- Sage Products, LLC v. Purewick CorporationAll claims unpatentablePTAB · Feb 14, 2022 · IPR2020-01426 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1, 3–8, and 17–19 are unpatentable as anticipated by Mahnensmith; the Board also found them obvious over Kuntz 166, DesMarais, and ordinary skill.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). To establish anticipation, “all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that “a POSITA would be a clinical practitioner with an advanced medical degree, or an individual having a bachelor’s degree in engineering, knowledgeable in the field of normal micturition (voiding) and with experience in the field of urine management and incontinence care including devices for urine collection and management.” Pet. 14 (citing Ex. 1002 ¶ 23). Patent Owner argues that a POSITA “would have had a bachelor’s degree in engineering (e.g., chemical or material sciences), or an advanced medical degree, and at least 1–2 years of experience in designing products related to the biomedical application of material and chemical sciences.” PO Resp. 8 (citing Ex. 2060 ¶ 8). We agree with Petitioner that the ’508 patent does not involve advances in “material or chemical sciences”; rather, it describes a vacuum urine collector using “moisture-wicking article,” which the patent describes as including paper towel, gauze, felt, and similar materials, secured over a perforated container using, e.g., elastic bands, clips, and snaps. Ex. 1001, Abstract, 4:1–15; Ex. 1017 ¶ 5. The ’508 patent does not focus on “principles of adhesion and cohesion” and “hydrophobic and hydrophilic materials,” as Patent Owner alleges. See PO Resp. 9–10. Instead, we agree with Petitioner that knowledge of urine collection devices is what is necessary, rather than the more generalized field of “biomedical application of material and chemical sciences.” Ex. 1017 ¶¶ 5–7. Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill as it appears to be consistent with the level of skill reflected in the Specification and in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art). We note, however, that we reach the same decision under either definition of a person of ordinary skill in the art.” slip op. at 12
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Here, we find the testimony of Dr. Newman of why pad 112 of Mahnensmith cannot have an uncovered opening credible, well-reasoned, and entitled to significant weight. See Ex. 1017 ¶¶ 64–68. We note that In an anticipation analysis, the dispositive question is whether a skilled artisan would “reasonably understand or infer” from a prior art reference that every claim limitation is disclosed in that single reference. Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003). Expert testimony may shed light on what a skilled artisan would reasonably understand or infer from a prior art reference. Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336, 1345 (Fed. Cir. 2018). Acoustic Tech., Inc. v. Itron Networked Sols., Inc., 949 F.3d 1366, 1373 (Fed. Cir. 2020). Dr. Newman explains that Mr. Jezzi fails to adequately account for what Figure 4 depicting pad 112 would have disclosed to a person of ordinary skill in the art. Ex. 1017 ¶ 64. Moreover, Dr. Newman explains that a person of ordinary skill would understand that Mahnensmith’s pad 112 cannot have uncovered openings because Mahnensmith states that its moisture-wicking article is “removably affixed to the outermost face of permeable layer 116 by use of double-stick tape located around the perimeter of the porous sheet member 136…” (Ex. 1004 at ¶30.) If there is an exposed opening at the perimeter, as Mr. Jezzi claims, that would mean that the double-sided tape would cover it, so it is not an “opening.” A POSA would not assemble a vacuum-assisted urine collection device like Mahnensmith’s just to cover its vacuum openings with tape, as that would defeat the purpose of having any inlet openings there in the first place. Moreover, the opening(s) would make it difficult for the tape to stay secure in that location. Ex. 1017 ¶ 67. In addition, Dr. Newman testifies” slip op. at 36
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“In an anticipation analysis, the dispositive question is whether a skilled artisan would “reasonably understand or infer” from a prior art reference that every claim limitation is disclosed in that single reference. Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003). Expert testimony may shed light on what a skilled artisan would reasonably understand or infer from a prior art reference. Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336, 1345 (Fed. Cir. 2018). Acoustic Tech., Inc. v. Itron Networked Sols., Inc., 949 F.3d 1366, 1373 (Fed. Cir. 2020).” slip op. at 36
Patent outcomesUS 8,287,508 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,287,508 - Dji Europe B.V. v. Daedalus Blue LLCAll claims unpatentablePTAB · Feb 14, 2022 · IPR2020-01472 · APJ Barry L Grossman · IPR · Final written decision
Claims 8, 10–12, 14, 23, 25–27, 29, 38, 40–42, and 44 are unpatentable under §103 Grounds 1–4; Grounds 5–8 do not establish unpatentability.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Thus, Dr. Hansman and Dr. Kaputa, two highly educated, highly experienced experts in the relevant technology, agree on the level of education and training of a person of ordinary skill adopted in our Decision to Institute. The parties also agree. The parties and the experts may disagree on what would have been obvious to this hypothetical person, but that does not affect our determination of the level of education and training for a person of ordinary skill. Based on the testimony of Dr. Hansman and Dr. Kaputa, as well as the references of record, we maintain the definition of the level of ordinary skill in the art adopted in our Decision to Institute (Dec. Inst. 19), which is that a person of ordinary skill would have had a bachelor’s degree in aeronautical engineering, electrical engineering, computer science or equivalent training and experience, and at least two years of experience in the field of unmanned vehicles.” Dec. Inst. 18–19.14” slip op. at 14
- Expert testimonyPetitioner expert creditedPatent owner expert creditedOther
“device sending either absolute or relative coordinates of waypoints to the UAV.” Ex. 1061 ¶ 3. The “relative coordinates” tell the UAV to fly to a position relative to its present location “regardless of and without knowledge of the UAV’s present location on Earth.” Id. at ¶ 4. He also testifies that a “POSITA would understand that the absolute coordinates specifically identify a point on the Earth and are therefore ‘Earth coordinates.’” Id. at ¶ 5. Dr. Hansman does not provide the underlying facts or data on which his opinion is based. Accordingly, it is entitled to little probative underlying facts or data on which the opinion is based is entitled to little or no weight.”). Dr. Kaputa testifies that, in his opinion, a POSITA would understand the ’913 [patent] defines [Earth coordinates] as meaning latitude and longitude.” Ex. 2011 ¶ 32. He cites the same portions of the Specification as asserted by Patent Owner, and discussed above, i.e., the definition of “position” and the assertion that latitude and longitude are the only coordinate system disclosed. Id. at ¶¶ 31–33. We determine this testimony also has little probative weight for the same reasons as discussed above.” slip op. at 27
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“waypoint” and “earth coordinates.” PO Resp. 12–14. We note that “waypoint” is defined in the Specification. See Ex. 1001, 5:60–63 (under the heading “Definitions,” defining “waypoint” to mean “a position chosen 15 In our Decision to Institute, we asked the parties to specifically address in the briefing for this proceeding the construction of the means-plus-function claim terms to clarify the parties’ respective positions, which appeared to be different from their claim construction positions in the District Court. Dec. Inst. 22–27 (citing Ex. 2009). This request for specific briefing was to allow the Board to resolve the claim construction issues under 35 U.S.C. § 112 ¶ 6 in the proceeding before us. It was not to address the disclosure requirements of §§ 112 ¶¶ 1, 2, which are not at issue in this IPR proceeding. See Cochlear Bone Anchored Sols. AB v. Oticon Med. AB, 958 F.3d 1348, 1359 (Fed. Cir. 2020) (holding that a claim that fails to meet the disclosure requirements of 35 U.S.C. § 112 ¶ 6 is “indefinite, . . . but that is not the inquiry in an inter partes review, in which the Board may not hold a challenged claim of a patent indefinite”). waypoints. That is, a route is composed of way points, including at least one final waypoint, and one or more intermediate waypoints.”). Patent Owner’s proposed definition is “a position chosen as a destination for navigation of a route.” PO Resp. 12. Patent Owner’s definition is consistent with the Specification. Nonetheless, we will rely on the definition from the Specification. slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“education and experience stated in Section III.B of this Decision, would understand from the claims and Specification that the term “Earth coordinates,” as used in the claims of the ’913 patent, means any coordinate system that identifies a precise Earth location of a GUI map pixel. Based on the evidence discussed above, this is the construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention. Based on the evidence and the analysis above, we determine that the term “Earth coordinates” is not synonymous with, or otherwise limited to, “latitude and longitude.” We are not persuaded that the record in this case shows that the patentee clearly set forth this definition of “Earth coordinates.” The written description does not equate “Earth coordinates” and “latitude and longitude” through interchangeable use. The written description and the claims are consistent in using the term “Earth coordinates” broadly in the independent claims and when disclosing the broad concepts of the invention. The terms “latitude and longitude” are used only in dependent claims, and as a “typical” example of an Earth coordinate system. Disclosing “latitude and longitude” as a preferred embodiment does not make clear that the invention is limited to these coordinates. There is no disclosure of any specific advantage of using “latitude and longitude” as the Earth coordinate system. See Apple, Inc. v. Wi-LAN, Inc., 2020-2011, 2020- 2094, slip op. 9–12 (Fed. Cir. Feb. 4, 2022).” slip op. at 29
Patent outcomesUS 7,286,913 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,286,913 - Dji Europe B.V. v. Daedalus Blue LLCNo claims unpatentablePTAB · Feb 3, 2022 · IPR2020-01475 · APJ Arthur M Peslak · IPR · Final written decision
Claims 7–12 were not shown unpatentable because the evidence did not establish the claimed algorithm selection over Sanders or motivation to combine Duggan with Pilley.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a skilled artisan “would have had a bachelor’s degree in aeronautical engineering, electrical engineering, computer science or equivalent training and experience, and at least two years of experience in the field of unmanned vehicles.” Pet. 7–8 (citing Ex. 1003 ¶ 20). Petitioner further contends that “[a]dditional work or research experience can substitute for less or different education, and vice-versa.” Id. at 8. Patent Owner appears to apply Petitioner’s level of ordinary skill in the art. See PO Resp. 17–18. Based on the complete record, we adopt Petitioner’s proposed level of ordinary skill in the art because it comports with the level of skill reflected in the ’232 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“Because the Petition implicitly applies the same construction proposed by Patent Owner in both of grounds 1 and 2, there is no dispute between the parties. Consequently, we evaluate the Petition using Patent Owner’s construction of “selecting.” 37 C.F.R. § 42.104 (b)(3) (the Petition must contain a statement “[h]ow the challenged claim is to be construed”); see also 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’”) (citing 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 not foundNot shown unpatentableNot shown unpatentable
“First, Petitioner and Dr. Hansman rely heavily on Duggan’s disclosure that its VACS architecture is “plug-n-play.” Pet. 58; Ex. 1003 ¶ 238; see also Tr. 9:12–20 (arguing “how simple the combination would be”, “Duggan has designed such that additional components can be modularly plugged into the control architecture”, “Duggan talking about how things are just plug and play”). This argument appears to assume that a skilled artisan is an automaton and any modular collision avoidance system that could be plugged in would suffice for obviousness. However, the test is not whether a skilled artisan could plug Pilley’s air collision detection process into Duggan but rather whether a skilled artisan would have done so. In that regard, Dr. Kaputa testifies to the “difference between creating a modular function that ‘plugs-n-plays’ with an intelligent synthesizer (as discussed by Duggan) and a component such as a GPS-based collision avoidance system that relies on zone databases constructed from time varying position and state information provided by other aircraft in the region.” Ex. 2011 ¶ 80. Among the reasons cited by Dr. Kaputa to support his opinion of a difference is a skilled artisan would “have to ensure that all aircraft flying within the vicinity of the UAV also adhere, subscribe, and transmit data to the new GPS-based collision avoidance system in order for it to be effective.” Id. (citing Ex. 1010, 93:41–94:60); see also Ex. 1005, 76 (“It is especially important for each vehicle’s CAS to know whether the other vehicle are cooperating with them in collision avoidance.”).” slip op. at 35
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Dr. Kaputa testifies “a [skilled artisan] would not use the words maneuver and algorithm interchangeably. Indeed, not even Sanders does so and instead makes clear that a collision avoidance algorithm includes maneuvers.” Ex. 2011 ¶ 57 (citing Ex. 1005, 141 et seq.). Dr. Kaputa further testifies “a maneuver can be executed via an algorithm, however, in the case of Sanders there is a clear delineation between maneuvers and collision avoidance algorithms.” Id. Dr. Kaputa further testifies: Sanders further states “Many collision avoidance algorithms in the literature seem to choose a maneuver direction with little thought of justification. As we will see, however, this decision can depend on many factors. Collision avoidance maneuvers usually fall into one of four categories: horizontal maneuvers, vertical maneuvers, speed changes, and combination maneuvers. EX. 1005 at 65 (emphasis in original). Further, “Most algorithms in the collision avoidance literature seem to use horizontal resolution maneuvers.” Id. at 65–66. Thus, it is clear that for a [skilled artisan], a collision avoidance maneuver is not a collision avoidance algorithm, rather it is an instruction contained within a higher level collision avoidance algorithm that may be performed under the right circumstances. Id. ¶ 60. Petitioner submits no evidence to rebut this testimony by Dr. Kaputa. Further, this testimony is consistent with Dr. Hansman’s declaration testimony. See Ex. 1003 ¶ 106 (testifying the “the continuous algorithm determines when to maneuver up . . . or down”). In addition, Sanders discloses its continuous algorithm contains a step where it “Compute[s] collision avoidance maneuver.” Ex. 1005, 149. We therefore credit Dr. Kaputa’s testimony because it is based on corroborating evidence from Sanders over Dr. Hansman’s unsupported deposition testimony. To the extent that Petitioner contends that these maneuvers correspond to collision avoidance algorithms in the ’232 patent (Pet. Reply 8–9), Petitioner’s contention is not persuasive because it is attorney argument not supported by evidence. Consequently, Petitioner fails to establish with evidence that” slip op. at 18
Patent outcomesUS 7,228,232 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,228,232 - Dji Europe B.V. v. Daedalus Blue LLCNo claims unpatentablePTAB · Feb 3, 2022 · IPR2020-01474 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–6 and 13–18 were not shown unpatentable because the petitioner failed to prove the asserted obviousness grounds by a preponderance of the evidence.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a skilled artisan “would have had a bachelor’s degree in aeronautical engineering, electrical engineering, computer science or equivalent training and experience, and at least two years of experience in the field of unmanned vehicles.” Pet. 7–8 (citing Ex. 1003 ¶ 20). Petitioner further contends that “[a]dditional work or research experience can substitute for less or different education, and vice-versa.” Id. at 8. Patent Owner appears to apply Petitioner’s level of ordinary skill in the art. See PO Resp. 18. Based on the complete record, we adopt Petitioner’s proposed level of ordinary skill in the art because it comports with the level of skill reflected in the ’232 patent and the prior art of record.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Although Petitioner provides no explicit claim construction analysis in either the Petition or the Reply, in analyzing the challenge based on Sanders, the Petition states “Sanders implemented DSAAV10 system includes two collision avoidance algorithms: the bang-bang maneuver and the continuous maneuver.”11 Pet. 21. Petitioner then contends “Sanders’ algorithm selects 10 “DSAAV” refers to the Draper Small Autonomous Air Vehicle. Ex. 1005, 21. 11 Sanders describes the bang-bang maneuver and the continuous maneuver. See Ex. 1005, 68 et. seq. a maneuver (bang-bang or continuous).” Id. at 23. Dr. Hansman likewise testifies “Sanders’ implemented DSAAV system includes two types of collision avoidance algorithms: bang-bang and continuous maneuvers” and “[t]he CAS selects one of these algorithms when an obstacle is detected.” Ex. 1003 ¶ 101. Similarly, Petitioner applies Patent Owner’s construction of selecting in analyzing Ground 5. Pet. 70–71. Thus, both Dr. Hansman and Petitioner analyze the claims using Patent Owner’s construction that both “selecting an obstacle avoidance algorithm” in claim 1 and “means for . . . selecting an obstacle avoidance algorithm” in claim 13 require selection from one or more collision avoidance algorithms. Because the Petition implicitly applies the same construction proposed by Patent Owner in both of grounds 1 and 2, there is no dispute between the parties. Consequently, we evaluate the Petition using Patent Owner’s construction of “selecting.” 37 C.F.R. § 42.104 (b)(3) (the Petition must contain a statement “[h]ow the challenged claim is to be construed”); see also 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’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“For the following reasons, we find Petitioner has not established that Sanders discloses “selecting an obstacle avoidance algorithm” as required by claim 1. The Petition specifically states that Sanders system includes “two collision avoidance algorithms: the bang-bang maneuver and the continuous maneuver” and “selects a maneuver (bang-bang or continuous).” Pet. 21, 23. Dr. Hansman, likewise, testifies Sanders “selects one of these algorithms when an obstacle is identified.” Ex. 1003 ¶ 101. Petitioner, however, does not dispute Patent Owner’s contention that Sanders only intended the continuous algorithm to be flown. See generally Pet. Reply. We now turn to the disclosure in Sanders concerning whether Sanders at least suggests that both collision avoidance algorithms would be available for selection during flight. Sanders discloses it anticipated running actual flight tests on vehicles with its CAS “in the coming year.” Ex. 1005, 136. The fact that Sanders had not yet engaged in any actual flight testing is not dispositive of whether Sanders teaches or suggests that both the bang-bang algorithm and the continuous algorithm would be available for selection during flight. After discussing the bang-bang algorithm, Sanders states that limitations of the bang-bang maneuver “sparked the design for the continuous DSAAV collision avoidance controller, described next.” Id. at 78. Sanders begins the description of the continuous controller by stating that “we wanted to eliminate the shortcomings of the open-loop controller, especially the all-ornothing behavior which gets it into trouble.” Id. Sanders also states “the continuous controller . . . will probably be used in the flight tests.” Id. at 73. Petitioner does not point to any disclosure in Sanders that it contemplated using both algorithms in upcoming flight tests nor has our independent review resulted in any disclosure from which it could be inferred that Sanders intended to include both algorithms during flight tests. In light of the foregoing, we find Petitioner has not shown that” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“For the following reasons, we determine that Petitioner has not established that a skilled artisan “would have been motivated to modify Duggan’s air collision avoidance component to integrate Pilley’s air collision detection processes.” Pet. 58. First, Petitioner and Dr. Hansman rely heavily on Duggan’s disclosure that its VACS architecture is “plug-n-play.” Pet. 58; Ex. 1003 ¶ 238; see also Tr. 9:12–20 (arguing “how simple the combination would be”, “Duggan has designed such that additional components can be modularly plugged into the control architecture”, “Duggan talking about how things are just plug and play”). This argument appears to assume that a skilled artisan is an automaton and any modular collision avoidance system that could be plugged in would suffice for obviousness. However, the test for obviousness is not whether a skilled artisan could plug Pilley’s air collision detection process into Duggan but rather whether a skilled artisan would have done so. In that regard, Dr. Kaputa testifies to the “difference between creating a modular function that ‘plugs-n-plays’ with an intelligent synthesizer (as discussed by Duggan) and a component such as a GPS-based collision avoidance system that relies on zone databases constructed from time varying position and state information provided by other aircraft in the region.” Ex. 2011 ¶ 80. Among the reasons cited by Dr. Kaputa to support his opinion of a difference between Duggan and Pilley is a skilled artisan would “have to ensure that all aircraft flying within the vicinity of the UAV also adhere, subscribe, and transmit data to the new GPS-based collision avoidance system in order for it to be effective.” Id. (citing Ex. 1010, 93:41–94:60); see also Ex. 1005, 76 (“It is especially important for each vehicle’s CAS to know whether the other vehicle are cooperating with them in collision avoidance.”).” slip op. at 36
Patent outcomesUS 7,228,232 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,228,232 - Nespresso USA, Inc. v. K-Fee System GMHBInstitution deniedPTAB · Jan 18, 2022 · IPR2021-01222 · APJ James J Mayberry · IPR · Institution
The Board denied institution under § 325(d), finding substantially the same prior art or arguments had been presented to the Office and no material examiner error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“stated in the Petition, standing alone, supports a finding of material examiner error, that argument is not developed adequately and, therefore, is unpersuasive on this record. Pet. 84–85. Petitioner bears the burden of showing that the Office erred, for example, by “misapprehending or overlooking specific teachings of the relevant prior art whose teachings impact patentability of the challenged claims.” Advanced Bionics, Paper 6 at 8. Where “the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under” Becton, Dickinson factors (e) and (f). Advanced Bionics, Paper 6 at 10. As explained above, when assessing factor (e), we consider whether Petitioner “point[s] out sufficiently how the examiner erred in its evaluation of the asserted prior art.” Supra 8. When assessing factor (f), in turn, we look for some explanation of how or why “the extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments.” Id. Petitioner addresses neither of those issues adequately, if at all. Pet. 81–85; Prelim. Reply 5–10. The closest Petitioner comes to addressing those issues is by observing, “the obviousness analysis” in the Petition “is supported by expert testimony, which the Examiner did not have.” Pet. 85. That observation is undeveloped by further analysis and, therefore, is ineffective to show that the Examiner materially erred by failing to discuss the same prior art combinations advanced in the Petition, or that “additional evidence and facts presented in the Petition warrant reconsideration of the prior art” previously presented to the Office. Becton, Dickinson, Paper 8 at 18.” slip op. at 26
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“institute review. See also 37 C.F.R. § 42.4(a) (2021) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons set forth below, upon considering the Petition, Preliminary Response, Preliminary Reply, Preliminary Sur-reply, and evidence of record, we exercise discretion under 35 U.S.C. § 325(d) and do not institute an inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for patent owner
“namely, whether the claimed invention is entitled to a priority date of July 22, 2010, based on certain German priority documents, thereby disqualifying Jarisch as prior art under 35 U.S.C. § 102(e). See Pet. 15–18 (discussing priority to the German applications), 22–23 (asserting Jarisch as prior art under § 102(e)), 85 (arguing that the examiner did not consider Jarisch because of an error in priority); Ex. 1002–176, Part 1, 278. Pet. 15–18 (arguing that the challenged claims are not entitled to priority based on the German priority documents), 85 (arguing the examiner applied an incorrect priority date, based on the German priority documents, to antedate Jarisch); Prelim. Resp. 4–6, 16–22; Prelim. Reply 8–10; Prelim. Sur-reply 7–10. Petitioner focuses only on whether the examiner erred in assessing that argument. Pet. 85. Petitioner does not, and cannot, submit that the Office never considered the issue during patent prosecution, at least with respect to applications in the priority chain of the ’177 patent. The Office, in fact, expressly considered whether “Jarisch is not prior art” because the challenged claims are “entitled to a priority date of 22 July 2010” based on the German priority documents. Ex. 1002–176, Part 1, 278 (prosecution history for the grandparent application). The Office also expressly responded to Patent Owner’s argument on that point as follows: “This urging is not deemed persuasive.” Id. This issue represents a second, significant argument previously presented to the Office.” slip op. at 20
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“B. Discretionary Denial under 35 U.S.C. § 314(a) Patent Owner also argues that we should exercise our discretion under 35 U.S.C. § 314(a) in light of parallel district court litigation involving the parties and the ’177 patent. Prelim. Resp. 36–44; Prelim. Sur-reply 1–4. Because we exercise our discretion under § 325(d) and deny the Petition, we do not reach this issue.” slip op. at 28
§ 102 anticipationDiscretionary denialPatents in suitUS 10,858,177 - Nespresso USA, Inc. v. K-Fee System GmbHInstitution deniedPTAB · Jan 18, 2022 · IPR2021-01221 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution of IPR on claims 1–15 under § 325(d), finding substantially the same prior art or arguments had been presented to the Office and no material Examiner error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“the same prior art or arguments asserted in the Petition and, if so, we resolve whether Petitioner shows sufficiently that the Examiner erred in a manner material to the patentability of the challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”).” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“challenged claims and (2) that the claimed invention, including the feature relating to barcode location, would not have been obvious over the combination of prior art references applied by the Examiner, including Jarisch. Id. at 393–404. Where both alternatives were before the Examiner, it is not at all clear that “the Examiner applied an incorrect priority date” or otherwise accepted that Jarisch does not qualify as prior art. Pet. 85.” slip op. at 23
§ 102 anticipationDiscretionary denialPatents in suitUS 10,858,176 - PTAB · Jan 12, 2022 · IPR2021-01256 · APJ Barry L Grossman · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). If an inter partes review is instituted, a final written decision under 35 U.S.C. § 318(a) must decide the patentability of all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018). For the reasons set forth below, we determine that Petitioner has demonstrated that there is a reasonable likelihood that at least one of claims 1–20 is unpatentable. Accordingly, we institute an inter partes review of all challenged claims and on all grounds asserted in the Petition. See 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 board ownOther
“relevant time would have had “at least a bachelor’s degree in chemical engineering or a similar discipline, and three years of experience in the research, design, or implementation of systems for controlling the feed rates of multiple components.” Pet. 27 (citing Ex. 1003 ¶ 70). Dr. Rockstraw repeats verbatim the identical one-sentence conclusion stated by Petitioner. Ex. 1003 ¶ 70. Dr. Rockstraw does not provide any facts, data, or analysis to support his opinion. His opinion on the level of ordinary skill is entitled to no probative weight. 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.”). Merely repeating a conclusory argument” slip op. at 14
- Expert testimonyPetitioner expert discountedDecided for patent owner
“relevant time would have had “at least a bachelor’s degree in chemical engineering or a similar discipline, and three years of experience in the research, design, or implementation of systems for controlling the feed rates of multiple components.” Pet. 27 (citing Ex. 1003 ¶ 70). Dr. Rockstraw repeats verbatim the identical one-sentence conclusion stated by Petitioner. Ex. 1003 ¶ 70. Dr. Rockstraw does not provide any facts, data, or analysis to support his opinion. His opinion on the level of ordinary skill is entitled to no probative weight. 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.”). Merely repeating a conclusory argument” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner does not propose any claim constructions. Given the lack of dispute on this record, we need not construe the claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claims are construed only to the extent necessary to resolve a dispute). We determine that an explicit construction of the claims is not necessary for the purposes of determining whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. This initial claim construction determination does not preclude the parties from arguing their proposed constructions of the claims during trial. Indeed, the parties are hereby given notice that claim construction, in general, is an issue to be addressed at trial. Claim construction will be determined at the close of all the evidence and after any hearing. The parties are expected to assert all their claim construction arguments and evidence in the Petition, Patent Owner’s Response, or otherwise during trial, as permitted by our rules.” slip op. at 16
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 10,159,996 - PTAB · Jan 6, 2022 · PGR2021-00097 · APJ Eric C Jeschke · PGR · Institution
Instituted PGR on claims 1, 2, and 8–10 on all asserted grounds because at least one claim was more likely than not unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Section 324(a) of Title 35 of the United States Code provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 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 that it is more likely than not that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute a post-grant 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. § 42.208(a) (“When instituting post-grant review, the Board will” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“aware of the claims being asserted, this fact has weighed against exercising the authority to deny institution under NHK.”). For these reasons, we determine that the third Fintiv factor weighs against exercising discretion to deny institution.” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“4. Conclusion For the reasons above, we find that the same or substantially the same art or arguments were presented to the Office, but we find that Petitioner has shown that the examiner materially erred by overlooking specific teachings in the SafeJet System, as currently presented, that impact the patentability of the challenged claims. Accordingly, we do not exercise our discretion to deny institution under § 325(d).” slip op. at 28
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Prelim. Reply 1 (“Patent Owner does not point to a single PTAB case suggesting that such ties suffice under General Plastic Factor 1 to transform unrelated petitioners into related ones.”). In fact, at least one recent nonprecedential decision highlighted by Petitioner expressly rejected that proposition. See NetNet Ltd. v. Bright Data Ltd., IPR2021-00465, Paper 11 at 10–11 (PTAB Aug. 12, 2021) (“In any event, a party is free to choose their own legal representation and expert, and, accordingly, we decline to consider a party’s choice of a law firm and expert as a factor that favors discretionary denial.”).” slip op. at 32
Claim construction§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,844,697 - Schlumberger Technology Corporation v. Dynaenergetics Europe GmbHInstitution deniedPTAB · Dec 14, 2021 · PGR2021-00089 · APJ Frances L Ippolito · PGR · Institution
The Board denied institution on all claims because the petition did not show a reasonable likelihood that any challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“We are authorized to institute a post-grant review where a petition demonstrates that it is more likely than not that at least one challenged patent claim is unpatentable. See 35 U.S.C. § 324. We are never compelled to institute a review, however, because institution is discretionary. Id.; cf. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that under § 314(a), “the PTO is permitted, but never compelled, to institute an IPR proceeding”). As in an IPR proceeding, we deny post-grant review, for example, where a petition fails to identify “with particularity” the challenges or evidence supporting them. Cf. Harmonic, 815 F.3d at 1363; 35 U.S.C. § 322(a)(3); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3)). For the reasons discussed below, we deny the institution of post-grant review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art (“POSITA”) “would be expected to have at least a Bachelor’s of Science degree in Mechanical or Electrical Engineering and at least two years of industry experience related to assembling, operating, and/or designing perforating tools.” Pet. 10 (citing Parrott Decl. ¶ 28). Patent Owner “believes that Petitioner’s definition suggests that a field technician who merely assembles guns could be a POSITA, which is incorrect,” and instead proposes “a POSITA would be expected to have a Bachelor’s of Science degree in Mechanical or Electrical Engineering and at least two (2) years of industry experience related to designing perforating gun systems.” Prelim. Resp. 35–36 (citing Ex. 2001 ¶ 52). For the purposes of institution, we do not see a material difference between the parties’ proposed definitions. Nonetheless, because Petitioner’s proposed definition of the level of ordinary skill in the art appears consistent with the record, including the prior art, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner for purposes of this Decision. See GPAC Inc., 57 F.3d at 1579.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.200(b) (2020). This standard requires that we construe claims “in accordance with the ordinary and customary meaning of such claim[s] as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an AIA trial proceeding). Patent Owner proposes constructions for “shaped charge receptacle” and “retention mechanism extending from a portion of the body.” Prelim. Resp. 36–38; see also PO Sur-reply 1–5. In its Reply, Petitioner disputes Patent Owner’s proposed constructions. Pet. Reply 2–3. For purposes of this Decision, we determine that no claim term requires explicit construction. See Vivid Techs., 200 F.3d at 803 (construing explicitly only those claim terms in controversy and only to the extent necessary to resolve the controversy).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“In addition, we determine that Petitioner has not sufficiently explained its alternative argument based on the “simple substitution of the circular openings (for inserting the shaped charges) in Vann for the circular openings with tabs in Von Kaenel.” Pet. 90 (citing Parrott Decl. ¶ 485). As an initial matter, Petitioner’s proposed substitution lacks sufficient clarity because it remains unclear which of Vann’s structures remain in the resulting combination. By emphasizing substitution of the “circular openings” alone in Vann, Petitioner suggests that Vann’s tabs 62 remain without explaining why the tabs are necessary if Von Kaenel’s tabs retain the shaped charges. See id. As discussed, Vann requires that the plurality of charge holders are placed in tandem and jointly cooperate together to make up a charge carrier 48. Ex. 1009, 5:50–56. To do so, tabs 62 formed by extended lateral edges 56, 58 are aligned in an overhanging relationship relative to the central lateral face 70 of the two adjacent charge holders. Id. at 6:61–64, Fig. 5. If the proposed combination employs Von Kaenel’s tabs to retain the charges, preserving the overhanging relationship of Vann’s tabs 62 to retain the charges would appear superfluous, and if Petitioner proposes retaining Vann’s tabs 62 but removing the overhanging relationship, Petitioner does not describe such a structure. In either case, a substitution of Vann’s circular openings alone while Vann’s tabs 62 remain in the resulting combination lacks adequate specificity and support. For completeness, we assess Petitioner’s argument based on the assumption that Petitioner proposes removing Vann’s tabs 62 entirely from the proposed combination. Per this theory, a POSITA would have simply substituted Von Kaenel’s side locking tabs 610 for Vann’s tabs 62 because a POSITA would have recognized the advantages of having the retention mechanisms be a part of the body in order reduce the number of tools and assembly required, to allow for differing offsets, as well as to simplify manufacturing, as discussed in each of Vann, Brooks, and Von Kaenel. Pet. 89–90 (emphasis added) (citing Parrott Decl. ¶ 484; Ex. 1013, Abstract, 2:60–3:16, 5:20–41, 8:41–58; Ex. 1009, 1:18–21, 2:22–29, 1:66–67, 1:41– 43, 3:63–68, 4:14–24; Ex. 1010, 9:48–53, 1:52–64). However, Petitioner has not explained sufficiently how this substitution would “simplify manufacturing” for Vann’s specific stacked formation. Indeed, Vann’s charge carrier is formed by a plurality of charge holders that jointly cooperate in tandem, which includes the cooperation of extended lateral edges that overhang the central lateral face of adjacent charge holders. See Ex. 1009, 6:61–64; Fig. 5. Substitution of Vann’s tabs 62 with Von Kaenel’s side locking tabs 610 would affect Vann’s tandem construction if tabs 62 are removed. See Pet. 80–95. More importantly, Petitioner has failed to explain adequately why a POSITA would have sought to make this combination to simplify manufacturing or reduce assembly given Vann’s specific charge carrier design, which is dependent on the overhanging relationship between separate, stacked charge holders. Id. Further, Mr. Parrott’s testimony is not helpful on this point. In paragraph 485 (cited by Petitioner), Mr. Parrott states that Von Kaenel’s tabs (retention mechanisms) would have been applied with ease to Vann’s perforating gun apparatus, which would have yielded predictable results. A POSITA would have recognized the combination as a simple substitution of the circular openings for inserting the shaped charges in Vann for the circular openings with tabs in Von Kaenel, and a POSITA would have had a reasonable expectation of success. Parrott Decl. ¶ 485 (emphases added). Like the Petition, these statements by Mr. Parrott are conclusory and do not explain the basis for his conclusions. See id. Looking elsewhere, paragraph 484 mirrors statements and citations in the Petition, which as discussed, are insufficient. Id. ¶ 484. And although paragraph 483 articulates the advantages of using “Von Kaenel’s superior teachings in order to better achieve the goal of reliably securing and positioning the shaped charges,” Mr. Parrott neglects to explain the proposed substitution in the context of Vann’s specific charge carrier design that relies on the overhanging edges/tabs of the charge holders for the in tandem assembly and construction. Id. ¶ 483 (citing Ex. 1013, Fig. 6B, 8:59–67). The Supreme Court has made clear that we apply “an expansive and flexible approach” to the question of obviousness. KSR, 550 U.S. at 415. Whether a patent claiming the combination of prior art elements would have been obvious is determined by whether the improvement is more than the predictable use of prior art elements according to their established functions. Id. at 417. Reaching this conclusion, however, requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. Id. Here, Petitioner has failed to make the threshold showing for the” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,844,696 - Apple, Inc. v. Alivecor, Inc.InstitutedPTAB · Dec 8, 2021 · IPR2021-00971 · APJ Robert A Pollock · IPR · Institution
The Board instituted IPR on claims 1–30 on all grounds in the Petition, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 58 & n.2, (“Trial Practice Guide”).6 We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6. Upon consideration of these factors, we decline to exercise our discretion to deny the Petition. A. Whether the Court Granted a Stay or Evidence Exists That One May Be Granted if a Proceeding is Instituted” slip op. at 10
- Skill levelSkill level board ownOther
“skill in the art under Patent Owner’s proposed definition. Given Patent Owner’s focus on “specialized engineering skills necessary for the design, configuration, and operation of portable computing devices,” however, we consider the weight of his, or any other expert’s opinions, in light of the strengths and weaknesses of their background. We further note that the research and development of medical devices is often the work of a multidisciplinary team, and courts and tribunals have frequently identified the hypothetical person of ordinary skill as a composite or team of individuals with complementary backgrounds and skills. See, e.g., AstraZeneca Pharm. LP v. Anchen Pharm., Inc., 2012 WL 1065458, at *19, *22 (D.N.J. Mar. 29, 2012), aff'd, 498 F. App’x 999 (Fed. Cir. 2013) (collecting cases); Apotex Inc. v. Novartis AG, IPR2017-00854, Paper 109 at 10–11 (PTAB July 11, 2018) (collecting cases). In the present case, such a team might include specialists in electrical engineering, mechanical engineering, biomedical engineering, computer science, and cardiology. In this respect, Patent Owner’s expert does not discount the benefit of a background in cardiology. In particular, Dr. Efimov testifies that although a cardiologist may or may not possess the specialized engineering skills to understand the design, configuration, and operation of the subject technology, “a degree in biomedical or electrical engineering (or an equivalent), and/or extensive experience working with arrhythmia detection tools would also be necessary.” Ex. 2001 ¶¶ 52–53 (emphasis added).10 Indeed, considering that the ’731 patent “relates to methods and systems for managing health and disease such as cardiac diseases including arrhythmia and atrial fibrillation,” we find it reasonable that one of ordinary skill in the art would encompass a multidisciplinary team including a cardiologist. In view of the above, we provisionally define one of ordinary skill in the art as a multidisciplinary team comprising persons with advanced degrees in electrical engineering, mechanical engineering, biomedical engineering, computer science, and/or cardiology. The parties are welcome to further address the level of ordinary skill in the art at trial.” slip op. at 27
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Furthermore, at this stage in the proceeding, we need only construe the claims to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). At this stage of the proceeding, no term requires construction. See Vivid Techs., 200 F.3d at 803 (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). The parties are, of course, welcome to address the meaning of any relevant claim term at trial. D. Ground 1: Obviousness over Shmueli” slip op. at 29
- Expert testimonyPetitioner expert creditedDecided for petitioner
“At this stage of the proceeding, however, we credit Dr. Chaitman’s testimony that, “Shmueli discloses both detecting the ‘irregular heart condition’ based on PPG data and confirming the diagnosis with an ECG measurement.” Ex. 1003 ¶ 48 (citing Ex. 1004, Abstract, Fig. 8; 8:23–28). And although Shmueli “offers an expansive definition of ‘irregular heart condition,’” one of ordinary skill in the art would have understood this term as referring to arrhythmia, “which is one of the most obvious (if not the most obvious) types of ‘irregular heart condition[s]’ that can be determined using PPG and ECG data.” Id. (citing, Ex. 1016, 6081; Ex. 1020, Abstract, 44:29– 32; Ex. 1011, Abstract; Ex. 1023, 2; Ex. 1047, 320–321; Ex. 1001, 1:40–42; Ex. 1004, 8:11–13, 15:3–5) (alteration in original). Considering the present record, Petitioner has established sufficiently that one of ordinary skill in the art would have understood Shmueli’s use of “irregular heart condition” as referring to—or at a minimum, encompassing—arrhythmia, and, thus, disclosing the detection of arrhythmia. See Pet. 10–12 (citing, e.g., Ex. 1003 ¶ 48).” slip op. at 33
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,595,731
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.