- Masimo Corporation v. Apple Inc.Institution deniedPTAB · Sep 27, 2023 · IPR2023-00774 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution because Masimo did not show a reasonable likelihood that the claimed design of claim 1 was unpatentable under any of its three obviousness grounds.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner that the claimed design includes such a feature. We note that there is some potential ambiguity in Petitioner’s construction as to that feature of an outermost continuous circle as between the three colorized figures reproduced on pages 12 and 13 of the Petition (and also reproduced above in § I.C.1). It would seem, however, that the colorized figure on page 13 of the Petition appears to suggest an outer circle in identifying the “Chamfered Edge” and the “Vertical Edge” as claimed features. See Pet. 12. Because we think that the “outermost continuous circle” is a claimed feature of the ’279 patent, we adopt the claim construction that is advanced by Patent Owner as clearly noting the presence of such a feature. See, e.g., supra § I.C.2. We note, however that the outcome of this proceeding would ultimately be the same even were we to adopt Petitioner’s claim construction. That is so because (1) Petitioner’s construction also appears to recognize the outermost continuous circle, and (2) for reasons that are discussed at length below, we conclude that Patent Owner has identified sufficient deficiencies in Petitioner’s proposed grounds that preclude institution irrespective of any claim construction.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In assessing the parties’ views as to level of skill of a designer of ordinary skill in the art, we conclude that they are effectively the same. Indeed, the parties do not identify any material difference between the parties’ proposed assessment. Nevertheless, for clarity and completeness, we adopt Petitioner’s proposed assessment. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“those portions. For instance, as noted by Patent Owner (see, e.g., Prelim. Resp. 30–33) the arc-shaped portions of the ’279 patent design are thinner than those of Paulke’s Figure 1G, and the spacing of the arc-shaped portions in the ’279 patent is noticeably smaller than in Paulke. That enlarged spacing in Paulke eliminates any appearance of an outer continuous circle formed by the outer ring of the arc-shaped portions, which is present in the design of the ’279 patent. In that respect, we find credible Patent Owner’s argument that “Paulke’s features provide an appearance of two separate, opposed shapes that differs prominently from the ’279 patent’s arches that evoke an overall concentric circle appearance.” Prelim. Resp. 31 (citing Ex. 2001 ¶¶ 64). Additionally, the orientation of the arc-shaped portions in Paulke is rotated 90 degrees from that of the ’279 patent.5 In our view, the above-noted differences in overall appearance as between Paulke and the ’279 patent convey that Paulke is not “basically the same” as the claimed design of the ’279 patent so as to be regarded as a proper Rosen reference. See In re Rosen, 673 F.2d at 391.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We find persuasive Patent Owner’s arguments, and the authority underlying those arguments, in casting doubt as to the propriety of the reasoning for combining Mendelson and Chung with Paulsen that are divorced from consideration of ornamental or visual appearance.” slip op. at 29
Claim construction§ 103 obviousness - Masimo Corporation v. Apple Inc.Institution deniedPTAB · Sep 27, 2023 · IPR2023-00702 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that the sole design claim was unpatentable under any of its three obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“1, “Pet.”) requesting inter partes review of U.S. Patent No. D947,842 S (“the ’842 patent,” Ex. 1001). Patent Owner, Apple Inc. (“Patent Owner”) filed a Preliminary Response (Paper 8, “Prelim. Resp.”). We have authority under 35 U.S.C. § 314, which provides that inter partes review may not be instituted unless the information presented in the Petition shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In assessing the parties’ views as to level of skill of a designer of ordinary skill in the art, we conclude that they are effectively the same. Indeed, the parties do not identify any material difference between the parties’ proposed assessments. Nevertheless, for clarity and completeness, we adopt Petitioner’s proposed assessment. We note, however, that even if we were to adopt Patent Owner’s assessment, the outcome of this Decision would be the same. C. Proposed Obviousness Ground of Unpatentability Based on Paulke and” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“constructions of the ’842 patent, e.g., that the claimed design incorporates two arc-shaped portions residing on a rear face of an electronic device and a central circular array of rectangles. We discern, however, that one point of disagreement centers on the proposed presence of an “outermost continuous circle” as is advanced by Patent Owner. See Prelim. Resp. 5. Careful review of the figures of the ’842 patent, particularly Figure 4, does appear to bear out the conclusion that the arc-shaped portions do incorporate a continuous circle as urged by Patent Owner.2 Additionally, we question Petitioner’s assertions that the “sidewall” of the arc-shaped portions does not appear to be a claimed feature. Petitioner’s own claim construction reproduced above suggests that, with respect to the arc-shaped portions said 2 We note that Patent Owner makes reference to Exhibit 2002 as constituting “supplemental drawings filed with the USPTO on December 14, 2021.” Prelim. Resp. 5 n.1. As the ’842 patent issued on April 5, 2022, it is not apparent why the supplemental drawings do not appear in the patent. We note that the supplemental drawings, specifically Figure 4 (see Ex. 2002, 4), are clearer in showing that the noted design includes an outermost continuous circle. Regardless, we conclude that it is also sufficiently apparent that the drawings of the ’842 patent, e.g., Figure 4, show such an outermost continuous circle. by Petitioner to be part of the ’842 patent claim and shown in gray (see Pet. 11), there is gray shading of the sidewalls of the arc-shaped portions. Accordingly, we adopt the claim construction that is advanced by Patent Owner as better supported by the ’842 patent. See, e.g., supra § I.C.2. We note, however, that even if we were to adopt Petitioner’s claim construction, the ultimate outcome of this proceeding would be the same. That is so because, for reasons discussed below, we conclude that Patent Owner has identified sufficient deficiencies in Petitioner’s proposed grounds that preclude institution of inter partes review irrespective of any claim construction.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Paulke, when properly viewed as a complete article embodying the design, including the external elements, does not depict such a rectangle as being visible with any external components. See Prelim. Resp. 22; see also id. at 26–27 (“[t]he purported photodiode, even if present, would have been hidden behind Paulke’s depicted openings through sensor 124” (citing Ex. 2001 ¶¶ 54–55)). Petitioner proceeds, however, to extrapolate from that apparent interior rectangular structure an altered version of Paulke’s Figure 1G that is said be “Composite with FIG. 2A.” Pet. 55. We find Petitioner’s approach in that regard as unavailing in establishing in Paulke any semblance of a visual impression of a rectangle appearing in conjunction, for instance, with Paulke’s Figure 1G. In that regard, we agree with Patent Owner that Petitioner does not “explain[] why a DOSA would have understood Paulke to have an appearance of a rectangular shape that deviates from Paulke’s illustrated appearance.” Prelim. Resp. 28. Moreover, and significantly, the presence of any interior circular arrangement of rectangular shaped objects is entirely absent from Paulke. Furthermore, although both figures include a central portion with arc-shaped portions, there are some significant differences in the appearance of those portions. For instance, as noted by Patent Owner (see, e.g., Prelim. Resp. 30–33), the arc-shaped portions of the ’842 patent design are thinner than those of Paulke’s Figure 1G, and the spacing of the arc-shaped portions in the ’842 patent is noticeably smaller than in Paulke. That enlarged spacing in Paulke eliminates any appearance of an outer continuous circle formed by the outer ring of the arc-shaped portions, which is present in the ’842 patent design. In that respect, we find credible Patent Owner’s argument that “the Paulke opposed shapes have the appearance of two separate features rather than the ’842 patent’s unified circular appearance of arches.” Prelim. Resp. 32 (citing Ex. 2001 ¶¶ 63–65). Additionally, the orientation of the arc-shaped portions in Paulke is rotated 90 degrees from that of the ’842 patent.5 In our view, Patent Owner credibly argues that the above-noted differences establish sufficient visual dissimilarities to remove Paulke from being considered a proper Rosen reference. Nevertheless, even were we to assume that Paulke is a proper Rosen” slip op. at 22
Claim construction§ 103 obviousness - Masimo Corporation v. Apple Inc.InstitutedPTAB · Sep 25, 2023 · IPR2023-00634 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–20 on all asserted grounds after finding a reasonable likelihood that claims 1, 9, and 15 are obvious over Kotanagi and Honda.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’783 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’783 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We discern no material difference between the parties’ definitions. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for “a ceramic cover,” “biosensor module,” and “ceramic cover defines a [first/second] opening to [transmit/receive] the light.” Pet. 13–16 (alterations in original). Patent Owner states: “While not agreeing with Petitioner’s proposed constructions (or lack thereof) for certain claim terms (see Petition, 13–16), solely for purposes of this Preliminary Response, Patent Owner does not object to the constructions proposed by Petitioner at this time.” Prelim. Resp. 17. On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,627,783 - Masimo Corporation v. Apple Inc.InstitutedPTAB · Sep 20, 2023 · IPR2023-00664 · APJ Robert L Kinder · IPR · Institution
The Board instituted IPR on claims 1–24 and all asserted grounds, finding a reasonable likelihood of success at least for claims 1, 9, and 17.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that: A POSITA [person of ordinary skill in the art] of the ’352 patent would have had at least a bachelor’s degree in a discipline related to human-computer interaction, such as Human Factors, Computer Science, Computer Engineering, or an equivalent discipline, and at least two years of experience working with touchscreen user interfaces. More education could substitute for less work experience, and vice-versa. Pet. 12 (citing Ex. 1003 ¶ 34). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Although we see no error in Petitioner’s proposed claim constructions, we do not believe it necessary to adopt them because the surrounding claim language sufficiently defines the scope for each of the respective “user interface” limitations.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Petitioner next addresses the claim term “input that is directed to a portion of” a user interface. Pet. 24–25. Petitioner explains that “[n]umerous claims recite navigational actions invoked by ‘input that is directed to a portion of’ the current screen,” such that “the input is directed to part of the screen, rather than a physical button, keyboard, or other input device external to the screen.” Pet. 24. According to Petitioner, “[t]he claim language does not require the input to be directed to a predefined location on the screen, such as a location marked by a virtual home button or other indicator.” Id. (citing Ex. 1003 ¶ 53). Referring to Figure 5GC of the Specification, Petitioner notes that “a user navigates from a wake screen to a home screen by an upward swipe ‘at location that corresponds to home affordance 552, as indicated by focus selector 5244.’” Id. (quoting Ex. 1001, 53:4–10). Petitioner next relies on other embodiments, which describe the swipe gestures being directed to a part of the screen without regard to a predefined location. Pet. 25 (citing Ex. 1001, 79:64–80:22) Considering Petitioner’s supporting arguments and evidence, and based on the limited record before us, we construe “input is directed to a portion of” the screen to mean the user input is directed to part of the screen (but not necessarily at a predefined location) rather than through another physical input device external to the screen. See id. (citing Ex. 1003 ¶ 54).” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,106,352 - Masimo Corporation v. Apple Inc.Institution deniedPTAB · Sep 18, 2023 · IPR2023-00635 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable, principally because Rothkopf did not disclose an electrode positioned on the carrier member.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987); see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008) (to anticipate a patent claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation”). Moreover, “[b]ecause the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Whether a reference anticipates is assessed from the perspective of one of ordinary skill in the art. See Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368–69 (Fed. Cir. 2003) (“‘[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” (second and third alterations in original) (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991))). slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“member.” On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 14
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“Independent claim 1 recites “a carrier member formed from a transparent material.” Ex. 1001, 56:13. Independent claim 9 recites “a carrier member having a circular carrier profile and positioned over the circular rear opening.” Id. at 57:20–21. Independent claim 15 recites “a carrier member protruding outward from an external surface of the housing member.” Id. at 58:10–11. None of these phrases is written in the form of a “means for” performing a function, the Petition does not identify a recited function,5 and Petitioner does not address the issue of whether the overall limitation recites adequate structure for performing any such function. See 5 On the conference call, Petitioner represented that “the Petition identifies carrying or supporting electrodes to be the function of the carrier member.” Ex. 1051, 49:3–10 (citing Pet. 10–12). The cited section of the Petition quotes the Specification, not the claim. Pet. 10. However, the focus of a means-plus-function analysis is the function recited in the claim. See 35 U.S.C. § 112(f). And, the Petition associates the function of supporting the electrodes with “carrier assembly” not “carrier member.” See Pet. 10–11 (“Petitioner interprets the claim term ‘carrier assembly’ according[ly] to mean any appropriate structure that supports the electrodes and, optionally, optical components.”). Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1365 (Fed. Cir. 2022) (“The first step is to determine whether a claim limitation is drafted in means-plusfunction format, which requires us to construe the limitation to determine whether it connotes sufficiently definite structure to a person of ordinary skill in the art.”). Additionally, regardless as to whether “Courts have construed ‘member’ style claim terms as nonstructural” under the particular facts before those courts, it was incumbent upon Petitioner—particularly in light of the “carrier” modifier—to demonstrate that “carrier member” is a nonce term under the facts of the case before us, i.e. whether the term is a generic placeholder that a person of ordinary skill in the art of wearable electronic devices/watches would not recognize as a name for sufficiently definite structure. Pet. 11; Williamson, 792 F.3d at 1348 (“In making the assessment of whether the limitation in question is a means-plus-function term subject to the strictures of § 112, para. 6, our cases have emphasized that the essential inquiry is . . . whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”); see id. at 1350 (explaining that a nonce word is a generic term “that reflect[s] nothing more than verbal constructs [that] may be used in a claim in a manner that is tantamount to using the word ‘means’ because they ‘typically do not connote sufficiently definite structure’ and therefore may invoke § 112, para. 6.”); see also Kyocera, 22 F.4th 1380 (the court, in Petitioner’s cited case, determining, as part of its analysis, that “[a] person of ordinary skill in the art would not understand the claimed ‘lifter member’ to have ‘a sufficiently definite meaning as the name for a structure.’”). Accordingly, we determine that Petitioner has not shown persuasively that “carrier member” is a means-plus-function term.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“We find to be persuasive Patent Owner’s argument that “the Petition fails to cite anything in Rothkopf that describes electrodes attached to the ‘rear cover 608.’” Prelim. Resp. 23. Rothkopf discloses several embodiments of varying configurations. See, e.g., Ex. 1005 ¶¶ 4–27. Petitioner, in the block quoted contention above, stitches together several statements from various points in the Specification that individually are correct descriptions of an aspect of a particular embodiment or example but, together, fail to constitute a disclosure of an embodiment having electrodes positioned on the rear cover. For example, Rothkopf, in the paragraph 148 cited by Petitioner, states that “[i]n some embodiments, the biosensor module 710 includes the rear cover 608” and, “[a]s described in more detail . . . with respect to FIG. 16, the biosensor module 710 may include one or more light sources, one or more photodetectors, and one or more electrodes or conductive elements.” Ex. 1005 ¶ 148 (emphasis added). Thus, the biosensor module (mapped to the carrier assembly, not the carrier member) might include a rear cover and might include an electrode. It does not necessarily follow, however, that the electrode, when present, is positioned on the cover (mapped to the carrier member). Petitioner points to Rothkopf’s paragraph 201 as support for the proposition that “Rothkopf describes an embodiment where the electrodes are positioned on the cover 608.” Pet. 42 (citing Ex. 1005 ¶ 201). That paragraph provides that, “[a]s described above with respect to FIG. 6, in some embodiments, the biosensors are disposed relative to or attached to a rear cover 608 that is formed from an optically transparent material and is configured to be positioned with the opening of the housing 601.” Ex. 1005 ¶ 201. The paragraph does not describe an electrode as an exemplary biosensor in such embodiments. Rather, the paragraph goes on to describe the rear cover’s use with light sources 1611–1613 and detector 1614, i.e. optical sensor components. See id. (“The convex curved area of the rear cover 608 may include one or more windows or apertures that provide operational access to one or more internal components located within the housing. For example, the rear cover 608 may include an array of windows, each window including an aperture or opening for a respective light source 1611–1613 and/or the detector 1614.”). This description is consistent with Figure 16, which is relied on by Petitioner, where those optical sensor components are positioned on or under rear cover 608 (shaded orange in Petitioner’s annotated figure above) while electrodes 1601 and 1602 are positioned on the rear face of the housing (shaded in red) and thereby contact the user’s skin. See Ex. 1005 ¶¶ 190, 196 (“In this example [of Figure 16], a first electrode 1601 and second electrode 1602 are disposed on the rear face of the device 100. The first 1601 and second 1602 electrodes may be configured to make contact with the skin of the user’s wrist when the device is being worn.”). We determine that Petitioner has not shown adequately that a person of ordinary skill in the art would understand Rothkopf to disclose an electrode positioned on the carrier member, as recited in independent claims 9 and 15 and, by extension, claims 13 and 14, which depend from independent claim 9. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its anticipation challenge (Ground 1).” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,987,054 - Masimo Corporation v. Apple Inc.Institution deniedPTAB · Sep 18, 2023 · IPR2023-00728 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution because Masimo did not show a reasonable likelihood that the claimed design was obvious over Paulke, Yuen with Mendelson and Bushnell, or Fong with Bushnell.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“respective constructions of the ’936 patent, i.e., that the claimed design incorporates two arc-shaped portions residing on a rear face of an electronic device, we observe that one point of disagreement centers on the proposed presence of an “outer continuous circle” as is advanced by Patent Owner. See Prelim. Resp. 4. Although we agree with Petitioner that the “sidewall” of the arcs does not appear to be a claimed feature, careful review of the figures of the ’936 patent, particularly Figure 4, does appear to bear out the conclusion that the arc-shaped portions do incorporate a continuous circle.2 Accordingly, we adopt the claim construction that is advanced by Patent Owner. See, e.g., supra § I.C.2. We note, however, that even were we to adopt Petitioner’s claim construction, the ultimate outcome of this proceeding would be the same. That is so because, for reasons discussed below, we conclude that Patent Owner has identified sufficient deficiencies in Petitioner’s proposed grounds that preclude institution of inter partes review irrespective of any claim construction.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In assessing the parties’ views as to level of skill of a designer of ordinary skill in the art, we conclude that they are effectively the same. Indeed, the parties do not identify any material difference between the parties’ proposed assessments. Nevertheless, for clarity and completeness, we adopt Petitioner’s proposed assessment. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. CONCLUSION For the reasons set forth above, we conclude that Petitioner has not shown a reasonable likelihood that it would prevail with respect to the claimed design of the ’936 patent. IV. ORDER It is ORDERED that Petitioner’s request for an inter partes review of the claim of the ’936 patent is denied and no trial is instituted.” slip op. at 38
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“(see, e.g., Prelim. Resp. 21–24), the arc-shaped portions of the ’936 design are thinner than those of Paulke’s Figure 1G, and the spacing of the arc-shaped portions in the ’936 patent is noticeably smaller than in Paulke. That enlarged spacing in Paulke eliminates any appearance of an outer continuous circle formed by the outer ring of the arc-shaped portions, which is present in the ’936 design. In that respect, we find credible Patent Owner’s argument that “the Paulke arc-shaped components have the appearance of two separate features rather than the unified circular appearance of arcs of the ’936 patent. Prelim. Resp. 23 (citing Ex. 2001 ¶¶ 51–52). Additionally, the orientation of the arc-shaped portions in Paulke is rotated 90 degrees from that of the ’936 patent.5 In our view, there is a plausible argument to be made that the above-noted differences establish sufficient visual dissimilarities to remove Paulke from being considered a proper Rosen reference. Nevertheless, even were we to assume that Paulke is a proper Rosen reference, for the reasons discussed below, we do not find persuasive that a designer of ordinary skill in the art would have made Petitioner’s proposed modifications to Paulke’s biosensor module, so as to arrive at the design of the ’936 patent.” slip op. at 20
Claim construction§ 103 obviousness - PTAB · Sep 1, 2023 · IPR2023-00658 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on the sole claim and all petitioned grounds, finding a reasonable likelihood of unpatentability, including anticipation and obviousness over Iannaccone.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), 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 arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of the challenged claim. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claim.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not, on this record, point to specific evidence of copying or quality. Id. And, Patent Owner’s contention that the claimed design resulted from “substantial and sophisticated design expertise,” is similarly unsupported by corroborating evidence at this point. We have before us at this point in the proceeding mainly the testimony of Petitioner’s declarant, Mr. Hatch, who testifies that without a bachelor’s degree in furniture design, “a little more than two years of practical design experience . . . is appropriate given the relatively simple nature of the design at issue, which involves little more than two boards forming a tabletop.” Ex. 1002 ¶¶ 34–35. Based on the present record, we adopt the Petitioner’s articulation of a designer of ordinary skill, which is supported by the testimony of Mr. Hatch. As of yet, Patent Owner has not provided any evidence to rebut Petitioner’s or Mr. Hatch’s assertions. We also note that, under the present record, our analysis of this case would be the same under either party’s definition. The parties are free to address this issue at trial if they so wish.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“At this stage of the proceeding, we agree with Patent Owner that a verbal construction is not necessary to describe the overall ornamental nature of the ’012 design as Figures 1–23 clearly show the claimed table top and that the best description of the ornamental features of the ’012 design comes from the drawings themselves. For example, Figures 1–23 clearly depict a table top having two rectangular portions/planks having different widths.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“analysis discussed above, we recognize in the test for design patent obviousness articulated in Durling and Rosen that a primary reference must be found, “the design characteristics of which are basically the same as the claimed design.” Durling, 101 F.3d at 103 (quoting Rosen, 673 F.2d at 391). And, that we must both “(1) discern the correct visual impression created by the patented design as a whole; and (2) determine whether there is a single reference that creates ‘basically the same’ visual impression.” High Point Design, 730 F.3d 1301, 1311–12 (Fed. Cir. 2013) (quoting Durling, 101 F.3d at 103). As to part (1), in our claim construction we have determined that the correct visual impression created by the patent design as a whole is “that the solid lines illustrating the design in Figures 1–23 of the ’012 patent provide an accurate representation and understanding of the claimed table top and that a verbal construction is not necessary.” Section II.D.; see also In re Borden, 90 F.3d 1570, 1574 (Fed. Cir. 1996) (The obviousness “inquiry focuses on the visual impression of the claimed design as a whole and not on selected individual features.”). That said, we recognize that some description of the claimed design may be helpful.” slip op. at 31
Claim construction§ 102 anticipation§ 103 obviousness - PTAB · Jul 10, 2023 · IPR2023-00438 · APJ Josiah C Cocks · IPR · Institution
The Board instituted inter partes review of claims 1–5, 7, 9, 12–14, and 17–19 on all petitioned grounds, finding a reasonable likelihood of success based on Amano and related combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“including Ceci, applied by the Petitioner as a part of its proposed grounds are cumulative of subject matter previously considered by the Examiner, we do not find them availing. In that regard, Patent Owner attempts to equate some selected teachings of prior art that previously were presented during prosecution of the ’072 application (e.g., Lubell, Henry,14 and Fabrizio15) with new prior art relied on in the Petition, and proceeds to argue that the new prior art teachings are inadequate to account for certain features of the challenged claims. See Prelim. Resp. 18–29. In effect, Patent Owner’s arguments, although presented under the guise of a request for discretionary denial, essentially amount to direct challenges to the merits of Petitioner’s proposed grounds. That is not a scenario that warrants dispositive exercise of discretion, which would foreclose actual evaluation of the merits of the proposed grounds. Rather, in our view, the situation suggests that the appropriate course of conduct is to consider whether Petitioner’s proposed grounds are persuasive, or not, in conveying a reasonable likelihood that the challenged claims are unpatentable. Moreover, as discussed below, we conclude that, with respect to at least some of the proposed grounds, including grounds based on prior art that was not presented during prosecution of the ’072 application (e.g., Amano), Petitioner actually has shown a reasonable likelihood of success that the challenged claims are” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A Person of Ordinary Skill in the art (“POSITA”) for the technology of the ’413 patent would have had (1) a bachelor’s degree in engineering, computer science, industrial design, biomechanics, or a related field, and (2) at least two years of experience researching, developing, designing, and/or testing fitness or physiological sensors, wearable devices, physiological or biomechanical devices, remotely-controlled systems or interfaces, network-based applications and/or equipment, or the equivalent experience or education. Pet. 18 (citing Ex. 1009 ¶ 41). Patent Owner indicates that “[f]or purposes of this Preliminary Response only, Nike applies lululemon’s proposed level of skill in the art.” Prelim. Resp. 14. For purposes of this Decision, we adopt Petitioner’s proposal of the level of ordinary skill in the art as reasonable and consistent with the prior art. See also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose claim construction for any term. See Pet. 17. Patent Owner also indicates that no claim construction is necessary at this time. Prelim. Resp. 15. We conclude that, for purposes of deciding whether to institute an inter partes review, it is unnecessary to make explicit the meaning of any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. v. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs, Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,620,413 - PTAB · Jul 10, 2023 · IPR2023-00424 · APJ Josiah C Cocks · IPR · Institution
The Board instituted IPR on claims 1–10 and 12–19 on all petition grounds, finding a reasonable likelihood of success based on Acres and related combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“necessary to address the meaning of the term “data” that appears in each of independent claims 1 and 12. Although Patent Owner represents in the “Claim Construction” section of its Preliminary Response that it is not necessary to construe any claim terms at this time (see Prelim. Resp. 13), Patent Owner does present a construction of the term “data” within the body of its Response. See id. at 17. In that respect, Patent Owner points to a dictionary definition of “data” as constituting “[f]actual information, such as that derived from observation, experimentation, or calculation, especially that which is used for processing and/or further analysis.” Id. (citing Ex. 2002, 4). Based on that definition, Patent Owner contends that “the ordinary and customary meaning of ‘data’ is factual information, from which decisions and subsequent actions can be made.” Id. at 18. Patent Owner offers that meaning in an attempt to distinguish over a “command” action performed in the prior art. Id. at 17 (citing Ex. 2002, 3 (“defining ‘command’ as ‘[o]ne or more signals which actuate a device’ or ‘[a]n instruction that causes a computer action”)).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“At the most elementary level, the Bug 601 takes control of compatible exercise machine parameters that determine exertion level. When the Bug 601 is used with a compatible treadmill 150, the treadmill speed is controlled by the Bug’s own processor 420. If the Bug 601 senses, based upon the exerciser’s heart rate, that exertion level should increase because the exerciser’s heart rate is below the target, the Bug 601 sends a command to the treadmill 150 telling it to increase speed by a specific amount. *** Alternatively, the Bug 601 can control both speed and incline to match the fitness goals of the exerciser. The Bug 601 can be configured to control any number of machine parameters. Ex. 1002 ¶¶ 89, 96. Thus, Acres discloses that based upon an exerciser’s heart rate, Bug 601 operates to send commands to treadmill 150 to control operational parameters of the treadmill, such as its speed and incline. Patent Owner is of the view that such commands do not constitute the required “first set of data” in claims 1 and 12 because those commands allegedly do not constitute “data.” See Prelim. Resp. 17–20. Patent Owner bases that view on its construction of the term “data” as being “factual information” that does not include Acres’s commands. See id. As discussed above in our Claim Construction section (§ II.C), however, on the record before us, it is not apparent why commands sent by Acres’s Bug that include information for controlling various operational parameters of a treadmill do not constitute data, even if data is something that is “factual information.” In other words, at this time, we question why the skilled artisan would have regarded the informational content of those commands being something other than “factual information” so as be excluded from being “data.”” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Thus, Acres discloses that based upon an exerciser’s heart rate, Bug 601 operates to send commands to treadmill 150 to control operational parameters of the treadmill, such as its speed and incline. Patent Owner is of the view that such commands do not constitute the required “first set of data” in claims 1 and 12 because those commands allegedly do not constitute “data.” See Prelim. Resp. 17–20. Patent Owner bases that view on its construction of the term “data” as being “factual information” that does not include Acres’s commands. See id. As discussed above in our Claim Construction section (§ II.C), however, on the record before us, it is not apparent why commands sent by Acres’s Bug that include information for controlling various operational parameters of a treadmill do not constitute data, even if data is something that is “factual information.” In other words, at this time, we question why the skilled artisan would have regarded the informational content of those commands being something other than “factual information” so as be excluded from being “data.” With respect to limitation [1C], Patent Owner contends that even if Acres’s commands are regarded as disclosing the “first set of data” required by limitation 1B, Petitioner has not accounted for the “first set of activity data” of limitation 1C under a theory that Petitioner has impermissibly used a single element in the prior art to account for two different claim limitations. See Prelim. Resp. 21–22. To wit, Patent Owner proposes that to the extent those commands are a “first set of data” (limitation [1B]) then that data is based on a user’s heart rate, yet the recited “first set of activity data” (limitation [1C]) also is based on a user’s heart rate, so Petitioner is said to improperly rely on the same heart rate data to satisfy both of the data limitations. Patent Owner’s proposal, however, is misplaced. There is no dispute that Acres’s heart rate data is activity data per limitation [1C]. The informational content of Acres’s commands as satisfying limitation [1B] is reasonably understood to be something different than heart rate data. As something different than heart rate data, those commands are not the same prior art element. Thus, this premise under which Patent Owner challenges Petitioner’s ground based on Acres is inapt. Even if there were some prohibition in some situations in which a prior art element cannot constitute multiple limitations of a claim, that is not the circumstance present here. Patent Owner does not present any further challenges to the grounds proposed by Petitioner based on Acres, including the ground involving both Acres and Pyles. We have considered Petitioner’s proposed grounds based on Acres alongside Patent Owner’s challenges to those grounds. On the record before us, we conclude that Petitioner has established adequately a reasonable likelihood of success in prevailing in its challenges to claims 1– 10 and 12–19 based on those grounds.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,923,225 - PTAB · Jun 30, 2023 · IPR2023-00349 · APJ Stephen E Belisle · IPR · Institution
The Board instituted IPR on claims 1–5, 7, 11, and 13 on all petitioned grounds, finding a reasonable likelihood that claims 1–5, 7, 11, and 13 are obvious over Sirmans and Kobayashi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes review, the Board will authorize the review to proceed on all of the” slip op. at 2
- BurdenDecided for patent owner
“3 goals in 3 consecutive days”) that on their face do not appear to explicitly or inherently disclose the features of the subject limitation, and we discern no explanation as to how or why the cited disclosure in Hoffman allegedly discloses such limitation (or whether Petitioner is relying on a particular claim construction to give effect to its argument). Likewise, Petitioner does not cite to any expert testimony or other evidence showing how or why the cited statements in Hoffman allegedly disclose such limitation. Indeed, Petitioner appears to place the onus on Patent Owner—and the Board—to ascertain how or why the cited statements (i.e., paragraph 198) allegedly discloses limitation 1[d]. The burden of proof here lies with Petitioner, not Patent Owner, and we do not ourselves create and adopt unpatentability arguments on behalf of Petitioner as to whether or how Hoffman might disclose the subject limitation. See Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify with particularity the evidence that supports the grounds for the challenge to each claim.” (quoting Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016))); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (“[W]e find no support for the PTO’s position that the Board is free to adopt arguments on behalf of petitioners that could have been, but were not, raised by the petitioner during an IPR.”); DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”). slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“activity time periods into Sirmans’ protocol criteria,” and “[i]n view of the combined teachings of Sirmans and Kobayashi, it would [have been] easy to implement determining whether the received athletic activity data exceeds the first activity goal for a predetermined number of consecutive activity time periods.” Pet. 62–63 (citing Ex. 1006 ¶¶ 124–128). Based on the present record, we find Petitioner’s arguments persuasive.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“Patent Owner argues Petitioner’s challenge based on the combination of Sirmans and Kobayashi is “rife with hindsight reasoning.” Prelim. Resp. 31–33. “Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1313–14 (CCPA 1971). Here, Patent Owner does not direct us to any knowledge gleaned only from applicant’s disclosure that Petitioner allegedly relies upon to support its obviousness rationale. See Prelim. Resp. 31–33.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,259,615
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.