- PTAB · Sep 10, 2024 · IPR2024-00563 · APJ Zhenyu Yang · IPR · Institution
The Board instituted IPR on claims 1, 12, and 28 because Petitioner showed a reasonable likelihood of prevailing on obviousness over Gil, Norden, Dean, Alphagan, and Federal Register.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” Our § 325(d) analysis employs a two-prong framework: (1) whether the arguments presented in the petition are the same or substantially the same as those previously presented to the Office; and (2) if so, whether the petitioner has demonstrated a material error by the Office in its prior consideration of those arguments. Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte GmbH, IPR2019-01469, Paper 6 (“Advanced Bionics”), 8 (PTAB Feb. 13, 2020) (precedential). “If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” Id. at 8–9. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the District of New Jersey is more than three years, argues that “a trial may not be held until 2026—well after a FWD would be expected in this proceeding.” Pet. 15 (citing Ex. 1027, 2); Reply 8. Based on this evidence of the median time to trial in the district, we find factor 2 weighs in favor of institution. See Fintiv Memo 3 (“[W]hen considering the proximity of the district court’s trial date to the date when the PTAB final written decision will be due, the PTAB will consider the median time from filing to disposition of the civil trial for the district in which the parallel litigation resides.”)” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingOther
“guidance as to the meaning of particular claim terms.” Phillips, 415 F.3d 1314. Claim 1 is directed to “[a] method for reducing eye redness in a human subject having ocular hyperemia.” The preamble is limiting because (1) it provides the antecedent bases for “said human” and “said reduction of eye redness” recited in the body of the claim; and (2) “it is a statement of the intentional purpose for which the method must be performed.” See Eli Lilly & Co. v. Teva Pharms. Int’l GmbH, 8 F.4th 1331, 1341–43 (Fed. Cir. 2021). The preamble, however, does not require that eye redness is actually reduced. Id. Nor does the body of the claim recite any efficacy requirement.” slip op. at 24
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for petitioner
“In claim construction, “the claims themselves provide substantial guidance as to the meaning of particular claim terms.” Phillips, 415 F.3d 1314. Claim 1 is directed to “[a] method for reducing eye redness in a human subject having ocular hyperemia.” The preamble is limiting because (1) it provides the antecedent bases for “said human” and “said reduction of eye redness” recited in the body of the claim; and (2) “it is a statement of the intentional purpose for which the method must be performed.” See Eli Lilly & Co. v. Teva Pharms. Int’l GmbH, 8 F.4th 1331, 1341–43 (Fed. Cir. 2021). The preamble, however, does not require that eye redness is actually reduced. Id. Nor does the body of the claim recite any efficacy requirement.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,596,600 - PTAB · Aug 22, 2024 · IPR2024-00580 · APJ Susan L C Mitchell · IPR · Institution
The Board instituted review of claims 1, 3–6, and 8 on all asserted grounds, finding a reasonable likelihood that at least claim 1 would be shown obvious over the ’772 Publication and Snowdy.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Beginning with independent claim 1, we determine that Petitioner has met its burden for institution. Based on the current record, Petitioner has shown a reasonable likelihood of succeeding in establishing that the combination of the ’772 Publication and Snowdy renders at least claim 1 obvious.” slip op. at 18
- Skill levelSkill level petitioner adoptedOther
“Pet. 12 (citing Ex. 1005 ¶¶ 111–115). Patent Owner states that it does not dispute this definition for purposes of the Preliminary Response. Prelim. Resp. 16. On the current record, and for the purposes of this decision, we accept Petitioner’s proposed definition, as it appears consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’462 Patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Having considered the record, we determine that no express claim construction of any claim term is necessary to reach our decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd. v. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., 200 F.3d at 803)).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“We agree with Patent Owner on the record before us that Petitioner does not appear to offer sufficient evidence and reasoning as to why a POSA would have modified AAVrh.10 at position 665 as described as opposed to other modifications based solely on the disclosure of the ’772 Publication. We do agree with Petitioner, however, that on the record before us, Snowdy provides such sufficient evidence and reasoning. See Pet. 47–52.” slip op. at 26
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,680,274 - PTAB · Aug 16, 2024 · IPR2023-00658 · APJ Scott A Daniels · IPR · Final written decision
The Board canceled original claim 1, denied the proposed substitute claim as indefinite under § 112, and did not reach the asserted obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We have, on the complete record now before us, mainly the testimony of Petitioner’s declarant, Mr. Hatch, who testifies that the designer of ordinary skill in the art would be a person who has a bachelor’s degree in furniture design or an equivalent field or alternatively two years of practical experience designing furniture . . . [which] is appropriate given the relatively simple nature of the design at issue, which involves little more than two boards forming a tabletop. Ex. 1002 ¶¶ 34–35. Based on the complete record, we adopt Petitioner’s articulation of a designer of ordinary skill as it is supported by the testimony of Mr. Hatch. Id. ¶¶ 33–38. We also note that, based on the complete trial record, our” slip op. at 18
- Expert testimonyPetitioner expert creditedDecided for petitioner
“In contrast, Patent Owner’s declarant, Mr. Williams, testifies based on his “experience[,] that tenons are generally included in the larger portion of two table top portions.” Ex. 2006 ¶ 55. However, Mr. Williams’ experience does not explain why an ordinary observer would understand such functional and ornamental characteristics of tenon and hole arrangements. Id. Nor does this testimony proclaim that tenons must be in the larger of two table top potions. Indeed, even considering an ordinary observer imbued with Mr. Williams’ level of expertise and experience, and understanding for instance that it may be more likely that the wider portion includes tenons, this does not resolve the glaring inconsistency that Figure 1 illustrates holes and Figure 8 illustrates tenons. In other words, Mr. Williams’ “experience” does not resolve the visible tension that, on one hand, Figure 1 illustrates holes as part of the claimed ornamental design in the wider portion of the table top, and on the other hand, Figure 8 illustrates tenons as part of the same wider portion of the table top. The problem here may be more eloquently explained as “Two roads diverged in a yellow wood[,] And sorry I could not travel both.” Robert Frost, The Road Not Taken, The Poetry of Robert Frost—The Collected Poems, 105, Henry Holt and Co. (1969). Considering the entire record before us in this case we credit Mr. Hatch’s testimony. The issue is not, as Patent Owner has framed it, whether “[o]ne of ordinary skill in the art would understand how the tenons and holes should be positioned on each of the table top portions.” Reply Opp. 7. The question is whether a person of ordinary skill in the art viewing the design for a table top in the proposed substitute claim as would an ordinary observer, understand whether or not the wider portion of the table top as Figures 1 and 6, holes. As Mr. Hatch persuasively explains, in the proposed substitute claim a majority of the drawings for the wider portion, i.e., Figures 1–6, omit the tenons added in Figure 8. Ex. 1011 ¶ 37 (Mr. Hatch testifying that “Figure 8 is the only amended figure that adds tenons/dowels.”) Indeed, Figures 1 and 6 not only fail to illustrate tenons, but actually are amended to include holes rather than tenons, as described in the Motion to Amend. See, e.g., Motion to Amend 6 (Patent Owner describing, “Figure 1: Removal of disclaimer of a total of four holes by amending the outline of the four holes from broken lines to solid lines.”). On the complete record in this proceeding, we determine that a” slip op. at 28
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“On the complete record in this proceeding, we determine that a designer of skill in the art considering the claim from either their own, or the perspective of an ordinary observer, would be uncertain whether the wider portion of the claimed table top depicted in Figures 1–8 includes tenons, or holes. It is reasonable that anyone observing two distinct ornamental designs for the same wider portion of the table top would be unclear as to the claimed ornamental design where holes are shown in one figure but tenons are shown in another figure illustrating the same wider portion of the table top. Observing as a whole, the figures illustrating the table top in the proposed substitute claim, the question remains, does the wider portion of the table top include tenons, or holes? See Maatita, 900 F.3d at 1376 (“Ultimately, a patent is indefinite for § 112 purposes whenever its claim, read in light of the visual disclosure (whether it be a single drawing or multiple drawings), ‘fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.’”) (quoting Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014)). proposed substitute claim fails to “inform those skilled in the art about the scope of the invention with reasonable certainty.” See Nautilus, 572 U.S. at 910. Thus, Petitioner has shown, by a preponderance of the evidence, that the proposed substitute claim is indefinite and we accordingly deny Patent Owner’s Noncontingent Motion to Amend.” slip op. at 29
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
“Federal Circuit recently explained that “a design patent is indefinite under § 112 if one skilled in the art, viewing the design as would an ordinary observer, would not understand the scope of the design with reasonable certainty based on the claim and visual disclosure.” In re Maatita, 900 F.3d 1369, 1377 (Fed. Cir. 2018). In Maatita, the Federal Circuit reversed the Board’s finding of indefiniteness of a design for a shoe bottom, i.e., a shoe sole, finding that Maatita’s two-dimensional drawing clearly demonstrates the perspective from which the shoe bottom should be viewed. A potential infringer is not left in doubt as to how to determine infringement. In this case, Maatita’s decision not to disclose all possible depth choices would not preclude an ordinary observer from understanding the claimed design, since the design is capable of being understood from the two-dimensional, plan- or planar-view perspective [] shown in the drawing. Id. at F.3d 1378–79. Different from Maatita, the issue in this proceeding is not whether an ordinary observer would sufficiently understand a three-dimensional ornamental design from a two-dimensional figure, but whether inconsistencies between figures of the proposed substitute claim render the scope of the claimed table top uncertain. See Maatita, 900 F.3d at 1376 (The Federal Circuit specifically distinguishing Maatita’s single two-dimensional drawing from indefiniteness issues raised by inconsistent drawings: “[h]ere, we are not dealing with inconsistencies in the drawings, or inconsistencies between the drawings and the verbal description, but” slip op. at 24
§ 103 obviousness§ 112 disclosurecites Nautilus - PTAB · Aug 13, 2024 · IPR2024-00467 · APJ Zhenyu Yang · IPR · Institution
The Board instituted IPR on all challenged claims based on the asserted obviousness ground over Gil, Norden, Dean, Alphagan, and Federal Register.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Advanced Bionics, 8. As explained above, during prosecution of the ’245 patent, the examiner issued a nonstatutory double patenting rejection because the claims were “not patentably distinct from” the ’742 patent claims.13 See supra Section I.H (citing Ex. 1010, 96). Petitioner argues that “[i]t was material error for the Examiner to both acknowledge that the ’245 claims were patentably indistinct from the ’742 claims and yet ignore the FWD and allow the claims despite the Board’s prior findings.” We find Petitioner’s argument persuasive. To determine whether Petitioner has sufficiently shown material error, we look at, for example, “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection.” Advanced Bionics, 9 (citing Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8, 10–11 (Dec. 15, 2017)). Petitioner asserts Gil, Norden, Dean, Alphagan, and Federal Register in this” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“previously denied its motion to stay. Ex. 2029. Thus, factor 1 weighs in favor of denying institution.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We agree with Patent Owner. Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to expressly construe any claim term. Patent Owner appears to suggest, although it does not explicitly argue, that the claims require “a single drop of [0].025% brimonidine.” See Prelim. Resp. 6; see also id. at 27 (arguing Gil is “with multi-dosed 0.03% brimonidine”); id. at 28 (arguing Dean is with “multi-dosed concentrations”). To the extent our understanding is correct, Patent Owner should expressly discuss at trial any construction that would so limit the claim. Such discussion should be set forth in a separate section of a response, if filed, designated for claim construction; claim construction positions should not be merely included in arguments over the merits on patentability.” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner asserts that: A person of ordinary skill in the art (“POSA”) would have been a composite person (or team) that included a medical doctor and pharmaceutical formulator. EX-1014, ¶¶60-61; EX-1013, ¶¶16, 22-24. The medical doctor would be an ophthalmologist with at least three to four years of experience in clinical trials and FDA regulation of eye products and would have experience in the use of topical brimonidine and apraclonidine and topical vasoconstrictors such as naphazoline and tetrahydrozoline. EX-1014, ¶60. The pharmaceutical formulator would have a doctorate in pharmaceutics or a related degree and at least three to five years of experience developing eye drop formulations for clinical trial and regulatory approval. EX-1013, ¶16. Pet. 16–17. Patent Owner does not, at this point, dispute this proposed definition of the ordinarily skilled artisan. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the person of ordinary skill in the art as it appears consistent with the skill level reflected in the prior art of record and the disclosure of the ’245 patent.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,833,245 - Lululemon USA Inc. v. Nike, Inc.InstitutedPTAB · Aug 9, 2024 · IPR2024-00460 · APJ Josiah C Cocks · IPR · Institution
The Board instituted IPR on claims 1–21 on all petition grounds, finding a reasonable likelihood that claims 1–8 and 12–18 are anticipated by Nishida.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the reasons set forth above, we conclude that Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. At this stage of the proceeding, the Board has not made a final determination on the construction of any claim term or the patentability of any challenged claim V. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1–21 of the ’749 patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 27
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“arguments that Nishida-US does not disclose the “simultaneously knitting” limitation of the claims of the ’749 patent constitutes “error.” Pet. 86. In our view, whether error or not, there is clear inconsistency on the record before us as to assessment of Nishida’s and Nishida-US’s teachings pertaining to the pertinent “simultaneously knitting” requirement. In that regard, as discussed above, in accounting for that requirement, the Petition unambiguously relies on disclosure in Nishida specifically stating that “when the strip of material (1) is manufactured, the patterns (2) of the uppers are produced, at the same time as the strip of material.” Pet. 25 (citing Ex. 1005, Abstract (emphasis added by Petitioner)). At the very least, there is a reasonable case to be made that such disclosure conveys that the material (1) and the patterns (2) are created simultaneously. The record is devoid of any indication that the Examiner considered or apprehended the extent of that disclosure.15 “[M]isapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims,” as seemingly occurred here, does not lend itself to a conclusion that the exercise of discretion to deny institution is appropriate. See Advanced Bionics, IPR2019-01469, Paper 6 at 8–9 n.9.” slip op. at 23
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“account for limitation 1[a], on this record, is difficult to follow. Nishida makes clear that its shoe making method involves production of material web 1 by knitting and which is “provided with a single or a plurality of unwound web part(s) 2.” Ex. 1005, 5. Nishida’s disclosure also, at this time, appears unequivocal in describing that “patterns (2)” and web material 1 (or “strip of material (1)”) are manufactured or produced “at the same time.” Id. at code (57) (Abstract). Nishida also unambiguously describes its material web 1 as including “surface areas 1.1.” Id. at 7. As is evident from, for instance, Nishida’s Figure 2, surface areas 1.1 surround unwound web parts (or patterns) 2.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“2. Proposed Ground of Obviousness Based on Nishida (Grounds 2 and 6) Petitioner contends that claims 9, 10, 19, and 20 would have been obvious to a person of ordinary skill in the art based on Nishida’s teachings taken with the general knowledge of a skilled artisan. Pet. 50–54. Petitioner supports its contention with citation to Dr. Brookstein’s testimony (Ex. 1003) as well as various record exhibits (e.g., Exs. 109, 1010, 1012, 1023). Id. Patent Owner does not challenge Petitioner recourse to a person of ordinary skill in the art’s general knowledge in accounting for claims 9, 10, 19, and 20. Rather, Patent Owner simply contends that the arguments it advanced in connection with Ground 1 also applies to Ground 2. As discussed above, at this time, we do not agree with Patent Owner’s arguments. Petitioner also contends that claims 11 and 21 would have been unpatentable over Nishida and Zuckerman (Ground 6). Pet. 81–84. Patent Owner also contends that the arguments it advances in conjunction with Ground 1 apply to Ground 6. Prelim. Resp. 37. We do not find those arguments availing. On the record before us, we determine that Petitioner has shown a reasonable likelihood of success in its patentability challenge to claims 9, 10, 19, and 20 based on Nishida (ground 2), and its challenge to claims 11 and 21 based on Nishida and Zuckerman (ground 6).” slip op. at 19
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,266,749 - Next Step Group, Inc. v. Deckers Outdoor CorporationInstitution deniedPTAB · Aug 6, 2024 · IPR2024-00525 · APJ Kimberly Mcgraw · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving the challenged design claim unpatentable on any of its ten asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority under 35 U.S.C. § 314, which provides that inter partes review may not be instituted unless the information presented in the Petition shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). After considering the Parties’ papers and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to the one claim challenged in the Petition. Thus, we do not institute an inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“December 15, 2015”). The date that a product was listed as first available on a website, however, is not sufficient evidence that the content of the listing, including the photographs depicted therein, were published at that time. See Ex parte Basulto, Appeal 2020-00129, 2021 WL 1264902, at *2 (PTAB Apr. 2, 2021) (stating “the date [a] product was listed on Amazon.com is not compelling evidence that the content of [the] listing itself as shown in the document, and the photographs relied on within it were published at that time”). Selling products online is dynamic. Id. Product listings may be updated and photographs of the products may change. Id. While a statement on a commercial website as to when a product was “first available” might constitute evidence as to when the product was first offered for sale, such a statement is not sufficient evidence that the listing itself, or any photograph depicted therein, has not changed over time. See Ex parte Zhang, Appeal 2021-000087, 2021 WL 633718 at *3 (PTAB Feb. 16, 2021) (stating “while the [webpage] date indicates that the product information was last updated on [date], there is no additional evidence to corroborate that the picture was publicly accessible on that date”). We have also reviewed the customer reviews that Petitioner asserts show “the listing were [sic] public, printed publications.” Reply 17 (citing Ex. 1009, 6; Ex. 1015 ¶ 17–18. None of the reviews dated prior to the critical date of November 8, 2019, however, contain any images of the UGG Neumel Boot. See Ex. 1009, 6). Thus, Petitioner does not provide sufficient evidence that any of the images on pages 1–9 of Exhibit 1009 were available on the website prior to the critical date.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Here, the pull-tab does serve a useful purpose as it can be used to pull the footwear onto the foot. Based on the evidence presented, however, we disagree with Petitioner that the pull tab is primarily functional and should be removed entirely from the construction of the claimed design. Petitioner presents a number of arguments to support its position that the pull tab is functional, not ornamental. Petitioner asserts that the pull tab is “obviously not ornamentation but instead is a functional element that is used to pull the footwear on to the foot, an important function and part of the Patent Owner’s marketing message.” Pet. 18–19 (citing Ex. 1011 ¶¶ 64–67; possible, the type of pull tab shown in the ’161 patent “is the kind that is generally used in shorter shaft, lower ankle height footwear to make it easier to pull up and put the boot on the foot.” Pet. 19 (citing Ex. 1009, the UGG Neumel Boot). Petitioner further asserts that the pull tab is “securely attached for actual use, countering that it is ornamental” and that “[a]ny other pull tab (e.g., not at the top of the footwear as in the UGG Neumel Boot) would not be as efficient and hence not an acceptable alternative.” Id. (citing Ex. 1011 ¶¶ 64–67; Ex. 1013, 25–27). We are not persuaded by these arguments. The “marketing material” relied on by Petition, as discussed by Mr. Holden, merely states that Ultra Mini Ugg Boots “have a slightly lower ankle to make it easier for you to slip on,” that the UGG boots are “fantastic” for those who “may struggle with pulling on other styles,” and the boots “are fantastic for those who may struggle with pulling on other styles and are looking for more comfort and durability.” See Ex. 1011 ¶ 66 (citing Ex. 1003). None of the marketing material cited by Petitioner even mentions a pull tab. Nor does the present record support Petitioner’s contentions that,” slip op. at 27
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner’s arguments are not persuasive. First, the images of the Emu Stinger Micro Boot that Petitioner relies upon are from pages 1–6 of Exhibit 1002, which as noted above, Petitioner has not sufficiently shown to constitute a printed publication prior art. Thus, Petitioner’s arguments are based on images in a reference that does not qualify as prior art to the claimed design. The images found on pages 8 and 9 of Exhibit 1002 are not the same images as those relied upon in the Petition. Compare Ex. 1002, 8– 9, with Pet. 35–36. Thus, for at least this reason, Petitioner fails to demonstrate a reasonable likelihood that it would prevail in showing the ’161 patent is anticipated by the Emu Stinger Boot. Second, even if we were to consider any of these images of the Emu Stinger Micro Boot depicted in Exhibit 1002, Petitioner’s arguments are not persuasive because the arguments fail to adequately address differences between the claimed design and the prior art as viewed by an ordinary observer. See Door-Master Corp., 256 F.3d at 1313 (stating for anticipation to be found, the claimed design and the prior art design must be substantially the same). For example, the Figures of the ’161 patent depict (1) a stitch pattern design that includes a wavy line on the back heel of the boot (see Figs. 1–3, 5), (2) a pull tab that extends over the top part of the back of the boot and opening for insertion of the foot that appears to constitute more than 50% of the length of the boot (Figs. 2, 3, 6), and (4) a backward sloping top line. Petitioner does not address the differences between (1) the stitch pattern (2) the pull tab, or (3) the size of the opening for the foot at all in its anticipation argument. See Pet. 35–38.” slip op. at 37
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Graham - PTAB · Jul 22, 2024 · IPR2024-00425 · APJ Bach V Hoang · IPR · Institution
The Board instituted IPR on claims 1–3, 5, 9, and 10 on all asserted grounds after finding a reasonable likelihood that at least one claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response, and informed by the pre-institution record, shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we institute an inter partes review of all challenged claims on all grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In evaluating arguments under Section 325(d), we use a two-part framework, determining, first, “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If either condition of the first part of the framework is satisfied, we then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id. Petitioner’s challenge over the combination of Beck, Heller, and Lovejoy counsels us not to discretionarily deny institution. Patent Owner does not dispute that Beck and Heller were not before the Office. See Prelim. Resp. 42–43; Prelim. Sur-reply 3. Although Patent Owner characterizes that as “irrelevant” (Prelim. Sur-reply 3), Petitioner asserts it relies on Beck to teach the limitation leading to allowance (Prelim. Reply 3). In fact, the Petition largely relies on Beck, or the combination of Beck and Heller, in its obviousness challenge and only relies on Lovejoy for a sliver of 11 Chapter 31 (35 U.S.C. §§ 311–319) relates to inter partes review. first part of Advanced Bionics is not satisfied and do not exercise our discretion to deny institution for this reason. Even if we were to reach the second part of Advanced Bionics, we agree with Petitioner the Office erred in a manner material to the patentability of challenged claims by not applying the combination of Beck, Heller, and Lovejoy during prosecution, as evidenced by Petitioner’s reliance on that combination in its unpatentability challenges. Prelim. Reply 3; see Pet. 69–70. Petitioner specifically points out the Office erred by overlooking Beck’s “disclosure of the limitation that allegedly was missing from the prior art and led to allowance,” i.e., “wherein the remote server authenticates said unique sensor ID . . . and communicates to said wireless device . . . software related to the unique sensor ID.” Prelim. Reply 3. Patent Owner, at most, suggests Petitioner fails to demonstrate the Office erred in a manner material to the patentability of challenged claims because Petitioner’s combination does not show unpatentability. See Prelim. Resp. 43. However, as detailed in our analysis above, Petitioner adequately shows that the claims would have been obvious over the combination of Beck, Heller, and Lovejoy. Accordingly, we do not exercise our discretion to deny institution under § 325(d) over Petitioner’s challenge based on Beck, Heller, and Lovejoy. We need not address whether Patent Owner’s argument that Petitioner’s challenge based on Bandy warrants discretionary denial. Prelim. Resp. 40–42.” slip op. at 43
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“On this record, we determine the plain language and structure of the limitation does not support a construction requiring authentication using both the unique sensor ID and the unique wireless ID, as asserted by Patent Owner. The claim recites “the remote server authenticates said unique sensor ID associated with said unique wireless device ID,” but Patent Owner’s construction appears to read out the phrase “associated with” and adds an unrecited requirement to the claim such that the remote server authenticates said unique sensor ID and said unique wireless device ID. Ex. 1001, 19:51–52 (emphasis added). The language and structure of the limitation reads that the unique wireless ID is “associated with” the unique sensor ID. As such, the last portion of the limitation reciting “associated with said unique wireless device ID” serves to further describe the unique sensor ID, specifically, that the unique sensor ID is associated with the unique wireless device ID. 8 In Petitioner’s Reply and Patent Owner’s Sur-reply, the parties dispute the construction of this phrase. See Prelim. Reply 2; Prelim. Sur-reply 1–3. Those arguments go beyond the scope of the briefing we authorized on discretionary denial and inventorship (see Ex. 3001), so we do not consider them here. using both the unique sensor ID and a unique wireless device ID. The Specification does not use, let alone define, the terms “server” or “authentication.” See generally Ex. 1001. To the extent the Specification provides examples of access to a remote computer, those examples describe access on the basis of a sensor ID—but not a wireless device ID. In one example, a wireless device obtains software for a RFID sensor tag from “a centralized database for RFID tags or a diagnostics database that is accessed only by paying an access fee. Subsequently, the ID of the RFID sensor is matched to a given class of sensor (e.g. a glucose sensor) and the software and/or instructions for the analyses are downloaded” to the wireless device. Ex. 1001, 18:16–23 (emphasis added). Another example similarly provides access solely on the basis of a sensor ID: “a patient can . . . upload into the cell phone the necessary information to conduct any given test by matching the ID of the RFID sensor with given software and data tables stored remotely on computer 400.” Id. at 16:50–56 (emphasis added). Accordingly, for institution purposes, we construe “wherein the remote server authenticates said unique sensor ID associated with said unique wireless device ID” such that the remote server’s authentication requires use of a unique sensor ID; but the remote server’s authentication does not require use of the unique wireless device ID.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed petitioner construction§112(f) appliesDecided for petitioner
“On this record, we agree with Petitioner that the identified limitations—which each recite a “means” or “means for” performing a particular function—are means-plus-function limitations that should be interpreted under pre-AIA 35 U.S.C. § 112 ¶ 6. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) (holding that “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies”). We are also preliminarily persuaded that Petitioner correctly identifies the recited functions and corresponding structure for these limitations. See Pet. 11–15 (citing Ex. 1001, 2:20–21, 2:24–28, 3:33–36, 17:18–30); see Pet. 13–15 (citing Ex. 1009, 9:4–6, 9:19–20, 9:57–65, 10:10–11) (explaining that Lovejoy is incorporated by reference into the ’307 Patent). For purposes of this Decision, we apply the constructions identified by Petitioner. These are shown in the table below:” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 7,969,307 - Alivecor, Inc. v. Apple Inc.Rehearing deniedPTAB · Jul 18, 2024 · IPR2024-00095 · APJ Hyun J Jung · IPR · Rehearing
The Board denied AliveCor’s rehearing request, finding no abuse of discretion in denying institution because the Petterson–Nakada combinations did not teach or suggest the claimed replacement of one user interface with another.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on institution, the Board reviews the 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 law, if substantial evidence does not support a factual finding, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000); see also Reh’g Req. 8 (citing 37 C.F.R. § 42.71(c)). Also, 37 C.F.R. § 42.71(d) sets forth, in relevant part that: rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must 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.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Our determinations regarding Nakada did not support Petitioner’s argument that Nakada’s “system is returned to the beginning state of the routine, which in the case of Petterson would be FIG. 2B.” Pet. 71; Dec. 39–40. We also stated that “the proposed combination does not address adequately Nakada’s description of powering down its display.” Id. at 40 (citing Pet. 48–50; Prelim. Resp. 25–26; Ex. 1011, Fig. 4). We, thus, determined Petitioner failed to show sufficiently that either Petterson or Nakada teaches or suggests “replacing display of the second user interface with the first user interface.” Dec. 38–41 (citing Pet. 48–50, 68–69, 70–71; Ex. 1003 ¶¶ 379, 382; Ex. 1011, Fig. 4). The “totality of the combination” lacked replacing a user interface with any other user interface. Dec. 40–41 (determining “the asserted references neither individually nor combined as proposed would have, ‘in response to detecting that the first criteria are no longer met for a second period of time that is longer than the first period of time, replac[ed] display of the second user interface with the first user interface’”); Reh’g Req. 8 (arguing “the Board overlooked the totality of the combination and Petitioner’s arguments and supporting evidence regarding the modification of Petterson that would have been obvious . . . in view of Nakada”).” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“After considering the arguments and cited evidence of the Petition, we determined that Petitioner did not show a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’533 patent. Paper 7 (“Decision” or “Dec.”). Petitioner subsequently filed a Request for Rehearing. Paper 8 (“Reh’g Req.”). For the reasons stated below, Petitioner has not shown that we abused our discretion in denying the Petition, and thus, Petitioner’s Request for Rehearing is denied.” slip op. at 2
§ 103 obviousnessPatents in suitUS 10,568,533 - Lululemon Athletica Canada Inc. / Lululemon USA Inc. v. Nike, Inc.All claims unpatentablePTAB · Jul 8, 2024 · IPR2023-00438 · APJ Josiah C Cocks · IPR · Final written decision
Claims 1–5, 7, 9, 12–14, and 17–19 are unpatentable: Amano anticipates claims 1, 5, 7, 12, and 17, and Amano with Gorman or Flach renders the remaining claims obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A Person of Ordinary Skill in the Art (“POSITA”) for the technology of the ’413 patent would have had (1) a bachelor’s degree in engineering, computer science, industrial design, biomechanics, or a related field, and (2) at least two years of experience researching, developing, designing, and/or testing fitness or physiological sensors, wearable devices, physiological or biomechanical devices, remotely-controlled systems or interfaces, network-based applications and/or equipment, or the equivalent experience or education.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Sur-reply 4–5; Ex. 1017, 73:13–22; Ex. 2013, 23:10–24:25,17 36:19–37:7. It, therefore, seems unnecessary in our view to contemplate claim constructions that substitute “takes into account” or “is adaptive to” for the actual claim language of “based on.” It is apparent from the record that has developed during trial that a core matter for resolution is whether an exertion level that is “based on” a level of a user’s physical fitness includes, at least in some fashion, a user’s physical characteristics or attributes as a part of assessing or understanding a level of a user’s physical fitness. From a general standpoint, it stands to reason that many of a person’s physical attributes, in at least some respect, do indeed provide for assessing the level of that person’s physical fitness. To be sure, we agree with Patent Owner that certain individual attributes, such as any of sex, age, height, weight, and stride length, taken alone cannot necessarily be “equated” with a user’s level of physical fitness or constitute such a level. See, e.g., PO Sur-reply 3 (quoting Ex. 2012, 148:5-149:16). But, the record reasonably suggests that such attributes when considered in conjunction with one another can provide meaningful guidance or basis for assessing the level of a user’s physical fitness. For instance, Petitioner contends that “weight and height as expressed through BMI can estimate body composition” which is a “component of physical fitness.” Pet. Reply 2. Petitioner’s declarant, Dr. Lynch, testifies that body” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“those here including stride length and body weight, may be factored in as a part of an assessment of a person’s level of physical fitness. Although any one particular physical characteristic of a person may not be indicative of the person’s physical fitness, Amano provides that the interrelationship of at least a person’s stride length, initial pitch, and weight are associated with one another so as to establish that particular person’s exercise intensity. Amano also recognizes that there is a relationship between a person’s exercise intensity and heartbeat rate. See, e.g., Ex. 1005, Fig. 4, 4:6–7 (FIG. 4 is a diagram showing the relationship between exercise intensity and heartbeat rate.”). Patent Owner agrees that heart rate may factor into determining a person’s level of physical fitness. See, e.g., PO Sur-reply 4 (“The specification explains that ‘heart rate’ and ‘breathing’ can be used to determine a user’s physical fitness.”). Amano’s teachings in employing a person’s particular physical characteristics, e.g., stride length and body weight, alongside a person’s pitch, i.e., steps per minute, in the process of determining exercise intensity, which is related to heartbeat rate, in our view, reasonably form a basis for assessment of a level of a person’s physical fitness. See, e.g., Ex. 1002, 12:15–20.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“teach what Petitioner contends they teach. Rather, the core dispute that emerges between the parties is whether those teachings that are applied to wireless devices would also be applicable to wired devices. At the outset, we note that neither the Specification nor the claims of the ’413 patent provides restriction as to any type of communication approach, i.e., wireless or wired communication, or that there is some type of fundamental distinction between those communication approaches that precludes combining aspects of one with the other. Indeed, as Petitioner notes, the ’413 patent recognizes that wireless interfaces are “alternative[s]” for wired interfaces. Pet. Reply 22 (citing Ex. 1001, 5:27–32). And, Petitioner points out that the relevant dependent claims are not limited to wireless communication. Id. Patent Owner’s assertion that wired communication versus wireless communication imposes some type of insurmountable obstacle to one of ordinary skill in the art in combining the teachings of the references is not adequately, if at all, tethered to the record at hand. Indeed, Amano, itself, presents iterations of its device that employ both wired technology (see, e.g., Ex. 1002, Figs. 5, 16, 30, 40) and also wireless technology (see, e.g., id. at Fig. 44). Patent Owner argues that implementing aspects of Gorman and Flach’s wireless devices onto Amano’s wired device “would have required complete redesigns and new components.” PO Resp. 42 (citing Ex. 2008 ¶¶77–78, 81–82) Given the recognition in the art, such as Amano, that a workout device may include either wired or wireless components, it is difficult to reach the conclusion that “complete redesign” would be necessary. Nevertheless, that there may be some design considerations, or even challenges, that a skilled artisan may face in combining those two types of communication technology, does not end the obviousness inquiry. The parties agree that a person of ordinary skill in the art has significant engineering and design experience in connection with wearable workout devices. See Pet. 18, PO Resp. 16. Neither Patent Owner nor Dr. Bergeron adequately explains why any design challenges in combining aspects a wired workout device with a wireless workout device would have been beyond the skill or ordinarily skilled artisan, so as to preclude a determination of obviousness. See KSR, 550 U.S. at 417 (“if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).” slip op. at 44
Patent outcomesUS 8,620,413 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,620,413 - Lululemon Athletica Canada Inc. / Lululemon USA Inc. v. Nike, Inc.All claims unpatentablePTAB · Jun 26, 2024 · IPR2023-00424 · APJ Josiah C Cocks · IPR · Final written decision
Claims 1–10 and 12–19 are unpatentable: claims 1–8, 10, 12–17, and 19 as anticipated or obvious over Acres, and claims 9 and 18 as obvious over Acres and Pyles.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner indicates that “[f]or purposes of this Response, Nike applies lululemon’s proposed level of skill in the art.” PO Resp. 14. For purposes of this Decision, we adopt Petitioner’s proposal of the level of ordinary skill in the art as reasonable and consistent with the prior 9 Person of ordinary skill in the art. art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Considering the discussion above, we conclude that the meaning of “data” previously offered by Patent Owner as “factual information, from 10 [JUDGE]: Counsel, let me borrow my colleague’s question. Maybe I’m belaboring this, but in your view, information that is sensed or collected or factual information that is sensed or collected, that’s effectively the same thing; and this case does not distinguish between factual information in that context and just information? [COUNSEL FOR PATENT OWER]: Yes. That’s correct, Your Honor. which decisions and subsequent actions can be made” finds support in the record, and also is in accord with the meaning of “data” as “information” that is offered by Petitioner (see, e.g., Pet. Reply 2).11 Accordingly, we adopt the meaning of “data” that Patent Owner offered in its Preliminary Response as “factual information, from which decisions and subsequent actions can be made.” See Prelim Resp. 18. In doing so, we reiterate and restate our view from the Institution Decision that the record does not lend itself to a conclusion that such a meaning of “data” is so restrictive as to convey that any instructions, commands, or signals are “entirely devoid of content recognized as ‘factual information’ so as to be beyond the contours of what a skilled artisan would regard as ‘data.’” See Inst. Dec. 9.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Thus, Acres discloses that, based upon an exerciser’s heart rate, Bug 601 operates to send or transmit commands to treadmill 150 to control operational parameters of the treadmill, such as its speed and incline. Petitioner contends that “Acres’s Bug and its associated sensors are together a sensor device.” See, e.g., Pet. 9–10. Patent Owner does not dispute that contention. Patent Owner’s dispute arises from its position that Acres’s transmitted commands do not amount to the claimed “first set of data.” See PO Resp. 21–25; PO Sur-reply 10–14. That dispute is premised on Patent Owner’s proposed claim construction, which requires that the claimed “data” be only information that is sensed or collected in some other specific way by a sensor. As discussed above in our Claim Construction section (§ II.C.1), however, we do not agree that the record substantiates such a narrow meaning for the term “data.” It is difficult to conclude that a command that is generated based on a user’s heart rate that operates to control the functionality of a piece of workout equipment is not readily viewed as “factual information, from which decisions or subsequent actions can be made,” which, as discussed above, is a meaning of “data” that reasonably emerges to one of ordinary skill in the art based on record evidence.12 In its Sur-reply, Patent Owner also briefly states that Acres does not show that “decisions or subsequent actions can be made” from “data.” PO Sur-reply 12–13. It is apparent, however, that Patent Owner does not dispute that decisions or subsequent actions may be made based on the commands transmitted from Acres’s Bug. Id. at 13 (“lululemon has only established that Acres teaches that decisions or subsequent actions are made based on commands transmitted from the Bug.”). Indeed, no dispute is credible because, as noted above, Acres clearly describes the commands the Bug sends operate to control operation of workout equipment, such as increasing its speed. See Ex. 1002 ¶ 89. Rather, Patent Owner simply parallels its prior arguments that a deficiency arises because, in Patent 12 We again note that “factual information, from which decisions or subsequent actions can be made” was the meaning of “data” advocated by Patent Owner as a part of its Preliminary Response. See Prelim. Resp. 18. Owner’s view, the commands do not encompass “data.” As discussed above, we do not agree with that contention. Patent Owner does not contend that any other feature of independent” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“agree with Patent Owner (see, e.g., PO Resp. 27–28; PO Sur-reply 14–17), but rather agree with Petitioner (see, e.g., Pet. 29–31; Pet. Reply 19–21). The record does not demonstrate that there is some type of fundamental dichotomy between local data storage of activity at a piece of workout equipment and remote, central data storage of such activity that prohibits or precludes combining teachings directed to each approach. Rather, the record readily conveys that each type of data storage approach was recognized as known and viable. Even if there may have been some disadvantages with one or both approaches, the obviousness inquiry does not somehow mandate that a combination of teachings must result in something that is free of imperfection. As suggested by Petitioner, a skilled artisan readily would have recognized some benefits accrue to the local data storage approach advocated by Pyles. Even if there may have been some disadvantages to that approach, that does not nullify appreciation of the benefits that may offset such disadvantages. See, e.g., Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“[t]he fact that the motivating benefit comes at the expense of another benefit . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another”). Indeed, as argued by Petitioner, and as attested to by Dr. Houh, the record reasonably establishes that a skilled artisan would have evaluated potential benefits and detriments as part of various data storage approaches in the area of workout equipment in assessing obviousness. See, e.g., Pet. 29–31; Pet. Reply 19–21; Ex. 1005 ¶¶ 68–73; Ex. 1015 ¶ 31. The obviousness inquiry demands as much. Patent Owner’s declarant, Dr. McLean, postulates, without record citation, that some detriments may possibly arise in implementing data storage at an exercise machine, as in Pyles, in lieu of central site storage as in Acres. See, e.g., Ex. 2004 ¶¶ 64–68. Yet, even if such less-than-desirable characteristics may result, neither Dr. McLean nor Patent Owner offers any cogent explanation as to why recognition of those characteristics undermines a determination of obviousness. In particular, Dr. McLean does not dispute that local storage would have the benefits discussed by Dr. Houh (a simplified, less expensive structure with a reduced number of components, which do not need to be connected to the internet), albeit along with the disadvantages discussed by Dr. McLean. Indeed, Dr. McLean and Patent Owner do not explain why a skilled artisan would not reasonably have evaluated any detriments alongside the potential benefits as a part of the obviousness inquiry. The test for obviousness is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). That test does not objectively fail if a skilled artisan would have recognized some disadvantages in combining the prior art teachings. See, e.g., Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.”).” slip op. at 33
Patent outcomesUS 10,923,225 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,923,225
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.