its motion, Paper 36, after we issued Preliminary Guidance on the motion, Paper 32. Accordingly, Patent Owner’s motion to amend is moot, and we do not reach any issue presented in that motion.” slip op. at 78
Patent outcomesUS 9,002,460 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,002,460
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.