• Boston Scientific Corp. And Boston Scientific Neuromodulation Corp. v. Nevro Corp.Some claims unpatentable
  PTAB · Mar 14, 2022 · IPR2020-01563 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1–7 and 9–21 are unpatentable as anticipated by Bradley857 and obvious over Bradley857, Bradley384, and Meadows; claim 8 was not shown unpatentable.

  RulingsFinal written decision

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

    “At the outset, we find that the plain language of clauses 1[i], 12[k], and 18[e], in isolation, requires only that the displayed image of one lead is aligned with the displayed image of the other lead without requiring any “repositioning” of previously displayed images. However, Patent Owner argues that other language recited in each independent claim requires first “establishing” the positions of the first and second leads, which necessarily means that “aligning” the images of the first and second leads refers to repositioning them on the display. Sur-reply 2–3. However, Patent Owner’s argument fails to recognize the distinction between establishing the physical “position” of the leads relative to a physical frame of reference and aligning computer-based images of those leads. For example, clauses 18[b] and 18[c] of independent claim 18 recite: “[b] establishing a first positional relationship between a location of a first signal delivery device and an anatomical feature of a patient” and “[c] establishing a second positional relationship between a location of a second signal delivery device and at least one of the location of the first signal delivery device or the anatomical feature of the patient.” Ex. 1001, 40:34–41. None of clauses 18[b] or 18[c] or the substantively identical clauses 1[d], 1[f], 12[h], 12[i]5 from the other independent claims mentions displaying an image of either lead on a computer screen. Rather, these clauses encompass establishing the spatial position of each of the first and second physical leads relative to a physical frame of reference (e.g., an anatomical feature of a patient or another lead). These limitations may be met without displaying leads on a computer screen at all. Accordingly, we reject Patent Owner’s argument that the claims first require positioning images of the leads on a display before aligning those images on the display. Rather, we find that a plain reading of “align” or” slip op. at 10

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “II. PATENT OWNER’S MOTION TO AMEND Patent Owner filed a contingent motion to amend claims. Paper 25. Patent Owner affirmatively withdrew its motion, Paper 36, after we issued Preliminary Guidance on the motion, Paper 32. Accordingly, Patent Owner’s motion to amend is moot, and we do not reach any issue presented in that motion.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not contest Petitioner’s definition of the ordinary level of skill. PO Resp. 17. For purposes of this Decision, we adopt Petitioner’s undisputed definition. We also find that Petitioner’s proposed definition is consistent with the level of skill demonstrated in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). E. CLAIMS 1–21: ANTICIPATION BY BRADLEY857” slip op. at 17

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner

    “which electrodes are selected for delivering therapy. Reply 10. Petitioner also responds that Bradley857’s reference to Meadows incorporates Meadows method for determining whether an electrode is “available” to the user for delivering therapy by first confirming that impedance of the electrode is within a pre-established range. Id. For example, Meadows indicates that the “number of implanted and available electrodes is typically automatically determined by impedance measurements during hardware interrogation,” Ex. 1006, 34:57–59, and that impedance of an electrode “is a general measure of the fitness of the system to perform its required function,” id. at 46:61–64. Dr. Stone, Patent Owner’s expert, agrees that Meadows’s system does not deliver therapy to an electrode if the measured impedance for that electrode is too high or too low, that is, outside a pre-established range. Ex. 1040, 82:8–87:8.” slip op. at 33

  Patent outcomesUS 10,076,665 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,076,665
• Apple Inc. v. Corephotonics, Ltd.Some claims unpatentable
  PTAB · Nov 2, 2021 · IPR2020-00878 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 2, 4–6, 9–15, 17, 18, 20–23, and 25–29 are unpatentable; claims 3, 8, 16, 19, 24, and 30 were not shown unpatentable.

  RulingsFinal written decision

  • BurdenMixed

    “35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed herein, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 1, 2, 4–6, 9–15, 17, 18, 20–23, and 25–29 of the ’897 patent are unpatentable and that Petitioner has not shown, by a preponderance of the evidence, that claims 3, 8, 16, 19, 24, and 30 of the ’897 patent are unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would include someone who had, at the priority date of the ’897 Patent, (i) a Bachelor’s degree in Physics, Optical Sciences, or equivalent training, as well as (ii) approximately three years of experience in designing multi-lens optical systems. Such a person would have had experience in analyzing, tolerancing, adjusting, and optimizing multi-lens systems for manufacturing, and would have been familiar with the specifications of lens systems and their fabrication. In addition, a POSITA [person of ordinary skill in the art] would have known how to use lens design software such as Code V, Oslo, or Zemax, and would have taken a lens design course. Pet. 6–7 (citing Ex. 1003 ¶¶ 19–20). Patent Owner applied the same level of skill for the purposes of this IPR. PO Resp. 14–15 (citing Ex. 2001 ¶ 19). We regard Petitioner’s formulation of the level of skill as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Therefore, for purposes of this Final Written Decision, we adopt Petitioner’s assessment of the level of skill in the art because it is consistent with the ’897 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 11

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

    “Patent Owner argues that no “dispute between the parties in this IPR depends on the construction of EFL, TTL, or of any other claim term [and] submits that the Board should refrain from construing any terms in the patent for the purposes of this proceeding.” PO Resp. 17. Petitioner does not respond to this argument. See generally Pet. Reply. We agree with Patent Owner. If we were to adopt either construction, it would not change the determination made in this Decision. Thus, we decline to construe any claim terms for purposes of this Final Written Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 10

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

    “unpatentable under 35 U.S.C. § 102 as anticipated by Ogino. Pet. 10–40. Patent Owner does not present arguments related to this ground. See generally PO Resp. For the reasons that follow, we are persuaded that the evidence supports Petitioner’s arguments and thus, Petitioner establishes by a preponderance of the evidence that claims 1, 4, 9–15, 17, 20, and 25–29 are unpatentable under 35 U.S.C. § 102 as anticipated by Ogino.” slip op. at 17

  Patent outcomesUS 10,330,897 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,330,897
• Apple Inc. v. Corephotonics, Ltd.Some claims unpatentable
  PTAB · Nov 2, 2021 · IPR2020-00877 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1, 2, 5–7, 11–13, 15, 16, 18, 20, and 21 are unpatentable as obvious; claims 3 and 4 were not shown unpatentable because the May combination was insufficiently supported.

  RulingsFinal written decision

  • BurdenMixed

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). The burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, 800 F.3d at 1378 (citing Tech. Licensing Corp. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in an inter partes review). Furthermore, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” Magnum, 829 F.3d at 1380. Thus, to prevail in an inter partes review, Petitioner must explain how the proposed combinations of prior art render the challenged claims unpatentable. slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends [A] person of ordinary skill in the art (“POSITA”) would include someone who had, as of the priority date of the ’840 Patent (i) a Bachelor’s degree in Physics, Optical Sciences, or equivalent training, as well as (ii) approximately three years of experience in designing miniature lens systems for mobile device applications. . . . Such a person would have had experience in analyzing, tolerancing, adjusting, and optimizing multi-lens systems, and would have been familiar with the specifications of lens systems, especially lenses configured for use in mobile devices, such as cell phones. . . . In addition, a POSITA would have known how to use lens design software such as Code V, Oslo, or Zemax, and would have taken a lens design course. . . . Such a POSITA would have been familiar with photographic lenses and with mechanical and electronic devices. Lack of work experience can be remedied by additional education, and vice versa. Pet. 6–7 (citing Ex. 1003, 10). Patent Owner “applies the level of ordinary skill in the art set forth in the petition and used by the Board in its Institution Decision.” PO Resp. 3 (Inst. Dec. 8). We determine that the level of ordinary skill in the art proposed by Petitioner is consistent with the ’840 patent and the asserted prior art. We apply Petitioner’s definition in making the findings and conclusions rendered in this Decision.” slip op. at 8

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

    “Independent claim 1 recites “the Telephoto lens unit and the Wide lens unit having, respectively, total track length (TTL)/effective focal length (EFL) ratios smaller and larger than 1 and defining separate Telephoto and Wide optical paths.” Ex. 1001, 19:48–52. Petitioner asserts that “a POSITA would find, in light of the specification, the term ‘total track length (TTL)’ to include ‘the length of the optical axis spacing between the object-side surface of the first lens element and the image plane.’” Pet. 8 (citing Ex. 1003, 20) (emphasis omitted). Petitioner further asserts that, although the Specification of the ’840 patent does not expressly define EFL, “its meaning is well known in the art, as exemplified in Li ([Ex.] 1007), which states that ‘[t]he focal length of a lens assembly [is] also referred to as the effective focal length[.]’” Pet. 8–9 (quoting Ex. 1007, 2:59–61) (alterations in the original). Patent Owner “does not believe that any terms require construction to resolve the disputes addressed in this response.” PO Resp. 3. We do not discern a dispute as to the claim terms TTL and EFL in this proceeding and as such, we need not expressly construe these terms. Nidec Motor Corp., 868 F.3d at 1017. .” slip op. at 10

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

    “(2) Discussion of Rationale for Combining We have reviewed the record developed at trial including the cited portions of Parulski, Huang, and Tang. We determine that Petitioner has supported its seven reasons for combining Parulski, Huang, and Tang with sufficient rational underpinning evidenced by the exhibits cited above. Patent Owner does not dispute Petitioner’s rationale for combining. See generally PO Resp. We determine that Petitioner has shown that an ordinarily skilled artisan would have been motivated to combine Parulski, Huang, and Tang, and that such motivation is supported by sufficient rational underpinning. Based on the complete record developed at trial, we determine that cited portions of Parulski, Huang, and Tang sufficiently support Petitioner’s contentions with respect to the telephoto lens unit and the wide lens unit as claimed.” slip op. at 22

  Patent outcomesUS 10,288,840 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,288,840
• Metall Zug AG / Haag-Streit AG et al. v. Carl Zeiss Meditec AGSome claims unpatentable
  PTAB · Jun 17, 2021 · IPR2020-00300 · APJ Amber L Hagy · IPR · Final written decision

  Claims 1 and 21–26 were held unpatentable as obvious over Huber, Everett, and Lexer; claims 2, 27, 40, and 42 were not shown unpatentable. Substitute claims 44 and 45 were entered.

  RulingsFinal written decision

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

    “(7) Claim 1 Conclusion After having analyzed the entirety of the trial record and assigning” slip op. at 31

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

    “For the above reasons, Petitioner has not met its burden to” slip op. at 72

  Patent outcomesUS 8,690,330 mixed
  § 103 obviousnesscites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 8,690,330
• Polycom, Inc. v. Directpacket Research, Inc.Some claims unpatentable
  PTAB · Jan 11, 2021 · IPR2019-01234 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 2–5, 15–17, 23–26, 29, and 30 are unpatentable over the stated obviousness grounds; claims 8, 9, 19, 20, 27, and 28 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision on Institution, we adopted Petitioner’s proposed skill level, that is, that one of ordinary skill in the art would have a Bachelor’s degree or equivalent in electrical engineering, computer engineering, or similar field, and at least two years of experience in a relevant field such as telecommunications or multimedia communications. Inst. Dec. 20. We also agreed with Petitioner that one of ordinary skill would have some familiarity with the design and implementation of VoIP and multimedia networks. Id. We did not agree, however, that the level of qualifications included monitoring and maintaining VoIP and multimedia networks, as Petitioner asserted, and therefore declined to adopt those requirements. Id. ordinary skill in the art adopted in the Decision on Institution to include “familiarity with the design and implementation of VoIP and multimedia networks,” but further described this requirement to include other requirements: an understanding of the techniques employed by network firewalls and the issues they present with respect to establishing and conducting multimedia communication sessions; an understanding of the performance demands placed on the network by multimedia communications, and the constraints that such demands place on processing and security measures that could be adopted; and a recognition of the distinctions between prior art firewall traversal solutions and the inventions of the ’978 Patent. PO Resp. 21–22. Patent Owner refers to GPAC, which identifies the factor of the “type of problems encountered in the art” as a consideration in determining the level of ordinary skill in the art. Id. at 22 (citing In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995)). We have reviewed the relevant technology and claims of the ’978 patent, as well as the technology of the asserted prior art, and we adopt the same qualifications as those adopted in the Decision on Institution because they are commensurate with the relevant technology. These qualifications are similar to presented by Petitioner, with the” slip op. at 8

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

    “Petitioner relies on the ordinary and customary meaning of the claim terms as understood by one of ordinary skill in the art. Pet. 20. Patent Owner indicates that its arguments are also based upon the ordinary and customary meaning of the terms as they would be understood by one of ordinary skill in the art. PO Resp. 22. We determine that it is not necessary to provide an express interpretation of any of the terms of the claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “As discussed above, we agree with Petitioner that Kirchhoff discloses the use of SSL, a protocol that uses data encryption (Ex. 1005, 8:47–49). We also agree with Petitioner that Krtolica discloses the use of HTTP protocols on port 80 (Ex. 1004, 6:23–24), and does so with a goal of maintaining high network security (id. at 1:7–10, 2:33–36). As Kirchhoff discloses, and Dr. Lavian’s testimony supports, one of ordinary skill in the art would have been aware that port 443, rather than port 80, would be used for secure web connections using SSL, which includes the use of encryption, and this would have resulted in enhanced network security. See Ex. 1005, 3:38–41; Ex. 1002 ¶¶ 52, 69, 108. As Dr. Lavian testifies, SSL/TLS was the most widely deployed security protocol in the world and the well-known use of SSL in HTTPS protocol enables secure web-based e-commerce. Ex. 1002 ¶¶ 69, 108; Ex. 1035 ¶ 8; Ex. 1006, 5. And, Krtolica has a stated goal to maintain network security. Ex. 1004, 1:7–10, 2:33–37. We find this evidence provides a sufficient rational underpinning in support of obviousness for combining the teachings of Krtolica and Kirchhoff. See KSR, 550 U.S. at 418. Owner’s arguments that use of encryption in SSL was optional and adding encryption would allegedly undermine network security. Nor do we find persuasive the argument that the Petitioner’s motivation to combine based on efficiency is insufficient, because Petitioner relies on another rationale for the combination of Krtolica and Kirchhoff, that is, enhanced network security, also discussed above. We additionally do not find persuasive Patent Owner’s arguments that combining Krtolica and Kirchhoff would render the system of Krtolica unsatisfactory for its intended purpose because, as Petitioner argues, this assertion is contradicted by the state of the art at the time. See Pet. Reply 9. As discussed above, Dr. Lavian explains that there were known systems having firewalls with SSL traversal at the time of the invention. Ex. 1002 ¶¶ 53, 59–65; Ex. 1035 ¶ 20; Ex. 1014. Moreover, the ’978 patent uses encryption with firewalls using a single-port protocol, and Patent Owner does not direct us to any disclosure in that patent that indicates that the use of encryption with a single-port protocol was inventive in that the system, or that encryption had to be done in a special manner. See Pet. Reply 3 (citing Ex. 1001, Fig. 3 (at 311, 341), Fig. 5 (503, 508)); see also Ex. 1001, 6:4–8. In a similar vein, Patent Owner argues that due to incompatibilities the combination of SSL with Krtolica would be unsuccessful, and we address this issue below.” slip op. at 30

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Where the prior art contains “apparently conflicting” teachings (i.e., where some references teach the combination and others teach away from it) each reference must be considered “for its power to suggest solutions to an artisan of ordinary skill . . . consider[ing] the degree to which one reference might accurately discredit another.” In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). In Hosner, AES encryption appears to have one of the higher processing speeds of the algorithms tested. See Ex. 1006, 23. Further, the ’978 patent itself supports the acceptable performance of AES encryption in single-port protocol, stating that “[a]ny method or algorithm of encryption may be used” with its invention “including, but not limited to 128-bit find Patent Owner’s argument on the use of AES to be persuasive. We have reviewed Petitioner’s explanations and supporting evidence as to how the combination of Kirchhoff and Krtolica teach the limitations of claims 4, 16, and 24, and we agree with and adopt Petitioner’s analysis. Pet. 75–76, 81.” slip op. at 65

  Patent outcomesUS 7,710,978 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,710,978
• Apple, Inc. v. Uusi, LLC D/B/A NartronSome claims unpatentable
  PTAB · Aug 4, 2020 · IPR2019-00358 · APJ Minn Chung · IPR · Final written decision

  Claims 94, 96, 101–106, 115, and 116 are unpatentable as obvious; claims 37–39, 97–99, and 107–109 were not shown unpatentable.

  RulingsFinal written decision

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

    “§ 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we instituted an inter partes review of the challenged claims. Paper 12 (“Inst. Dec.”). In the Institution Decision, we determined Petitioner demonstrated a reasonable likelihood that it would prevail as to at least one 1 As discussed below, we agree with Patent Owner that claim 117 is not challenged in this proceeding. challenged claim, and we instituted trial on all claims and all grounds in the Petition. Inst. Dec. 67–68.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMixed

    “The ‘183 patent grew out of a “study” which the inventor performed to determine the optimal scan frequencies for close-proximity touch arrays. The ‘183 patent describes this study, and then reports its conclusion: “higher frequencies” are optimal. The ‘183 patent’s “switching circuit” incorporates the “use of higher frequencies,” as suggested by the study.” slip op. at 36

  Patent outcomesUS 5,796,183 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,796,183
• Merck Sharp & Dohme Corp. / Merck Sharp & Dohme B.V. et al. v. Microspherix LLCSome claims unpatentable
  PTAB · Jul 8, 2019 · IPR2018-00393 · APJ James A Worth · IPR · Final written decision

  Claims 1–5, 7, 8, and 10–19 are unpatentable as obvious; claims 6 and 9 were not shown unpatentable.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMixed

    “B. Motivation to Combine De Nijs and Schopflin The parties dispute whether a person of ordinary skill in the art would” slip op. at 21

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “that Merck failed to add a radiopaque marker to its Implanon device and that the lack of a negative impact on release rates shows unexpected success. PO Resp. 64; see also id. at 54 (“There is no dispute De Nijs does not discuss using a marker, and that Implanon did not use a marker.”). Petitioner states that the Implanon device is the commercial embodiment of Example 5 of De Nijs. Reply 5 (citing Ex. 2002, 3:15–16; Ex. 1067, 297:7–9). Example 5 of De Nijs has no polysiloxane jacket and no sealing of implant ends. Accordingly, this argument would be more relevant to claims 6 and 9 discussed below, which recite open ends or pores. Our analysis of claim 1 focuses on the broader scope of claim 1, which includes both sealed and 14 Patent Owner cited this case in its response. See PO Resp. 32. Accordingly, we do not find Petitioner’s reliance on this case at oral argument to be waived. 15 The Court in Intelligent Bio-Systems emphasized that there is a distinction between reasonable expectation of success and reason to pursue the references’ teachings. Id. at 1366–1368. According to Intelligent Bio- Systems, reasonable expectation of success only looks to “likelihood of success in combining references to meet the limitations of the claimed invention” and that, for example, appropriate cleavage conditions would have been irrelevant to the inquiry where such conditions are not required by the claim at issue. Id. at 1367. Inquiry into motivation to combine, however, considers whether a person having skill in the art would have believed that there was a reason for reaching the claimed invention in the first place. Id. at 1368; see also KSR Int’l Co., 550 U.S. at 418 (“it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”).” slip op. at 27

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for petitioner

    “the examiner during the prosecution of the Veenstra patent. We note, however, that the claims in the prosecution of the unrelated Veenstra patent only reached allowance after incorporation of language that captured Veenstra’s unexpected results for localization of the barium sulfate as set out the specification. In other words, Merck’s other positions during the prosecution of the Veenstra patent were not successful. Because, Merck did not succeed “in persuading a court13 to accept that party’s earlier position” we do not find that estoppel applies to Petitioner in this proceeding. New Hampshire, 532 U.S. at 750–51. Accordingly, we do not agree with Patent Owner’s position that Petitioner is estopped from arguing that the addition of a marker disclosed in Schopflin to De Nijs’s implant is obvious.” slip op. at 21

  • ExcludeMotion to exclude, deniedDenied

    “First, Petitioner asserts certain exhibits and testimony should be excluded as irrelevant because they have not been discussed in any substantive paper. Paper 36, 2–4. But, as Patent Owner notes, Dr. Kiser cited the objected-to exhibits in his declarations to show his understanding of the state of the art. Paper 38, 3. Moreover, we agree with Patent Owner that the uncited portions of Dr. Kiser’s declarations include paragraphs of technical and legal background that provide context for his opinions. Id. at 5–6. We agree with Patent Owner that Dr. Kiser’s understanding of the state of the art and the exhibits supporting that understanding are relevant to the understanding of persons of ordinary skill in the art. Id. at 3–5. Accordingly, we deny Petitioner’s motion to exclude such testimony and exhibits.” slip op. at 70

  Patent outcomesUS 9,636,402 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,636,402
• Power Integrations, Inc. v. Semiconductor Components Industries, LLCSome claims unpatentable
  PTAB · May 23, 2019 · IPR2018-00180 · APJ Kamran Jivani · IPR · Final written decision

  Claims 4–7, 9–16, and 18 are unpatentable over Hwang or Hwang and Balakrishnan; claim 17 was not shown unpatentable over Hwang.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Although the parties formulate slightly differently their respective assessments of the skill level, neither party disputes directly the other’s assessment nor makes any arguments related to the assessments. See generally Pet.; PO Resp. The ’221 patent states its disclosure “relates, in general, to integrated circuits and, more particularly, to power converter integrated circuits.” Ex. 1001, 1:9–11. In view of the foregoing, we adopt Patent Owner’s formulation of the level of ordinary skill in the art. Further, this level of ordinary skill is reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “construction must begin with the words of the claims themselves.”); In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)) (“As with any claim construction analysis, we begin with the claim language.”). None of the challenged claims (nor even unchallenged claim 8) recites the claimed disabling or terminating occurs in response to the detect signal independent of other circuit conditions or in response only to the detect signal. See Ex. 1001, 12:5–14:36. For instance, independent claim 4 merely recites, “wherein the control circuit disables the switched drive control signal in response to the detect signal.” Id. at 12:49–51. Independent claim 7 similarly recites, “wherein the gating circuit disables the drive control signal in response to the detect signal.” Id. at 13:11–13. Independent claim 9 discloses only, “a first comparator . . . having an output for disabling the pulse generator.” Id. at 13:27–30. Finally, independent claim 15 requires, “comparing the error signal to a reference signal . . . to terminate the step of generating in response to the error signal.” Id. at 14:21–23. Therefore, the plain language of the challenged claims does not, standing alone, support adoption of Patent Owner’s proposed construction.” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “testimony from their respective declarants on whether one of ordinary skill in the art would understand “in response to” as requiring “independent of other circuit conditions.” Compare Reply 2–3 (citing Ex. 1016 ¶¶ 18–21, 26–30; Ex. 2003, 43:16–45:1) with PO Resp. 14–15, 17 (citing Ex. 2001 ¶¶ 42, 44–45.) and Sur-Reply 11–12 (citing Ex. 2001 ¶ 45). Patent Owner further directs our attention to a single sentence of deposition testimony in which Petitioner’s declarant Dr. Szepesi appears to agree with Patent Owner’s construction by stating, in the context of claim 9, that “the output signal of this first comparator disables the output pulses driving the gate of that independent of anything else.” PO Resp. 8 (citing Ex. 2003, 44:16– 45:1). Petitioner rebuts Patent Owner’s arguments by identifying additional deposition testimony and statements made in a second declaration offered by Dr. Szepesi opposing Patent Owner’s construction. Reply 2–3 (citing Ex. 1016 ¶¶ 18–21, 26–30; Ex. 2003, 43:16–45:1). For instance, immediately before the statement Patent Owner cites, Dr. Szepesi testified: Q: “So is it your opinion that an output for disabling the pulse generator must disable the pulse generator regardless of the other conditions in the circuit?” . . . A: “I don't understand your question. I said disabling the pulse generator means that the output of the pulse generator which is providing the pulses to the gate of the main switch, those pulses are disabled. That’s what it means in my opinion in this context.” Ex. 2003, 43:24–44:9. And, in his supplemental declaration, Dr. Szepesi states: As a first matter, I opined during my deposition that “an output disabling a pulse generator” means that “the output signal of this first comparator disables the output pulses driving the gate of that independent of anything else.” But, at the time of my deposition I had not done a focused claim construction analysis of the limitation “a first comparator […] having an output for disabling the pulse generator.” This is because I hadn’t anticipated there being a dispute relevant to the validity analysis in view of what I understood as the plain meaning of the language. Despite the quote that Patent Owner relied upon, I believe now that a POSITA would not understand the claim language to require the first comparator to disable the output pulses independent of anything else. This belief is consistent with my responses to the first two of three successive questions in which I was asked about “disabling the pulse generator.” It is my opinion that the operation of the disclosed embodiment requires the presence of other conditions precedent before the first comparator can disable the drive pulses and this requirement is not excluded by the claim language. Ex. 1016 ¶ 18 (emphasis added). Our reviewing court has made clear that extrinsic evidence “is generally of less significance than the intrinsic record” in matters of claim construction. Wi-LAN, Inc. v. Apple Inc., 811 F.3d 455, 462 (Fed. Cir. 2016) (citation omitted). Here, beyond competing declarant testimony, neither party has entered into the record extrinsic evidence, such as dictionary definitions or contemporaneous usage in the art, addressing the scope of “in response to.” Having considered the testimony upon which Patent Owner relies and weighing it against the claim language itself, the Specification’s disclosures set forth above, and the contrary testimony of Petitioner’s declarant, we find on balance that it does not warrant departing from the plain and ordinary meaning of “in response to” as Patent Owner urges. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (holding that an inventor may define specific terms used to describe invention, but must do so “with reasonable clarity, deliberateness, and precision”) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387-88 (Fed. Cir. 1992)).” slip op. at 17

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

    “Claim 4 further recites, “a control circuit having an input coupled for receiving the detect signal, wherein the control circuit disables the switched drive control signal in response to the detect signal.” Patent Owner’s sole contention with respect to claim 4 is that “[t]he alleged detect signal in Hwang does not satisfy this limitation” because “unlike the ’221 patent, the alleged ‘control circuit’ does not disable the switched drive control signal ‘in response to the detect signal’ independent of other circuit conditions.” PO Resp. 15–16. As discussed above, we decline to import into claim 4 a requirement that the claimed disabling must occur independent of other circuit conditions. See supra Section III.C.1. Because Patent Owner’s argument relies on a claim construction that we rejected above, we are not persuaded that Hwang fails to meet the limitations of claim 4. Rather, having reviewed the evidence cited by Petitioner, we agree with Petitioner that Hwang discloses the limitations of independent claim 4, arranged as recited in the claim. Petitioner’s analysis, as supported by the Szepesi Declaration, further demonstrates where Petitioner contends each element of dependent claims 5 and 6 is disclosed in Hwang. Pet. 21–24. Patent Owner does not dispute Petitioner’s analysis beyond the argument raised with respect to claim 4. See PO Resp. 17. Having reviewed the evidence cited by Petitioner, we agree with Petitioner that Hwang discloses the limitations of dependent claims 5 and 6, arranged as recited in these claims, and we adopt that analysis as our own. Accordingly, for the foregoing reasons, we find Petitioner has shown by a preponderance of the evidence that Hwang anticipates claims 4–6.” slip op. at 25

  Patent outcomesUS 6,597,221 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,597,221
• Emerson Electric Co. v. Sipco, LLCSome claims unpatentable
  PTAB · Nov 28, 2018 · IPR2017-00359 · APJ Bryan F Moore · IPR · Final written decision

  Claims 32, 34, 37–38, 55–57, and 59 are unpatentable over Cunningham; claims 1, 3–8, 11–14, 24–31, 36, 42, 43, 46–49, 51–54, and 60–64 were not shown unpatentable.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “This argument is conclusory and not supported by sufficient evidence. Moreover, the stated conclusion is vague with respect to the limitation at issue. Petitioner argues that “the node 18 must translate messages” (id. (emphasis added)), but does not explicitly argue that all three recited pieces of information—“the select information, the transmitter identification information, and transceiver identification information”—must be translated. Even assuming Mason’s node must translate all three recited pieces of information, Petitioner does not show that all such translated pieces of information must be further transmitted to the AMR server over the WAN. In particular, Petitioner does not show that transceiver identification information would have to be further transmitted.” slip op. at 21

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

    “Moreover, we agree with Petitioner that such a construction is “non- specific, vague and unhelpful” in the context of the ’692 patent. Reply. 16. Patent Owner’s construction limits “low power” to signals having a “limited transmission range,” but provides no guidance of what “limited” means, or what its boundaries might be. Petitioner argues correctly that Patent Owner’s construction fails to address questions its proposed construction raises, such as, what a ‘limited’ transmission range means and how ‘limited’ the range must be (i.e., what the range’s distance should be), whether the transmission range depends on the particular system or application, and whether other factors should be considered in determining whether the transmission range is limited.” slip op. at 14

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

    “Notably, Petitioner says these contentions are “further evidence” but does not explain how this evidence is to be used to buttress Cunningham’s disclosure or how it is to be combined with Cunningham’s disclosure. Specifically, given the limited contentions in the Petition detailed above, Petitioner does not explain how Energy Management Services or the “routines” described in the Provisional send control signals from the computer to the actuator as required by the claims. For example, even if we to accept that the “Williams Network Control Center” creates control signals as required by the claim Petitioner has not explained how those signals are translated from network transfer protocol to RF signals and then translated to an analog signal that can be used at an actuator. Even though the ’978 Provisional is allegedly incorporated by reference, an obviousness determination still requires--“[w]hether a [obviousness challenge] is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference[--] a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” In re Stepan Co., 868 F.3d 1342, 1346 n. 1 (Fed. Cir. 2017); c.f. Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (finding obviousness shown despite fact that “all of the limitations are found in two separate embodiments pictured side by side in the patent, not in one embodiment” because the party showed motivation to combine and reasonable likelihood of success). Additionally, “there must be evidence presented on the obviousness of the claim as a whole.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1337 (Fed. Cir. 2015) (citing KSR, 550 U.S. at 420, 127 S.Ct. 1727); see also Acorda Therapeutics, Inc. v. Roxane Labs., Inc., 903 F.3d 1310, 1352 (Fed. Cir. 2018) (“The determination of obviousness is made with respect to the subject matter as a whole, not separate pieces of the claim”). Here, the “routines” described in the ’978 Provisional work differently than the “utility prices” embodiment of Cunningham. Petitioner has not explained how those would work together to meet the claim limitations.” slip op. at 30

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Patent Owner’s argument is inapposite, as it is premised on reading a limitation into the claims, namely that the information encoded in the RF signal must be translated in real time. Further, we agree with Petitioner, that even under such an erroneously narrow construction, Cunningham would meet the limitation. In that regard, Petitioner argues that, “although Cunningham discloses sending cumulative data readings, individual signals from the sensor are identified by the gateway and this information is then transmitted (with transmitter identification information) to a computer on the WAN.” Reply 6 (citing Ex. 1046 ¶¶31–32; Ex. 1004, 31:6–28). Petitioner argues, and we are persuaded, that “Cunningham explains that the ‘most current cumulative reading’ is the current absolute ‘reading’ (i.e., information signal) from the sensor (Ex. 1004, 13:44–46) and that two cumulative readings can be used to ‘interpolate’ and ‘recover’ a missed reading (i.e., a signal from the sensor).” Reply 7 (citing Ex. 1004, 13:44–56; 31:6–27; Pet. 75; Ex. 1002 ¶¶115, 152; Ex. 1046 ¶32). We are persuaded that Cunningham discloses this limitation. Lastly, claim 32 also recites “a computer configured to execute at least one computer program that formats and stores select information responsive to the electrical signal for retrieval upon demand from a remotely located device.” To meet this limitation, Petitioner accurately points out that “Cunningham discloses that[,] in response to receiving information from the sensor interface module through the data collection modules, the host module compiles the information into a user specified readable format and stores it for later retrieval upon demand from a customer computer or workstation.” Pet. 83 (citing Ex. 1004, 7:19–27, 44:12–41, 44:53–64, 46:44–61, 47:44–54, Ex. 1002 ¶¶138–140). Patent Owner does not contest that Cunningham discloses “a computer configured to execute at least one computer program that formats and stores select information responsive to the electrical signal for retrieval upon demand from a remotely located device.” See PO Resp. 22–29, 41–46. We are persuaded that Cunningham discloses this limitation. For the forgoing reasons, Petitioner has shown by a preponderance of” slip op. at 37

  Patent outcomesUS 6,437,692 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,437,692
• Nautilus, Inc. v. Icon Health & Fitness Inc.Some claims unpatentable
  PTAB · Nov 28, 2018 · IPR2017-01363 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1–5 and 11–13 are unpatentable as obvious; claims 6–10 and 14–19 were not shown unpatentable because Six-Pak was not established as prior art.

  RulingsFinal written decision

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

    “Petitioner’s evidence to be deficient. What we find lacking is evidence that persons interested in exercise equipment knew of the TuffStuff website or would have been able to locate it through reasonable diligence. Even assuming that the two archived webpages captured by the Wayback Machine show that Six-Pak was available for anyone to view or download from the TuffStuff website,9 “‘[p]ublic accessibility’ requires more than technical accessibility.” Acceleration Bay, LLC v. Activision Blizzard Inc., __ F.3d __, 2018 WL 5795976, at *5 (Fed. Cir. Nov. 6, 2018) (affirming Board’s determination that a reference uploaded to a university website in the prior art period was not a printed publication when it was not meaningfully indexed to allow an ordinarily skilled person to locate the reference using the website’s search function). Petitioner has presented no evidence, in the Butler affidavit or elsewhere in the record, that the TuffStuff website could have been located through a reasonably diligent internet search.” slip op. at 16

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

    “2. Claims 2–5 Petitioner contends that claims 2–5 would have been obvious over Sleamaker in view of Hanoun. Pet. 26–31. Petitioner argues that a skilled artisan would have been motivated to combine Sleamaker with Hanoun as proposed in its challenges to these claims because by 2013, it was known that exercise machines should track user performance and the market demanded such features. Id. at 19 (citing Ex. 1007 ¶¶ 44–50, 117–118). Sleamaker discloses electronics to track user performance (see Ex. 1002, 5:46–55), but according to Petitioner, “because the direction of its invention was not focused on the details of such electronics, a POSITA would have looked to Hanoun for a complimentary and more comprehensive system to measure performance in a flywheel-based exercise system.” Pet. 19 (citing Ex. 1007 ¶¶ 117–118). We find that Petitioner’s stated reasoning for combining Sleamaker and Hanoun is supported by rational underpinnings.” slip op. at 25

  • Skill levelSkill level petitioner adoptedOther

    “In our Decision on Institution, we adopted Petitioner’s proposal that an ordinarily skilled artisan at the time of the invention of the ’047 patent “would have had at least a bachelor’s degree in mechanical engineering or biomechanics and two years’ experience designing exercise equipment, or alternatively, an equivalent level of education and experience in product development and engineering regarding commercial fitness products.” Dec. on Inst. 7 (quoting Pet. 7). The parties’ post-institution briefing does not present any argument relating to the definition of the level of ordinary skill in the art. We maintain the definition of the level of ordinary skill in the art set forth in our Decision on Institution for the reasons stated therein. See Dec. on Inst. 7.” slip op. at 9

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

    “II. CLAIM CONSTRUCTION Under the version of our rules applicable to this inter partes review,7 claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification. 37 C.F.R. § 42.100(b) (2016); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). In our Decision on Institution, we determined that resolution of the disputed issues at that stage did not require an express interpretation of any claim term. See Dec. on Inst. 6 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). The parties’ post-institution briefing does not present any claim construction arguments or issues. We maintain our determination that no express claim construction is necessary to resolve the disputed issues.” slip op. at 8

  Patent outcomesUS 9,403,047 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 9,403,047

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.