• Böhler-Edelstahl GmbH & Co. KG. v. Rovalma, S.A.All claims unpatentable
  PTAB · Apr 20, 2016 · IPR2015-00150 · APJ Robert A Pollock · IPR · Final written decision

  Claims 1–4 are unpatentable as obvious over EP ’813 combined individually with CH ’893, JP ’241, JP ’650, or JP ’706.

  RulingsFinal written decision

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

    “Prelim. Resp. 6–7. Rovalma asserts that the thermal conductivity of a steel having carbidic constituents can be set by acting on the internal structure of the steel regardless of the specific steel composition. Id. at 6, 10, 13. “In other words, the thermal conductivity of a steel having a specific composition can be set to different values by following the process steps claimed in the ’056 Patent.” Id. at 13. Consistent with their plain language, we construe the “setting” step of the challenged claims as requiring the setting of the thermal conductivity at room temperature to more than, e.g., 42 W/mK. Rovalma further argues that the step of “metallurgically creating an internal structure of the steel in a defined manner” should be construed to mean “heat treating the steel . . . under specific conditions selected to achieve the desired internal structure[,]” “and hence thermal conductivity.” PO. Resp. 38, 39. Rovalma argues that “the ‘defined manner’ will differ based on the steel composition used, the desired thermal conductivity, and the specific hot-work application for the tool steel.” Id. at 39–40.” slip op. at 14

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

    “advantages including “higher toughness, thermal conductivity and weldability” as compared to high chromium ferritic steels. Ex. 1003, 2:16– 20, 4:7–16. Tables 2 and 3 of the reference disclose the chemical composition of low chromium steels having a carbon component. Id. 10–11. Example 8 comprises, by weight, 1.07% chromium, 0% molybdenum, 2.61% tungsten, and 0.21% vanadium. Id. at 10. Example 32 comprises, by weight, 0.98% chromium, 1.05% molybdenum, 1.01% tungsten, and 0.23% vanadium. Id. at 11. Accordingly, we find that EP ’813 Examples 8 and 32 each include “carbidic constituents” (i.e., carbon in conjunction with carbide formers such as chromium, tungsten, and vanadium) and, “by weight, 2– 10% Mo+W+V” as set forth in the challenged claims. See PO. Resp. 58 (admitting that “the prior art disclosed ‘providing a hot-work steel, including carbidic constituents and, by weight, 2-10% Mo+W+V’—step 1 of the challenged claims”). As with EP ’813, CH ’893 discloses low-chromium steel compositions having valuable characteristics including “relatively high hot tensile strength, toughness and resistance against temperature variations.” Ex. 1002, p. 1 ¶3, p. 3, ¶ 6. The second embodiment disclosed on page 4 of the reference comprises 0.27% carbon, 3.32% tungsten, and no chromium, molybdenum or vanadium. CH ’893 thus discloses the benefit of high thermal conductivity (“resistance against temperature variations”) and at least one embodiment comprising “carbidic constituents and, by weight, 2– 10% Mo+W+V” as set forth in the challenged claims. 18 JP ’241 discloses low chromium steels having, e.g., improved high temperature abrasion. Ex. 1004, 2–3. Claim 2 of the reference encompasses a steel composition comprising, by weight, “C: 0.10–0.40%, Si: 0.10– 1.00%, Mn: 0.20–2.00%, Cr: less than 0.95%, Mo: 0.50–3.50%, W: 0.50– 3.50% and Nb: 0.10–1.00%, and further containing more than one or two variations selected from Ni: 0.50-3.50%, Co: 0.50–3.50% and V: 0.10– 1.00%.” Id. at 2, claim 2. JP ’241 thus discloses steel compositions comprising “carbidic constituents and, by weight, 2–10% Mo+W+V” as set forth in the challenged claims. JP ’706 discloses a low chromium steel plug compositions B and C for seamless pipe manufacturing comprising 0.30% carbon, 0.5% chromium, 1.50% molybdenum, 2.00% and 3.00% tungsten, respectively, and no vanadium. Ex. 1006, Table 1. Accordingly, JP ’706 discloses steel compositions comprising “carbidic constituents and, by weight, 2–10% Mo+W+V” as set forth in the challenged claims.” slip op. at 18

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

    “As noted above, one of ordinary skill in the art at the time of the invention would have recognized that thermal processing conditions affect internal structure and, thus, thermal properties of steel. Bayati and Elliot, for example, teach that heat transport “depends on lattice defects, microstructure, impurities, and the processing of the metal or alloy,” and that matrix structure “play[s] a significant role” in determining thermal conductivity. Ex. 2009, 265; Tr. 67:3–13. As Rovalma further explains at page 7 of its Patent Owner Response, Heat is transported through metals by phonons and free electrons. Ex. 2009 at 265. In pure metals, heat transfer is primarily influenced by the metal’s free electrons. Id. Lattice defects and impurities in a metal or alloy scatter the electrons within the metallic matrix, thus reducing the rate that heat can transfer through the metal. Id. In non-metals such as carbides, thermal conductivity is primarily influenced by vibration within the lattice of atoms or molecules (these vibrations are referred to by the quantum mechanical term “phonon”). Id.; Paper 14 at 3. Concurrent with this understanding of heat transfer through metallic matrices and metal carbide inclusions, one of ordinary skill in the art would also have understood that “optimization of the microstructure has been known for a long time.” Tr. 66:9–16; see PO Resp. 5 (citing Ex. 2006); id. at n.1). Thus, “[u]sing equilibrium phase diagrams and knowing the effects of processing operations, those skilled in the art [could] predict which carbides will be present in a given steel and their microstructural distributions following various heat treatments.” PO Resp. 4 (citing Exs. 2005, 2006). Similarly, “readily available thermo-chemical databanks and software programs such as Thermo-Calc, allow[ed] those skilled in the art to” slip op. at 21

  Patent outcomesUS 8,557,056 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,557,056
• Tiffany And Company v. Lazare Kaplan International, Inc.All claims unpatentable
  PTAB · Apr 13, 2016 · IPR2015-00024 · APJ Jeffrey W Abraham · IPR · Final written decision

  Claims 1 and 7 are unpatentable as obvious over Fine Diamonds with the ILR Article and over Gresser with the ILR Article.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “motion, lasers, and optics.” Ex. 1003 (“Trumper Declaration”) ¶ 17. Patent Owner and its declarant, Dr. Bokor, adopted the level of ordinary skill in the art advanced by Dr. Trumper. PO Resp. 43–44 and n.4; Ex. 2005 (“Bokor Declaration”) ¶ 22. For purposes of this decision, we credit the testimony provided by the declarants for both parties and hold that one of skill in the art would possess at least a bachelor’s degree in mechanical, electrical, manufacturing, or optical engineering, plus a few years of experience in the design and control of machines involving precision motion, lasers, and optics. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 7

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

    “For the reasons explained below, we determine that Petitioner has shown by a preponderance of the evidence that claims 1 and 7 are unpatentable under either of the proposed constructions of the “controlling” limitations. Accordingly, we determine that it is unnecessary to resolve the parties’ dispute over the term “controlling.” See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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)). We provide below an analysis of the challenged claims under both constructions.” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “patterning and ablations of diamonds with a UV laser source. Ex. 1009, 2. The ILR Article depicts a computer in Figure 2, and refers to the “[i]ntegration of a computer into the direct-write system.” Id. at 3. The ILR Article further discloses that “[v]ideo images generated by the viewing system can be digitized and processed to derive information used for” various “operations that make the laser tool easier and faster to use.” Id. We credit the testimony of Dr. Trumper that “the ILR Article makes clear that the computer digitizes and processes the optical images of a gemstone, and the automated feedback derived from the images is used for controlling the directing of the focused laser energy,” as it is consistent with the ILR Article’s disclosure of integrating a computer into the diamond ablation system. Ex. 1003 ¶ 56. Thus, despite the fact that the ILR Article does not expressly state that the computer is used to digitize and process the video images, it would have been obvious to a person of ordinary skill in the art that integrating the computer into the direct write system would include using the computer (shown in Fig. 2) to digitize the video images generated by the viewing system and process them to conduct the various operations that make the laser tool easier to use. KSR Int’l Co. v. Teleflex Inc., 550 US 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Furthermore, as noted above, the ILR Article teaches that “[c]omputer control of work surfaces allows direct production of CAD-generated shapes” on diamond surfaces. Ex. 1009, 2. Petitioner contends, and Patent Owner does not contest, that the CAD/CAM programs correspond to the required “marking instructions.” Pet. 25–26 (citing Ex. 1009, 2); Ex. 1003 ¶ 56 (Dr. Trumper stating “marking instructions (e.g., motion programming of the CAD/CAM program)”). Additionally, the ILR Article discloses that the “CAD/CAM interface . . . allows electronic control of processing speed, exposure parameters, and other features” of the laser tool that “simplifies set-up [and] accelerates process development.” Ex. 1009, 3. As Petitioner points out, the next sentence in the very same paragraph discusses digitizing and processing the video images. Reply 13. In view of this, we determine that a person of ordinary skill in the art, reviewing the ILR Article, would have understood the ILR Article to disclose or suggest using the computer to control and operate the laser tool to generate shapes based on a combination of two inputs, the CAD/CAM programs (i.e., “marking instructions”) and images fed back to the computer and digitized therein (i.e., electronic image information), which “simplif[y] set-up [and] accelerate[] process development” and “make the laser tool easier to use.”2 Ex. 1009, 3; Reply 13; Ex. 1003 ¶ 55.” slip op. at 19

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

    “contrary to Patent Owner’s arguments, we determine that a person of ordinary skill in the art would have understood that the ILR Article discloses or suggests that images are fed back to a processor and combined with marking instructions for, at the very least, setting up the laser inscription machine. Thus, although Patent Owner also argues that its proposed construction of the controlling limitations “distinguishes over systems that use gemstone images for setup—independent of ‘marking instructions’” (PO Resp. 29 (emphasis added)), the ILR Article discloses or suggests using images for set up in combination with marking instructions. Moreover, as Patent Owner points out, the Federal Circuit stated that the “controlling” limitations include “control based on . . . feedback derived from optical images of a gemstone, before or during the laser burn process.” Ex. 1006, 14 (emphasis added); PO Resp. 31–32. We note that Patent Owner argues that its proposed construction is consistent with the 2010 Federal Circuit opinion. PO Resp. 29–32. For all of the reasons discussed above, we determine that the ILR Article discloses or suggests the “controlling” limitations of claims 1 and 7. Petitioner has identified sufficiently where the additional limitations of claims 1 and 7 are present in Fine Diamonds and the ILR Article, and Patent Owner does not argue otherwise. We, therefore, conclude that Petitioner has shown by a preponderance of the evidence that Fine Diamonds and the ILR article disclose or suggest all elements of claims 1 and 7.” slip op. at 22

  Patent outcomesUS 6,476,351 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 6,476,351
• Coalition For Affordable Drugs (Adroca) LLC v. Acorda Therapeutics, Inc.Rehearing denied
  PTAB · Apr 8, 2016 · IPR2015-00720 · APJ Jacqueline Wright Bonilla · IPR · Rehearing

  The Board denied rehearing and maintained denial of institution for claims 1–8 because Petitioner did not show the posters qualified as prior art printed publications.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565,” slip op. at 2

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

    “In our Decision, we stated that we were “not persuaded that Petitioner has made a threshold showing that the posters were sufficiently publicly accessible to qualify as a ‘printed publication’ under § 102(b).” Dec. 5 (emphasis added). We also stated that Petitioner had “not demonstrated adequately” that either poster constituted prior art to the ’685 patent. Id. (emphasis added). In other words, when considering the Petition and information before us, Petitioner did not demonstrate sufficiently that either poster constituted prior art, and consequently, Petitioner did not establish that there was a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition, as required under § 314(a). Petitioner’s assertions regarding the “proper standard” do not persuade us that we made a legal error in denying the Petition on that basis.” slip op. at 3

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Once again, Petitioner essentially reargues, and attempts to bolster with new arguments now, the same contentions that we already considered and expressly addressed in our Decision. Dec. 3–5. As noted above, mere disagreement with the Board’s analysis or determination is not a proper basis for rehearing. Moreover, we will not consider new arguments made for the first time in a Request for Rehearing, especially when an opportunity to present arguments and information regarding the posters clearly existed at the time Petitioner filed its Petition. See, e.g., Berk-Tek LLC v. Belden Tech. Inc., Case IPR2013-00057, slip op. at 3 (PTAB May 15, 2013) (Paper 21) (“A request for rehearing is not an opportunity to submit new analysis, after the Decision has noted the deficiencies in the petitioner’s original analysis.”).” slip op. at 5

  § 102 anticipation
  Patents in suitUS 8,663,685
• Coalition For Affordable Drugs (Adroca) LLC v. Acorda Therapeutics, Inc.Rehearing denied
  PTAB · Apr 8, 2016 · IPR2015-00817 · APJ Jacqueline Wright Bonilla · IPR · Rehearing

  The Board denied rehearing and left in place the denial of institution because Petitioner did not show the posters were publicly accessible printed publications qualifying as prior art.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.”” slip op. at 2

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

    “In our Decision, we stated that we were “not persuaded that Petitioner has made a threshold showing that the posters were sufficiently publicly accessible to qualify as a ‘printed publication’ under § 102(b).” Dec. 5 (emphasis added). We also stated that Petitioner had “not demonstrated adequately” that either poster constituted prior art to the ’826 patent. Id. at 5–6 (emphasis added). In other words, when considering the Petition and information before us, Petitioner did not demonstrate sufficiently that either poster constituted prior art, and consequently, Petitioner did not establish that there was a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition, as required under § 314(a). Petitioner’s assertions regarding the “proper standard” do not persuade us that we made a legal error in denying the Petition on that basis.” slip op. at 3

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

    “exactly when, where, and to whom the Hayes and Goodman posters were presented at scientific meetings. Dec. 3–6.” slip op. at 5

  • Strike new argumentNew argument disregardedOther

    “with new arguments now, the same contentions that we already considered and expressly addressed in our Decision. Dec. 3–6. As noted above, mere disagreement with the Board’s analysis or determination is not a proper basis for rehearing. Moreover, we will not consider new arguments made for the first time in a Request for Rehearing, especially when an opportunity to present arguments and information regarding the posters clearly existed at the time Petitioner filed its Petition. See, e.g., Berk-Tek LLC v. Belden Tech. Inc., Case IPR2013-00057, slip op. at 3 (PTAB May 15, 2013) (Paper 21) (“A request for rehearing is not an opportunity to submit new analysis, after the Decision has noted the deficiencies in the petitioner’s original analysis.”).” slip op. at 5

  § 102 anticipation
  Patents in suitUS 8,007,826
• EMC Corporation v. Acqis LLCNo claims unpatentable
  PTAB · Mar 8, 2016 · IPR2014-01462 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 54 and 56–61 were not shown unpatentable because the evidence did not establish that the cited references rendered the claimed PCI transaction communication obvious.

  RulingsFinal written decision

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

    “construction in the Decision on Institution. The evidence indicates that the term “Peripheral Component Interconnect (PCI) bus transaction” refers to a particular industry standard, not just any communication with an interconnected peripheral component. Industry literature and dictionaries use the proper noun “Peripheral Component Interconnect” and the abbreviation “PCI” to refer to a particular industry specification for a local bus. See, e.g., Ex. 2001, 1; Ex. 2002, 6–7; Ex. 2003, 7–8. The challenged claims recite “Peripheral Component Interconnect” as a proper noun and abbreviate it as “PCI,” indicating that the challenged claims use those terms consistent with the understood industry meaning. Ex. 1001, col. 43, ll. 48–49, col. 44, l. 6; see Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1348 (Fed. Cir. 2014). The written description similarly uses the abbreviation “PCI” to refer to a particular industry standard, and uses the common noun “peripheral bus” to refer to a generic peripheral bus. Compare Ex. 1001, col. 5, ll. 31–33 (“The present invention . . . interface[s] two PCI or PCI-like buses”), with id. at col. 10, ll. 53–55 (“Additionally, the peripheral controller is coupled to a clock control logic, a configuration signal, and a peripheral bus.”) (emphasis added).” slip op. at 6

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

    “obvious over Horst and LVDS Owner’s Manual; claims 56 and 59 would have been obvious over Horst, LVDS Owner’s Manual, and Pocrass; and claim 58 would have been obvious over Horst, LVDS Owner’s Manual, and Deters. Pet. 58–59. A claim is unpatentable as obvious under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) any objective indicia of non-obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We have considered the parties’ arguments and supporting evidence, and we determine that Petitioner has not shown by a preponderance of the evidence that claims 54 and 56–61 would have been obvious over the cited references.” slip op. at 7

  • ExcludeMotion to exclude, deniedMixed

    “Owner argues that paragraphs 10–24 and 31–37 of Exhibit 1031 should be excluded as irrelevant and prejudicial because Petitioner relies on those paragraphs to support improper arguments in the Reply. PO Mot. 8. Petitioner argues in the Reply that the TNet transaction in Horst includes PCI address bits, and that claim 54 only requires communicating two bits of a PCI bus transaction. PO Mot. 1. Patent Owner contends that both arguments exceed the scope of a proper reply, as set forth in 37 C.F.R. § 42.23(b), and that the portions of Exhibit 1031 that Petitioner relies upon to support those arguments should be excluded as irrelevant and prejudicial. PO Mot. 2–4, 6, 7. Patent Owner’s argument is not persuasive. Patent Owner argues in the Response that the TNet transaction in Horst does not include PCI address bits. PO Resp. 27–29. As such, Petitioner’s argument in the Reply that the TNet transaction includes PCI address bits is responsive to an argument raised in the Response. See 37 C.F.R. § 42.23(b) (generally permitting a reply to respond to arguments raised in a response). Patent Owner also argues in the Response that claim 54 requires communicating a 32-bit PCI address. PO Resp. 8–11. As such, Petitioner’s argument in the Reply that claim 54 only requires communicating two bits of a PCI bus transaction is responsive to an argument raised in the Response. Because we are not persuaded that the identified arguments in the Reply are improper, the premise of Patent Owner’s Motion to Exclude Exhibit 1031 fails. Therefore, Patent Owner’s Motion to Exclude paragraphs 10–24 and 31–37 of Exhibit 1031 is denied.” slip op. at 16

  Patent outcomesUS 8,041,873 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,041,873
• EMC Corporation v. Acqis LLCNo claims unpatentable
  PTAB · Mar 8, 2016 · IPR2014-01469 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 24 and 31–33 were not shown unpatentable because Petitioner failed to prove obviousness over either asserted reference combination, including failure to establish Bogaerts as prior art.

  RulingsFinal written decision

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

    “Interconnect (PCI) bus transaction” to mean “a data signal communication with an interconnected peripheral component.” Pet. 13. Patent Owner agrees with the construction in the Decision on Institution that the claim term “Peripheral Component Interconnect (PCI) bus transaction” means “Peripheral Component Interconnect (PCI) industry standard bus transaction.” PO Resp. 21–22. We see no reason now to deviate from the construction in the Decision on Institution. The evidence indicates that the term “Peripheral Component Interconnect (PCI) bus transaction” refers to a particular industry standard, not just any communication with an interconnected peripheral component. Industry literature and dictionaries use the proper noun “Peripheral Component Interconnect” and the abbreviation “PCI” to refer to a particular industry specification for a local bus. See, e.g., Ex. 2001, 1; Ex. 2002, 6–7; Ex. 2003, 7–8. The challenged claims recite “Peripheral Component Interconnect” as a proper noun and abbreviate it as “PCI,” indicating that the challenged claims use those terms consistent with the understood industry meaning. Ex. 1001, col. 27, ll. 24–25, col. 28, ll. 35–36; see Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1348 (Fed. Cir. 2014). The written description similarly uses the abbreviation “PCI” to refer to a particular industry standard, and uses the common noun “peripheral bus” to refer to a generic peripheral bus. Compare Ex. 1001, col. 19, ll. 31–33 (“the present invention may interface two PCI or PCI-like buses”), with id. at col. 7, ll. 4–6 (“Additionally, the host controller is coupled to a clock control logic, a configuration signal, and a peripheral bus.”) (emphasis added). Petitioner and Petitioner’s declarant, Mr. Bruce Young, acknowledge that the term “Peripheral Component Interconnect (PCI)” refers to an industry standard. Ex. 1003 ¶ 58; Ex. 2006, 1, 3; Ex. 2031, 16:8–12. The evidence Petitioner identifies in support of its proposed construction is the claim construction order issued in ACQIS LLC v. Appro International, Inc., No. 6:09-cv-00148 (E.D. Tex. Feb. 3, 2011). Pet. 12–13 (citing Ex. 1013). In that case, though, the parties did not appear to dispute that the term “Peripheral Component Interconnect (PCI)” refers to an industry standard. See Ex. 1013, 7 (“The parties’ primary dispute is whether the term is limited to the conventional, parallel PCI Local Bus, and, therefore excludes PCI Express bus architecture and bus transaction protocol.”). Moreover, the district court subsequently reconsidered its construction and clarified that the term “PCI bus transaction” refers to a PCI industry standard bus transaction. Ex. 1030, 8–10. Therefore, we construe the claim term “Peripheral Component Interconnect (PCI) bus transaction” to mean “Peripheral Component Interconnect (PCI) industry standard bus transaction,” and we construe the claim term “PCI bus transaction” to mean “PCI industry standard bus transaction.”” slip op. at 6

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

    “Horst outputs address and data bits of a PCI bus transaction in serial form over the TNet links. Pet. 31–34. Petitioner’s argument is not persuasive. The TNet processor interface in Horst translates a CPU transaction into a TNet transaction. Ex. 1009, 5 (“The interface to the destination CPU or I/O device provides mapping and validation hardware translating this virtual TNet address to the appropriate physical memory address.”), Figs. 5, 7; Ex. 2021 ¶ 94 (“The TNet Processor Interface generates TNet transactions from CPU front-side bus transactions.”). The TNet processor interface then encodes the TNet transaction using an 8B/9B encoder so that it can be output over the 9-bit serial TNet links. Ex. 1003 ¶¶ 48, 146; Ex. 1009, 3, Figs. 3, 4 (showing “8B/9B encoder”), Table 1; Ex. 2021 ¶ 105. Petitioner does not identify persuasive evidence indicating that either the CPU transaction or the TNet transaction is a PCI industry standard bus transaction. Pet. 31–34 (citing Ex. 1009, 3–8, Figs. 2, 3, 5, 7–9, Table 1; Ex. 1003 ¶¶ 159[24C(i)], 159[24C(iv)], 159[24C(v)], 159[31B(i)], 159[31B(iii)]); Ex. 2021 ¶ 129. Thus, the evidence identified in the Petition does not indicate that the information output by the TNet processor interface over the TNet links includes address and data bits of a PCI industry standard bus transaction in serial form. Petitioner points out that, after a TNet transaction is communicated over the TNet links, a TNet bus interface in the console may use information in the TNet transaction to create a PCI industry standard bus transaction if a particular I/O device is connected to a PCI bus. Pet. 31–32 (citing Ex. 1009, 7, Fig. 8). But claims 24 and 31 require more than just communicating information over serial channels that subsequently might be used in the console to create a PCI industry standard bus transaction. Claims 24 and 31, when read in light of the specification, require that the information actually communicated over the serial channels includes address and data bits of a PCI industry standard bus transaction in serial form. Ex. 1001, col. 20, ll. 60–65, col. 21, ll. 15–21, col. 27, ll. 34–38, col. 28, ll. 34–39; Ex. 2022, 15:12–16:2, 22:11–16. As discussed above, the evidence identified in the Petition does not indicate that the information output by the TNet processor interface over the TNet links includes address and data bits of a PCI industry standard bus transaction in serial form.” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “The evidence identified by Patent Owner indicates that the date “2 October 1996” on Bogaerts is when it was submitted to the CERN/LHCC committee. Ex. 2021 ¶¶ 170, 171, 173; Ex. 2026, 12. Although it is possible that Bogaerts was available in the CERN Library at or around the same time, Petitioner has not shown that by a preponderance of the evidence. For example, Petitioner does not cite persuasive evidence indicating that the “Submitted by 2 Oct 1996” entry in the CERN Document Server record means that Bogaerts was available in the CERN Library on that date. Tr. 23:1–12, 25:5–25; Pet. Reply 21–25. In addition, Petitioner acknowledges that the CERN Document Server record itself was not created until December 18, 2014. Tr. 25:5–25; Ex. 2011, 439. Therefore, Petitioner has not shown sufficiently that Bogaerts is a prior art printed publication based on its availability in the CERN Library.” slip op. at 17

  • ExcludeMotion to exclude, deniedDenied

    “should be excluded for lack of authentication under Fed. R. Evid. 901. PO Mot. 2–6. Federal Rule of Evidence 901 requires that the proponent produce evidence sufficient to support a finding that an item is what the proponent claims it is. Here, Patent Owner does not dispute that Exhibit 1011 is what Petitioner claims it is, namely a reference entitled “RD24 Status Report: Application of the Scalable Coherent Interface to Data Acquisition at LHC.” Id. What Patent Owner disputes is whether Petitioner has shown by a preponderance of the evidence that Bogaerts is prior art with respect to the ’814 patent. Id. Patent Owner attempts to characterize this dispute as a question of authentication, arguing that Petitioner has not produced “evidence that [Exhibit 1011] is a true and correct copy of a publication that was publicly available as of the date asserted by Petitioner.” Id. at 3. But this is a question of sufficiency of proof, not admissibility. Therefore, Patent Owner’s Motion to Exclude Exhibit 1011 is denied.” slip op. at 20

  Patent outcomesUS RE42,814 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
• Alliance Of Rare-Earth Permanent Magnet Industry v. Hitachi Metals, Ltd.All claims unpatentable
  PTAB · Feb 8, 2016 · IPR2014-01265 · APJ Michelle R Osinski · IPR · Final written decision

  Claims 1, 5, and 6 are unpatentable: obvious over Hasegawa and Yamamoto, obvious over Ohashi and Yamamoto, and claim 1 also anticipated by He.

  RulingsFinal written decision

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

    “relevant to our analysis for the Final Written Decision. Patent Owner urges that “one of ordinary skill in the art would understand the ordinary and customary meaning of ‘rapid cooling method’ to refer to a cooling mechanism different and faster than ingot casting, but not cooled so fast that it exceeds rapid cooling and enters the domain of super-rapid cooling.” PO Resp. 8 (citing Ex. 2002 ¶¶ 81–82). Patent Owner contends that this proposed interpretation is consistent with the Specification of the ’385 patent, including dependent claims 5 and 6, as well as the ordinary and customary usage of the term. Id. Patent Owner’s expert points to the language of the Specification stating that “a rapidly cooled method” is “typified by a strip casting method and a centrifugal casting method.” Ex. 2002 ¶ 81 (quoting Ex. 1001, 1:35–40). We conclude that such language indicates only that strip casting and centrifugal casting are typical examples of rapid cooling methods or exemplify rapid cooling methods, not that rapid cooling methods necessarily exclude super-rapid cooling methods.” slip op. at 7

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

    “the predictable result says that, for example, in the case of the Hasegawa/Yamamoto combination, you are going to throw out 50 percent of your powder.” Tr. 77:23–78:2. Patent Owner argues that one with ordinary skill in the art, for various considerations, such as diminished yield, would not have implemented a rapid cooling method in connection with Hasegawa’s pulverization and particle classification techniques. PO Resp. 10–20. Whether implementation of Yamamoto’s rapid cooling method makes commercial sense does not control the obviousness determination. The challenged claims are not limited to an industrial scale economically viable process. Specifically, the claims do not recite a minimum required yield that would distinguish the prior art teachings. Patent Owner has not provided persuasive reasoning or evidence to support its contention that one of skill believed there to be some technological incompatibility that prevented the combination of Yamamoto’s rapid cooling method with Hasegawa’s pulverization and particle classification techniques; that the combination was unpredictable in some way; or that one with ordinary skill in the art would not have known how to use Yamamoto’s rapid cooling method with Hasegawa’s pulverization and particle classification techniques. See Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983) (“[T]he fact that the two [prior art disclosures] would not be combined by businessmen for economic reasons is not the same as saying that it could not be done because skilled persons in the art felt that there was some technological incompatibility that prevented their combination. Only the latter fact is telling on the issue of nonobviousness.”). We appreciate Patent Owner’s argument that “an invention ‘composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” PO Resp. 19 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Petitioner, however, has set forth a sufficient rationale to arrive at what is claimed. Specifically, Petitioner has demonstrated that the claims represent the combination of prior art elements according to known methods to yield a predictable result. See KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). This is itself a sufficient reason with rational underpinning to support a conclusion of obviousness. This is especially true where the evidence supports that consideration of design incentives, such as the provision of a “lower cost, more productive [process] better suited for higher volume manufacturing” would have led one of” slip op. at 13

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

    “rapid cooling method” as that claim term as been construed for purposes of this proceeding.7 Patent Owner’s first argument that strip casting in particular was not commercially available as of He’s publication date is not persuasive evidence that He’s quick quenching cannot be rapid cooling, because rapid cooling is not limited to strip casting in accordance with our construction of that term. slip op. at 22

  Patent outcomesUS 6,537,385 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,537,385
• Alliance Of Rare-Earth Permanent Magnet Industry v. Hitachi Metals, Ltd.All claims unpatentable
  PTAB · Feb 8, 2016 · IPR2014-01266 · APJ Michelle R Osinski · IPR · Final written decision

  Claims 1–4, 11, 12, and 14–16 are unpatentable under § 103: claims 1–4, 14, and 16 over Ohashi and Hasegawa; claims 11–12 with Yamamoto; and claim 15 with Kishimoto.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “To determine the level of ordinary skill in the art in this case, we consider the type of problems encountered in the art, the prior art solutions to those problems, and the sophistication of the technology. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). We are also guided by the level of ordinary skill in the art as reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The ’765 patent indicates that the material alloy can be produced by ingot casting or rapid cooling methods typified by strip casting and centrifugal casting (Ex. 1001, 1:36–41, 12:24–29), and refers to a “known strip casting method” (Id. at 5:37–38). The prior art of record also describes differences between the resulting alloy obtained by ingot casting methods and the resulting alloy obtained by strip casting methods. See, e.g., Ex. 1007, 1:15–2:3. Thus, a skilled artisan would have some knowledge of strip casting methods and how such methods would affect the resulting alloy as compared to an alloy produced by ingot casting methods. The prior art of record also describes various mechanical pulverization techniques, as well as a hydrogen pulverization process. See, e.g., Ex. 1005 ¶ 2. The prior art of record also compares the resulting fine powder of the hydrogen pulverization process to that produced by mechanical pulverization. Id. A skilled artisan, therefore, would also need some knowledge of hydrogen pulverization methods and how they differ from mechanical pulverization. We acknowledge the sophistication of the rare earth magnet technology, but consider that one of ordinary skill in the art would be aware of all the pertinent prior art. Based on all of the evidence, we conclude that a person of ordinary skill in the art at the time of the ’765 patent, through education or experience, would have knowledge of various methods to produce the material alloy (e.g., ingot casting and strip casting) and various pulverization techniques (e.g., mechanical pulverization and hydrogen pulverization), and would have knowledge of the differences between the methods and techniques, as the resulting material alloys.” slip op. at 8

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

    “In the Decision to Institute, we interpreted “particle quantity” as “amount of particles,” without considering whether any particular common metrics should be excluded. Dec. Inst. 7. The parties do not dispute this interpretation in the Patent Owner Response or in the Petitioner Reply. We adopt the above claim construction based on our previous analysis, and see no reason to deviate from that construction for purposes of this Decision.” slip op. at 6

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

    “between a crushing apparatus and the alloy to be crushed, resulting in random pulverization of the alloy.” Id. at 8. Although there can be no doubt that mechanical pulverization is different than chemical pulverization, simply because there are differences between two references is insufficient to establish that such references teach away from any combination thereof. See In re Beattie, 974 F.2d 1309, 1312–13 (Fed. Cir. 1992). Petitioner’s reasoning to utilize hydrogen pulverization in place of mechanical pulverization to more easily crush the material alloy, and that the combination of known prior art elements achieves a predictable result, is not negated by the differences between mechanical and chemical pulverization. To the extent Patent Owner is arguing that the utilization of hydrogen pulverization in place of mechanical pulverization is not predictable (See Tr. 40:20–41:2 (citing Ex. 2002 ¶ 90)), Patent Owner has merely pointed out that one of ordinary skill in the art would have to account for differences between the two pulverization mechanisms. Patent Owner, however, has not explained persuasively that such an accounting for differences between the two pulverization mechanisms would have been beyond the capability of one of ordinary skill in the art. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Although Patent Owner argues that “if you make a change in any part of this total process, then you are going to have to look and investigate to see do you need to make compensations in other parts of the process as well . . .[a]nd that simply is going to be beyond what one of ordinary skill in the art would be able to do here” (Tr. 62:20–25), Patent Owner again only points to expert testimony that explains that one would need to change the composition of the alloy to compensate for differences between the pulverization mechanisms (Id. at 63:1–6 (citing Ex. 2002 ¶ 90)), not that such changes would have been beyond the level of ordinary skill in the art. Moreover, as described above, we have concluded that a person of ordinary skill in the art at the time of the ’765 patent would have knowledge of the differences between mechanical and hydrogen pulverization techniques, and the resulting material alloys.” slip op. at 13

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

    “The word “oxidize” means “[1] To combine with oxygen; make into an oxide. [2] To increase the positive charge or valence of (an element) by removing electrons.” American Heritage Dictionary, Houghton Mifflin Company (2000, 2003), available at http://literature.proquestlearning.com/home.do (last visited Feb. 3, 2016) (Ex. 3001). We determine that, considering the context of the patent, it is more likely than not than Ohashi’s reference to a “non-oxidizing gas” refers to a gas that does not cause an element to combine with oxygen or be made into an oxide (in accordance with the first definition cited above), rather than a gas that does not increase the positive charge or valence of an element by removing electrons (in accordance with the second cited definition). Our determination is based on Ohashi’s statements that “a magnetic alloy powder containing extremely fine particles are highly susceptible to the oxidation by the atmospheric oxygen” (Ex. 1004, 3:41–43 (emphasis added)), “the adverse influences due to the increased oxygen content in the alloy powder can be overcome when the alloy powder does not contain extremely fine particles” (id. at 3:45–48 (emphasis added)), “fine particles in a powder of neodymimum-iron-boron magnet alloys are rapidly oxidized by the atmospheric oxygen already in the course of pulverization in a non-oxidizing atmosphere and there-after to greatly increase the oxygen content in the alloy powder” (id. at 3:51–56 (emphasis added)), “a great improvement could be obtained in the magnetic properties of the permanent magnets as a result of the decrease in the oxygen content of the alloy powder” (id. at 3:61–64 (emphasis added)), “it is essential that the alloy under pulverization is strictly prevented against oxidation by the atmospheric oxygen” (id. at 4:45–47 (emphasis added)), and “Table 1 . . . shows the oxygen contents and the magnetic properties of the thus obtained sintered permanent magnets” (id. at 7:19–21 (emphasis added)). These statements demonstrate that Ohashi is concerned with the oxygen content of the alloy, rather than whether the alloy has undergone a removal of electrons. Petitioner has shown sufficiently that the hydrogen gas of the hydrogen pulverization method is a non-oxidizing gas in that it does not cause an element of the magnet alloy to combine with oxygen or be made into an oxide. Pet. Reply 4–5 (citing Ex. 1012, 77:9–13). The hydrogen pulverization method of Hawegawa, therefore, is in accordance with Ohashi’s teachings of conducting the pulverization in an atmosphere of a non-oxidizing or inert gas.6 Accordingly, we are not persuaded that 6 We agree with Patent Owner that the hydrogen gas of Hasegawa’s hydrogen pulverization method “is certainly a non-inert gas.” PO Resp. 9. We determine, however, that Ohashi requires the pulverization be conducted in the atmosphere of a non-oxidizing gas or inert gas, but not necessarily both. Because we have found the hydrogen gas of Hasegawa’s hydrogen pulverization method to be a non-oxidizing gas, it is immaterial whether or not it is inert. modification of Ohashi to utilize a hydrogen pulverization method as taught by Hasegawa is contrary to the teachings of Ohashi.” slip op. at 14

  Patent outcomesUS 6,491,765 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,491,765
• Dynamic Drinkware, LLC v. National Graphics, Inc.All claims unpatentable
  PTAB · Jan 27, 2016 · IPR2014-01162 · APJ Michael P Tierney · IPR · Final written decision

  Claims 1–46 are unpatentable: claims 1, 2, 23, 24, and 27–29 as anticipated by Quadracci ’995; the remaining claims as obvious over the stated combinations.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “in the lenticular art “is one who has several years of work experience in the lenticular industry.” Ex. 1013 ¶ 11. Patent Owner’s declarant, Dr. Garcia, testifies that a person of ordinary skill in the art would have five or more years of experience in the lenticular lens industry or have an understanding of optical engineering including first and higher order geometric and physical optics principles. Ex. 2001 ¶ 13. The parties’ definitions of one of ordinary skill in the art are substantially the same and neither party states how any difference in the parties’ articulated levels of skill impacts the proceeding. For purpose of this decision, we hold that the level of ordinary skill in the art is reflected by the prior art of record, such that one of skill in the art would have had years of experience in the lenticular lens industry or had an understanding of optical engineering, including higher order geometric and physical optics principles. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 6

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

    “Patent Owner does not dispute the proposed constructions, except to state that, consistent with Petitioner’s definition of focal length, one of ordinary skill in the art would have understood that focal length in the ’467 refers to the “effective focal length” of the lens. PO Resp. 3–4. We adopt Petitioner’s proposed claim constructions as they are consistent with the Patent Owner’s use of the terms in the ’467 patent Specification. For example, the term gauge thickness is defined in the ’467 patent with reference to g2 of Fig. 1A and states that the thickness is measured from the outermost edge of the curved surface of the lens to the flat back surface of the lens. Ex. 1001, 2:27–33.” slip op. at 7

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

    “describe . . . each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” Am. Calcar, Inc. v. Am. Honda Motor Corp., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)).” slip op. at 8

  • Expert testimonyPetitioner expert discountedPetitioner expert creditedDecided for patent owner

    “Based on the evidence of record, we credit the ray tracing testimony of Mr. Raymond and are persuaded that the lenticular lens disclosure of Quadracci ’995 is enabling. Specifically, Dr. Garcia acknowledges that focal length formulas other than those recited in the ’467 patent were known in the art and Mr. Raymond demonstrates that, consistent with the teachings of Quadracci ’995, one of ordinary skill in the art could make the described lenses. c. Mr. Raymond’s Gauge Thickness and Focal Length Calculations Patent Owner states that Mr. Raymond’s thickness calculation in his first declaration is either wrong, or it uses an unacceptable index of refraction. Mr. Raymond, in his first declaration, testifies that using the general lens formulas described in the ’467 patent, he arrived at a gauge thickness of 3.4 mils. Ex. 1013 ¶¶ 26–28. Mr. Raymond, however, does not disclose the index of refraction that he used to determine the gauge thickness. Expert testimony that does not disclose the underlying data on which the opinion is based is entitled to little or no weight. 37 C.F.R. 42.65(a). As Mr. Raymond failed to disclose the index of refraction used in his calculations and provide support for his selected refraction index, we do not credit Mr. Raymond’s gauge thickness calculation in his first declaration with respect to Quadracci ’995. As discussed below, however, Mr.” slip op. at 14

  Patent outcomesUS 6,424,467 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,424,467
• Avx Corporation v. Greatbatch Ltd.Rehearing granted
  PTAB · Jan 13, 2016 · IPR2015-00710 · APJ Jon B Tornquist · IPR · Rehearing

  The Board granted rehearing in part and instituted review of claims 1, 2, 5–7, 10, 11, 16, 17, and 20 on anticipation and obviousness grounds; it denied rehearing on the remaining claims.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted in part

    “When the Petition and Dr. Irazoqui’s testimony are considered in view of the Request for Rehearing, we agree that we overlooked Petitioner’s argument that the “gas flow passage” of Figure 2 extends from the upper surface of insulator 122 to the upper exterior of feedthrough 100, i.e., traverses the space between insulator 122 and washer 124. Pet. 35 (citing Ex. 1003, 7:18–21, 7:27–29). Given this evidence associating the “minute” gaps with the space between insulator 122 and washer 124, and in light of our current construction of “laminar delamination gap” requiring no specific dimensions for a “very thin gap,” we are persuaded that the evidence of record sufficiently supports Dr. Irazoqui’s testimony that one of ordinary skill in the art would understand that Fraley discloses a “laminar delamination gap,” under a construction requiring a “very thin space.” 3 Pet. 37–38; Ex. 1002 ¶ 52 (p. 45). Accordingly, for the reasons discussed below, we grant-in-part and deny-in-part Petitioner’s Request for Rehearing and institute inter partes review on the grounds set forth below.” slip op. at 6

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

    “7. Conclusion Based on the foregoing, we are persuaded that Petitioner has demonstrated a reasonable likelihood that claims 1, 2, 5–7, 10, 11, 16, 17, and 20 of the ’553 patent are anticipated by Fraley; we are not persuaded that claims 3, 4, 8, 9, 12–15, 18, and 19 of the ’553 patent are anticipated by Fraley.” slip op. at 12

  • BurdenMixed

    “of the Request for Rehearing, we agree that we overlooked Petitioner’s argument that the “gas flow passage” of Figure 2 extends from the upper surface of insulator 122 to the upper exterior of feedthrough 100, i.e., traverses the space between insulator 122 and washer 124. Pet. 35 (citing Ex. 1003, 7:18–21, 7:27–29). Given this evidence associating the “minute” gaps with the space between insulator 122 and washer 124, and in light of our current construction of “laminar delamination gap” requiring no specific dimensions for a “very thin gap,” we are persuaded that the evidence of record sufficiently supports Dr. Irazoqui’s testimony that one of ordinary skill in the art would understand that Fraley discloses a “laminar delamination gap,” under a construction requiring a “very thin space.” 3 Pet. 37–38; Ex. 1002 ¶ 52 (p. 45).” slip op. at 6

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

    “We are not persuaded by Patent Owner’s argument because Exhibit 2008, relied upon by Patent Owner to support its argument, instructs that “[a] braze fillet should ideally be very small.” Ex. 2008, 1; see also id. at 2 (“Keep the fillet small. Remember, all the good things about a braze joint are happening INSIDE the joint, not in the outside fillets.”). Thus, on this record, regardless of any variation in the size of the braze-fillet, Patent Owner’s evidence and attorney argument do not demonstrate that the space between insulator 122 and washer 124 would be “substantial.” Based on the foregoing, and upon review of Petitioner’s and Patent Owner’s arguments, the evidence of record, and the supporting testimony of Dr. Irazoqui, we are persuaded that Petitioner demonstrates a reasonable likelihood that claims 1 and 16 of the ’553 patent are anticipated by Fraley.” slip op. at 8

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 7,327,553

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.