• Precision Planting LLC / Agco Corporation v. Deere & CompanyNo claims unpatentable
  PTAB · Dec 2, 2020 · IPR2019-01048 · APJ Barry L Grossman · IPR · Final written decision

  Claims 1–20 were not proven unpatentable over Hedderwick and Koning because Petitioner did not establish a persuasive motivation to combine the references as proposed.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Based on the prior art, Dr. Glancey’s opinion testimony and analysis, and providing some, but minimal, weight to Dr. Taylor’s opinion testimony, we determine that the evidence favors Patent Owner’s proposed level of skill, primarily based on Dr. Glancey’s analysis and reasons summarized above. Accordingly, we determine that a person of ordinary skill in a technology pertinent to the challenged claims would have had an undergraduate degree in mechanical engineering, agricultural engineering, or similar field, and two years of experience designing agricultural products or related machinery, or five years of experience designing agricultural products or related machinery, without a four-year undergraduate engineering degree. A recipient of other academic degrees may qualify as a person of ordinary skill if they have taken coursework or have experience in the pertinent technology. Additional education could offset less work experience; additional work experience could offset less education or coursework.” slip op. at 18

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

    “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We determine that an explicit construction of the claims is not necessary for the purposes of determining whether the challenged claims are not patentable. slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “sufficiently persuasive evidence, even in combination, to establish why a person of ordinary skill would have modified Hedderwick by (1) selectively gleaning only a portion of Koning’s conveying system, i.e., belt 44 with bristles 45, (2) selectively excluding Koning’s belt 23, and then (3) modifying Koning’s brush belt by reversing its orientation so that it carries seeds deposited into the bristles, as in the ’906 patent, rather than covering and guiding seeds carried by a separate and distinct conveyor belt, as in Koning. See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (finding an absence of a motivation to reverse parts to an orientation that was “totally backwards” from what one of skill in the art would even attempt). Petitioner’s arguments do not acknowledge the different function of Koning’s brush belt, or explain why a person of ordinary skill would have been motivated to adapt Koning’s brush belt to such a use and reasonably expect success in doing so. We determine Petitioner fails to meet its burden of providing a sufficiently persuasive explanation or reason for concluding that one of skill in the art would have combined these particular references to produce the claimed invention. “Without any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias.” Metalcraft v. Toro, 848 F.3d at 1367. “[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.” Id.” slip op. at 30

  • ExcludeOther

    “II. MOTION TO EXCLUDE Petitioner and Patent Owner each move to exclude a substantial number of exhibits on a number of different evidentiary grounds. See Pet. Mot. Excl.; PO Mot. Exclude. As our analysis does not refer to any of those exhibits, we dismiss each motion as moot.” slip op. at 12

  Patent outcomesUS 9,686,906 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,686,906
• Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentable
  PTAB · Nov 30, 2020 · IPR2019-01044 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1–8 were not shown unpatentable under § 103 over Hedderwick, Koning, and Benac because Petitioner did not establish motivation to combine or a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedPetitioner expert discountedDecided for patent owner

    “have had either (1) a bachelor’s degree plus four years of experience in mechanical engineering, agricultural engineering, or a related field or (2) a master’s degree plus two years of experience in mechanical engineering, agricultural engineering, or a related field.” Pet. 42 (citing Ex. 1002 ¶¶ 19– 20). In the testimony the Petition cites in support of that proposal, Mr. Prairie lists factors that are typically considered in assessing the level of ordinary skill in the art, and then states “[b]ased on these factors together with my experience and expertise,” his opinion of the level of ordinary skill in the art is the same as Petitioner proposes. Ex. 1002 ¶¶ 19–20. This conclusory testimony is entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 12

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

    “construed 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).” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).6 That standard “includ[es] construing 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.; see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). V. OBVIOUSNESS OVER HEDDERWICK, KONING, AND BENAC” slip op. at 14

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Patent Owner’s expert, Dr. Glancey, explains that [i]f a wheel is used to load and place seeds within a moving belt with brush hairs, the wheel must be able to disengage from seeds while the seeds remain in between brush hairs. If the wheel maintains contact with the seed after the seed has moved into the brush hairs, the wheel will continue to apply force to the seed and eject or remove the seed from the profile of the brush hairs . . . . Ex. 2200 ¶ 223. Dr. Glancey testifies, credibly, that in Petitioner’s combination, seeds would have been rejected from the belt because, as the paddle wheel rotates, seeds “would be scooped through the belt.” Id. ¶ 225.” slip op. at 31

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “way the references use endless members in the form of brush belts and paddle wheels, versus the way Petitioner uses those components in the proposed combination. Contrary to Petitioner’s and Mr. Prairie’s assertions, the proposed combination does not merely apply known techniques to a known device, because none of the cited references use brush belts and paddle wheels in the manner Petitioner proposes. As discussed in greater detail below, Benac teaches that a paddle wheel can be used to ensure that seeds jammed in vacuum holes are released reliably, and then dropped to the ground. Benac does not address brush belts as an endless member and, therefore, does not teach that paddle wheels can be used to guide seeds into the bristles of a brush belt, as Petitioner proposes. See Pet. 64. And Koning does not teach a brush belt that captures seeds released from above, as Petitioner and Mr. Prairie propose. See Pet. 61–62; Ex. 1002 ¶ 104; Ex. 2193, 190:10–191:3; Ex. 2263, 167:21–170:9. Rather, Koning’s brush belt maintains the relative position of potatoes lying on a conveying surface by holding them from above while the conveyor moves them to the furrow. Ex. 1004, 3:16–24, 5:3–14, Fig. 4. Petitioner’s arguments do not adequately account for these differences between the references’ use of a brush belt as an endless member and paddle wheels versus the proposed combination. Moreover, Patent Owner points out problems ordinarily skilled artisans would have encountered in attempting to combine the references as Petitioner proposes. Petitioner does not persuasively explain how those issues could have been overcome, and instead simply asserts, essentially, that ordinarily skilled artisans could have figured it out. See, e.g., Ex. 1135 ¶ 80. It is Petitioner’s burden to establish that ordinarily skilled artisans would have been motivated to combine the success in doing so. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). Petitioner’s arguments and evidence do not carry that burden.” slip op. at 28

  Patent outcomesUS 8,813,663 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,813,663
• Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentable
  PTAB · Nov 30, 2020 · IPR2019-01046 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1 and 3 were not shown unpatentable over Hedderwick, Koning, and Yamahata under § 103 because Petitioner did not establish motivation to combine or a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Based on the evidence and arguments of record, we determine that the evidence favors Patent Owner’s proposed level of skill. Our determination is primarily based on Dr. Glancey’s analysis and reasons summarized above, as well as the prior art of record and the sophistication of the technology of the ’199 patent. We have considered Mr. Prairie’s opinion, but we give that testimony minimal weight due to the lack of supporting explanation. Accordingly, we adopt Patent Owner’s proposed level of ordinary skill in the art. Specifically, we determine that a person of ordinary skill in agricultural engineering, or a similar field, and two years of experience designing agricultural products or related machinery. Alternatively, a person of ordinary skill in the art would have had five years of experience designing agricultural products or related machinery, without a four-year undergraduate engineering degree.” slip op. at 13

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

    “IV. CLAIM CONSTRUCTION “In an inter partes review proceeding, a claim of a patent . . . shall be construed 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).” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).7 That standard “includ[es] construing 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.; see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the extent” slip op. at 14

  • BurdenNot shown unpatentable

    “Ex. 1135 ¶ 51. Yet it is Petitioner’s burden to show motivation and reasonable expectation of success for the proposed combination, not Patent Owner’s burden to show that the prior art demonstrates the futility of the proposed combination. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). Here, Petitioner’s affirmative showing on motivation and reasonable expectation of success for using Koning’s brush belt in the proposed combination is unpersuasive for the reasons discussed above. And Patent Owner’s evidence of difficulties an ordinarily skilled artisan would have expected to encounter in that proposal serves to highlight the issues that Petitioner’s showing ignores. Petitioner additionally contends that Patent Owner’s arguments are based on the erroneous premise that an ordinarily skilled artisan must be able to physically combine the references. See Pet. Reply 7 (citing In re Mouttet, 686 F.3d 1322, 1332–33 (Fed. Cir. 2012)). We disagree. Patent Owner’s arguments, summarized above, simply point out that an ordinarily skilled artisan would not have expected success in combining the references’ teachings in the way Petitioner proposes. Motivation to combine and reasonable expectation of success are properly assessed with reference to the combination as Petitioner has framed it. The Federal Circuit has explained that doing so is not inconsistent with Mouttet. See Samsung, 925 F.3d at 1382–83 (“We will not fault the Board for analyzing Petitioners’ obviousness grounds in the way presented in the Petition.”).” slip op. at 34

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner’s and Mr. Prairie’s analysis does not acknowledge, much less bridge, the gap between Koning’s use of a brush belt to hold potatoes from above as they lie on a conveying surface, versus the brush belt’s use in above.10 During his deposition, Mr. Prairie resisted agreeing that the potatoes are lying on the conveyor in Koning, testifying that he takes from Koning’s description that “they are captured within the belt with brush hairs. And that there is some weight that’s along the conveying member 23.” Ex. 2193, 96:24–99:25. Mr. Prairie testified that he “do[es]n’t believe the brush hairs support the full weight of the potatoes,” but that Koning did not provide him sufficient information to answer whether the conveying member supports the majority of the weight of the potatoes. Id. at 106:22–107:21. In our view, it is clear from Koning’s description that the potatoes lie on the conveyor and the purpose of the brush belt is to maintain their position relative to each other while they are moved by the conveyor. Ex. 1004, 3:16–24, 5:3–14, Fig. 4; see also Ex. 2205 ¶¶ 140–141 (Patent Owner’s expert, Dr. Glancey, testifying that a simple mechanical analysis shows that in Koning, about 87% of the potatoes’ weight is supported by the conveying member). Mr. Prairie’s refusal to acknowledge the differences between the brush belt’s function in Koning versus the proposed combination undermines the credibility of his testimony that the proposed combination would have been a simple application of a known technique to a known device. 10 See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (noting expert testimony that supported the absence of a motivation to combine: “[I]f I can equate this one to kind of a simple analogy, if you’re trying to build a piece of furniture. What’s a typical thing? You put on a piece of wood. You take a nail, and you hit the nail with a hammer. In control terms, what Mr. Phipps is suggesting is that you put the hammer on the workbench, pick up the piece of furniture and bash the piece of furniture onto the hammer. It’s totally backwards from what I believe one of skill in the art would even attempt . . . .”). have been simple for an ordinarily skilled artisan to adapt Koning’s brush belt for use in the proposed combination, where seeds are deposited onto the brush belt from above—is further undermined by his testimony that he “can’t recall a time where I’ve seen a seed being dropped into a brush belt.” Ex. 2193, 113:5–9; see also Ex. 2263, 81:2–12 (“Q. And you never attempted to drop a seed onto a moving brush belt to see whether that would be inserted into the brush belt, correct? A. As I stated, for the purposes of this case, I did not do any physical experimentation with a moving brush belt as I didn’t feel it was necessary. The prior art discloses sufficient information.”) (objection omitted). Mr. Prairie has “had some industrial design projects where we’ve had to utilize brushes for various applications,” but he “ha[s] not used a brush belt to convey seed.” Ex. 2194, 297:6–16. Mr. Prairie testified that “prior to writing this declaration, brush belt technology was not a specific area that I study, that I was researching.” Ex. 2263, 79:6–9. Indeed, during his initial deposition in this case, the only specific example of a moving brush belt Mr. Prairie could recall seeing was Patent Owner’s ExactEmerge product. Ex. 2193, 108:6–110:10. The basis for Mr. Prairie’s opinion, that a seed would be expected to enter a moving brush belt in the proposed combination, appears to only be Koning itself. Ex. 1002 ¶¶ 79–81; Ex. 2193, 116:12–19, 118:7–23; Ex. 2263, 159:5–160:2. When asked at his deposition, Mr. Prairie did not explain any other engineering analysis he performed to make that determination. Ex. 2193, 114:23–117:12. Mr. Prairie testified that he “did not operate a brush belt for this declaration because [he] didn’t feel it was necessary to make my assessments” and he “did not do study or experimentation on a brush belt as I did not feel it was necessary.” unpersuasive because, as discussed above, Koning does not teach using a brush belt to receive and convey seeds that have been dropped onto it from above. Mr. Prairie does not account for that difference by explaining why an ordinarily skilled artisan would expect Koning’s brush belt to effectively capture and carry seeds dropped from above, as in the proposed combination.” slip op. at 26

  Patent outcomesUS 9,480,199 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,480,199
• Supercell OY v. Gree, Inc.Rehearing denied
  PTAB · Nov 18, 2020 · PGR2020-00041 · APJ Lynne H Browne · PGR · Rehearing

  The Board denied Supercell’s rehearing request, upholding denial of institution based on the Fintiv factors and the risk of duplicated efforts and inconsistent results.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner

    “this factor or that we misapprehended the trial date. At the time of our Decision, trial was scheduled in the parallel proceeding for December 7, 2020, approximately nine months before our final written decision would have been due, if we were to institute trial. Dec. 10–11. As such, this gap in timing created a cognizable risk of inconsistent results and duplication of efforts, which weighed toward denying institution. Id. at 7, 11. Additionally, the Decision notes that some uncertainty exists regarding trial dates, as Petitioner again argues in its Request. Id. at 11; Req. Reh’g 4. However, the Decision goes on to determine that even if trial in the parallel proceeding was delayed by two months, consistent with Petitioner’s prior requested delay, the proximity of the trial date to our final written decision would still favor denying institution. Dec. 12 (citing Ex. 2002, 2). As such, Petitioner has not shown that the Board misapprehended the trial date.” slip op. at 5

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “contentions. In our Decision, we relied in part upon Dr. Claypool’s testimony from related litigation between the parties in determining that Petitioner failed to meet its burden of demonstrating that Mastermind was” slip op. at 8

  • BurdenDecided for patent owner

    “Petitioner was provided an opportunity to respond to this evidence to address any “time-based distinctions in Dr. Claypool’s testimony,” however, Petitioner declined to address this testimony in its Preliminary Reply, despite having the opportunity to do so. Prelim. Reply 5–7. We decline to consider now, on rehearing, arguments that Petitioner failed to make in its pre-institution papers. It is Petitioner’s burden to demonstrate that Mastermind was publicly accessible. As we stated in our Decision, this prior testimony casts serious doubt on Petitioner’s ability to satisfy that burden. Dec. 25. We also decline to consider new testimonial evidence submitted on rehearing on this issue, as Petitioner does not show good cause for admitting this new evidence. See Huawei Device Co. v. Optics Cellular Tech., LLC, IPR2018-00816, Paper 19 (PTAB Jan. 8, 2019) (precedential) (showing of “good cause” required prior to filing a rehearing request or in the request itself for new exhibits to be admitted). We could not have misapprehended or overlooked evidence and arguments that were not made before our Decision.” slip op. at 9

  § 102 anticipationDiscretionary denial
  Patents in suitUS 10,307,677
• Expedia, Inc. / Homeaway.Com, Inc. et al. v. International Business Machines Corp.Rehearing denied
  PTAB · Jul 1, 2019 · IPR2018-01743 · APJ Michael W Kim · IPR · Rehearing

  The Board denied rehearing of its decision denying institution of inter partes review of claims 1–25, finding Petitioner had not shown an abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3); see also Dec. 11 (citing statute). Petitioner also has the burden to “specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).” slip op. at 3

  • Prior constructionPrior construction not adoptedDecided for patent owner

    “Petition for the limitation of “application . . . that include interactive services.” See generally Req. Our own review of the Petition results in the same. See generally Pet. Pages 12–17 of the Petition provide constructions for several terms, including “application,” but not for the entirety of the limitation identified above. Indeed, Petitioner relied on the Board’s previous decisions for both explicit and implicit constructions of other claim limitations. See Pet. 13–15, 86, 93, 96, 104 (citing Ex. 1004, 40–41, 137– 138, 146–147, 151–152, 157–158, 161, 171). Noticeably absent, however, is the same for “application . . . that include interactive services.” We could not have misapprehended or overlooked a claim construction that was not made. Even if we delve somewhat into the cited portion of the Board’s previous decision, however, we remain unpersuaded. Specifically, while Petitioner’s quotation of the Decision is correct, the Decision later states: “We agree that the body of claim 4 does not require applications with interactive services, but ‘interactive services’ must be one kind of application that can be requested.” Ex. 1004, 136. So, while our analysis may have been altered somewhat, we are unpersuaded that Petitioner has met its burden of showing that maintaining the same result, denial of institution on this basis, would have been an abuse of discretion.” slip op. at 3

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

    “and, Orbitz, LLC (“Petitioner”) filed a Petition to institute an inter partes review of claims 1–25 of U.S. Patent 7,072,849 B1 (Ex. 1002, “the ’849 Patent”). Paper 2 (“Pet.”). International Business Machines Corp. (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). On March 19, 2019, we issued a Decision Denying Institution of Inter Partes Review. Paper 8 (“Decision”). On May 1, 2019, Petitioner filed a Request for Rehearing. Paper 11 (“Req.”).1” slip op. at 2

  Claim construction
  Patents in suitUS 7,072,849
• Delphi Technologies, LLC v. Microchip Technology Inc.Rehearing denied
  PTAB · Dec 11, 2018 · IPR2017-00864 · APJ Daniel N Fishman · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claims 1, 3–5, 7–9, 11–15, and 18–21 unpatentable because their scope did not require the buffer to store the specified information.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “party challenging the decision,” and, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). III. DISCUSSION Patent Owner’s Request does not identify any arguments that we “misapprehended or overlooked” let alone “specifically identify” all such matters. Thus, Patent Owner’s Request fails to comply with our rules. Despite this failure of Patent Owner’s Request, we address the substance of Patent Owner’s argument as follows.” slip op. at 2

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

    “misapprehended any argument. Furthermore, we are unpersuaded that our Decision was in error regarding independent claims 1, 3, 7, 18, and 23 because these claims have a different scope than claims 17, 22, and 24. As Patent Owner correctly noted, our construction of “dedicated USB connection” is “a USB connection that may include some shared physical communication path and includes a buffer for maintaining dedicated address, configuration and response information for the connection.” Dec. 33. Thus, a dedicated USB connection must include a buffer that is capable of storing/maintaining “dedicated address, configuration and response information” regardless of whether such data is actually stored/maintained therein.” slip op. at 3

  Claim construction
  Patents in suitUS 7,523,243
• Coastal Industries, Inc. v. Shower Enclosures America, Inc.Some claims unpatentable
  PTAB · Nov 19, 2018 · IPR2017-00573 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–3, 5, 7–9, 11–14, and 16–26 are unpatentable; claims 4, 6, 10, and 15 are not shown unpatentable. Substitute claims 33 and 34 are granted.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “invention. Pet. 26. Patent Owner sets forth many assertions related to the level of ordinary skill in the art at the time of the invention. PO Resp. 3–14, 20–30; PO Supp. Resp. 15–20. Petitioner responds to those assertions. Pet. Reply 2–4, 9–18; Pet. Supp. Reply 15–16. While we will address each of those assertions, as a substantive matter, Petitioner asserts that “PO does not dispute the definition of a PHOSITA, offer a contrary definition, explain how a different definition might affect the Board’s analysis, nor contest the Board’s specific interpretation of the prior art references to put the PHOSITA determination at issue.” Pet. Reply 16–18; Pet. Supp. Reply 15– 16. We agree with that assessment. Moreover, we note that the level of ordinary skill in the art is often reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Accordingly, as an initial matter, we address Petitioner’s unopposed substantive assertion with respect to the level of ordinary skill in the art at the time of the invention.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “1. “track members” Independent claims 1, 12, 19, and 22 each recite “track members.”” slip op. at 28

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

    “B. Patentability of Substitute Claims 33 and 34 Petitioner asserts that various claim limitations are disclosed in the” slip op. at 100

  • ExcludeMotion to exclude, deniedDenied

    “701, 702 and 37 C.F.R. § 42.65(a). Specifically, Patent Owner asserts that Mr. Poenariu’s testimony is entirely based on his finding as to the level of ordinary skill in the art, and because Mr. Poenariu did not articulate a sufficient factual basis for his conclusion as to the level of ordinary skill in the art, his entire testimony us unreliable and should be excluded. PO Mot. 5–6. Petitioner responds that Mr. Poenariu discloses more than a sufficient amount of underlying facts on which to base his testimony, and, thus, Patent Owner’s assertions go to weight and not admissibility. Pet. Opp. 6–9. We agree with Petitioner.” slip op. at 105

  Patent outcomesUS 7,174,944 mixed
  Claim constructioncites Phillips · KSR
  Patents in suitUS 7,174,944
• Marker Volkl USA, Inc. v. Kneebinding, Inc.All claims unpatentable
  PTAB · Oct 15, 2018 · IPR2017-01265 · APJ Matthew S Meyers · IPR · Final written decision

  Claims 1 and 4–9 are unpatentable as anticipated by DE ’298 and obvious over Boussemart and DE ’298.

  RulingsFinal written decision

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

    “Id. at 14.3 Petitioner disagrees with Patent Owner’s assertions, arguing that the ’867 patent’s claim language and Specification establish that the two elements “are inextricably linked.” Pet. Reply 1–9. Although we are not in complete agreement with either parties’ construction, we, nevertheless, agree generally with Petitioner, for the reasons set forth below, that the “lateral release assembly” and “upper heel housing” recited by claim 1 should not be construed as being separate functional parts of the upper heel assembly that separate and isolate lateral and vertical release forces, respectively. We begin our analysis with the express claim language. Specifically, claim 1 recites in part “a lower heel assembly attached to the ski” and “an upper heel assembly coupled to the lower heel assembly and having a lateral release assembly for applying lateral securing pressure to the ski boot, the upper heel assembly comprising an upper heel housing that is configured to compress the heel portion of the ski boot downward.” Ex. 1001, 11:36– 12:2. Thus, from the claim itself, we know that (1) the “upper heel assembly” is coupled to the “lower heel assembly” and, thus, attached to the ski; (2) this associated upper/lower heel assembly has a “lateral release assembly”; (3) the lateral release assembly is for “applying lateral securing pressure to the ski boot”; and (4) the upper heel assembly “is configured to compress the heel portion of the ski boot downward.” However, none of this claim language requires that the “lateral release assembly” and “upper heel housing” must be treated as separate functional parts of the upper heel assembly that separate and isolate lateral and vertical release forces,” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Regarding the level of skill in the art, Petitioner asserts: a POSA in the February 18, 2003 timeframe would be an individual with a Bachelor’s degree in mechanical engineering or related technology and three to five years of experience in either the design, fabrication, or manufacture of ski bindings and related equipment, research concerning ski bindings and related equipment, or the development of standards concerning ski bindings or related equipment, in addition to ten years or more of personal experience using ski bindings. Pet. 14–15 (citing Ex. 1006 ¶ 32). In response, “Patent Owner agrees with Petitioner’s definition of a person of ordinary skill in the art (‘POSITA’) for purposes of the ’867 patent.” PO Resp. 3 (citing Pet. 14–15). Having considered the evidence, we find that Petitioner’s articulation of the level of ordinary skill is correct. We also note that the cited references often reflect the appropriate level of skill at the time of the claimed invention, and that the references cited here appear to reflect the level agreed to by the parties. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [can] reflect the appropriate level of skill in the art”).” slip op. at 11

  • BurdenUnpatentable

    “Patent Owner responds that DE ’298 does not disclose an “upper heel assembly” that compresses the heel portion of the ski boot downward. PO Resp. 25–30. Patent Owner argues that “the disclosure of DE ’298 makes clear that the hold-down member 13 and heel holder 25 only resist upward motion by the ski boot heel – they do not ‘compress the heel portion of the ski boot downward’ by providing downward force on the heel.” PO Resp. 26. To support its position, Patent Owner provides an annotated copy of the annotated copy of Figure 2, provided by Petitioner and designated “Fig. Q” in the Petition. See Pet. 41. More particularly, Patent Owner annotated Petitioner’s “Fig. Q,” to show “a gap (circled in purple) between the top edge of the ski boot sole (which Petitioner added; the original figure in DE ’298 does not show the boot) and the bottom edge of arms 26 of heel holder 25.” PO Resp. 27–30 (citing Ex. 2001 ¶ 62). Figure 2, annotated, depicts the DE ’298 releasing/retaining device of a releasing ski binding. And, because there is a “gap” between the ski boot, superimposed by Petitioner in Fig. Q (see, e.g., Pet. 41), and arms 26 of heel holder 25, Patent Owner argues that DE ’298 “cannot provide downward force as the arms 26 do not touch the ski boot heel.” PO Resp. 28 (citing Ex. 2001 ¶ 63).4 Therefore, although Patent Owner acknowledges that DE ’298 discloses that its hold-down member “hold[s] the shoe down ‘against upwardly pivoting’” (PO Resp. 26–27 (citing Ex. 1004, 4), Patent Owner argues that merely “[o]pposing upward motion does not compress the ski boot downward as required by the challenged claims.” 5 PO Resp. 28. 4 The cited portions of Dr. Dodge’s Declaration largely mirror the language set forth in the corresponding portion of the Patent Owner Response. 5 Patent Owner submits that “[t]he plain and ordinary meaning of the term ‘compress’ means ‘to squeeze or press together’, or ‘to make smaller as if by squeezing.’” PO Resp. 28 (citing Ex. 2003). Petitioner responds that Patent Owner’s reading of DE ’298 is strained, that other portions of the reference make clear that DE ’298 discloses an “upper heel assembly” that does in fact compress the heel downward, and that any purported “gap” in the drawing is a red herring that does not comport with basic physics. Pet. Reply 15–18.” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Patent Owner responds that DE ’298 does not disclose an “upper heel assembly” that compresses the heel portion of the ski boot downward. PO Resp. 25–30. Patent Owner argues that “the disclosure of DE ’298 makes clear that the hold-down member 13 and heel holder 25 only resist upward motion by the ski boot heel – they do not ‘compress the heel portion of the ski boot downward’ by providing downward force on the heel.” PO Resp. 26. To support its position, Patent Owner provides an annotated copy of the annotated copy of Figure 2, provided by Petitioner and designated “Fig. Q” in the Petition. See Pet. 41. More particularly, Patent Owner annotated Petitioner’s “Fig. Q,” to show “a gap (circled in purple) between the top edge of the ski boot sole (which Petitioner added; the original figure in DE ’298 does not show the boot) and the bottom edge of arms 26 of heel holder 25.” PO Resp. 27–30 (citing Ex. 2001 ¶ 62). Figure 2, annotated, depicts the DE ’298 releasing/retaining device of a releasing ski binding. And, because there is a “gap” between the ski boot, superimposed by Petitioner in Fig. Q (see, e.g., Pet. 41), and arms 26 of heel holder 25, Patent Owner argues that DE ’298 “cannot provide downward force as the arms 26 do not touch the ski boot heel.” PO Resp. 28 (citing Ex. 2001 ¶ 63).4 Therefore, although Patent Owner acknowledges that DE ’298 discloses that its hold-down member “hold[s] the shoe down ‘against upwardly pivoting’” (PO Resp. 26–27 (citing Ex. 1004, 4), Patent Owner argues that merely “[o]pposing upward motion does not compress the ski boot downward as required by the challenged claims.” 5 PO Resp. 28. 4 The cited portions of Dr. Dodge’s Declaration largely mirror the language set forth in the corresponding portion of the Patent Owner Response. 5 Patent Owner submits that “[t]he plain and ordinary meaning of the term ‘compress’ means ‘to squeeze or press together’, or ‘to make smaller as if by squeezing.’” PO Resp. 28 (citing Ex. 2003). Petitioner responds that Patent Owner’s reading of DE ’298 is strained, that other portions of the reference make clear that DE ’298 discloses an “upper heel assembly” that does in fact compress the heel downward, and that any purported “gap” in the drawing is a red herring that does not comport with basic physics. Pet. Reply 15–18.” slip op. at 16

  Patent outcomesUS 8,955,867 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,955,867
• Ebay Inc. / Alibaba.Com Hong Kong Ltd. et al. v. Global Equity Management (SA) Pty. Ltd.Rehearing granted
  PTAB · Oct 12, 2018 · IPR2016-01828 · APJ Kevin C Trock · IPR · Rehearing

  Rehearing was granted in part: review was instituted on all challenged claims and grounds, but claims 16 and 28 were not shown unpatentable because their scope could not be determined without speculation.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted in part

    “For the reasons explained below, we grant Patent Owner’s request for rehearing to the extent we (1) modify our Institution Decision to institute on all of the challenged claims, including claims 16 and 28, and all of the grounds presented in the Petition, including Ground 2; and (2) modify our Final Written Decision to include a determination with respect to claims 16 and 28. We deny, however, Patent Owner’s request for rehearing to the extent we decline to read claims 16 and 28 on the prior art.” slip op. at 2

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

    “In SAS, the Supreme Court held that a decision to institute under 35 U.S.C. § 314 may not institute on less than all claims challenged in the petition. SAS Inst., Inc., 1348 at 1359–60. In our Institution Decision, we determined that Petitioner demonstrated a reasonable likelihood that it would establish that at least one of the challenged claims of the U.S. Patent No. 8,650,591 B2 is unpatentable. Inst. Dec. 23. Because of the Supreme Court’s ruling in SAS, we now modify our Institution Decision to institute on all of the challenged claims, including claims 16 and 28, and on all of the grounds presented in the Petition, including Ground 2, and we determine, in this Decision on Patent Owner’s Motion for Rehearing, whether claims 16 and 28 have been shown, by a preponderance of the evidence, to be unpatentable.” slip op. at 4

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “If our unpatentability analysis requires “considerable speculation as to the meaning and assumptions as to the scope” of the claims, In re Steele, 305 F.2d 859, 862 (CCPA 1962), the differences between the claimed invention and the prior art cannot be ascertained. See id.; see also BlackBerry Corp. v. MobileMedia Ideas, LLC, Case IPR2013-00036, slip op. at 19–20 (PTAB Mar. 7, 2014) (Paper 65) (citing Steele, 305 F.2d at 862–63 for the proposition that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption[s] as to the meaning of the claims” and reasoning that “an obviousness determination based on less than all of the claimed elements is speculative as to the meaning or scope of the claims”). In other words, “[w]ithout ascertaining the proper claim scope, we cannot conduct a necessary factual inquiry for determining obviousness—ascertaining differences between the claimed subject matter and the prior art.” Id. at 20 (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).” slip op. at 6

  • Prior constructionPrior construction adoptedDecided for patent owner

    “least one partition of said at least one secondary storage device through said secondary storage partitions window,” “means for manipulating said at least one cabinet record through said cabinet visible partition window,” and “means for modifying said at least one cabinet record through said cabinet visible partition window.” Ex. 101, 9:66–10:25. In related litigation, the district court found in its claim construction opinion that the ’400 patent does not provide structure corresponding clearly to the functions of these limitations. Ex. 1010, 49–61. We have reviewed and considered the district court’s analysis and findings and we concur with the district court’s conclusion. We are unable to discern structure in the ’400 patent that corresponds clearly to the functions recited in the “means for” limitations of claim 16. Claim 28 recites similarly “program code for configuring said at least one partition of said at least one secondary storage device through a secondary storage partitions window,” “program code for manipulating said virtual cabinet record through said cabinet visible partition window,” and “program code for means for modifying said at least one cabinet record through said cabinet visible partition window.” Ex. 1001, 10:65–11:29. The district court also found that the ’400 patent did not provide structure corresponding clearly to the function of these limitations. Ex. 1010, 49–61. We have reviewed and considered the district court’s analysis and findings and we concur with the district court’s conclusion. We are unable to discern structure in the ’400 patent that corresponds clearly to the functions recited in the “program code for” limitations of claim 28.” slip op. at 5

  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 6,690,400
• Telebrands Corp. v. Tinnus Enterprises, LLCNo claims unpatentable
  PTAB · Oct 10, 2018 · PGR2017-00015 · APJ Kevin W Cherry · PGR · Final written decision

  The Board held claims 1–4 not unpatentable: the obviousness grounds failed to establish the claimed elastic fastener limitation, and claim 3 was not shown indefinite or lacking written-description support.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We agree with Petitioner and determine that a POSA would have been a person having a general knowledge about, and experience with, expandable containers, including, without limitation, balloons, and at least an associate’s degree in mechanical engineering, or the equivalent. This level of skill is consistent with the types of problems and solutions described in the ’612 patent and cited prior art. For example, the ’612 patent describes a fluid inflatable system that uses elastic valve 20A (e.g., mechanical gasket, O-ring, etc.) for sealing fluid inside multiple containers (e.g., water balloons). See Ex. 1001, 1:22–24, 3:10–16. In any event, none of the issues in this case turn on the definition of a POSA, and the prior art of record provides ample evidence of the level of skill in the art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill was best determined by the references of record); see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown”’) (internal citation omitted).” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther

    “1. Terms Construed in the Institution Decision We construed the term “elastic fastener” in our Decision on Institution, which is set forth in the following table. Inst. Dec. 14. Claim Term Construction in Institution Decision elastic fastener “an elastic element for attaching things together” Neither party disputes the language of this construction. See generally Prelim Resp. 17; Reply. We adopt them for this Final Written Decision. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015) (quoting Rodale Press, Inc. v. FTC, 407 F.2d 1252, 1256–57 (D.C. Cir. 1968)) (“‘an agency may not change theories in midstream without giving respondents reasonable notice of the change’ and ‘the opportunity to present argument under the new theory.’”)” slip op. at 14

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

    “While the terms “unfilled state” and “filled state” describe the fullness for a container, we do not agree with Petitioner that the claim language requires determining the precise amount of fluid for each state. Section 112(b) requires that we read claim terms in the context of the surrounding claim language, not in isolation. Telebrands, 733 F. App’x at 1020. When we look at the entire claim phrase—“regardless whether the first and second ones of the plurality of containers are in a filled state or an unfilled state”— the plain language is clear that regardless of whether the balloons are in either state, the “at least first and second ones of the plurality of containers are disposed sufficiently close to each other such that they press against each other.” In other words, the exact volume of fluid or water needed to reach a “filled state” does not need to be determined in order to understand the metes and bounds of the claim so as to understand how to avoid infringement. We are further persuaded because this is consistent with the district court’s construction of this term. See Ex. 1023, 19–20.” slip op. at 17

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable

    “Based upon our review of the specification, and consideration of the arguments and evidence presented, Petitioner’s position is not persuasive. We agree with Patent Owner that Petitioner has failed to show that the ’612 patent does not provide such adequate guidance to a person of ordinary skill in the art. On its face, Figure 1 of the ’612 patent (reproduced below) shows containers 18 in contact or pressing against one another with the reasonable clarity required by Vas–Cath Inc. Figure 1 of the ’612 patent is reproduced above. Although the ’612 patent describes, as Petitioner notes, that tubes 16 can be different lengths, we are not persuaded that the ’612 patent’s disclosure of an embodiment with different tube lengths detracts from the concurrent disclosure in Figure 1 of an embodiment, where it is difficult to describe containers 18 as being not in contact with each other. Additionally, we agree with Patent Owner that Petitioner has failed to show adequately that a person of ordinary skill would not have understood the ’612 patent as describing the containers in Figure 1 as pressing against one another in an unfilled state. The ’612 patent indicates Figure 1 shows elastic valve 20A in an open configuration when container 18A is attached to tube 16A to allow container 18A to fill with fluid. Ex. 1001, 3:14–18. In this open configuration, container 18A is to be filled with fluid, after which, “it may be removed from tube 16A, whereupon elastic valve 20A closes, thereby closing the neck of container 18A and sealing the fluid inside.” Id. at 3:18–21 (emphasis omitted). The ’612 patent refers to Figure 1 to describe an embodiment where elastic valve 20A is in an open configuration to fill a container that has not been filled (i.e., unfilled) and removed from tube 16A. Thus, we are persuaded that, at least, Figure 1 and this accompanying description of Figure 1 in the ’612 patent provides sufficient written description for the recited limitation that “at least first and second ones of the plurality of containers are disposed sufficiently close to each other such that they press against each other . . . in a filled state or an unfilled state.”” slip op. at 21

  Patent outcomesUS 9,527,612 not shown unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 9,527,612

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.