• Alivecor, Inc. v. Apple Inc.Some claims unpatentable
  PTAB · Dec 23, 2024 · IPR2023-00950 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–14 were not shown unpatentable; claims 15–22 were shown unpatentable over Markel. The revised contingent motion to amend was dismissed as moot.

  RulingsFinal written decision

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

    “In carefully and faithfully wrangling the parties’ views and explanation as to the meaning of limitation [1.c.iii], we conclude that Petitioner’s “correct interpretation” of that limitation is that a first pad is recognized as a distinct structure or component from a first portion of an enclosure, and that the pad is positioned underneath that first portion in a manner such that the pad is concealed from a user. We adopt that interpretation. We determine that it is unnecessary to discuss an express construction for any other term to resolve this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. 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., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in both education and proposed work experience. Patent Owner’s proposed work experience is somewhat vague and potentially outside the scope of the claimed invention. For example, the requirement that the person of ordinary skill in the art have experience with the “capture and processing of data or information, including but not limited to physiological information,” would seemingly encompass data processing areas that do not relate to the scope of the claimed invention. We adopt Petitioner’s level of the level of ordinary skill in art because it is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). Nevertheless, our analysis and the end result are the same under either proposed definition.” slip op. at 13

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Patent Owner makes a more persuasive case as to what a person of ordinary skill in the art reasonably would have understood from Markel’s disclosure. In particular, we agree with Patent Owner that the record before us readily conveys that a skilled artisan would have followed Markel’s practice of forming or molding electrodes from conductive plastic rather than locating a separate electrode component underneath a conductive plaster layer. See, e.g., PO Resp. 30–31 (“[a] POSITA would find nothing in cited portions of Markel to inform or encourage placement of an electrode underneath an exterior layer.”). Indeed, as Patent Owner articulates, Petitioner “fails to provide any reasoning as to why a POSITA would have found Markel’s method of concealment to be deficient, or why a POSITA would have been motivated in light of Markel’s manner of concealment to nevertheless place an electrode underneath the exterior portion of the device.” Id. To that end, we credit Dr. Kenny’s supporting testimony as consistent with Markel’s express teachings. See, e.g., Ex. 2001 ¶¶ 77–83; Ex. 2004 ¶¶ 81–88. We credit that testimony over the countervailing testimony of Petitioner’s declarant, Dr. Berger (see, e.g., Ex. 1003 ¶¶ 122, 135–139), as we agree with Patent Owner that Dr. Berger’s testimony “is not supported by Markel’s actual disclosures.” PO Resp. 31.” slip op. at 33

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable

    “Petitioner does not appear to disagree that Markel, itself, does not convey that an electrode, or any structure identifiable as a “pad,” is positioned underneath any surface of any enclosure. Rather, Petitioner’s theory of unpatentability is premised on modification of Markel to so position such a pad. Although seemingly acknowledging that Markel contemplates a concealment technique involving molding an electrode into an exterior surface, Petitioner extrapolates from that disclosure that a skilled artisan would be motivated to try an alternative means of concealing an electrode pad by placing the pad underneath an outer layer or portion, i.e., “audio output portion 610.” See Pet. 20 (citing Ex. 1003 ¶ 135). Neither Petitioner, nor Dr. Kenny, however, meaningfully explains why a skilled artisan would have deviated from Markel’s express teachings of concealing an electrode via molding techniques to then arrive at an entirely different concealment approach of placing an electrode pad underneath the audio output portion. Petitioner’s modification proposal in that regard appears borne of hindsight bias based on the disclosure of the ’257 patent rather than any dutiful consideration of what Markel’s actual teachings would have conveyed to a skilled artisan. See Ex. 2004 ¶ 84 (Dr. Kenny explaining why Petitioner’s proposed modification to Markel to hide the electrode underneath a plastic conductive layer was based on improper hindsight). Such hindsight bias is impermissible. See, e.g., Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”). Patent Owner makes a more persuasive case as to what a person of ordinary skill in the art reasonably would have understood from Markel’s disclosure. In particular, we agree with Patent Owner that the record before us readily conveys that a skilled artisan would have followed Markel’s practice of forming or molding electrodes from conductive plastic rather than locating a separate electrode component underneath a conductive plaster layer. See, e.g., PO Resp. 30–31 (“[a] POSITA would find nothing in cited portions of Markel to inform or encourage placement of an electrode underneath an exterior layer.”). Indeed, as Patent Owner articulates, Petitioner “fails to provide any reasoning as to why a POSITA would have found Markel’s method of concealment to be deficient, or why a POSITA would have been motivated in light of Markel’s manner of concealment to nevertheless place an electrode underneath the exterior portion of the device.” Id. To that end, we credit Dr. Kenny’s supporting testimony as consistent with Markel’s express teachings. See, e.g., Ex. 2001 ¶¶ 77–83; Ex. 2004 ¶¶ 81–88. We credit that testimony over the countervailing testimony of Petitioner’s declarant, Dr. Berger (see, e.g., Ex. 1003 ¶¶ 122, 135–139), as we agree with Patent Owner that Dr. Berger’s testimony “is not supported by Markel’s actual disclosures.” PO Resp. 31.” slip op. at 32

  Patent outcomesUS 10,076,257 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,076,257
• Masimo Corporation v. Apple Inc.Some claims unpatentable
  PTAB · Sep 23, 2024 · IPR2023-00634 · APJ Ken B Barrett · IPR · Final written decision

  Claims 1–5, 9, 10, 14, 15, and 17–20 are unpatentable as obvious; claims 6–8, 11–13, and 16 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We discern no material difference between the parties’ definitions. Cf. PO Resp. 16 (Patent Owner stating that “[t]he analysis presented [in the Response] remains unchanged even if [Petitioner’s proposed] skill level is applied.”). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 11

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

    “We find Patent Owner’s position to be persuasive. Not only are the cover and biosensor module recited separately in the list of components of the device of claim 9, we also agree that the “disposed over” claim language establishes the configuration of two separate components relative to each other. Additionally, the claim language that requires the cover to be “configured to pass optical signals to and from the biosensor module” supports an interpretation where the cover is separate from the biosensor module, otherwise it seemingly would be passing signals to and from itself. The understanding that the cover is separate from the biosensor module in claim 9 is consistent with the Specification’s description of an embodiment that tracks the language of claim 9 and speaks of the two elements as separate, individual components, namely the statement that “[a] biosensor module may be disposed within the opening of the housing” and “[a] rear cover may be disposed over the biosensor module.” Ex. 1001, 2:59–62; see also id. at 2:56 (the same paragraph beginning with “Some embodiments . . .”). Petitioner asserts that its proposed construction is consistent with the claim language, arguing that “the word ‘cover’ naturally suggests that its role is to be ‘disposed over,’” and that “[a] cover can be part of a module just as a clear plastic lid can be both disposed over, and part of, a container, allowing a view of its contents.” Pet. Reply 4. We disagree with Petitioner’s analogy. Although a clear lid may be over a jar, it cannot be said to be “disposed over” the container consisting of both the jar and the lid because it then would be disposed over itself.” slip op. at 14

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

    “Patent Owner argues that the proposed combination will result in a configuration “that is contrary to Honda’s teachings and its stated goals and purpose of achieving quick and efficient wireless charging.” PO Resp. 30– 31. Patent Owner’s focus on these properties is misplaced. We agree with Petitioner that characteristics such as charging speed and efficiency are not claimed. See Pet. Reply 1 (“[T]he ’783 patent does not disclose, let alone claim, sizing or other details [Patent Owner] Apple asserts are necessary for successful wireless charging.”); id. at 6 (“[C]harging speed [is] not claimed.”). Rather, the claim drafter utilized broad language to encompass a biosensor device having the capability to wireless charge through a cover— both good configurations and those that Patent Owner argues are inferior. And, even if the proposed combination does not yield a commercially viable product, as Patent Owner implies, the broad claim scope would hinder an innovating competitor’s ability to utilize and test that purported less desirable combination on the way to development of a better device. Patent Owner argues that a person of ordinary skill in the art would not have been motivated to make the proposed combination and would not have had a reasonable expectation of success in making that combination. See, e.g., PO Resp. 31. These arguments are not persuasive at least because Patent Owner’s motivation requirement and implied definition of success are not sufficiently tied to the claimed invention. See, e.g., Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th 1368, 1375 (Fed. Cir. 2023) (“Reasonable expectation of success refers to the likelihood of success in combining references to meet the limitations of the claimed invention.”). Patent Owner would require a successful outcome to be “quick and efficient wireless charging.” See PO Resp. 31. In making these arguments, Patent Owner is improperly superimposing the purported goals and purpose of Honda, the secondary reference, onto the ordinary artisan. See, e.g., id. at 37–41. However, the intended purpose of a prior art reference does not control the obviousness inquiry. Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021). Our reviewing court recently explained: The [motivation-to-combine] inquiry is not whether a relevant artisan would combine a first reference’s feature with a second reference’s feature to meet requirements of the first reference that are not requirements of the claims at issue. A contrary view would run counter to established principles, including that the claim defines the invention whose obviousness is being assessed and that a skilled artisan may be motivated to combine particular features of different references, e.g., to secure some benefits at the expense of others, even when bodily incorporation would be impossible or inadvisable. Axonics, Inc. v. Medtronic, Inc., 73 F.4th 950, 957 (Fed. Cir. 2023). Petitioner’s combination yields the benefit of the addition of wireless charging capability to a biosensor device. A person of ordinary skill in the art would find that benefit to be a motivating reason to make the combination. See, e.g., Ex. 1003 ¶ 121 (Dr. Duckworth’s motivation opinion based, in part, on “Kotanagi’s own statement that its rechargeable battery can be recharged ‘in a contactless state.’”); id. ¶ 127 (Dr. Duckworth’s describing a motivating factor in Honda’s explanation “that this [charging] station passes wireless power to the wireless charging receiving coil through a rear cover glass (similar to that of Kotanagi), using the physics of induced currents and magnetic flux.”); see also Ex. 1052, 45:16–46:2 (Dr. Anthony, on cross-examination and after being asked whether wireless charging is an improvement over wired charging for a consumer watch, responding that “in some instances it could be, and in others it may not be.”). And, as to a reasonable expectation of success, Patent Owner admits that “Petitioner has presented a device configuration in which a wireless charging coil could be provided in Kotanagi’s through hole 22.” PO Resp. 56; see also id. at 3 (Patent Owner arguing that “the size of coil that could be provided in this allegedly available space would be small and would significantly limit the amount of wireless power signal transmission,” but not arguing that even Patent Owner’s purported size-limited configuration would be inoperative); see, e.g., Ex. 1003 ¶¶ 130–133 (Dr. Duckworth credibly testifying that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of Kotanagi and Honda).” slip op. at 31

  Patent outcomesUS 10,627,783 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,627,783
• Draftkings Inc., A Delaware Corporation v. AG 18, LLCSome claims unpatentable
  PTAB · Mar 12, 2024 · IPR2022-01446 · APJ George R Hoskins · IPR · Final written decision

  Claims 1–17 and 19–30 are unpatentable based on the listed anticipation and obviousness grounds; claim 18 was not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner

    “Module Terms each recite a “module” that is configured to perform or to oversee certain recited functionality, without reciting sufficient structure for performing that functionality. See Pet. 32. Further, as in Williamson, the word “module” in the context of the ’205 patent claims and specification is a “nonce” word, used “in a manner that is tantamount to using the word ‘means.’” Williamson, 792 F.3d at 1350–51. We therefore agree with Petitioner’s position that the rebuttable presumption against application of § 112 ¶ 6 is overcome in this case, because the Module Terms are not understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. See Williamson, 792 F.2d at 1349 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”). Patent Owner’s and Dr. Lane’s apparent disagreement with this conclusion in the context of the ’205 patent is unaccompanied by any argument seeking to establish that the Module Terms might be understood to recite a sufficiently definite meaning as the name for structure. See PO Resp. 6; Ex. 2005 ¶ 28.” slip op. at 55

  • ExcludeMotion to exclude, deniedDenied

    “Petitioner filed a Motion to Exclude Evidence proffered by Patent Owner (Paper 31). Patent Owner filed an Opposition (Paper 32), and Petitioner filed a Reply (Paper 33). We deny Petitioner’s Motion to Exclude Evidence, for reasons provided below.” slip op. at 2

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

    “k) Conclusion Regarding Claim 12 Thus, based on the record presented, we conclude Petitioner has” slip op. at 32

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “Petitioner relies on Bryson as disclosing the subject matter recited in claim 1, except for limitations 1[g] and 1[h], in substantially similar fashion as discussed above in Ground One in relation to other claims. See Pet. 68–73. Patent Owner’s sole opposition in this regard is whether Bryson discloses the betting range limitation 1[j]. See PO Resp. 49–53 (Patent Owner’s opposition to Ground Four as to claim 1). We conclude a preponderance of the evidence establishes Bryson supports Petitioner’s unopposed contentions in this regard, for the reasons set forth in the Petition which we adopt as our own in this Decision. We accordingly find Bryson discloses the preamble 1[pre] and limitations 1[a]–1[f], 1[i], and 1[k]–1[m].” slip op. at 74

  Patent outcomesUS 9,978,205 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,978,205
• Draftkings Inc. v. AG 18, LLCSome claims unpatentable
  PTAB · Mar 12, 2024 · IPR2022-01448 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 1–10 and 12–29 are unpatentable over the asserted anticipation and obviousness grounds; claim 11 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art In determining the level of skill in the art, we consider the type of” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther

    “C. Claim Construction In an inter partes review, we construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Accordingly, our claim construction standard is the same as that of a district court. See id. Under the standard applied by district courts, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).” slip op. at 11

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner

    “generally takes issue with whether Petitioner has sufficiently explained its construction of means-plus-function limitations. See PO Resp. 24–35. Nonetheless, based on the complete record, we find that the Petition “identif[ies] the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function” of this means-plus-function limitation in claim 26. 37 C.F.R. § 42.104(b)(3); see Pet. 22 (citing Ex. 1001, 3:60–66). Moreover, we apply Petitioner’s construction for our prior-art analysis because it is consistent with and supported by the complete record.” slip op. at 38

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

    “9–11, 20 102(e) Bryson 9, 10 11” slip op. at 110

  Patent outcomesUS 10,614,657 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,614,657
• Google LLC v. Nobots LLCSome claims unpatentable
  PTAB · Nov 29, 2023 · IPR2022-00940 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–17 and 20 are unpatentable; claims 18 and 19 were not shown unpatentable, because the asserted grounds failed to establish the required limitations for those claims.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’008 patent “would have had a bachelor’s degree in computer science or a related field with coursework relating to computer science, plus two years’ academic and/or industry experience in computer security. More education could substitute for experience, and vice versa.” Pet. 4 (citing Ex. 1003 ¶¶ 36–40). Patent Owner does not dispute this proposed level of skill. PO Resp. 2. We adopt Petitioner’s proposal as reasonable and consistent with the prior 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

    “In considering Patent Owner’s explanation, and upon further reflection, we agree with Patent Owner’s reading of the pertinent sentence. In that regard, consistent with the remainder of the Specification of the ’008 patent, it follows that the noted sentence does not alter the contours of “acquired” data to also encompass “passive” data where that premise is entirely absent from other portions of the Specification. Rather, as Patent Owner explains, the sentence is consistent with the understanding that it is “active data” that is connected to the word “acquired” and “passive data” that is connected to the word “available.” See, e.g., id. Patent Owner’s explanation alleviates the ambiguity that was postulated in the Institution Decision. We have considered Petitioner’s views to the contrary (see, e.g., Pet. Reply 21–25) but find them unavailing. In particular, Petitioner does not reconcile its position that, although acknowledging that “acquired data” is defined in the ’008 patent, the term “acquiring” is not so defined and should be regarded as an “individual word” whose meaning is somehow entirely unconnected to “acquired.” See, e.g., Pet. Reply 21. We note, as we did in the Institution Decision, that the ’008 patent states that “acquired data” and “its equivalents and verb forms” is “a type of active data.” See Inst. Dec. 30 (citing Ex. 1001, 3:25–32). We are not persuaded by Petitioner’s view (see, identifiable as a verb form of “acquired.” See PO Sur-reply 8. We determine that, in the context of the ’008 patent, it clearly is. Having considered the competing views of Petitioner and Patent Owner, we conclude that Patent Owner’s construction of the term “acquiring interest data” is consistent with, and supported by, the Specification of the ’008 patent. In that regard, we conclude that, as is advanced by Patent Owner, “acquiring interest data” must encompass the retrieval of some active data.” slip op. at 16

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

    “1–3 and 6–17 are found in Willner. Pet. 9–26. During trial, Patent Owner presented no arguments challenging Petitioner’s proposed ground of unpatentability of claims 1–3 and 6–17 based on Willner. During oral argument, upon questioning, counsel for Patent Owner expressed that “We did not present any arguments on Claims 1 to 3, 6 to 17 on Ground 1.” Tr. 30:3–4. We determine that Petitioner, via its Petition, has established adequately where all the features of claims 1–3 and 6–17 are present in Willner. See Pet. 9–26. Given that determination, and in the absence of any argument during trial challenging Petitioner’s ground of unpatentability based on Willner as to those claims, we conclude that Petitioner has shown by a preponderance of the evidence that claims 1–3 and 6–17 are unpatentable under 35 U.S.C. § 102 based on Willner.” slip op. at 19

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

    “Here, we conclude that: (1) the parties’ recognized level of ordinary skill in the art (see Pet. 4; PO Resp. 2); (2) the knowledge of a skilled artisan as set forth by record evidence, including the teachings of Willner and Kitts; and (3) the nature of the problem addressed in both of those references, i.e., click fraud detection, all support a determination that a skilled artisan would have had adequate reasons to combine Willner and Kitts, and would have had a reasonable expectation in doing so. To that end, we find persuasive Petitioner’s arguments in the Petition as to the proposed reasoning to combine Willner and Kitts, and also credit Dr. Lopresti’s supporting testimony. See Pet. 28–29; Ex. 1003 ¶ 118. We are mindful of the contrasting testimony referenced by Patent Owner’s declarant, Dr. Russ. See, e.g., PO Resp. 38 (citing Ex. 2011 ¶¶ 107–110). Dr. Russ testifies that, in his view, there are “practical” and “technical” “considerations” in combining Willner and Kitts that a “POSA would have had to consider in determining whether a reasonable expectation of success exists, none of which are addressed or discussed in the Petition.” See Ex. 2011 ¶¶ 107–110. The example considerations listed by Dr. Russ are reproduced below: 1. How Kitts’ passive data could be collected and stored in conjunction with the mouse vector data already being collected by Willner; 2. How to collectively analyze fundamentally different types of data—Willner’s mouse vector data on one hand, and Kitts’ passive data on the other; 3. How to generate a useful confidence score that is more accurate than the scores already generated by Willner, again taking into consideration that passive data is a fundamentally different type of data than active data; assessment using the complex statistical model of Kitts; and 5. To what extent additional computer hardware would be necessary to enable the combined system to effectively operate and whether such hardware could be reasonably implemented, taking into consideration both cost and feasibility. Ex. 2011 ¶ 108. Those considerations are generally directed to collection and use of” slip op. at 36

  Patent outcomesUS 9,595,008 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,595,008
• C.R. Bard, Inc. v. Medline Industries, Inc.Some claims unpatentable
  PTAB · Nov 23, 2022 · IPR2019-00035 · APJ Mitchell G Weatherly · IPR · Remand

  Claims 1, 2, 6, 8–10, 16, 25–27, 29–37, and 39–44 are unpatentable as obvious; claims 7, 17–19, 28, and 38 were not shown unpatentable.

  RulingsRemand decision

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

    “IPR2019-00208 and this proceeding do not involve an “identical issue” despite Patent Owner relying on essentially the same body of objective evidence of nonobviousness in both proceedings. The challenged claims in this proceeding materially differ from those at issue in IPR2019- 00208. Compare Ex. 1001, 27:47–30:57, with IPR2019-00208, Ex. 1001, 11:47–12:28; see also PO Remand Br. 23. The material differences in the claims, alone, and thus the issues previously decided, precludes a finding of collateral estoppel. Therefore, we conclude that Patent Owner is not collaterally estopped from relying upon its objective evidence of nonobviousness. Rather, we consider and weigh that evidence as it applies to the claims at issue in this proceeding below.” slip op. at 54

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

    “However, we disagree with Patent Owner’s interpretation of limitation 1a as requiring that the compartment for receiving the medical assembly be “distinct” from the first compartment or that the medical assembly be disposed within the “compartment” of limitation 1a. Limitation 1f requires “at least two compartments,” but expressly recites a functional limitation for only “a first compartment” among the “at least two compartments.” Ex. 1001, 27:60–62. Claim 1 does not further limit the unspecified compartment among the “at least two compartments” or specify what items, if any, are placed within it. See id. at 27:47–67. Two unchallenged dependent claims, claims 4 and 11, further recite that “the at least two compartments” further comprise “a second compartment.” Claim 4 depends directly from claim 1 and further recites, in pertinent part: “the at least two compartments further comprising a second compartment separated from the first compartment by a wall with an opening, further comprising a catheter assembly disposed within the second compartment, the catheter assembly comprising a fluid bag.” Id. at 28:21–25 (emphasis added). Claim 11 depends from claim 10, which depends from claim 1, and similarly recites: “the at least two compartments further comprising a second compartment separated from the first compartment by a wall with an opening, further comprising a catheter assembly disposed within the second compartment.” Id. at 28:47–51 (emphasis added).” slip op. at 18

  • Skill levelSkill level board ownDecided for petitioner

    “skill in the relevant art would have a bachelor’s degree in packaging engineering, mechanical engineering, or industrial design. Pet. 18 (citing Ex. 1002 ¶¶ 14–16); PO Resp. 15 (citing Ex. 2026 ¶ 38). Alternatively, such a person could have an engineering degree in another technical field along with about two years of experience designing medical packaging. Pet. 18 (citing Ex. 1002 ¶¶ 14–16); PO Resp. 15 (citing Ex. 2026 ¶ 38). Neither party contends that a person of ordinary skill needs to be a medical practitioner, but both parties agree that the person of ordinary skill would consult with medical practitioners familiar with catheterization procedures. Pet. 18; PO Resp. 15 (citing Ex. 2027 ¶ 78). Slight differences exist in the formulation of the level of ordinary skill between the parties. We, however, discern no meaningful difference because none of those differences would affect the outcome of our analysis. Accordingly, we apply the level of skill set forth in the preceding paragraph.” slip op. at 10

  • Expert testimonyPatent owner expert creditedPetitioner expert creditedMixed

    “Petitioner argues that shallow area 11B “facilitates easy lubrication of the catheter” simply because it is shallow and “it was well-known to ‘(a) apply lubricant directly on the catheter; and (b) use the same compartment where lubricant is stored to lubricate the catheter.’” Pet. Remand Br. 28–29 (citing Pet. 32, 34; Ex. 1002 ¶ 231). Patent Owner persuasively responds, however, that a practitioner would not use the same compartment to collect urine and lubricate the catheter because the lubricant would contaminate the urine specimen collected in the compartment. PO Remand Br. 3–4 (citing PO Resp. 36; Op. *8); see also Ex. 2027 ¶ 175 (Ms. Chiappetta testifying that “lubrication in the portion of the tray that collects urine will contaminate the urine,” which would invalidate any testing of the patient’s urine). Although it may be easier to lubricate a catheter in shallow area 11B than in deep area 11A, we find that Solazzo’s shallow area 11B is not well-suited, configured, or intended for lubricating a catheter; rather, Solazzo recommends using lubricating wells 31 and 33 for that purpose. We credit Ms. Chiappetta’s supporting testimony to that effect. See Ex. 2027 ¶ 175. Accordingly, we conclude that Petitioner has failed to prove by a preponderance of evidence that the combined teachings of Solazzo and Serany render claim 7 unpatentable as obvious.” slip op. at 31

  Patent outcomesUS 9,745,088 mixed
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 9,745,088
• Intuitive Surgical, Inc. v. Ethicon LLCSome claims unpatentable
  PTAB · Jan 13, 2020 · IPR2018-01254 · APJ Matthew S Meyers · IPR · Final written decision

  Claims 1–10 are unpatentable under § 103; claims 11 and 24 were not shown unpatentable because the proposed combinations did not adequately establish the articulation limitations.

  RulingsFinal written decision

  • BurdenOther

    “of proving unpatentability of the challenged claims, and the burden of persuasion never shifts to Patent Owner. To prevail, Petitioner must prove 1 Our decision does not rely on any information deemed confidential by the parties. unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d) (2017). This decision is a Final Written Decision under 35 U.S.C. § 318(a) as to the patentability of claims 1–11 and 24 of the ’969 patent. For the reasons discussed below, we hold that Petitioner has demonstrated by a preponderance of the evidence that claims 1–10 of the ’969 patent are unpatentable under § 103(a). We also hold that Petitioner has not demonstrated by a preponderance of the evidence that claims 11 and 24 of the ’969 patent are unpatentable under § 103(a).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not appear to dispute Petitioner’s definition of one of ordinary skill in the art. See generally PO Resp. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. In light of the record now before us, we adopt Petitioner’s definition of one of ordinary skill in the art. The level of ordinary skill in the art is also reflected by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record).” slip op. at 12

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

    “(Fed. Cir. 1993). Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). Here, neither Petitioner nor Patent Owner identifies terms for construction or provides any proposed constructions. Pet. 12; PO Resp. 10; see generally Pet. Reply; Prelim. Resp. 11. Instead, the parties agree that claims of the ’969 patent should be construed according to their broadest reasonable interpretation. Pet. 12; PO Resp. 10. We determine that no claim term needs express interpretation. See Vivid Techs., 200 F.3d at 803 (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 12

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Patent Owner asserts that Petitioner’s expert, Dr. Knodel, “admitted that the tool base shown in Wallace’s figures is not designed to drive an endocutter that clamps and fires.” PO Resp. 36–37 (citing Ex. 2011, 24:20– 23). This admission deserves little weight, however, given that Wallace expressly discloses that “any suitable end effector 66 may be used” in its robotic surgery system depending on the surgical need, including clamps and staplers. Ex. 1008, 7:50–56; see also id. at 2:18–21 (“As used herein, the term ‘end effector’ means the actual working part of the surgical instrument and can include clamps, graspers, scissors, staplers, and needle holders, for example.”); Pet. Reply 18–20; see Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007) (Obviousness “cannot be avoided simply by a showing of some degree of unpredictability in the art so long as there was a reasonable probability of success.”).” slip op. at 33

  Patent outcomesUS 8,479,969 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,479,969
• FMC Technologies, Inc. v. Onesubsea IP UK LimitedSome claims unpatentable
  PTAB · Oct 11, 2017 · IPR2016-00907 · APJ Michelle N Wormmeester · IPR · Final written decision

  Claims 1, 10–12, 17–19, 21–23, 25–29, 31–35, 38, 39, and 41 are unpatentable; claims 36 and 37 were not shown unpatentable.

  RulingsFinal written decision

  • Expert testimonyOther

    “Owner now urges. Even Patent Owner’s expert admitted that the term “complete” is an “arbitrary” term that adds nothing “about what [to] decide is going to be an assembly and what’s not going to be an assembly.” Ex. 1015, 80:1–5, cited in Pet. Reply 4. As such, Patent Owner’s addition of the term “complete” sheds no light on how a skilled artisan would have understood the relationship of parts that make up an “assembly.” We reject Patent Owner’s attempt now to construe the term more narrowly than it did in the district court action. Accordingly, we construe “assembly” as “a multipart device.”” slip op. at 15

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

    “Owner now urges. Even Patent Owner’s expert admitted that the term “complete” is an “arbitrary” term that adds nothing “about what [to] decide is going to be an assembly and what’s not going to be an assembly.” Ex. 1015, 80:1–5, cited in Pet. Reply 4. As such, Patent Owner’s addition of the term “complete” sheds no light on how a skilled artisan would have understood the relationship of parts that make up an “assembly.” We reject Patent Owner’s attempt now to construe the term more narrowly than it did in the district court action. Accordingly, we construe “assembly” as “a multipart device.”” slip op. at 15

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

    “that these discrete components are not a diverter assembly.” PO Resp. 32. As support, Patent Owner points to Mr. Herrmann’s testimony that Kelly’s line 20 is part of a “production discharge line.” Id. at 32–33 (citing Ex. 2005, 248:13–249:2). Patent Owner also points to Petitioner’s explanation in its Petition that “[l]ine 20 connects from the well production string to production flowline body or collet body 22.” Id. at 33 (citing Pet. 8); see also id. (“collet body 22 is an independent component consisting of two flow passages that are connected to the production flowlines 20 and 24”). That line 20 is part of a production discharge line or that it connects from the well production string to collet body 22 does not preclude collet body 22 and line 20 from being a diverter assembly. Indeed, as discussed above, we find that collet body 22 changes the flow path of the fluid in opposite directions, thereby providing, together with line 20, “a multipart device that changes the course or direction of a fluid’s current flow path.” See also Ex. 2006 ¶ 83 (Patent Owner’s expert testifying that “[t]he production discharge line is simply a flowline that takes fluid from the tree and, in the case of Kelly, takes the fluid to a choke installed on the flowline”). Accordingly, Patent Owner’s argument here also does not adequately rebut Petitioner’s persuasive evidence and argument that Kelly discloses a “diverter assembly.”” slip op. at 23

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

    “Petitioner must provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In that regard, Petitioner further argues that “[o]ne of skill in the art would have modified ‘subsea choke assembly 26’ of Kelly to include one or more of a pressure sensor, temperature sensor or flow sensor, or to substitute ‘subsea choke assembly 26’ with ‘production module 61,’ as taught by Fenton.” Pet. 26– 27. According to Petitioner, “[m]odifying Kelly’s subsea choke assembly by adding one or more temperature sensors, pressure sensors, or flow meters as taught by Fenton would provide information related to fluid flow through the assembly and allow more precise control of the choke to achieve desired flow characteristics.” Id. at 27. Petitioner relies on Mr. Herrmann’s declaration testimony as support for its argument. Id. at 27–28 (citing Ex. 1003 ¶¶ 32–33). Petitioner also argues that “a person of ordinary skill would have modified Kelly’s subsea apparatus in a second manner by substituting the entire ‘subsea choke assembly 26’ of Kelly with the entire ‘production module 61’ of Fenton,” indicating that “[s]uch a modification would be a simple substitution . . . and would provide the advantages of the additional functionality present in Fenton’s module.” Id. at 28. Based on the record before us, we are persuaded by Petitioner’s proffered reasoning for modifying Kelly’s choke assembly to include Fenton’s temperature sensors, pressure sensors, or flow meters to allow for more precise control of the choke. We also are persuaded by Petitioner’s proffered reasoning for substituting Kelly’s choke assembly with Fenton’s production module. Thus, we find that Petitioner has provided adequately “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See Kahn, 441 F.3d at 988.” slip op. at 47

  Patent outcomesUS 8,573,306 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,573,306
• Jtekt Corporation v. GKN Automotive Ltd.Some claims unpatentable
  PTAB · Jan 23, 2017 · IPR2016-00046 · APJ James J Mayberry · IPR · Final written decision

  Claims 6 and 7 are unpatentable over Teraoka and Burrows; claims 2 and 3 were not shown unpatentable over Teraoka and Watanabe.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentOther

    “GKN filed a Disclaimer in Patent under 37 C.F.R. § 1.321(a) with the Patent Office on June 15, 2016, disclaiming claims 1, 4, and 5 of the ’440 patent. See Ex. 2016. Accordingly, claims 1, 4, and 5 are no longer subject to this inter partes review proceeding.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “We agree with JTEKT that the level of ordinary skill in the art is an engineer with several years (5 or more years) of drive train experience. Factual indicators of the level of ordinary skill in the art include “the various prior art approaches employed, the types of problems encountered in the art, the rapidity with which innovations are made, the sophistication of the technology involved, and the educational background of those actively working in the field.” Jacobson Bros. v. United States, 512 F.2d 1065, 1071 (Ct. Cl. 1975); see also Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983) (quoting with approval Jacobson Bros.). We find that the prior art is directed to vehicle drive train design, as would be encountered by a mechanical or automotive engineer. See, e.g., Exs. 1002– 04. 2. “shutdown section”” slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner
  • Strike new argumentNew argument disregardedDecided for patent owner

    “We appreciate that GKN’s Patent Owner’s Response appears to open the door to JTEKT’s argument. A closer look, however, reveals that JTEKT’s argument is improper in a Petitioner’s Reply. JTEKT’s sole rationale asserted in the Petition is that an artisan of ordinary skill would have been motivated to combine Teraoka and Watanabe to eliminate Teraoka’s bevel gear differential to reduce weight and, thereby, reduce fuel consumption. Accordingly, any arguments in GKN’s Patent Owner’s Response must be viewed through a lens of that rationale alone. JTEKT cannot properly latch onto language in the Patent Owner’s Response and leverage that language into a new rationale for combining Teraoka and Watanabe—a new rationale to which GKN cannot respond. Here, JTEKT’s new rationale is not related to reducing weight at all, but instead, further argues that Teraoka and Watanabe both address shutdown sections, strengthening the link between the references. “It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)). “Unlike district court litigation—where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” Id. GKN did not have the opportunity to address JTEKT’s new rationale nor did it have the opportunity to submit new evidence to counter JTEKT’s position. The new rationale does not address any specific deficiency identified by GKN to JTEKT’s rationale relied on in the Petition. Instead, it provides a new rationale in reply to GKN’s arguments highlighting deficiencies in the rationale provided in the Petition, in an attempt to strengthen its obviousness position. As such, we agree with GKN that this new rationale exceeds the scope of a proper Petitioner’s Reply, and we do not consider it, as doing so would be unfair to GKN, as GKN was not given the proper notice and opportunity to respond to this argument.” slip op. at 29

  Patent outcomesUS 8,215,440 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,215,440
• Repro-Med Systems, Inc. v. Emed Technologies CorporationSome claims unpatentable
  PTAB · Jan 12, 2017 · IPR2015-01920 · APJ James J Mayberry · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “support its contention that an artisan of ordinary skill would understand the claim limitation “the wings in the open position are spaced apart from each other to expose the medical needle to allow placement of the medical needle into a treatment site and delivery of a medicinal fluid” to require the wings to be folded back to permit inserting the needle. See PO Resp. 31 (citing Ex. 2003, Decl. of Ron Stoker, ¶ 78). Mr. Stoker merely provides the same statement as that appearing in the Patent Owner Response—“[o]ne of skill in the art would understand permitting placement to mean that the wings could be folded back to permit insertion of the needle”—without providing any basis for his opinion. See Ex. 2003 ¶ 78. Accordingly, we give little weight to this testimony. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed.Cir.2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 18

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

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

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed

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

  Patent outcomesUS 8,961,476 mixed
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,961,476

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.