• Fisher & Paykel Healthcare Limited v. Resmed LimitedAll claims unpatentable
  PTAB · Mar 29, 2018 · IPR2017-00062 · APJ Barry L Grossman · IPR · Final written decision

  Claims 43, 48–50, 57, 58, 60–64, 68–71, and 77–79 are unpatentable as obvious under § 103 over the four instituted combinations.

  RulingsFinal written decision

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

    “In an inter partes review, the Board gives claim terms in an unexpired patent their broadest reasonable interpretation in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under that standard, a claim term generally is given its ordinary and customary meaning, as would be 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). The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is “an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is ‘consistent with the specification.’” In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (citations omitted). The broadest reasonable interpretation differs from the “broadest possible interpretation.” Id. Only terms that are in controversy need to be construed expressly, and then 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). We determine that a specific construction of the claims is not necessary to resolve the issues in this proceeding.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person having ordinary skill in the art (“PHOSITA”) “would have at least a bachelor’s degree in mechanical engineering, biomedical engineering or other similar type of engineering degree combined with at least two years of experience in the field of masks, respiratory therapy, patient interfaces or relevant product design experience.” Pet. 20 (quoting Ex. 1113 ¶ 27). Mr. Eaton mentions the factors he considered (Ex. 1113 ¶ 25), but does not explain how these factors influenced his opinion on the level of ordinary skill in the art (id. at ¶ 27). Patent Owner does not propose a specific level of skill in its Response, nor does Patent Owner comment in its Response on the level of skill proposed by Petitioner. In its Response, Patent Owner neither argues nor cites to Mr. Sleeper’s declaration, which proposes a level of skill. See Ex. 2002 ¶¶ 11–12. At the hearing in this proceeding, counsel for Patent Owner stated “[t]here is no dispute over the substance” of Petitioner’s proposed level of skill.” Tr. 18:4–9; see also Ex. 2002 ¶¶ 11–12 (providing Patent Owner’s declarant’s definition of the level of ordinary skill in the art, which is consistent with Petitioner’s definition).” slip op. at 14

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

    “We find that Mr. Eaton’s testimony, discussed above, provides substantial evidence that a person having ordinary skill in the art would have had good reason to modify D’Souza’s snap fit as proposed by Petitioner. We also find that a preponderance of the evidence establishes that it was within the skill and creativity of a person of ordinary skill to modify D’Souza to include a shroud that includes a retaining portion positioned rearwardly of the front opening, towards the frame, and structured to snap fit with the cushion, as suggested by the snap fit structure in Matula-II.” slip op. at 36

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

    “Here, Petitioner has relied on several references to assert unpatentability. Based on the evidence, we have determined that combining the disclosures of these several references would have been obvious and is not based on hindsight. As noted in KSR, “in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420. A preponderance of the evidence establishes that this is the situation in the case before us. The structural and functional details recited in the Instituted Claims are all disclosed in the prior art. The level of ordinary skill is high – a bachelor’s degree in mechanical engineering, biomedical engineering or other similar type of engineering degree combined with at least two years of experience in the field of masks, respiratory therapy, patient interfaces, or relevant product design experience. As discussed above, a preponderance of the evidence establishes that assembling the puzzle of prior art to meet the desired functional needs of a CPAP mask system of effective, efficient, comfortable use by a patient would have been obvious to this highly skilled person. A preponderance of the evidence discussed above supports the conclusion that combining familiar elements of a CPAP mask, as recited in the Instituted Claims, is no more than the predictable use of prior art elements according to their established functions. KSR, 550 U.S. at 417. A preponderance of the evidence also provides persuasive reasons why these elements would have been combined, thus supporting the legal conclusion of obviousness. Accordingly, we determine that a preponderance of the evidence establishes that claims 43, 48–50, 57, 58, 60–64, 68–71, and 77–79 are unpatentable because the subject matter of each of these claims, considered as a whole, would have been obvious to a person having ordinary skill in the relevant technology of CPAP mask systems.” slip op. at 56

  Patent outcomesUS 9,119,931 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,119,931
• Fisher & Paykel Healthcare Limited v. Resmed LimitedAll claims unpatentable
  PTAB · Mar 21, 2018 · IPR2017-00061 · APJ Beverly M Bunting · IPR · Final written decision

  Claims 33–37 and 40–42 are unpatentable under § 103 over D’Souza-based combinations with Ultra Mirage, Matula-II, and, for dependent claims, Barnett or FlexiFit.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). In that regard, Petitioner asserts that a person having ordinary skill in the art (“PHOSITA”) “would have at least a bachelor’s degree in mechanical engineering, biomedical engineering or other similar type of engineering degree combined with at least two years of experience in the field of masks, respiratory therapy, patient interfaces or relevant product design experience.” Pet. 21 (citing Ex. 1013 ¶ 27). Patent Owner’s expert, Mr. Sleeper, generally accepts this framework, but according to his formulation, the POSITA “would have at least a bachelor’s degree in mechanical engineering, biomedical engineering, or a similar technical field, with at least two years of relevant product design experience. An increase in experience could compensate for less education, and an increase in education could likewise compensate for less experience.” Ex. 2002 ¶ 12. Our determination regarding the patentability of the challenged claims does not turn on the minor differences between these definitions. However, for the purpose of our analysis, we accept Petitioner’s formulation, finding that the POSITA “would have at least a bachelor’s degree in mechanical engineering, biomedical engineering or other similar type of engineering degree combined with at least two years of experience in the field of masks, respiratory therapy, patient interfaces or relevant product design experience.”” slip op. at 8

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

    “In its Petition, Petitioner does not propose that any specific claim term requires construction. Pet. 16. Instead, Petitioner asserts that “[t]he claims of the ’931 Patent should be accorded their “broadest reasonable construction” in light of the specification of the ’931 Patent.” Id. Patent Owner likewise takes the position that no express construction of any claim term is necessary. PO Resp. 21. Having considered the entire record, our determination regarding the obviousness of the challenged claims does not turn on the interpretation of any of the claim terms. Thus, based on the final trial record before us, we determine that express construction of these terms or limitations is not necessary for purposes of this Final Written Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “articulated reasoning with rational underpinning explaining why a person with ordinary skill in the art would have also combined the teachings of D’Souza and Matula-II. Namely, that the POSITA would modify D’Souza’s shroud to include rearwardly extending snap fingers to provide a removable mechanical interlock between the shroud and cushion module, facilitate deformation of the engagement part; and make it easier to join the shroud to the cushion module. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). As the Federal Circuit has made clear, when a reason to combine or modify references is in dispute, we must make a finding of a motivation to combine and must have an adequate evidentiary basis for that finding. See In re Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016). “‘[C]onclusory statements’ alone are insufficient and, instead, the finding must be supported by a ‘reasoned explanation.’” Id. at 1383 (quoting In re Lee, 277 F.3d 1338, 1342, 1345 (Fed. Cir. 2002)); accord id. at 1384 (not permitting the Board to effectively adopt the petitioner’s argument, which “amount[ed] to nothing more than conclusory statements that a PHOSITA would have been motivated to combine the prior art references to obtain additional information.”). Moreover, the Board “cannot rely solely on common knowledge or common sense to support [its] findings.” Id. at 1383. Here, neither Patent Owner, Mr. Eaton, nor Mr. Sleeper dispute that annular snap fits with fingers are common features in CPAP masks. See e.g., Ex. 1013 ¶¶ 89–95; Ex. 1025, 166:24–167:12. Petitioner supports its position by directing us to the cross-examination testimony of Patent Owner’s expert, Mr. Sleeper, “agree[ing] that a POSITA would have been motivated to modify the annular interlock of D’Souza and that the proposed modification would have been a known suitable option.” Pet. Reply 2 (citing Ex. 1025, 168:5—171:10, 173:24—174:15). Moreover, the parties’ experts agree that D’Souza’s flanged element 440 connects to the skeleton frame or shroud by at least an interlocking arrangement or snap fit. Id. at 4 (citing Ex. 1025, 150:5–151:25). And, Mr. Sleeper and Mr. Eaton agree that the disclosed interlocking arrangement taught by D’Souza would not function as expected, requiring a change to eliminate material stress and strain as discussed below (Pet. Reply 4–5): A Well, again, as this is described, both Mr. Eaton and I think it would break. So we had to describe -- he described four nice modifications that would make this work, but as described, I don't -- neither one of us see how this actually could go together without damage. Q Is it -- is it your opinion that as described in D’Souza that if the part 440 and part 448 were both made out of, say, polycarbonate, that there would be some material stress or strain if you were trying to put these pieces together? A That was in Mr. Eaton’s deposition and I agreed. Q You agree with that? And so would you also agree that looking at D’Souza, one of skill would be motivated to change that connection such that you were going to eliminate that material stress or strain? A Yes, if you were to make this work, you would have to change something. Q And you would also agree that in 2007, one of skill in the art would have been capable of making modifications to this connection at 440 and 448 such that you would minimize the material stress or strain, correct? A A person of skill in 2007? Q That’s right. A Yeah, I think that’s correct. Ex. 1025, 152:15–153:17 (emphasis added). Given the experts’ agreement that the interlocking arrangement taught by D’Souza would not function as expected due to concerns over material stress at the annular interlock between D’Souza’s shroud and frame, Petitioner argues persuasively that “this strain would have motivated a POSITA to modify D’Souza and that such a change would have been necessary to make D’Souza work as intended.” Pet. Reply 4–5 (citing Ex. 1025, 168:13–25, 153:3–9).” slip op. at 25

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

    “For these reasons, and based on the complete record, we are persuaded by Petitioner’s arguments and evidence and find that D’Souza teaches a shroud module having an annular opening with a retaining portion extending rearwardly from the opening for retaining a cushion module using a mechanical interlock. Likewise, we are persuaded by Petitioner’s arguments and evidence and find that Matula-II teaches a mechanical interlock that is a snap-fit.” slip op. at 22

  Patent outcomesUS 9,119,931 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,119,931
• Fisher & Paykel Healthcare Limited v. Resmed LimitedSome claims unpatentable
  PTAB · Mar 7, 2018 · IPR2017-00059 · APJ James J Mayberry · IPR · Final written decision

  Claims 73–76, 78–82, and 84–86 are unpatentable under § 103; claims 23–72, 77, and 83 were not shown unpatentable because the proposed modification would change Ogden’s principle of operation.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “We find both parties assert very similar definitions of the level of ordinary skill in the art. Both definitions include a degreed engineer with two years of experience. Fisher identifies the fields of experience as “masks, respiratory therapy, patient interfaces or relevant product design experience” and ResMed, through Mr. Sleeper, defines the field of experience as “relevant product design experience.” Mr. Sleeper declares that additional experience may compensate for less education and additional education may compensate for less experience. We find, based on our review of the complete record, that the evidence of record supports a level of ordinary skill in the art consistent with the parties’ definitions—a person having a bachelor’s degree in mechanical engineering, biomedical engineering or other similar type of engineering degree combined with two years of experience in the field of masks, respiratory therapy, patient interfaces, or other relevant product design experience. We also find that additional experience may compensate for less education and additional education may compensate for less experience. Further, we note that our patentability analysis presented below would reach the same findings and determinations under either party’s definition of the level of ordinary skill in the art.” slip op. at 10

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

    “ResMed takes the position that the plurality of tabs must form the snap-fit structure. See PO Resp. 27 (“Moreover, even if there was a ‘snap-fit,’ there would only be a snap-fit by a single tab (detent 43, illustrated below in Figure 1)—not the required plurality of tabs”); Tr. 35:7–9 (“The plurality of tabs are what need to have the snap-fit. And having one snap-fit for one tab is not enough to meet this claim language.”). As detailed below, we determine that the broadest reasonable construction of the disputed claim limitation encompasses a structure having a plurality of tabs, but the plurality of tabs not necessarily providing the snap-fit structure. That is, under the broadest reasonable construction, a single tab may provide the snap fit structure. First, the plain reading of claim 73 supports our construction. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“[T]he context in which a term is used in the [claim at issue] can be highly instructive.”). As a starting point, the plain meaning of the phrase “plurality of tabs” is two or more tabs and we discern nothing in the record to indicate a contrary meaning. See, e.g., Dayco Prod., Inc. v. Total Containment, Inc., 258 F.3d 1317, 1327–28 (Fed. Cir. 2001) (“[W]e have held that ‘plurality,’ when used in a claim, refers to two or more items, absent some indication to the contrary.”). The plain language of the claim also requires the two or more tabs be structured to attach removably the headgear connector to the rigid mask frame. The claim language further requires this removable attaching be with a snap-fit. The language of the claim, however, does not require two or more tabs be associated with the snap-fit. That is, nothing in the plain language of the claim element precludes a structure that includes two or more tabs interfacing with the rigid mask, where only one of the tabs is associated with snap-fit aspect of the interfacing.” slip op. at 13

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

    “What a reference teaches and how a proposed modification of a reference would change its principle of operation are underlying factual inquiries in an obviousness analysis. See, e.g., Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1046 (Fed. Cir. 2017) (addressing the Board’s factual findings with respect to a reference’s principle of operation). We find that Ogden’s principle of operation is to employ a rigid plate loosely mounted to a rigid shell, such that “in use, the rigid plate is free to move relative to the rigid shell in response to any unequal forces being applied to it by the side straps as the patient, for example, turns his or her head from side-to-side.” Ex. 1102, 1:57–61; see also PO Resp. 52–53, 61 (indicating that Ogden’s principle of operation is its loosely-mounted rigid plate). Ogden’s disclosure as a whole supports our finding as to its principle of operation. As Ogden discloses, the loose-fitted rigid plate “rotate[s] to compensate for any unequally applied forces as the patient moves his or her head.” Ex. 1102, 4:17–20. [W]hen the patient turns his or her head and instead of tending to lift the shell 3 and its seal 5 off the patient’s face and breaking the seal as in FIG. 4, the rigid plate 9 of the present invention in FIG. 5 rotates relative to the rigid shell 3. This movement then compensates or equalizes the forces and keeps the shell 3 securingly in place with the center lines 69 and 71 of the shell 3 and the patient’s face aligned. Id. at 4:31–38; see also 4:61–5:3 (describing how Ogden’s facial mask compensates for any unequal applied forces by the side straps through the operation of loosely-mounted rigid place 9); Fig. 4 (illustrating how the seal at a patient’s face is broken by side-to-side movement with a rigid plate fixedly mounted to a rigid shell); cf. id. at 1:16–20 (“[A] common problem often arises that the mask will tend to unseat and leak as the patient turns his or her head (e.g., from side-to-side) or rolls over in bed and the straps contact and are deflected by a pillow, blanket, or other object.”); PO Resp. 52 (describing the problem addressed by Ogden).” slip op. at 32

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

    “A reference may be said to teach away when a person of ordinary skill, upon reading the reference . . . would be led in a direction divergent from the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)); see, e.g., In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that, to teach away, the prior art must “criticize, discredit, or otherwise discourage the solution claimed”). We find that Ogden’s disclosure fails to rise to the level of teaching away. Ogden provides a solution to a problem with fixed headgear connectors but does not criticize, discredit, or otherwise discourage fixed headgear connectors. Instead, Ogden illustrates that a specific prior art mask with a fixed headgear connector may result in leakage of supplied air to the mask and discloses an improvement to that specific mask. Ogden does not indicate that a fixed headgear connector renders a mask inoperable or otherwise indicates that a person having ordinary skill in the art would not consider a path that led to a mask with a fixed headgear connector. We also do not agree with ResMed’s characterization that Ogden expressly teaches away from the proposed combination. Ogden expressly teaches a solution, but does not expressly teach away from other solutions. We note that, “[w]here the prior art contains ‘apparently conflicting’ slip op. at 38

  Patent outcomesUS 8,960,196 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,960,196
• Panduit Corp. v. Corning Optical Communications LLCAll claims unpatentable
  PTAB · Feb 27, 2018 · IPR2016-01703 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claims 1–20 are unpatentable: claims 1–3, 5–15, and 18–20 as obvious over Smrha, Coburn, and Niazi; claims 4, 16, and 17 over those references and Wagner.

  RulingsFinal written decision

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

    “Ex. 1001, 16:31–36. The explicit recitation in the claims of a fiber optic module having, among other things, an inside and an optical fiber provided within the inside thereof, does not support Patent Owner’s argument that a housing with an inside and fiber optic components disposed within its walls are “already inherent” in the term “fiber optic module.” See PO Resp. 14. We agree with Petitioner’s assertion that Patent Owner’s proposed construction “has no foundation in the specification.” Reply 3. As” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner argues for a similar level of skill in the art, contending that “[a] person of ordinary skill in the art of the ’148 patent would have a bachelor’s degree in mechanical engineering, materials science, or a related field; and 2 years of experience in fiber optic equipment.” PO Resp. 1 (citing Ex. 2001 ¶¶ 14–15). We note the parties’ proposals differ in the specific number of years of experience required; however, neither party argues this distinction makes a difference in analyzing the asserted grounds or other issues in this proceeding. Based on this record, we determine that the level of ordinary skill proposed by Petitioner is consistent with the challenged patent and the asserted prior art. We, therefore, adopt that Petitioner’s proposed level of ordinary skill in the art. Our findings and conclusions, however, would be the same under either party’s proposed level of ordinary skill in the art.” slip op. at 18

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

    “have a reason or motivation to combine Coburn with Smrha and enclose the adapter panels. PO Resp. 16–26. According to Patent Owner, it does not make sense to enclose the adapter panels in modules because (1) “the open faced adapters in Smrha do not include any optical fibers that would require protection by a module” (PO Resp. 17); (2) the adapter panel arrangement in Smrha does not accommodate a rear connector (PO Resp. 19); and (3) Smrha discloses the use of open cable connection locations (PO Resp. 21). But, contrary to Patent Owner’s arguments, Petitioner relies on Coburn (see, e.g., Ex. 1005, Fig. 2) as teaching an enclosed module with an optical fiber inside, a module accommodating a rear connector, and cable connection locations inside an enclosed module. Pet. 38–39, 62–65. Patent Owner ignores that the combination of cited references teaches all the elements of the module guide system limitation and does not squarely address whether claim 1 would have been obvious in light of the proposed combination of the teachings in the cited art. Thus, Patent Owner’s argument is not persuasive. Considering this evidence and the arguments of the parties, we find Petitioner has shown that there existed a rational basis with articulated underpinnings to combine the teachings of Smrha and Coburn that is, “[m]odifying the well-known independently translatable modules as taught by Smrha with the structure of an encased cassette taught by Coburn would lead to the predictable result of independently translatable, fully-enclosed modules with connectors on the front and rear of the cassette.” Pet. 28 (citing Ex. 1003 ¶ 68). Accordingly, we find Coburn and Smrha teach all the elements of this limitation in claim 1 and that there existed a motivation to combine these teachings.” slip op. at 34

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “non-obviousness establishes that claim 113 of the ’148 patent would not have been obvious. PO Resp. 31–50. Patent Owner offers evidence of purported copying, praise by others, commercial success, long-felt need, recognition of a problem, and failure of others. Id. However, before this evidence may be given substantial weight with regard to the obviousness of claim 1, it must be shown that it relates to the invention recited in claim 1. Having considered all the arguments and evidence presented during trial, Patent Owner has failed to establish its purported evidence of non-obviousness relates to the invention recited in claim 1. With regard to Patent Owner’s EDGE product which is alleged to be covered by the ’148 patent, Patent Owner does not argue or present sufficient evidence establishing that there is, in the EDGE product itself, “at least one optical fiber provided within the inside of the at least one fiber 13 In its argument based on objective evidence of non-obviousness, Patent Owner refers only to claim 1. See PO Resp. 31 (“Objective Indicia Further Establish the Non-Obviousness of Claim 1”). Claims 2–20 are not referred to in this section of Patent Owner’s Response. Id. at 31–50. optical module connected to the at least one fiber optic adapter” as recited in claim 1 (Ex. 1001, 16:33–36). See PO Resp. 31–34; see also Reply 22 (“Nowhere in the ten pages of argument, or three self-serving declarations that Corning submits, can one find evidence of a nexus between any of copying, praise by others, commercial success, or a long, unfelt need for the EDGE™ system and the claimed features.”). The same deficiency exists in Patent Owner’s argument relating to Panduit’s HD Flex product which is alleged to be a copy of Patent Owner’s product. PO Resp. 34–46. In addition, Patent Owner’s arguments regarding commercial success, long-felt need, recognition of a problem, and failure of others seemingly relate to the “’938 patent”14 not the ’148 patent. See PO Resp. 47–50. Indeed, the ’148 patent is not referred to expressly in this part of Patent Owner’s Response. Id. And Patent Owner presents arguments which do not relate to limitations found in claim 1 of the ’148 patent, particularly with respect to the arguments emphasizing that the modules can be installed from the rear. Id. For example, Patent Owner argues, “[i]ndeed, as explained above, not only do these products [Corning’s EDGE and Panduit’s Flex] practice the claims of the ’938 patent, the feature recited in claim 1— slidable trays supporting rear-installable modules—is a ‘key’ feature used by both companies to sell these products and to distinguish them over the existing systems.” PO Resp. 48 (emphasis added). The installation of the modules from the rear or a guide system configured to receive a module from the rear is not recited in claim 1 of the ’148 patent. 14 We assume this is a reference to US Patent No. 8,184,938 B2 at issue in IPR2017-01709.” slip op. at 36

  Patent outcomesUS 8,452,148 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,452,148
• Google LLC v. Makor Issues & Rights Ltd.Some claims unpatentable
  PTAB · Feb 12, 2018 · IPR2016-01535 · APJ Robert L Kinder · IPR · Final written decision

  Claims 12–14 and 18 are unpatentable as obvious over Xu and Peterson; unpatentability was not shown for claims 15, 16, and 19.

  RulingsFinal written decision

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

    “We first examine the claim as a whole with a focus on the disputed language. The claim language itself requires “computing real time traffic jam identification.” Ex. 1001, 23:10 (emphasis added). By qualifying the claimed traffic jam as being determined in real time, and by also by using “sample vehicles to measure time delays,” a person of ordinary skill in the art would understand that traffic jams are more immediate, e.g., real time, than the regular, statistical, congestion described in the ’783 patent. See Ex. 2002 ¶ 7 (“[C]laim 12 further goes on to recite the computation of ‘traffic jams,’ by using ‘sample vehicles to measure time delays,’ which a person of ordinary skill in the art would understand must therefore be distinct from regular, statistical, congestion.”). The claim also requires “collecting GPS data and computing individual statistical travel time estimates (regular times) for predetermined roads.” Ex. 1001, 23:3–6; Tr. 27:16–29:17 (discussing the relevance of this limitation). Reading the claim as a whole suggests that a “traffic jam” must be a sudden unpredictable change of traffic on a segment as compared to these regular times. See Ex. 2002 ¶ 7.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). In that regard, Petitioner’s expert, Dr. Braasch, testifies that:” slip op. at 18

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

    “Based on the final record, Petitioner has not provided sufficient arguments or credible evidence establishing how TravTek teaches the traffic jam limitation. Specifically, Petitioner has not persuasively shown how TravTek teaches the use of measured time delays of sample vehicles for computing a real time traffic jam. As explained above, we construed the term “traffic jam” to mean “a sudden unpredictable change of traffic in a segment as compared to regular times, i.e., individual statistical travel time estimates,” and thus the claimed “measuring time delays” must also be in relation to regular times. Claim 12 also requires that traffic jam identification is determined “by utilizing the sample vehicles for measuring time delays.” Petitioner has not directed us to record evidence sufficient to show that TravTek teaches these limitations.” slip op. at 24

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “First, we are not persuaded by Patent Owner’s argument that Xu only uses information from third party, or other external, sources to identify current traffic conditions. Patent Owner’s argument narrowly focuses on one example described in Xu, and fails to consider Xu as a whole, from the perspective of an ordinarily skilled artisan. A prior art reference must be considered for everything it teaches by way of technology and is not limited to the particular example it is describing. EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985). Furthermore, in an obviousness analysis, we must consider the combination of references, as a whole, in light of the general knowledge of an ordinarily skilled artisan. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). One stated objective of Xu is to create “a method for collecting dynamic traffic data using equipment installed in vehicles” as opposed to just relying on the prior art “methods for collecting traffic data” such as “sensing systems” that “are installed along highways,” using “[v]ideo cameras” or “pulsed laser range image technology.” Ex. 1006, 3:23–48. Given that a purpose of Xu was to use dynamic traffic data obtained from GPS receivers installed in vehicles, Xu, as a whole, provides a basis for using that same dynamic traffic data for determination of real time traffic conditions as testified by Dr. Braasch. Id.; see also id. at 2:63–67, 4:17–22; Ex. 1026 ¶ 36. For example, Xu explains how current traffic conditions may impact traffic forecasts and “the [TSC] receives a plurality of traffic data indicating that the link is experiencing an unusual congestion, by comparing the current traffic status with the normal traffic condition.” Id. at 12:66–13:6 (emphasis added); Ex. 1026 ¶ 36. Based on the final record, Petitioner establishes that the “plurality of traffic data” would include dynamic vehicle position data and that “time delays” are determined by comparing the current traffic status as determined by vehicle position with the normal traffic condition. Ex. 1006, 13:2–5 (“comparing the current traffic status with the normal traffic condition”); see also Pet. 68; Ex. 1003 ¶¶ 145–46; Ex. 1026 ¶¶ 32–40. Indeed, as Dr. Braasch testifies, vehicle position data would be a source of real time traffic conditions indicative of unusual congestion. See Ex. 1026 ¶ 36; Ex. 1006, 12:66–13:6; Tr. 33:7–34:8 (citing Ex. 1006, 12:54–65). We are also persuaded by Petitioner’s argument that Xu’s “communication system ‘forwards road traffic data reported from all vehicles 20 . . . to the traffic service center’ and that this data is used to provide ‘an optimum travel route based on real-time traffic conditions.’” Pet. Reply 17 (citing Ex. 1006, 7:37–52; 8:26–36; 12:66–13:6). Also persuasive is the cross-examination testimony of Dr. Kurzhanskiy that “one of the plurality of traffic data that could be being [sic] used to detect unusual congestion is vehicle probe position data.” Pet. Reply 17 (quoting Ex. 1024, 82:19–83:7) (also agreeing “that Xu discloses that vehicle position data is a form of traffic data that the system collects”). For these reasons, we are not persuaded by Patent Owner’s argument that Xu fails to disclose the traffic jam limitation.” slip op. at 36

  Patent outcomesUS 6,480,783 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,480,783
• Pacific Surf Designs, Inc. v. Surf Waves, Ltd.Some claims unpatentable
  PTAB · Jan 17, 2018 · IPR2016-01454 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1–5 and 7–20 are unpatentable; claim 6 was not shown unpatentable, based on the anticipation and obviousness grounds summarized by the Board.

  RulingsFinal written decision

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

    “Although the district court construed “activity section” as Petitioner describes, it also construed “curved sidewall extending substantially upwardly from [an/another] edge of the middle section,” which is part of the activity section, as “upwardly curved wall that the rider may traverse extending from [an/another] edge of the middle section.” Ex. 1013, 12–14. That said, it does not appear that the district court specifically considered whether to include “that the rider may traverse” in its construction. Id. It did, however, identify the issue regarding “activity section” as whether that term should include Petitioner/Defendant’s “additional proposed phrase ‘on 6 At the hearing, Patent Owner argued that the Lochtefeld 530 lacks the claimed sidewall because: the sidewall is “not to be designed [to be traversed]. But more than designed, there’s nothing in this reference that tells you that you should be traversing on it. So it’s more than just designed. There’s nothing in this reference that says you would traverse it.” Tr. 34:15–22. all of which a rider can ride.’” Ex. 1013, 10:1–4. It concluded that such language would be “superfluous and introduce[] ambiguity.” Id. at 10:9–12. We conclude the broadest-reasonable interpretation of “activity section” in light of the Specification does not require that a rider may traverse the entire activity section, including all portions of the sidewalls. Such a construction would be inconsistent with the Specification’s description that sidewalls may curve past vertical, as shown in Figure 12C. Ex. 1002, 4:5–6, Fig. 12C. In this regard, our construction comports with that of the district court. See Ex. 1013, 10:9–12. Beyond that, as discussed below (see infra at 41), whether the claims require that a rider may traverse some portion of the sidewall does not affect our conclusions regarding unpatentability. Thus, we do not further construe the “activity section.”” slip op. at 11

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

    “Regarding the claim phrase “extending substantially upwardly,” Patent Owner’s expert takes the position that curvature must be measured “perpendicular to a tangent along the edge.” See Ex. 1014, 59:3–60:1. Patent Owner relies on its expert to argue that Lochtefeld 589 does not disclose the claimed sidewalls but provides no support for construing “extending substantially upwardly” in such a manner. Patent Owner’s expert does not provide any support for such a construction in his declaration. Instead, he asserts that Lochtefeld 589 discloses sidewalls that extend either downward or horizontally, without explaining how he comes to that conclusion. Ex. 2001 ¶ 23. We will not impose a limiting construction based solely on an expert’s unsupported statements. Without some reason to construe “extending substantially upwardly” as sought by Patent Owner, we consider the ordinary meaning of the phrase within the context of the claims and Specification. The Specification gives a very permissive and general description of the sidewalls. E.g., Ex. 1001, 3:15–22, 3:56–4:6. Thus, the Specification leads us to construe “extending substantially upwardly” as encompassing a sidewall that, at some point, extends above the edge of middle section corresponding to the side wall.” slip op. at 13

  • Prior constructionTerm construed petitioner constructionDecided for petitioner

    “3. “the first curved side” All claims recite that the “second curved sidewall” is opposite “the first curved side.” Although the claims do not provide antecedent basis for “the first curved side,” Petitioner proposes that the term be construed as “the first curved sidewall.” Pet. 20. Petitioner notes that Patent Owner argued in the related district court proceeding that “[i]t is beyond dispute that the claim term ‘the first curved side’ was intended to be ‘the first curved sidewall,’ both to comport with all of the disclosures of the ’016 Patent and also in accordance with proper antecedent basis.” Id. (citing Ex. 1010, 28:13–18). Patent Owner does not address this issue. A district court may “correct an error in a patent by interpretation of the patent where no certificate of correction has been issued . . . only if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims.” Novo Indus., LP v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003). We have applied this same standard in our proceedings. E.g., Apple Inc. v. Achates Reference Publ’g, Inc., Case IPR2013-00080, slip op at 10–12 (PTAB June 3, 2013) (Paper 22). Here, we conclude the claims are properly read such that “first curved side” refers to the “first curved sidewall” and that such correction is not subject to reasonable debate. Neither party has identified how the prosecution history suggests a different interpretation. Thus, we adopt Petitioner’s proposed construction, namely “first curved sidewall.”” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “1. The level of ordinary skill in the art Petitioner asserts that the applicable person of ordinary skill in the art is “a person with skill in designing, manufacturing, or refurbishing surfing simulation water rides.” Pet. 17. Petitioner’s expert declarant applies that definition in his analysis. Ex. 1002 ¶ 17. We adopted that definition in our institution decision and noted that the teachings of the prior art presented in the Petition reflect that level of skill. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Inst. 19. Patent Owner does not challenge Petitioner’s definition of the level of ordinary skill in the art, and we also adopt it here.” slip op. at 30

  Patent outcomesUS 8,088,016 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 8,088,016
• Cree, Inc. v. Optolum, Inc.Institution denied
  PTAB · Dec 4, 2017 · IPR2017-01511 · APJ Nathan A Engels · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim unpatentable, chiefly because Begemann did not disclose the claimed heat-conduction-to-contained-fluid limitation.

  RulingsInstitution decision

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

    “evidence. As explained below and given the evidence of record, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that it will prevail on its assertions that Begemann anticipates either of claims 17 or 30. 1. Principles of Law” slip op. at 8

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

    “136 S. Ct. 2131, 2144–46 (2016) (upholding the Board’s use of the broadest reasonable interpretation standard in Inter Partes Review proceedings). Under the broadest reasonable interpretation standard, and absent any special definitions, claims terms are given their ordinary and customary meaning as would be 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). Any special definitions for claim terms or phrases must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Petitioner advances interpretations of the claim terms “elongate,” “thermally conductive member,” and “heat dissipation protrusions.” Pet. 17–18. In turn, Patent Owner advances interpretations of “thermally conductive member,” “heat dissipation protrusions,” and “configured to.” Prelim. Resp. 17–21. Having considered the evidence of record and as reflected in the discussion below, we determine that express construction of these terms is not necessary for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “A claim is anticipated if each limitation of the claim is disclosed in a single prior art reference arranged as in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). “The requirement that the prior art elements themselves be ‘arranged as in the claim’ means that claims cannot be ‘treated . . . as mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims and that give the claims their meaning.’” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Lindemann Maschinenfabrik GmbH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed. Cir. 1984)). The Federal Circuit has also explained, however, that “a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (citing In re Petering, 301 F.2d 676, 681 (CCPA 1962)).” slip op. at 8

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

    “likewise require that the thermally conductive member includes the “configured to” limitation and “one or more heat dissipation protrusions, at least one of said heat dissipation protrusions being carried on said elongate member outer surface” limitations discussed above. Ex. 1001 at 4:47–50, 5:60–63. In addition to the anticipation arguments for claims 17 and 30, Petitioner argues in the alternative, “[s]hould it be determined that Begemann does not disclose the claimed heat dissipation protrusions, then claim 17 is obvious in view of Begemann in combination with English” (Pet. 28) and “claim 30 is obvious in view of Begemann in combination with English . . . for reasons previously explained . . . for claim 17” (Pet. 59). According to Petitioner, English expressly discloses the placement of cooling fins on an exterior of a hollow, metal base portion of an elongated, thermally conductive metal support to further enhance heat dissipation for cooling LEDs mounted on the metal support. Pet. 31. Petitioner argues a person of ordinary skill would have been motivated to provide the cooling fins of the lamp of English to the outer surface of Begemann’s gear column to enhance the performance and/or efficiency of cooling the LEDs by enhancing heat dissipation away from the gear column, substrate, and LEDs “to air circulating inside and at the outer surface of the gear column 1.” Pet. 31 (citing Ex. 1008 ¶¶ 93–94). Further, Petitioner presents the following annotated copy of Begemann’s Figure 1 to illustrate its proposed modification of Begemann’s gear column using English’s fins: Petitioner’s annotated version of Begemann Figure 1 with accompanying text that describes providing cooling fins to the outer surface of Begemann’s gear column 1. Pet. 33 (citing Ex. 1003 at 4:6–9). As Patent Owner argues (Prelim. Resp. 39), Petitioner does not rely on English to meet the “configured to” limitation for either of claim 17 or 30 (see, e.g., Pet. 26–27, 55–56 (citing only Begemann for the “configure to” limitation)). Having determined above that Begemann fails to disclose the “configured to” limitation, Petitioner’s reliance on English to satisfy the heat dissipation protrusions limitation fails to cure the noted deficiencies in Begemann with regards to the “configured to” limitation of claims 17 and 30 of the ’028 Patent.” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,242,028
• Smith & Nephew, Inc. v. Conformis, Inc.Rehearing denied
  PTAB · Nov 29, 2017 · IPR2017-00372 · APJ James A Worth · IPR · Rehearing

  The Board denied Smith & Nephew’s rehearing request, leaving institution denied for claims 1–83 because the petition failed to show a reasonable likelihood of obviousness.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. DISCUSSION 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., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3

  • BurdenNot reached

    “II. DISCUSSION 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., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3

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

    “combination of Radermacher and Kenna in which a cutting guide (as in Radermacher) is aligned intra-operatively (as in Kenna), but that the Decision did not address a combination of Radermacher and Kenna in which there is angular alignment (as in Kenna) when the cutting guide is planned pre-operatively (which Petitioner argues to have been taught in Radermacher). First, we regard this latter argument to be a new argument. The argument in the Petition is reproduced above. We conclude that the Petition provided inadequate argument and reasoning for combining the references in this manner, i.e., to take the intra-operative teachings of Kenna and apply them pre-operatively. Neither the Petition nor Declaration explain how this would have been accomplished or persuade us that such a combination would have been obvious (without intra-operative adjustment, as taught in Kenna). In particular, the Petition does not explain adequately how a person of ordinary skill would have included Kenna’s angle adjustment teaching in Radermacher’s prosthesis with a patient-specific surface, rather than rotating Kenna’s cutting guide intra-operatively. Although we appreciate Petitioner’s argument that the combination does not require bodily incorporation of one prior art device into another, we are not persuaded that the Petition adequately set forth what that combination would be, or how it would be achieved. See, e.g., Pet. 43–45 (quoting Kenna and asserting it would have been obvious to combine the teachings of the prior art).” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner’s reliance on Exhibits 1051, 1054, 1055, and 1057 is misplaced because the Petition did not contain developed arguments with respect thereto, and we regard this as a new argument. As such, we determine that we did not overlook or misapprehend any arguments with respect to Exhibits 1051, 1054, 1055, and 1057. To the extent that Petitioner relies on Kenna for the argued limitation, we address that contention below.” slip op. at 5

  § 103 obviousness
  Patents in suitUS 8,377,129
• Wendt Corporation v. Iqasr, LLCInstitution denied
  PTAB · Sep 28, 2017 · IPR2017-01080 · APJ Richard H Marschall · IPR · Institution

  The Board denied institution because Petitioner failed to show a reasonable likelihood that claims 1–15, 18–20, and 22 were unpatentable over Jody or Jody and the 1998 Handbook.

  RulingsInstitution decision

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

    “We review the Petition under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, we determine that Petitioner has failed to demonstrate a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute an inter partes review. A.” slip op. at 2

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

    “automobile shredder residue,” “sorting, non-ferrous recovery system,” “magnetic fuzz,” “selected magnetic fuzz,” “substantially free,” “recyclable materials,” and “air-locked automobile shredder residue sorting, non-ferrous recovery system” require construction. Pet. 12–35. In turn, Patent Owner proposes its own construction for those same terms. Prelim. Resp. 3–24. Having considered the evidence presented, we determine that we need only address the meaning of “magnetic fuzz” for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). slip op. at 6

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “The Petition also lacks an explicit inherency analysis. As Petitioner acknowledges in its legal background, inherent disclosure “necessarily describes” the unstated limitation. Pet. 35 (citing Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002)). Even if Petitioner established that magnetic fuzz is likely present and sorted using Jody’s process, that does not establish inherency. See Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639 (Fed. Cir. 2011) (“The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” (citation omitted)). To the extent that Petitioner’s argument that magnetic fuzz “would be part of the plastic-rich stream and initially would be sorted from the PUF, fines, etc.,” amounts to an inherency argument, it lacks adequate support. Pet. 40–41 (citing Ex. 1004 ¶ 69) (emphasis added). Petitioner’s assertion fails to address why magnetic fuzz would be present in Jody’s automobile shredder residue in the first place, much less that Jody’s process necessarily must sort that magnetic fuzz. Given Jody’s failure to disclose magnetic fuzz expressly, Petitioner needed to do more than merely assume that magnetic fuzz is present and assert that magnetic fuzz “would be” sorted, without explaining why this must be the case.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “2. Discussion To establish anticipation under 35 U.S.C. § 102, “all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Moreover, the reference must “enable one of ordinary skill in the art to make the invention without undue experimentation.” Impax Labs., Inc. v. Aventis Pharms. Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008); see In re LeGrice, 301 F.2d 929, 940–44 (CCPA 1962).” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,132,432
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Advanced Touchscreen And Gesture Technologies, LLCAll claims unpatentable
  PTAB · Aug 29, 2017 · IPR2016-00653 · APJ Beverly M Bunting · IPR · Final written decision

  Claims 20, 33, 35, and 36 are unpatentable as obvious over Westerman and Bach, and over Ure, Edwards, Harrison, and Stearns.

  RulingsFinal written decision

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

    “Inc. (collectively “Petitioner”) filed a Petition requesting inter partes review of claims 20, 33, 35, and 36 of U.S. Patent No. 8,717,303 B2 (Ex. 1001, “the ’303 patent”). Paper 1 (“Pet.”). Advanced Touchscreen and Gesture Technologies, LLC (“Patent Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). Taking into account the arguments presented in the Preliminary Response, we determined that the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail with respect to its challenge of claims 20, 33, 35 and 36 (“the challenged claims”) of the ’303 patent. Pursuant to 35 U.S.C. § 314, we instituted this trial on August 31, 2016, based on the grounds identified in the Order section of the Decision on Institution. Paper 9, 44 (“Dec. on Inst.”).” slip op. at 2

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

    “Edwards and Harrison, for the foregoing reasons and based on the evidence before us, we find that one of ordinary skill in the art would have incorporated Stearns’ touch sensors in the touch-sensitive device of Ure “in order to provide a device that, e.g., identifies errant touches, responds to touch by non-conductive objects, and avoids erroneous detections of touch caused by environmental factors.” Ex. 1003 ¶ 250 (citing Ex. 1011, 1:6–10; 1007, 1:6–8.” slip op. at 93

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner

    “secondary considerations of non-obviousness. As to secondary considerations, we note that factual inquiries for an obviousness determination include secondary considerations based on evaluation and crediting of objective evidence of nonobviousness. Graham, 383 U.S. at 17. Notwithstanding what the teachings of the prior art would have suggested to one with ordinary skill in the art at the time of the invention, the totality of the evidence submitted, including objective evidence of nonobviousness, may lead to a conclusion that the claimed invention would not have been obvious to one with ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471–1472 (Fed. Cir. 1984). Such a conclusion, however, requires the finding of a nexus to” slip op. at 68

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

    “by a preponderance of the evidence that claims 20, 33, 35, and 36 are unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of Ure, Edwards, Harrison, and Stearns.” slip op. at 103

  Patent outcomesUS 8,717,303 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,717,303

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.