- PTAB · Jun 8, 2022 · IPR2022-00292 · APJ Eric C Jeschke · IPR · Institution
The Board instituted IPR on claims 19–21, 23, 26–31, 33, 35–37, and 41 on all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“The mere fact that the additional prior art references relied on by Petitioner (i.e., Ekerot, Kuhn, Loeffler, and Sinclair) pertain to one or more of the same fields to which the art cited in prosecution also pertains is not sufficient alone to satisfy the first part of the Advanced Bionics framework by showing that these additional references are “substantially the same” as art previously presented to the Office. See Prelim. Resp. 45–46. Indeed, the prior art cited in petitions for inter partes review and the art cited during prosecution of the challenged patent will likely always relate to the same subject matter as that in the claims at issue. On these facts, we conclude that Petitioner bases at least the first three asserted grounds (Kuhn; Loeffler and Kuhn; Sinclair and Kuhn) on prior art and arguments that are not the same or substantially the same as the prior art or arguments before the Examiner. When considering the Petition as a whole, we find that it does not sufficiently implicate the concerns addressed by § 325(d) to warrant discretionary denial. Because the first part of the framework in Advanced Bionics is not met, we need not reach “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8–9.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art “would have at least a Bachelor’s degree in mechanical or structural engineering, or a related field, and two years of experience designing structures with comparable mechanical and/or structural elements to the subject matter of the ’855 Patent.” Pet. 10 (citing Jobin Decl. ¶¶ 22–25). Petitioner also states that “[a]dditional experience may compensate for less education.” Id. (citing Jobin Decl. ¶¶ 22–25). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record at this stage of the proceeding, including the prior art. See Prelim. Resp. 10; GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. Neither Petitioner nor Patent Owner proposes express constructions for any claim terms. See Pet. 8. At this stage of the proceeding and based on the current record, we do not discern a need to construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,263,855 - Best Buy Co., Inc. / Target Corporation et al. v. James L. DriessenAll claims unpatentablePTAB · Apr 15, 2022 · IPR2021-00198 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over NetPack, with Boyle additionally supporting claim 4’s scratch-off code limitation; alternate grounds were not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Petitioner’s proffered level of skill in the art because it appears consistent with the problems addressed in the ’052 patent. For example, the ’052 patent states the “invention is essentially retail point of sale for the Internet.” Ex. 1001, 4:21–22. This aligns with Petitioner’s proposed level of skill, which specifically requires working knowledge of such systems as opposed to Patent Owner’s assertion that experience in the prepaid card industry is required. The ’052 patent further describes the requirements for “Font Fingerprinting, hidden pixelization, concealed ASCII and non-visible/inaudible codification” and “ISO standard 10918” for delivery of images over the Internet. Id. at 5:64–67, 6:40–41; see also id. at 6:50–8:23 (describing the technical aspects of the invention), 9:44–46 (“Fig. 5 shows some examples of recording devices that are used or could be modified for use as the media delivery method, access CARD, or to deliver a small cookie-free-cache-back application.”), 9:51–54 (“[T]he CARD may also deliver a small amount of software code to run the mini-Application for Cookie Free Cache Back system.”). Based on this disclosure in the ’052 patent, we agree with Petitioner that a person of ordinary skill in the art would have had a degree in computer engineering or a related field as opposed to a degree in business or marketing, as Patent Owner asserts.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“After reviewing the evidence and argument presented by the parties, we determine that it is not necessary to resolve whether preselection is limited to seller side preselection only because, as discussed below in our analysis of claim 1, we find the prior art discloses preselection by the seller. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“cards would be used, such as . . . the retail and backend computer systems and security mechanisms for selling cards and authorizing their use through a computer network, or details such as using scratch-off materials to conceal codes.” Pet. 18–19. Petitioner provides several reasons why a skilled artisan would have been motivated to implement “Boyle’s detailed teachings on retail sale of online access cards . . . into the NetPack system.” Id. at 19. First, Petitioner contends that “[g]iven the overlapping and complementary nature of these two references, a [skilled artisan] implementing the NetPack online access system would have quickly identified Boyle as providing relevant teachings.” Id. at 19–20 (citing Ex. 1003 ¶¶ 138–140, 144–250; Ex. 1004, 1). Second, Petitioner contends that, given NetPack’s lack of “express disclosure of certain implementation details,” a skilled artisan would have been motivated “to rely on and incorporate Boyle’s teachings for implementation details such as using computers to store prices for products, to record payments, and to authorize product downloads.” Id. at 20 (citing Ex. 1003 ¶ 141). Third, Petitioner contends that a skilled artisan “would have appreciated the benefits provided by certain aspects of Boyle, such as using a scratch-off label to conceal important information on a card ‘from public view prior to [a card] being sold’” and “would recognize the need to conceal the authentication information on a NetPack card from the public and naturally consider adopting a known and common method for doing so from Boyle.” Id. (citing Ex. 1003 ¶ 142; Ex. 1004, 6:31–7:3). Fourth, Petitioner contends that a skilled artisan “would have had a reasonable expectation of success in using Boyle’s teachings in NetPack” because “NetPack and Boyle describe highly-similar systems” and “by 1999 e-commerce was well known and used, and Boyle relied on many ‘well known’ aspects of e-commerce, such as webpages and authentication.” Id. (citing Ex. 1003 ¶ 143; Ex. 1004, 3:7–4:27, 12:14–20, 15:1–8, 15:26–32). Patent Owner does not address Petitioner’s stated reasons for combining the teachings of NetPack and Boyle or reasonable expectation of success. See PO Resp. 31–34. Based on our review of Petitioner’s contentions and evidence, we find Petitioner states reasons supported by a rational underpinning for combining the teachings of NetPack and Boyle.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“For the following reasons, we are persuaded by Petitioner’s contentions that NetPack’s Chat Pack is “preselected” under Patent Owner’s construction of that term. We make the following findings concerning the disclosure of NetPack. NetPack discloses a Chat Pack product available on a “Special Application Card.” Ex. 1005, Ex. A, 4 of 11. The Chat Pack product is described as “Send files to Anyone Without ‘E’ Mail.” Id. NetPack “makes it possible for Internet products and services to be purchased in a retail store” with one of “three discrete innovations.” Ex. 1005, Ex. A, 6 of 11. One of those innovations is “NetPack’s Special Application Package (SAP)™ [which] makes it possible for software manufactures, some book publishers, or other Internet products or services to be represented and purchased in a retail store environment and then later down loaded from the Internet.” Id. The SAP “will employ bar code inventory, theft control language, and magnetic terminal validation. A single bar code or terminal pass at the point of distribution will activate the product . . . . The card shall display the corresponding URL product description on the front and rear of the card.” Id. at 8 of 11. “In the retail store, [the] Special Application Package . . . can represent any specified value, product, or service.” Id. at 10 of 11. NetPack discloses that “the cards facilitate the ability to stock a large inventory of Internet deliverable software products or services with little or no investment.” Id. NetPack discloses “preselected” as required by claim 1 even under Patent Owner’s construction of “preselection,” which requires the seller to perform the preselection prior to the customer selecting the product for purchase. Chat Pack is sold as a Special Application card. The Special Application card “can represent any specified value, product, or service.” Ex. 1005, 10 of 11. In this case, Chat Pack is the specified product. Therefore, the Chat Pack product is preselected by the seller.” slip op. at 17
Patent outcomesUS 10,304,052 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,304,052 - MG Freesites Ltd. v. Scorpcast, LLCAll claims unpatentablePTAB · Apr 15, 2022 · IPR2020-01697 · APJ Frances L Ippolito · IPR · Final written decision
Claims 9–11, 14–17, 20–22, and 24–26 are unpatentable: Sterner anticipates several claims, and Sterner with Ahanger renders claims 11 and 22 obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’780 patent would have had the following education and experience: “a Bachelor’s degree in Electrical Engineering, Computer Engineering, or Computer Science (or the equivalent degree) plus approximately two years of work experience with technologies relating to 7 Geer, III et al., U.S. Patent Application Publication No. 2011/0112915 A1, published May 12, 2001 (Ex. 1005) (“Geer”). 8 Fink et al., U.S. Patent Application Publication No. 2009/0300475 A1, published Dec. 3, 2009 (Ex. 1006) (“Fink”). content annotation and/or content sharing among multiple users.” Pet. 17. Petitioner adds that “[m]ore education can supplement work experience and vice versa.” Id. (citing Ex. 1002 ¶¶ 1–21). Patent Owner does not dispute this level of skill. PO Resp. 10. We adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 11
- Prior constructionPrior construction not adoptedDecided for patent owner
“We recognize that our construction of “scrubber area” is different from the Consolidated EDTX Litigation. But as explained above, the ’780 patent describes non-scrubbing functionality in the scrubber area, e.g., user accessible controls 1004, 1006, and 1017. Moreover, we are constrained by our record, which differs from that of the Consolidated EDTX Litigation. For one, Petitioner is not a party to that litigation, and has provided persuasive arguments and evidence related to claim construction of this term in the instant proceeding. And, further, the cross-examination testimony of Patent Owner’s expert, Dr. Valerdi, was also not available in the Consolidated EDTX Litigation. Thus, while, pursuant to 37 C.F.R. § 42.100(b), we have considered the Consolidated EDTX Litigation’s Claim Construction Memorandum Order and Opinion, we determine that on our particular record, which differs from that before the EDTX, that the intrinsic and extrinsic evidence does not require all of the scrubber area to provide scrubbing functionality. To do otherwise would limit claims 15 and 25 to specific disclosed embodiments, which we decline to do based on the particular record in the instant proceeding.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“same as that recited in claim 15. Claim 25 requires “the scrubber area comprising a slider tool that enables a user to scrub forwards through the first video by dragging the slider tool.” Ex. 1001, 48:62–67. We note, as the EDTX has done, that claim 25 uses an open-ended “comprising” transition that indicates the scrubber area may include more than the slider tool. Id.; see also Ex. 2090, 23. We further note that claim 25 does not itself expressly indicate what other components/features the scrubber area may include. Ex. 1001, 48:62–67. In this regard, the Specification of the ’780 patent teaches that at state 2012, the identified video reviews are provided for display on the user terminal, organized in categories, with selected representative item review frames displayed in the scrubber area (e.g., on the scrubber or adjacent to the scrubber). The entire scrubber area, or a subset thereof, including the representative frame, may be a hot spot, wherein if the user clicks anywhere in the hotspot, the corresponding item review is played back. Thus, optionally, the searching user does not have to manually manipulate the scrubber control to the desired item review start location. Ex. 1001, 31:61–32:4 (emphases added). Additionally, with reference to Figure 10, the ’780 patent teaches that tags 1016 of items “may be displayed in the scrubber area 1002.” Id. at 28:66–29:1 (emphasis added). Further, “[i]n certain embodiments, a viewer may click on or otherwise select a given product image . . . or tag in the scrubber area . . . and the video player will jump to the corresponding item review.” Id. at 29:1–4. With respect to the above disclosure, we observe that the ’780 patent teaches that the entire scrubber area “may” be a hot spot for clicking a particular time for playback, and that in “certain embodiments” a viewer can click on a tag in the scrubber area to “jump to the corresponding item review.” We read these teachings to be permissive rather than proscriptive, without requiring all components in the scrubber area to have scrubbing functionality. See id. Our reading is consistent and supported by the Specification. For example, with reference to Figure 10, the ’780 patent teaches that tags 1016 “may be displayed in the scrubber area 1002.” Ex. 1001, 28:66–29:1. However, as shown in Figure 10, tag 1016 is located on the same bar as user accessible controls 1004, 1006, 1017. Id. at 28:21– 29. The ’780 patent teaches that these other controls, e.g., 1004, 1006, 1017, “may be provided via which a viewer of the video review can purchase the item being reviewed, poll their friends regarding the item being reviewed (as similarly described elsewhere herein) . . . and share the review (e.g., via instant message, email, posting on a social network page, or otherwise).” Id. at 28:21–29. Although tag 1016 may arguably include scrubbing functionality, the other controls 1006, 1017 that are located in the same area do not have that same scrubbing functionality. Id. Moreover, scrubber area 1002 in Figure 10 appears as a contiguous rectangle that includes a volume control and “full screen” area to click, both without scrubbing functionality.9 Id. at Fig. 10. In this way, we understand the Specification to teach that the scrubber area more broadly includes an area adjacent to the scrubber bar that may not have scrubbing functionality. See Ex. 1001, 2:43–48. Consequently, we do not construe the plain and ordinary meaning of “scrubber area” to require scrubbing functionality in the area adjacent to the scrubber bar.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“(3) Discussion Consistent with Petitioner’s arguments, we find that Sterner discloses a VEE including cue point editor screen 600 that further comprises video frame 602 configured to display video data, where the video frame includes comment area 606. Ex. 1004 ¶ 169. Sterner further teaches that comment area 606 may appear on the screen when a client places a mouse pointer over cue point location indicator 616. Id. Additionally, Sterner provides that [i]n other examples, the text information in or associated with the comment area 606 may be indexable, searchable, or selectable (e.g. able to be copied to a text file); it may be related to video data, cue point information, or user data. Id. (emphasis added). Further, Sterner teaches that the information in comment area 606 may include interactive elements, like hyperlinks or GUI elements. Id. Based on this disclosure, we do not read Sterner so narrowly as to restrict the information in comment area 606 to selection only by copying text information to a text file. Sterner itself does not teach that the selection of text must be done only by copying the text. Indeed, Sterner expressly uses “e.g.,” which indicates that the copying of text, is one example of how the text information may be selected, indexed, or searched. Ex. 1004 ¶ 169. Moreover, Sterner teaches that comment area 606 includes interactive elements like hyperlinks or GUI elements, which allow the client to, among other things, navigate to a different location. Id. This described functionality of comment area 606 is at odds with Patent Owner’s suggestion that selection can occur solely by copying text. See PO Resp. 13. Additionally, we disagree with Patent Owner’s position that Sterner only teaches that hyperlinks or GUI elements can be included in comment area 606 in addition to, or instead of, the first image and/or first text that was received from a first user device. See PO Resp. 14; Sur-reply 16. Sterner teaches that “comment area 606 may display text, images, videos, or other information describing or adding to the footage seen in the video footage area 604.” Ex. 1004 ¶ 168. In the next paragraph, Sterner expressly states that the information in comment area 606 includes GUI elements or hyperlinks that may be related to cue point information. Id. ¶ 169. Consistent with this disclosure, we observe once more that Sterner teaches that cue point information includes “any useful information” such as icons, associated images, text, and GUI information. Id. ¶¶ 128, 169. Thus, taken as a whole, we do not read Sterner to teach that comment area 606 includes” slip op. at 47
Patent outcomesUS 9,965,780 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,965,780 - Brunswick Corporation v. Volvo Penta Of The Americas, LLCAll claims unpatentablePTAB · Apr 13, 2022 · IPR2020-01512 · APJ Eric C Jeschke · IPR · Final written decision
Claims 1–18 are unpatentable: claims 1–3, 11–13, 15, 17, and 18 as anticipated by Kiekhaefer, and claims 4 and 7 as obvious over Kiekhaefer and Stechauner.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“3. The Claims Are Limited to “Stern Drives” Patent Owner argues that independent claims 1, 8, and 18 are limited” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“102(a) Kiekhaefer 15, 17, 18 18” slip op. at 118
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“presumption of nexus as to the Forward Drive. As noted by Petitioner (Pet. Reply 16 n.4), the Federal Circuit has made clear that the coextensiveness requirement is separate from the requirement that the product or process embodies the claims. See Fox Factory, 944 F.3d at 1377 (“We reject [the patent owner’s] attempt to reduce the coextensiveness requirement to an inquiry into whether the patent claims broadly cover the product that is the subject of the evidence of secondary considerations.”). Here, Patent Owner concludes that the “Forward Drive is a commercial embodiment of the ’692 Patent and coextensive with the claims” and cites to one paragraph of one of Dr. Winkel’s Declarations. PO Resp. 52 (citing 3d Winkel Decl. ¶ 51). Even assuming that this reliance on Dr. Winkel’s Declaration is not improper incorporation by reference (Pet. Reply 16 n.4 (citing 37 C.F.R. § 42.6(a)(3)), Dr. Winkel (via his Appendix C) addresses why the Forward Drive embodies the claims, but does not even mention, let alone provide testimony supporting Patent Owner’s conclusion regarding, the separate coextensiveness requirement. See 3d Winkel Decl. ¶ 51.” slip op. at 66
Patent outcomesUS 9,630,692 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,630,692 - CTC Global Corporation v. TS Conductor Corp.Institution deniedPTAB · Apr 4, 2022 · PGR2022-00002 · APJ Ken B Barrett · PGR · Institution
The Board denied institution because the petition did not show it was more likely than not that any challenged claim 1–6 was unpatentable under the asserted obviousness or § 112 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“A post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). For the reasons given below, Petitioner has not established that it is more likely than not that at least one of the challenged claims of the ’036 patent is unpatentable. Accordingly, we do not institute a post-grant review of the challenged claims.” slip op. at 2
- BurdenNot shown unpatentable
“a. Reason to Combine A successful obviousness challenge requires articulated reasoning as to why a person of ordinary skill in the art would have been motivated to combine the prior art references’ teachings to arrive at the claimed subject matter. See Regents of Univ. of Cal. v. Broad Inst., Inc., 903 F.3d 1286, 1291 (Fed. Cir. 2018) (“An obviousness determination requires finding that a person of ordinary skill in the art would have been motivated to combine or modify the teachings in the prior art . . . .”); KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“a. Reason to Combine A successful obviousness challenge requires articulated reasoning as to why a person of ordinary skill in the art would have been motivated to combine the prior art references’ teachings to arrive at the claimed subject matter. See Regents of Univ. of Cal. v. Broad Inst., Inc., 903 F.3d 1286, 1291 (Fed. Cir. 2018) (“An obviousness determination requires finding that a person of ordinary skill in the art would have been motivated to combine or modify the teachings in the prior art . . . .”); KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. The Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation marks and citation omitted).” slip op. at 9
Claim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,886,036 - Med-El Elektromedizinische Geräte Ges.M.B.H. v. Advanced Bionics AGAll claims unpatentablePTAB · Mar 31, 2022 · IPR2021-00044 · APJ Eric C Jeschke · IPR · Final written decision
Claims 1–24 are unpatentable: the Board found them obvious over the grounds shown in its summary table and did not reach the AAPA–Petersen, AAPA–Zilberman–Saaski, or Nagai grounds.
RulingsFinal written decision- Expert testimonyOther
“unclear whether Petitioner relies on an inherency theory, an implicit disclosure theory, or another theory” and that, “[t]o the extent Petitioner relies on inherency, at th[at] stage, we agree with Patent Owner that the logic of Petitioner’s theory is difficult to fully discern.” First Dec. Inst. 52 (footnotes omitted). We also stated that, “[t]o the extent Petitioner continues to rely on Saaski for the Composite Requirements, Petitioner should explain why the record supports its position.” Id. In the Reply in the First IPR, Petitioner clarifies that Saaski is relied upon in the alternative, but does not fully respond to the instructions to explain its position as to the requirements in these elements. See First Pet. Reply 23–24. For these reasons, we find, based on the complete record, that Petitioner has not demonstrated by a preponderance of the evidence that Saaski discloses these elements. As discussed above, however, we find, based on the complete record, that Petitioner has demonstrated by a preponderance of the evidence that Zilberman discloses these elements.” slip op. at 59
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“term “permanently” need not be construed, but if it is, it means “in such a manner that one would not expect it to be removed in the normal course of use.” First Pet. Reply 5 (with emphasis to show differences from Patent Owner’s positions); Second Pet. Reply 6–7 (same except without “user” in (1)). For the reasons below, the record more strongly supports Petitioner’s construction of “closed case” and Patent Owner’s proposed construction of “permanently.”” slip op. at 21
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“evidence—that the RONDO 2 product “embodie[s]” the invention in the ’746 patent in a way providing the necessary nexus. First PO Resp. 55; First Pet. Reply 20 (arguing as to similar assertions for the prior asserted ground, that “Patent Owner provides no nexus analysis whatsoever” and that “[t]here is no comparison between the RONDO 2 device and the claim scope”), 26 (relying on the prior nexus arguments). For example, Patent Owner does not how RONDO 2 practices the limitations of even one of the challenged claims. Similarly, Patent Owner fails to adequately show nexus for the discussion in Exhibit 2011 as to, for example, long-felt but unsolved need because Patent Owner has not shown how that reference indicates that the limitations of even one of the challenged claims are practiced. See First PO Resp. 55; First Pet. Reply 20, 26. Dr. Young’s cited testimony does not remedy these deficiencies. See First Young Decl. ¶¶ 136–137, cited at First PO Resp. 55–56. Accordingly, without any nexus, we find Patent Owner’s arguments unconvincing.” slip op. at 68
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“(7) Conclusion as to Claim 10 For the reasons above, we determine, based on the complete record,” slip op. at 69
Patent outcomesUS 8,155,746 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,155,746 - Med-El Elektromedizinische Geräte Ges.M.B.H. v. Advanced Bionics AGAll claims unpatentablePTAB · Mar 31, 2022 · IPR2020-01016 · APJ Eric C Jeschke · IPR · Final written decision
Claims 1–24 are unpatentable as obvious under the grounds based on Zilberman, Saaski, Crosby, Petersen, and Zilberman ’022; several other grounds were not reached.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“IV. CONCLUSION Upon consideration of the briefing and the evidence of record, we determine (1) that Petitioner has proven by a preponderance of the evidence that claims 10–17 and 24 would have been obvious to one of ordinary skill in the art based on Zilberman and Saaski, (2) that Petitioner has proven by a preponderance of the evidence that claims 1–4, 6–8, 10–15, 17–22, and 24 would have been obvious to one of ordinary skill in the art based on Crosby and Petersen, and (3) that Petitioner has proven by a preponderance of the evidence that claims 5, 9, 16, and 23 would have been obvious to one of ordinary skill in the art based on Crosby, Petersen, and Zilberman ’022.25 We do not reach the additional grounds presented. V. ORDER For the reasons above, it is: ORDERED that Petitioner has proven by a preponderance of the” slip op. at 136
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Najafi’s testimony does not support that “closed case” means “the user can’t get into the case to replace the battery.” First PO Resp. 8; Second PO Resp. 9. Instead, the cited statement by Dr. Najafi was provided after asking the meaning of the phrase “permanently and integrally housed.” See First IPR, Ex. 2014, 97:23–98:11, cited at First PO Resp. 8; Second IPR, Ex. 2015, 97:23–98:11, cited at Second PO Resp. 9. With these arguments, Patent Owner again improperly intermingles “closed case” with “permanently and integrally housed” in the claim language at issue. For these reasons, we construe “closed case” as a case that does not currently permit passage or entry. This is the same construction applied at institution in the First IPR. See First Dec. Inst. 15.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“3. “selectively receives” Limitation 10.6 recites “a power coil operably coupled to the” slip op. at 28
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“evidence—that the RONDO 2 product “embodie[s]” the invention in the ’746 patent in a way providing the necessary nexus. First PO Resp. 55; First Pet. Reply 20 (arguing as to similar assertions for the prior asserted ground, that “Patent Owner provides no nexus analysis whatsoever” and that “[t]here is no comparison between the RONDO 2 device and the claim scope”), 26 (relying on the prior nexus arguments). For example, Patent Owner does not how RONDO 2 practices the limitations of even one of the challenged claims. Similarly, Patent Owner fails to adequately show nexus for the discussion in Exhibit 2011 as to, for example, long-felt but unsolved need because Patent Owner has not shown how that reference indicates that the limitations of even one of the challenged claims are practiced. See First PO Resp. 55; First Pet. Reply 20, 26. Dr. Young’s cited testimony does not remedy these deficiencies. See First Young Decl. ¶¶ 136–137, cited at First PO Resp. 55–56. Accordingly, without any nexus, we find Patent Owner’s arguments unconvincing.” slip op. at 68
Patent outcomesUS 8,155,746 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,155,746 - Medtronic Corevalve LLC / Edwards Lifesciences Corporation et al. v. Colibri Heart Valve LLCAll claims unpatentablePTAB · Mar 24, 2022 · IPR2021-00775 · APJ James A Tartal · IPR · Final written decision
Claims 1–5 are unpatentable as obvious over Garrison; the Board did not reach the Andersen/Limon grounds.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“pursuant to 35 U.S.C. §§ 311–319, requesting an inter partes review of the Challenged Claims. Paper 2 (“Pet.”). On March 10, 2021, we instituted an inter partes review of the Challenged Claims on all grounds of unpatentability asserted in the Petition. Paper 11. Within one month of institution of review, on April 6, 2021, Edwards Lifesciences Corporation and Edwards Lifesciences LLC filed a petition in IPR2021-00775 substantively identical to the Petition in this proceeding, along with a motion for joinder to this proceeding. IPR2021-00775, Papers 2 and 3. We instituted trial in IPR2021-00775 and granted the motion joining Edwards Lifesciences Corporation and Edwards Lifesciences LLC as petitioner to this proceeding. Paper 17.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“pursuant to 35 U.S.C. §§ 311–319, requesting an inter partes review of the Challenged Claims. Paper 2 (“Pet.”). On March 10, 2021, we instituted an inter partes review of the Challenged Claims on all grounds of unpatentability asserted in the Petition. Paper 11. Within one month of institution of review, on April 6, 2021, Edwards Lifesciences Corporation and Edwards Lifesciences LLC filed a petition in IPR2021-00775 substantively identical to the Petition in this proceeding, along with a motion for joinder to this proceeding. IPR2021-00775, Papers 2 and 3. We instituted trial in IPR2021-00775 and granted the motion joining Edwards Lifesciences Corporation and Edwards Lifesciences LLC as petitioner to this proceeding. Paper 17.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“with the features recited in claim 1, aside from the use of pericardial tissue. See generally Resp. Patent Owner also does not dispute that the use of fixed pericardial tissue in the construction of a valve means was well known in the art to a person of ordinary skill.9 Id. Because Petitioner’s arguments are supported by the cited evidence of record, which we adopt as our own findings, we are persuaded that a preponderance of the evidence shows that” slip op. at 41
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentable
“with the features recited in claim 1, aside from the use of pericardial tissue. See generally Resp. Patent Owner also does not dispute that the use of fixed pericardial tissue in the construction of a valve means was well known in the art to a person of ordinary skill.9 Id. Because Petitioner’s arguments are supported by the cited evidence of record, which we adopt as our own findings, we are persuaded that a preponderance of the evidence shows that” slip op. at 41
Patent outcomesUS 9,125,739 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,125,739 - Edwards Lifesciences Corporation / Edwards Lifesciences LLC v. Colibri Heart Valve LLCAll claims unpatentablePTAB · Mar 24, 2022 · IPR2020-01649 · APJ James A Tartal · IPR · Final written decision
Claims 1–5 are unpatentable as obvious over Bessler with Leonhardt and Klint, and Bessler with Teitelbaum and Klint; anticipation by Paniagua was not shown.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“A [person of ordinary skill in the art] as of January 4, 2002 ‘would have had a minimum of either a medical degree and experience working as an interventional cardiologist or a Bachelor’s degree in bioengineering or mechanical engineering (or a related field) and approximately two years of professional experience in the field of percutaneously, transluminally implantable cardiac prosthetic devices. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.’ Resp. 2 (quoting IPR2020-01454, Paper 1, 23); Ex. 2019 ¶¶ 21, 22. According to Patent Owner, Petitioner’s proposed definition does not allow for the “differentiation among those who possess ordinary skill in the art versus those who possess extraordinary skill in the art.” Resp. 2–3 (citing” slip op. at 15
- Expert testimonyPetitioner expert creditedDecided for petitioner
“one of extraordinary skill in the art,” because at his deposition “he testified that in forming his opinions, he applied all of his experience up until January 4, 2002.” Resp. 3 (citing Ex. 2020, 20:5–14). According to Patent Owner the “agreed upon definition of a person of ordinary skill required “two years of experience,” and in 2002 Dr. Goldberg had “been practicing in the relevant field for approximately 17 years.” Id. We find Patent Owner’s argument unpersuasive, because it misrepresents Dr. Goldberg’s testimony, as follows: Q. Did you apply all of the qualifications and experience that you set forth in your declaration up until January 4th, 2002, in reaching the opinions you set forth in your declaration, other than the Paniagua opinions? A. The phrasing of the question is slightly confusing, but I believe that what you're asking is, did I consider the perspective of somebody whose knowledge -- a person skilled in the art’s knowledge was January 4th, 2002, and before. And hopefully, I answered your question correctly, but if not, it was due to my misunderstanding.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“related district court proceedings construing “‘flares at both ends in a trumpet-like configuration’ to mean ‘having, at each end, a widening that resembles the bell of a conventional musical trumpet.’” Resp. 12 (citing Ex. 2025, 46; Ex. 2026; Ex. 2019 ¶¶ 66, 67). We discern no dispute over the meaning of “flares at both ends in a trumpet-like configuration” that requires an express construction. See Reply 23–30. 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 Cir. 1999)).” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Thus, in light of Applicants’ repeated statements during prosecution that the prosthetic heart valve cannot be collapsed onto a pusher member that terminates proximally to the valve, Petitioners’ proposed construction must fail. Petitioners’ construction of “collapsed onto” to mean “collapsed in contact with” specifically includes “collapsed onto” a pusher member that terminates proximally to the valve as in Bessler, which the prosecution history makes clear is not the meaning of “collapsed onto.” Id. at 17 (citing Ex. 2019 ¶¶ 75–77). In its Reply, Petitioner argues that Figure 8 of the ’739 patent is “inconsistent with the [S]pecification.” Reply 19. We disagree because Figure 8 is part of the Specification. Petitioner further argues that Figure 8 mislabels the distal end as the “proximal end” of the catheter, and, therefore, the entire figure should be “disregarded” because of such “obvious errors.” Id. at 21–23. Petitioner has shown no sufficient basis to “disregard” Figure 8, much less that Figure 8 is determinative of whether “onto” means “in contact with,” as Petitioner alleges. See Sur-reply 12–15. Likewise, Petitioner’s argument that Patent Owner “imposes an unsupported temporal limitation on ‘collapsed onto’” when Patent Owner addressed Klint provides no support for Petitioner’s proposed construction of “onto.” Reply 22–23. Consistent with our Decision on Institution, we determine on the full record that Petitioner fails to show sufficiently that “onto” means “in contact with.” See Inst. Dec. 23–27. Accordingly, a “delivery system . . . wherein the prosthetic heart valve is collapsed onto the pusher member” does not encompass a delivery system with a prosthetic heart valve only shown to be “in contact with” a pusher member. We find no further express construction” slip op. at 22
Patent outcomesUS 9,125,739 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,125,739 - Unified Patents, LLC v. Mcom IP, LLCInstitutedPTAB · Mar 7, 2022 · IPR2022-00055 · APJ Eric C Jeschke · IPR · Institution
The Board instituted IPR on claims 1, 3–7, 9–13, 15, 16, and 18–20 on all asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Section 314(a) of Title 35 of the United States Code provides that an inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) as well as the evidence and arguments in the Preliminary Response (including its supporting testimonial evidence), for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner
“For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner. That definition is supported by the cited testimony of Mr. Jestice, which provides additional background on the “basis for [his] familiarity with the level of ordinary skill,” and which we find persuasive on this issue. See Pet. 14–15 (citing Jestice Decl. ¶¶ 31– 32). Petitioner’s proposed definition of the level of ordinary skill in the art also appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. In contrast, Patent Owner’s assertion does not identify supporting testimony from Mr. Landers. See Prelim. Resp. 4. In a paragraph not cited in the Preliminary Response, however, Mr. Landers repeats Patent Owner’s statement (shown in the block quotation above) as to the qualifications that “[a] person of ordinary skill in the art is defined as having . . . .” Landers Decl. ¶ 20 (emphasis added); compare id., with Prelim. Resp. 4. Because Mr. Landers does not adequately explain who or what provided that definition, we view that position as entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We note that Patent Owner does not argue, at this stage of the proceeding, that Petitioner’s proposal for the level of ordinary skill leads to an improper understanding of how a skilled artisan would understand either the ’508 patent or the prior art.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner argues that the claimed “computer system configured with at least one control console” should be limited to either a marketing computer system or an operation computer system. Id. Although the Specification describes an embodiment with a “marketing computer system” and an “operations computer system”—as shown in Figure 1 (see also, e.g., Ex. 1001, 3:42–44)—it is generally improper to read limitations from specific embodiments into the claims. See Cadence Pharms. Inc. v. Exela PharmSci Inc., 780 F.3d 1364, 1369 (Fed. Cir. 2015) (“[E]ven if all of the embodiments discussed in the patent included a specific limitation, it would not be proper to import from the patent’s written description limitations that are not found in the claims themselves.” (internal quotations omitted)). Thus, contrary to Patent Owner’s argument, we do not limit the recited “computer system” to a marketing computer system or operations computer system.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“extrinsic evidence defining “session” as “a meeting or series of meetings of a body for the transaction of business.” Prelim. Resp. 8. Regardless, this definition is not applicable to the invention at issue here as it relates to meetings between a group or groups of people in a deliberative body of some type. See Ex. 3003 (The American Heritage Dictionary of the English Language (2016) (via Credo Reference), https://search.credoreference.com/ content/entry/hmdictenglang/session/0 (last visited Feb. 16, 2022) (Definition 1.a – “A meeting of a legislative or judicial body for the purpose of transacting business.”). Instead, we view as more applicable alternative definitions of “session” as a period of time for a certain activity, such as communication between a user and a system. See id. (Definition 3 – “A period of time devoted to a specific activity: a recording session at a music studio; a login session that was disrupted by a power outage.”); Ex. 3004 at 11 (IEEE 100: The Authoritative Dictionary of IEEE Standard Terms, available at https://ieeexplore.ieee.org/document/4116787) (Definition 1 – “The period of time during which a user of a terminal can communicate with an interactive system, usually equal to elapsed time between logon and logoff.”). This understanding of a “session” as a period of time for certain activity is supported by references in the Specification to a “session” being “initiated” and “ended.” See, e.g., Ex. 1001, 4:56 (discussing how “a customer interaction session is initiated”), 5:41–42 (discussing how a “transaction session is determined . . . to have ended”). Although we need not expressly define “session” at this stage of the proceeding, the parties may wish to develop this issue at trial. Further, even if we were to agree with Patent Owner and view an “active session” as characterized by the nature of the activity taking place— rather than a period of time during which that activity takes place—we do not agree that an “active session” must include “feedback from the touch point.” Prelim. Resp. 8. The passages in the Specification highlighted by Patent Owner refer to a “customer’s interactions” with the touch point (see Ex. 1001, 4:46–55, cited at Prelim. Resp. 8) but do not mention any feedback or response by the touch point. To the extent Patent Owner implicitly contends that one of ordinary skill in the art would have understood the terms “interacts” and “interactions” (see Ex. 1001, 4:49, 4:53) as requiring reciprocal activity, the record at this stage does not support that understanding by one of ordinary skill in the art. See Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1359 (Fed. Cir. 2018) (rejecting attorney argument as to the alleged understanding of one of skill in the art on an issue when no evidence was presented). Moreover, even if “interactions” would have been understood as both input from a customer and response from the system, the passages cited discuss the capabilities of the system and do not define an “active session” as requiring a response from the system. See Ex. 1001, 4:46–55, 5:39–42. The Landers Declaration largely tracks the Preliminary Response and does not add to the discussion on this issue. Compare Prelim. Resp. 8, with Landers Decl. ¶¶ 27–28. For these reasons, we are not persuaded to adopt Patent Owner’s proposed construction of “active session” at this stage of the proceeding.” slip op. at 20
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,862,508
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.