• Great West Casualty Company / Bitco General Insurance Corporation et al. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Jan 17, 2017 · IPR2015-01706 · APJ Michael W Kim · IPR · Final written decision

  Claims 11, 12, and 16–20 are unpatentable as obvious over MyLibrary.

  RulingsFinal written decision

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

    “In summary, we construe “content” as “electronic data embodying information for an individual or individuals,” and excluding “links to content,” but not excluding “content” associated with the “links to content.”5” slip op. at 16

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “written decision is issued shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (Affirming that USPTO has statutory authority to construe claims according to 37 C.F.R. § 42.100(b).). When applying that standard, we interpret the claim language as it would be understood by one of ordinary skill in the art in light of the Specification. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we generally give claim terms their ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning ‘is the meaning that the term would have to a person of ordinary skill in the art in question.’”). For the purposes of this decision, and on this record, we determine that most claim terms do not need express interpretation. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only those terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy.).” slip op. at 5

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

    “7. Conclusion We are persuaded that Petitioner has shown, by a preponderance of the evidence, that claims 11, 12, and 16–20 are unpatentable as obvious in view of MyLibrary. In addition to findings we make above in connection with our analysis of claims 11, 12, and 16–20 as obvious in view MyLibrary, we also adopt as our findings Petitioner’s positions as to how MyLibrary discloses each of the limitations of claims 11, 12, and 16–20. We further adopt as our own Petitioner’s rationales for modifying MyLibrary, as referenced above.” slip op. at 32

  Patent outcomesUS 7,516,177 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,516,177
• Electronic Arts Inc. v. White Knuckle IP, LLCAll claims unpatentable
  PTAB · Jan 12, 2017 · IPR2015-01595 · APJ Carl M Defranco · IPR · Final written decision

  Claims 1–10, 12–16, and 23 are unpatentable under §103 as obvious over the FIFA 2001 References and over Pisanich with the Madden References.

  RulingsFinal written decision

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

    “White Knuckle also argues that EA failed to provide a rationale for combining the FIFA 2001 References. PO Resp. 14. That is not the case. As explained in the Petition, the FIFA 2001 References are all directed to solving the same problem, namely, providing the most realistic gaming experience through the availability of updates to various parameters of the video game, including updates that reflect changes to the real-life stadiums and fields depicted in the game. See Pet. 28–29. A skilled artisan would have realized the benefit of combining the FIFA 2001 References from the references themselves, as they describe features of the same video game system, FIFA 2001, and illustrate contemporaneously how actual users were playing the game. Ex. 1003 ¶ 118. Indeed, FIFA 2001 News cross-references FIFA MRA Support extensively, even providing direct links to relevant pages of the MRA website.12 Ex. 1008, 1, 4, 6 (“MRA Patches Database,” “the MRA site”); Ex. 1009, 1, 3 (same).” slip op. at 10

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner

    “[A]n inventor’s testimony, standing alone, is insufficient to prove conception—some form of corroboration must be shown.” Price v. Symsek, 988 F.2d 1187, 1194–95 (Fed. Cir. 1993) (citation omitted). “An evaluation of all pertinent evidence must be made so that a sound determination of the credibility of the inventor’s story may be reached.” Id. at 1195 (citation omitted). Here, to corroborate Mr. Angelopoulos’s testimony, White Knuckle introduces the declaration of the co-worker, Mr. Huffaker, with whom Mr. Angelopoulos met and first described his invention. Ex. 2010. Mr. Huffaker testifies that he was a licensed attorney engaged by Mr. Angelopoulos to assist him in reducing the invention to practice and drafting the application for the ’350 patent. Id. ¶¶ 4(a), 5(a). Accompanying the declarations of Mr. Huffaker and Mr. Angelopoulos is a series of exhibits, consisting of emails and attachments sent around the time of their meeting, which White Knuckle submits as additional evidence of corroboration, namely Exhibits 2004, 2006, 2007, and 2008.13 slip op. at 14

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner

    “Although there is a presumption of nexus when the patent owner shows the asserted praise or success is tied to a specific product embodying the claimed invention, that presumption is rebuttable when the patent challenger “respond[s] by presenting evidence that shows the proffered objective evidence was due to extraneous factors other than the patented invention.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1329–1330 (Fed. Cir. 2016) (internal quotes and citation omitted). Here, EA responds with evidence from the MIT article itself, which touts the NCAA Football 2008 game’s success as due in part to “many other new features,” including “new trick plays, a highlight reel, and advanced animations,” as well as the fact that “[t]he game is playing far smoother than it [was] a year ago.” Reply 20 (citing Ex. 2012, 2). White Knuckle offers no rebuttal to EA’s evidence that the MIT article ascribes the game’s success to these extraneous features. Thus, EA succeeds in rebutting the presumption of nexus. See Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312–13 (Fed. Cir. 2006) (evidence that success was due to “unclaimed or non-novel features” of product “clearly rebuts the presumption that [product’s] success was due to the claimed and novel features”). In the absence of any further proof, White Knuckle falls short of tying the success of NCAA Football 2008 to the claimed invention. As such, we attribute little, if any, weight to White Knuckle’s evidence of commercial success and industry praise. Furthermore, even assuming the success and praise of NCAA Football 2008 was attributable to the live-weather update feature, the evidence shows that live-weather feeds for video games already existed in the prior art, as reflected in Pisanich. Evidence of industry praise attributable to a feature already known in the prior art is not a persuasive secondary consideration. South Alabama Med. Sci. Found. v. Gnosis S.P.A., 808 F.3d 823, 826–27 (Fed. Cir. 2015). Here, Pisanich (which is prior art, as determined above) illustrates that a live-weather feed for a sports video game was well-known. Ex. 100616; see also Ex. 1003 ¶¶ 179–183. As such, White Knuckle’s evidence of success and praise, insofar as it concerns live-weather feeds for video games, must fail because it is “focused on conventional features in the prior art.” ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016). In the end, upon weighing all the evidence, we conclude that White Knuckle’s relatively weak evidence of commercial success and industry praise fails to undermine our initial findings of obviousness with respect to the ground based on the FIFA 2001 References, as well as the grounds based on Pisanich and the Madden References.” slip op. at 20

  Patent outcomesUS 8,529,350 unpatentable
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 8,529,350
• Repro-Med Systems, Inc. v. Emed Technologies CorporationSome claims unpatentable
  PTAB · Jan 12, 2017 · IPR2015-01920 · APJ James J Mayberry · IPR · Final written decision

  Claims 1–8 and 10 are unpatentable on the stated anticipation and obviousness grounds; claim 9 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. Claim Construction In an inter partes review, claim terms in an unexpired patent, such as the ’476 patent, are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016) (concluding that 37 C.F.R. § 42.100(b) “represents a reasonable exercise of the rulemaking authority that Congress delegated to the Patent Office”). Under the broadest reasonable construction standard, claim terms are generally given their ordinary and customary meaning, as would be 5 The Decision on Institution considered 27 separate grounds. See Dec. on Inst. 6–8. understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Also, we are careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (“[L]imitations are not to be read into the claims from the specification.” (citation omitted)). 1. Level of Ordinary Skill in the Art RMS’s expert, Dr. Kazmer, contends that the level of ordinary skill of the ’476 patent is “a degreed Chemical, Mechanical, or Plastics engineer with three years of experience directly related to plastics product design and injection molding” or, alternatively, “a non-degreed practitioner with ten years of experience directly related to plastics product design and injection molding.” Ex. 1002 ¶ 21. EMED counters that the level of ordinary skill is “a degreed BioMedical, Chemical, Mechanical, or Plastics engineer with 3-5 years [of] experience designing medical products including medical products with a sharps protection device or alternatively a professional with 5-7 years [of] experience designing medical products, including medical products with a sharps protection device.” PO Resp. 6 (citing Ex. 2003 ¶ 22).6 At oral argument, EMED clarified that the “experience designing medical products 6 In his Declaration supporting EMED’s Motion to Amend, Mr. Stoker provides a different level of ordinary skill in the art— “a degreed BioMedical, Chemical, Mechanical, or Plastics engineer with five years of experience directly related to needle product design, particularly concentrating on the safety aspects of needle design” or, alternatively, “a non-degreed practitioner with ten years of experience directly related to the safety aspects of needle design.” Ex. 2007 ¶ 44. including medical products with a sharps protection device” merely required some of the experience in product design must concern sharps. See Tr. 36:13–6 (“[O]ne of skill in the art necessarily wouldn’t need three to five years specifically working in sharps technology, but they would have to have at least some experience.”).” slip op. at 8

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “support its contention that an artisan of ordinary skill would understand the claim limitation “the wings in the open position are spaced apart from each other to expose the medical needle to allow placement of the medical needle into a treatment site and delivery of a medicinal fluid” to require the wings to be folded back to permit inserting the needle. See PO Resp. 31 (citing Ex. 2003, Decl. of Ron Stoker, ¶ 78). Mr. Stoker merely provides the same statement as that appearing in the Patent Owner Response—“[o]ne of skill in the art would understand permitting placement to mean that the wings could be folded back to permit insertion of the needle”—without providing any basis for his opinion. See Ex. 2003 ¶ 78. Accordingly, we give little weight to this testimony. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed.Cir.2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); see also 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.”).” slip op. at 18

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “for the term “and are configured for”—“a pair of wings being selectively positionable from a first position to a second position, the first position for placing the medical [ ] needle into a patient and delivering a medicinal fluid to a second position.” PO Reply 9–10 (citing its Motion to Amend at 11– 14). The Motion to Amend, however, refers to the disclosure that serves as the basis for this “construction” as support for the amendment, not as the meaning of the term. Also, this construction conflicts with how EMED evaluates the claim limitation with respect to the prior art. Accordingly, we address EMED’s implicit construction and this post hoc construction, below.” slip op. at 74

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed

    “that Mr. Stoker has a sufficient educational foundation and sufficient experience in sharps protection to help the Board understand the evidence or make factual findings in this proceeding. Further, to the extent that RMS identifies specific deficiencies in the methods and principles supporting Mr. Stoker’s opinions, we find that such matters go to the probative weight of his testimony, as opposed to its admissibility. We note that the policy considerations for excluding expert testimony, such as those implemented by the gatekeeping framework established by the Supreme Court in Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993), are less compelling in bench proceedings such as inter partes reviews than in jury trials because, unlike a lay jury, the Board by statutory definition has competent scientific ability (35 U.S.C. § 6) and has significant experience in evaluating expert testimony. Accordingly, the danger of prejudice in this proceeding is considerably lower than in a conventional district court trial.” slip op. at 86

  Patent outcomesUS 8,961,476 mixed
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,961,476
• Inline Packaging, LLC v. Graphic Packaging International, Inc.All claims unpatentable
  PTAB · Jan 10, 2017 · IPR2015-01609 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–53 are held unpatentable: claims 1–4, 6–24, 26–29, and 31–33 as obvious over Kato and Clough; other claims under the stated § 103 grounds.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert discountedOther

    “Patent Owner cites to the Declaration of Dr. Floros to support many of its assertions set forth above, in particular, that Kato does not provide any indication that it would have been modified to include the microwave energy interactive material of Clough. See Ex. 2007, 28–38, 40–44. Dr. Floros’ testimony is unpersuasive for the same reasons as set forth above, and need not be repeated here.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proffers that a hypothetical person of ordinary skill in the art, with respect to and at the time of the ’078 patent, would have been a packaging professional with at least an undergraduate degree in packaging science (or related field) or comparable training/experience and would have had at least three (3) years of professional experience in the design of packaging materials for consumer products that are made from paperboard. Pet. 5. Patent Owner did not offer a skill level in the Patent Owner Response.4 Based on our review of the overall record, including the ’078 patent, we concur with the Petitioners’ assessment of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8

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

    “wherein the cut in the first end panel is substantially T-shaped” Dependent claims 4, 24, 36, and 49 each recite “wherein the cut [in] the first end panel is substantially T-shaped.” Dependent claims 30 and 43 recite substantially the same, with “slit” instead of “cut.” In the Patent Owner Preliminary Response, the Patent Owner asserted that the aforementioned claim limitation should be construed as “having a shape that closely resembles the capital letter ‘T’.” Prelim. Resp. 6–7 (citing Ex. 1001, 17:8–11). In the Decision on Institution, we agreed, although we clarified that we do not discern that the proposed construction provides any additional substantive clarity relative to the plain language. Dec. 7–8. After the Decision on Institution, while Patent Owner and Petitioner disagree with the application of the aforementioned claim construction, as set forth below, neither Patent Owner nor Petitioner has expressed disagreement with the construction itself. After considering anew the basis for our previous construction, we see no need for modification. slip op. at 7

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

    “one of ordinary skill would not have modified Kato, which meets need (1), to include the microwave energy interactive material of Clough, so as to also meet need (2), because Kato is only directed to a container for holding an already-prepared (i.e., ready-to-eat) food item, and does not mention anything about a microwave browning and crisping package. PO Resp. 35– 36 (citing Exs. 1003, 2001, 2007). While Patent Owner’s assertions will be assessed in more detail below, fundamentally, Patent Owner’s assertions are misplaced as Clough, and not Kato, is cited for being directed to a microwave browning and crisping package. Pet. 14–16 (citing Exs. 1003, 1008). We agree with Petitioner that one skilled in the art would have recognized that Kato’s paperboard sleeve would have been used to microwave food therein and, thus, that one skilled in the art would have had ample reason to modify and improve Kato’s paperboard sleeve to brown and crisp food using Clough’s known technique of adding microwave interactive material to a sleeve to realize the advantages set forth in Clough. Pet. 14–16 (citing Ex. 1003 ¶¶ 106–114, 116–120; Ex. 1008). Primarily, Patent Owner’s assertions are flawed because they are almost uniformly directed to Kato alone. Essentially, Patent Owner is asserting that one of ordinary skill, when reading Kato, would discern that Kato is a perfect product for its stated purpose, that the stated purpose can never change or be added to, and, thus, that one of ordinary skill would never look outside the narrow confines of Kato for any modifications, no matter what improvements and advantages such modifications may bring. Such assertions are contrary to almost every doctrine of obviousness under KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). For example, KSR states “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR at 421. Patent Owner’s inflexible approach to Kato is more akin to that of an automaton, than to one of ordinary creativity. Furthermore, KSR explains explicitly that the ordinary artisan recognizes “that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR at 420 (emphasis added). No one disputes that Kato’s primary stated purpose aligns with need (1), i.e., a container for holding an already-prepared (i.e., ready-to-eat) food item. We are unpersuaded, however, that this primary stated purpose of Kato should be held in such high esteem so as to exclude all other purposes known in the art, such as need (2), especially when KSR counsels that “uses beyond their primary purposes” must be considered. To that end, the record is replete with evidence concerning the advantages of modifying a paperboard sleeve, including that of Kato, with the microwave energy interactive material of Clough in order to brown and crisp food, so as to meet need (2). See, e.g., Ex. 1008, 1:48–68, 2:1–3, 18– 31, 3:10–19, 63–68, 4:1–9, 28–37; Ex. 1003 ¶¶ 116–120. Patent Owner would have us believe that such a purpose is irreconcilably in conflict with Kato’s stated purpose. We disagree. As a matter of logic, Kato must be made of some type of material, and we are persuaded that Clough provides sufficient objective evidentiary support for the notion that one of ordinary skill would have had reason to include in the paperboard sleeve of Kato the microwave energy interactive material of Clough in order to brown and crisp food.” slip op. at 13

  Patent outcomesUS 8,872,078 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,872,078
• The Boeing Company v. Seymour LevineAll claims unpatentable
  PTAB · Dec 20, 2016 · IPR2015-01341 · APJ Trenton A Ward · IPR · Final written decision

  Claims 4, 5, 8, 9, 10, 14, and 16 are unpatentable as obvious under § 103 over the combinations listed in the decision.

  RulingsFinal written decision

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

    “The definition of “advice” is “information or notice given.” Ex. 3001 (Webster’s Third New International Dictionary 32 (1971), 3.). Thus, the plain and ordinary meaning of “maintenance advice” is consistent with the aforementioned evidence, in that “maintenance advice” can include maintenance information, but does not require “recommended maintenance actions.” Patent Owner argues that this dictionary definition cited by the Board includes an alternative definition of “advice” as a “recommendation regarding a decision or course of conduct.” PO Resp. 33 (citing Ex. 3001, 3). Patent Owner further argues that this alternative definition of “advice” is most consistent with specification. PO Resp. 33. Patent Owner fails, however, to cite to any portions of the specification to support this argument (see id.) and fails to explain why we should not be guided by the more general statements in the specification, such as the description in the specification that a “preferred maintenance advisory” can be based “on an expert system for fault isolation,” which is in no way “recommended maintenance actions.” Ex. 1001, 3:36–37. We are not persuaded by Patent Owner’s argument that “maintenance advice” must include recommended maintenance actions. Accordingly, we adopt the portion of the proposed definitions on which the parties agree and determine that the term “maintenance advice” means “problem-specific maintenance information.” See also Dec. 7–8.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “skill in the art relevant to the ’618 patent would have a “B.S. degree in electrical, systems, or computer engineering, or an FAA Mechanic Certificate with an airframe rating in accordance with 14 CFR part 65.71 and 65.85.” Ex. 1002 ¶ 15. According to Patent Owner’s Declarant, Mr. Grabowsky, a person of ordinary skill in the art relevant to the ’618 patent would have “at least a B.S. degree in electrical, systems, or computer engineering, or an FAA Mechanic Certificate with an airframe rating in accordance with 14 CFR part 65.71 and 65.85; as well as either an M.S. or equivalent work experience, such as 3-5 years of experience in avionics.” Ex. 2011 ¶ 8. Thus, both declarants generally agree on the level of skill, although Mr. Grabowsky suggests experience is required in addition to the B.S. degree or the FAA Mechanic Certificate. See id. Based on our review of the ’618 patent, the types of problems and solutions described in the ’618 patent and cited prior art, and the testimony of Petitioner’s Declarant and Patent Owner’s Declarant, we adopt Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention. We are not persuaded that the additional experience of an M.S. or equivalent work experience, such as 3-5 years of experience in avionics, is required, as suggested by Mr. Grabowsky, as we are unclear as to why the claimed subject matter is beyond the abilities of someone who otherwise meets applicable federal regulatory standards. Based on the stated qualifications of Dr. Helfrick (Ex. 1002 ¶¶ 5–9) and the stated qualifications of Mr. Grabowsky (Ex. 2011 ¶¶ 6–7), Petitioner’s Declarant and Patent Owner’s Declarant both meet the requirements of this definition. We note that the applied prior art also reflects the appropriate level of skill at the time of the claimed invention. See Okajima, 261 F.3d at 1355.” slip op. at 12

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

    “and ARINC 624-1 because ARINC 624-1 is a standard directed to the very types of on-board systems discussed in Ward.”)). Additionally, Petitioner contends that ARINC publishes standards for the aviation industry, developed by committees that include aircraft manufacturers, avionics manufacturers, and airlines, and that the ACARS transmitter disclosed in Ward is based on, and, thus, would follow, an ARINC standard. Pet. 30 (citing Ex. 1002 ¶¶ 23, 75). Also, Petitioner contends that both Ward and ARINC 624-1 discuss utilizing (1) onboard maintenance systems including ACMS to collect aircraft performance data and (2) an ACARS transmitter to transmit such data to a ground station. Pet. 30. Petitioner adds that ARINC 624-1 provides an explicit motivation to utilize Ward’s ground based maintenance analysis software in implementing its maintenance system, because ARINC 624-1 states that “if known in advance of an airplane’s arrival at a terminal, selected information held in the OMS central maintenance computer’s memory could be useful to line maintenance personnel in planning timely corrective action.” Pet. 30–31 (quoting Ex. 1014 § 2.2.4). We agree, for the reasons stated by Petitioner, that, given the similarity and overlap in disclosures, and applicability of the ARINC standard to the ACARS transmitter of Ward, a person of skill in the art would have been motivated to improve the system in Ward with the teachings in ARINC 624-1. In view of the foregoing, we determine Petitioner has presented and sufficiently established an “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” with respect to claim 4 for this ground, and we adopt its contentions as our own. KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 21

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

    “on an aircraft having a flight data recorder.” Pet. Reply 15.10 Furthermore, Petitioner identifies that claims 8–10 all require “aircraft position data directed to said flight data recorder.” Id. Petitioner argues that Mr. Levine’s October 9, 1996 Invention Disclosure is insufficient, because it does not reflect the conception of the invention that Patent Owner ultimately claimed, which requires two data recorders—one onboard the aircraft and a second, remote recorder on the ground. Id. We do not agree with Petitioner’s argument that claims 4 and 8–10 require a flight data recorder on the ground, as claim 4 merely recites a “central station” “configured to receive and analyze said digital aircraft performance.” We do agree, however, with Petitioner’s argument that the express language of independent claim 4 requires “an aircraft having a flight data recorder.” Furthermore, claim 4 requires that the “digital aircraft performance data,” which the “central station” is configured to receive and analyze, is “data directed to the flight data recorder.” Thus, the invention recited in independent claim 4, and its dependent claims, must include a flight data recorder onboard the aircraft and, separately, a central station configured to receive and analyze data directed to the onboard flight data recorder. 10 The recitation “[a]n aircraft maintenance system for use on an aircraft having a flight data recorder” appears in the preamble of claim 4. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Marketing Int’l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). Here, the body of claim 4 refers to “the flight data recorder” as an active limitation in the claim. Therefore, we determine that the preamble is limiting for claim 4.” slip op. at 31

  Patent outcomesUS RE39,618 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
• Telebrands Corp. v. Ragner Technology CorporationInstitution denied
  PTAB · Nov 23, 2016 · PGR2016-00026 · APJ Michael W Kim · PGR · Institution

  The Board denied institution because the petition did not show that claims 1–25 were more likely than not unpatentable for indefiniteness or obviousness over Berardi and Gladfelter.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “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.”” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Person of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art at the time of the effective filing date of the ’057 patent “would have been a person having general knowledge about and experience with the manufacture and/or use of hoses and with fluid mechanics and materials science as they relate to hoses and how hoses work generally. The person of ordinary skill has at least an associate’s degree in science or engineering.” Pet. 17 (citing Ex. 1005). Patent Owner does not challenge Petitioner’s assertion. On these facts, we determine that Petitioner’s articulation of a person of ordinary skill in the art is credible.” slip op. at 7

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable

    “’057 patent defines the following relevant claim terms: “extended length” and “maximum stretched length.” Petitioner does not dispute that these claim terms are defined expressly by the ’057 patent, nor does Petitioner indicate that these claim terms are indefinite. Next, each independent claim recites expressly that the “stretched length” is longer than the “extended length,” which we construed above as “the length the hose or those components extend to when the hose is pressurized with a fluid and no extension forces are applied other than fluid pressure.” Finally, the term “maximum stretched length,” both by the use of the word “maximum” and the express definition set forth in the ’057 patent, indicates that it constitutes an upper bound for the term “stretched length.” Accordingly, through transitive analysis, we determine that the recited term “stretched length” is a relative length intermediate the explicitly defined terms “extended length” and “maximum stretched length.” Relative claim terminology is acceptable if one of ordinary skill would have understood what is claimed, in light of the Specification. Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984).” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “those components extend to when the hose is pressurized with a fluid and no extension forces are applied other than fluid pressure,” and also determined that “stretched length” is a relative length intermediate the explicitly defined terms “extended length” and “maximum stretched length.” When considered in the aggregate, we see that “extended length” is a length of a hose attributable to only fluid pressure, while “stretched length” is a length of a hose attributable to any force other than fluid pressure. Accordingly, a discussion of the prior art must acknowledge the interplay between the length of the hose, fluid pressure, and other forces, in order to meet the aforementioned claim limitation.” slip op. at 17

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 9,182,057
• Deere & Company v. Richard GrammAll claims unpatentable
  PTAB · Sep 22, 2016 · IPR2015-00899 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–11 and 27–34 are unpatentable as obvious over the three combinations of prior art identified by the Board.

  RulingsFinal written decision

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

    “a “header” or a “combine” per se; rather, it is a header height control apparatus—an “apparatus for detecting and controlling the height above the soil of an agricultural machine as it traverses a field.” Ex. 1001, 1:11–13. Nonetheless, there is no prohibition on a patentee drafting his or her claim in a manner that further limits the invention if additional structure is recited in the claim. As argued by Patent Owner, the recitation of “a non-cut crop header” and “a combine” in the preamble of claim 1, provide antecedent basis for at least two terms recited in the body of the claim—“the header” and “said combine.” The body of the claim reflects that the patentee chose to claim the header control apparatus in terms not limited to said apparatus standing alone, but rather the apparatus as attached (coupled) to the header of a combine. See, e.g., Ex. 1001, 7:33–34 (“a pre-loaded, generally linear flexible arm coupled to a forward portion of the header” (emphasis added)); 7:44–45 (“control means coupled to said header” (emphasis added)); 7:48– 51 (“wherein said flexible arm and angular deflection sensing means are attached to a head housing disposed on a forward portion of said combine” (emphases added)); 7:54–56 (“wherein said mounting bracket further couples said flexible arm to a forward end of said head housing” (emphasis added)). The prosecution history reflects that the patentee at first desired the recitation of “header” in the claim to be limited to “non-cut crop” headers, in an attempt to distinguish cut crop headers. Ex. 1002, 142 (Amendment filed June 19, 2000). The examiner, however, did not accept such argument (id. at 152–53 (Office Action mailed Aug. 24, 2000)), and the patentee did not reiterate or maintain the argument in amending the claims following the August 24, 2000, final rejection. Id. at 158–63 (Amendment filed Nov. 22, 2000). Nonetheless, the prosecution history is informative on this issue. In light of our discussion above regarding the claim language, specification, and the prosecution history, we do not construe the entire preamble as limiting. In particular, the preamble recites an apparatus for maintaining, and is presented clearly as reciting an intended use. That being said, we agree with the Patent Owner that the phrase “non-cut crop header” limits the terms “the header” and “said header” recited in the body of claim 1 such that “the header” and “said header” recited in the body of claim 1 are the same “non-cut crop header” recited in the preamble of the claim.11” slip op. at 24

  • Skill levelSkill level board ownOther

    “The parties’ statements of the level of ordinary skill are not significantly different, and the differences between their proposed levels of ordinary skill would not affect the outcome of this proceeding.5 In light of our review of the record, including the ’395 patent, the competing expert testimony, and the issues discussed during the oral argument, we agree with different aspects of the parties’ proposals. First, as Petitioner notes in its Reply, a mechanical engineer having familiarity with hydraulic systems and sensors, as Patent Owner proposes, does not have experience necessarily with agricultural equipment or combines. Reply 2, n.1. Thus, Patent Owner’s educational prong is overly broad. Second, Petitioner’s educational prong, on the other hand, is too narrow, requiring “design” of combines or 5 Indeed, neither party argues that any difference between the proposed levels of ordinary skill would affect the outcome of this proceeding. agricultural equipment. Third, we find that Petitioner’s experience prong also is too narrow, because it requires experience specifically in the “design” of agricultural equipment or combines. Accordingly, we find that the level of ordinary skill in the art is “a mechanical engineer having familiarity6 with agricultural equipment, such as combines, and hydraulic systems and sensors” or “a person having 10 or more years of experience7 working with combines.”8” slip op. at 11

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

  Patent outcomesUS 6,202,395 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,202,395
• Deere & Company v. Richard GrammAll claims unpatentable
  PTAB · Sep 22, 2016 · IPR2015-00898 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–11 and 27–34 are unpatentable as obvious over the three instituted combinations of prior art.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “significantly different, and the differences between their proposed levels of ordinary skill would not affect the outcome of this proceeding.5 In light of our review of the record, including the ’395 patent, the competing expert testimony, and the issues discussed during the oral argument, we agree with different aspects of the parties’ proposals. First, as Petitioner notes in its Reply, a mechanical engineer having familiarity with hydraulic systems and sensors, as Patent Owner proposes, does not have experience necessarily with agricultural equipment or combines. Reply 2, n.1. Thus, Patent Owner’s educational prong is overly broad. Second, Petitioner’s educational prong, on the other hand, is too narrow, requiring “design” of combines or agricultural equipment. Third, we find that Petitioner’s experience prong also is too narrow, because it requires experience specifically in the “design” of agricultural equipment or combines. Accordingly, we find that the level of ordinary skill in the art is “a mechanical engineer having familiarity6 with agricultural equipment, such as combines, and hydraulic systems and 5 Indeed, neither party argues that any difference between the proposed levels of ordinary skill would affect the outcome of this proceeding. 6 The familiarity may have been gained, as proposed by Petitioner, by “approximately three years of experience in combine or agricultural equipment design, including components thereof, such as headers and header height control systems” (Pet. 5 (citation omitted)), but also may have been gained through other experience. sensors” or “a person having 10 or more years of experience7 working with combines.”8” slip op. at 11

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

    “We agree with Petitioner that under either party’s proposed construction, Cleveland’s sensor arm, including spring 38, is flexible. See infra pages 41–42 (Section III.B.5.a.ii.b)2.b.). Accordingly, we need not choose between either party’s proposed constructions. 2. Other Claim Terms The parties propose constructions for several additional claim terms, including “pre-loaded,” “angular deflection sensing means,” “control means,” “biasing means,” “first stop means,” “second stop means,” “guard means,” and “flange.” Pet. 11–15; Resp. 19–23. Although the parties have some disagreement as to the meaning of several of these terms, there is no dispute that the references upon which we instituted review disclose these elements of the claims.4 Accordingly, there is no controversy as to these terms that requires our resolution in order to ascertain whether the claims would have been obvious to one of ordinary skill in the art as of the time of the invention in light of the references and arguments before us.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingMixed

    “a “header” or a “combine” per se; rather, it is a header height control apparatus—an “apparatus for detecting and controlling the height above the soil of an agricultural machine as it traverses a field.” Ex. 1001, 1:11–13. Nonetheless, there is no prohibition on a patentee drafting his or her claim in a manner that further limits the invention if additional structure is recited in the claim. As argued by Patent Owner, the recitation of “a non-cut crop header” and “a combine” in the preamble of claim 1, provide antecedent basis for at least two terms recited in the body of the claim—“the header” and “said combine.” The body of the claim reflects that the patentee chose to claim the header control apparatus in terms not limited to said apparatus standing alone, but rather the apparatus as attached (coupled) to the header of a combine. See, e.g., Ex. 1001, 7:33–34 (“a pre-loaded, generally linear flexible arm coupled to a forward portion of the header” (emphasis added)); 7:44–45 (“control means coupled to said header” (emphasis added)); 7:48– 51 (“wherein said flexible arm and angular deflection sensing means are attached to a head housing disposed on a forward portion of said combine” (emphases added)); 7:54–56 (“wherein said mounting bracket further couples said flexible arm to a forward end of said head housing” (emphasis added)). The prosecution history reflects that the patentee at first desired the recitation of “header” in the claim to be limited to “non-cut crop” headers, in an attempt to distinguish cut crop headers. Ex. 1002, 142 (Amendment filed June 19, 2000). The examiner, however, did not accept such argument (id. at 152–53 (Office Action mailed Aug. 24, 2000)), and the patentee did not reiterate or maintain the argument in amending the claims following the August 24, 2000, final rejection. Id. at 158–63 (Amendment filed Nov. 22, 2000). Nonetheless, the prosecution history is informative on this issue. In light of our discussion above regarding the claim language, specification, and the prosecution history, we do not construe the entire preamble as limiting. In particular, the preamble recites an apparatus for maintaining, and is presented clearly as reciting an intended use. That being said, we agree with the Patent Owner that the phrase “non-cut crop header” limits the terms “the header” and “said header” recited in the body of claim 1 such that “the header” and “said header” recited in the body of claim 1 are the same “non-cut crop header” recited in the preamble of the claim.13” slip op. at 23

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

    “e. Conclusion of Obviousness We have considered Petitioner’s evidence and argument and determine that the combination of DPC, Chmielewski, Cleveland, and DA meets the limitations of claims 1–7, 10, 27, 28, and 34, and that one of ordinary skill in the art would have had reason, with rational underpinning, for combining the teachings of these references. We have considered Patent Owner’s arguments to the contrary and determine that they are unpersuasive. The parties do not introduce or rely on objective indicia of nonobviousness. After weighing the evidence, we conclude that Petitioner has shown, by a preponderance of the evidence, that claims 1–7, 10, 27, 28, and 34 would have been obvious over DPC, Chmielewski, Cleveland, and DA.” slip op. at 61

  Patent outcomesUS 6,202,395 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,202,395
• Jackel International Limited / Mayborn USA, Inc. v. Admar International, Inc.No claims unpatentable
  PTAB · Sep 21, 2016 · IPR2015-00979 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–5, 7–12, and 14 were not shown unpatentable under § 103 because the cited references did not teach or suggest the claimed spout.

  RulingsFinal written decision

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

    “In summary, we find that the extrinsic evidence cited by Patent Owner indicates that the ordinary and customary meaning of “spout,” as would have been understood by one of ordinary skill in the art in the context of the entire disclosure of the ’841 patent, is “a tube or lip projecting from a container, through which liquid can be poured and through which a user drinks” (see Ex. 1001 at 2:6–11, 5:11–13, 5:60–67, 6:2–7, 6:17–23, 10:5–8, Figs. 1, 2, 5, 11–14, claims 1, 8; Ex. 2011, 1688) and does not include a nipple (see Ex. 2022 at 5–8, Figs. 1–3; Valderrama Decl. ¶¶ 91–94). Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2011) (“Even under the broadest reasonable interpretation, the Board’s construction ‘cannot be divorced from the specification and the record evidence,’ and ‘must be consistent with the one that those skilled in the art would reach.’”). Accordingly, based on the complete record before us, we interpret “spout” to mean “a tube or lip projecting from a container, through which liquid can be poured and through which a user drinks” and does not encompass a nipple.” slip op. at 18

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

    “For the reasons discussed above in Section II.A, we determine that the broadest reasonable interpretation in view of the ’841 patent’s specification of “spout” to be “a tube or lip projecting from a container, through which liquid can be poured and through which a user drinks” and does not encompass a nipple. We agree with Patent Owner that liquid cannot be poured through a nipple. PO Resp. 10 (“Spouts are intended for a stream of liquid, while nipples are intended for liquid to seep.”); see also Tr. 24:2– 26:3, 29:12–16 (arguing liquids are poured through a spout); Ex. 1022 at 140:1–12 (Mr. Valderrama testifying that Raymond and Mutti do not have a spout); Ex. 2026, 34:20–35:15, 50:23–51:7 (Dr. Brown testifying that Raymond does not refer to a spout). We find that liquid cannot be poured through Petitioners’ asserted spout (Pet. 18 (citing Ex. 1002 ¶ 32; Ex. 1003 at 5:17–20, Fig. 2)). The full record persuades us that Petitioners’ asserted spout in Raymond and similar structure in Mutti do not teach or suggest the spout of claim 1. See PO Resp. at 28–30 (citing Valderrama Decl. ¶¶ 135– 138; Ex. 1005, Fig. 2–4; Ex. 2026, 27:24–25:16, 86:10–25). Therefore, we find that Raymond fails to teach or suggest the spout of claim 1, as argued by Petitioners. Petitioners rely on Mutti to teach slits that would be understood to be self-sealing. Pet. 19–20 (citing Ex. 1002 ¶ 69; Ex. 1004, Figs. 10–11). Petitioners’ reliance on Mutti does not remedy the deficiency discussed above regarding the “spout” of claim 1.” slip op. at 21

  • ExcludeMotion to exclude, deniedDenied

    “Declaration of Stuart Brown (Ex. 1002)” because Patent Owner contends that “Dr. Brown admittedly has no experience in the design or development of the no-spill cups at issue in the ’841 patent” and “thus no basis to render an opinion of a person ordinarily skilled in the art.” Paper 31, 1. Petitioners respond that Patent Owner “failed to make a timely objection within ten business days of the institution of trial in this matter as required by 37 C.F.R. 42.64(b)(1)” and that Dr. Brown “is more than qualified to opine as a technical expert witness in the relevant art.” Paper 30, 1. Patent Owner filed a Reply (Paper 34). We agree with Petitioners that Patent Owner’s Motion to Exclude is not in compliance with 37 C.F.R. § 42.64(b). Even if Patent Owner’s Motion complied with our rules, however, as discussed above, we considered the Brown Declaration against the full record and gave it appropriate weight. And even having considered the relevant portions of the Brown Declaration, we are persuaded by Patent Owner’s arguments regarding whether the relied upon references teach or suggest “spout.” We, thus, deny Patent Owner’s Motion to Exclude.” slip op. at 26

  • Strike new argumentNew argument consideredDecided for petitioner

    “We agree with Petitioners that the portions of Petitioners’ Reply identified by Patent Owner are properly responsive to arguments presented by Patent Owner in its briefs. Also, to the extent any of the identified portions can be deemed new arguments, even when those new arguments are considered, as discussed above, we are nevertheless persuaded by Patent Owner’s arguments regarding whether the relied upon references teach or suggest “spout,” and so the objection is overruled.” slip op. at 25

  Patent outcomesUS 8,695,841 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,695,841
• Zepp Labs, Inc. v. Blast Motion, Inc.Institution denied
  PTAB · Aug 29, 2016 · IPR2016-00672 · APJ Miriam L Quinn · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 4-7, 9, 11, 14-16, and 19 were unpatentable over the asserted § 103 grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “inter partes review may not be instituted unless the information presented in the Petition shows “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 Petition and Preliminary Response, we determine that the information presented in the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in showing that claims 1, 47, 9, 11, 1416, and 19 are unpatentable.” slip op. at 2

  • BurdenInstitution denied

    “artisan would have had reason to modify Mahajan’s microcontroller such that these functions would be performed by the microcontroller. Petitioner argues that a person of ordinary skill would have been able to program these functions in either the microcontroller of Mahajan’s iClub or the mobile device. See, e.g., Pet. 28. In support, Petitioner contends “whether specific functionality is implemented in the software running on the iClub or software running on the mobile device is a matter of design choice.” Pet. 2728 (citing Ex. 1003 ¶ 123, Ex. 1005 ¶ 62). The argument that implementing the software in the iClub would be a matter of design choice is conclusory, and lacks sufficient factual support. See Prelim. Resp. 2627. Although the Petition mentions power consumption, cost, and speed as possible considerations affecting the purported design choice, the Petition does not explain sufficiently how these factors affect or motivated the alleged design choice advanced by Petitioner. Cutsforth, Inc. v. Motivepower, Inc., No. 20151316, slip. Op. 78 (Fed. Cir. Jan. 22, 2016) (“Merely stating that a particular placement of an element is a design choice does not make it obvious. The Board must offer a reason for why a person of ordinary skill in the art would have made the specific design choice” alleged by Petitioner.).” slip op. at 13

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

    “under the broadest reasonable interpretation standard, the proper construction includes ‘data that comprises sensor values.’” Pet. 8 (citing Ex. 1003 ¶ 47). Patent Owner disagrees that “said data” is indefinite, and instead asserts that “said data” should be construed as “data that comprises sensor values.” Prelim. Rep. 6. Aside from the indefiniteness issue, Petitioner and Patent Owner appear to agree as to the proper construction of “said data.” That would appear to weigh in favor of Patent Owner’s position that “said data” is not indefinite. Notwithstanding the apparent disagreement concerning this term, we do not opine further on this issue at this time, as construction of the term is not necessary to any determination made herein. 2. Other Claim Terms We determine that no express construction of any other claim terms is necessary.” slip op. at 7

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

    “is deficient in articulating a reasonable reason to combine the teachings of Mahajan, Edis, and Su. See Prelim. Resp. 35–36. Specifically, Petitioner has not shown sufficiently why a skilled artisan would have modified Mahajan to incorporate the recited functions, allegedly taught by Edis and/or Su. For example, Petitioner asserts that “[u]sing thresholding techniques of Edis and Su within the microcontroller of Mahajan, to for example distinguish ‘real swing versus your warm up’ motion, would have been obvious because thresholding sensed data against pre-specified values is common to microprocessor controller DAS.” Pet. 30 (citing Ex. 1003 ¶ 127). As another example, Petitioner baldly states that for “signifying a prospective event,” “it would have been obvious to a person of ordinary skill at the time of the invention to combine Edis with Mahajan, for example, as the way to distinguish a real swing from warm up motion, as is used for signifying a prospective event.” Pet. 32. Similarly, Petitioner states that the “false-positive detection methodology of Su and the variable detection strategy of Edis could have been obviously programmed in the microcontroller of Mahajan.” Pet. 34. Stating only that the functions “could have been obviously programmed” or that the combinations would yield the claim limitation is insufficient rationale. The Petition fatally omits the express articulation of a reason why a person of ordinary skill in the art would have combined the teachings as Petitioner asserts. See KSR Int’l Co., v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions”). The omission of a rationale is particularly troublesome in light of Patent Owner’s argument that there is a lack of showing of why it would have been obvious to modify Mahajan’s teachings “so that its microcontroller—with its limited resources and processing power—was responsible for swing identification, rather than the receiving computer.” Prelim. Resp. 27.9 And Petitioner’s reliance on Mr. Nesbit’s 9 We also are persuaded by Patent Owner’s arguments, and the proffered analysis, regarding the deficiencies in the portions Dr. Nesbit’s Declaration identified by Patent Owner, as they amount to conclusory opinions of a rationale for the alleged combinations and lacking factual support or objective evidence supporting those opinions. Prelim. Resp. 2729. Declaration is unavailing as the Declaration repeats the conclusory statement included in the Petition with no further rationale or explanation.” slip op. at 16

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,903,521

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.