- Ford Motor Company / American Honda Motor Co., Inc. et al. v. Neo Wireless LLCAll claims unpatentablePTAB · Nov 1, 2024 · IPR2022-01537 · APJ Matthew S Meyers · IPR · Final written decision
Claims 1–14 are unpatentable as obvious under § 103, principally over Walton040 and Li017 for claims 1, 3–8, and 10–14, and with Tufvesson for claims 2 and 9.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the art is nearly identical to the one proposed in the Petition—i.e., a minimum of a bachelor’s degree and at least 3 years of experience.” Pet. Reply 28 (citing Pet. 14 (citing Ex. 1003 ¶ 53); Ex. 1047, 4:44:9–11, 78:9–79:3; Ex. 2015 ¶ 22). The main distinction between Petitioner’s ordinarily skilled artisan and Patent Owner’s is that Patent Owner’s definition requires a lesser “two years of experience” whereas Petitioner’s requires at least three years of experience. However, as Mr. Alberth acknowledges during deposition, “[a] difference of bachelor’s plus two or bachelor’s plus three does not make that much of a big a difference” (Ex. 1047, 78:9–12), both would be able to understand the ’941 patent and cited prior art (id. at 78:13–18), perform the same analysis, and come to the same conclusions regarding the prior art (id. at 78:19–79:3). Thus, we determine that Petitioner’s proposal is consistent with the level of skill reflected in the prior art references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (listing the type of problems encountered in the art, prior art solutions to those problems, and the sophistication of the technology as factors that may be considered in determining the level of ordinary skill in the art). The prior art itself may be sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima, 261 F.3d at 1355 (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Patent Owner does not propose a specific construction of “subchannel configuration.” Rather, Patent Owner asserts that the plain meaning requires something more than an indication of a subchannel. See PO Resp. 53–54, 60. This comports with the general preference for “[a] claim construction that gives meaning to all the terms of the claim.” Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005). We thus look to Petitioner’s combination for the indication of something more than solely an indication of the identity of a subchannel, namely, information encompassed by the term “configuration.”12” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Given the compatibility of Walton040 and Li017, we find evidentiary support in the record for Petitioner’s explicit motivation to combine these references, namely, to “improve[] performance and mitigate[] the effect of intercell interference.” Pet. 81. In particular, modifying Walton040 to allocate subcarrier clusters would provide Walton040 with the respective advantages of the two different categories of clusters Li017 discloses: coherence clusters, which achieve good performance for static subscribers; and diversity clusters, which are beneficial for subscribers close to cell boundaries that are thus more subject to inter-cell interference, and which can also provide robustness and alleviate overhead for subscribers having large channel time variance. See Pet. 78–79 (citing Ex. 1009 ¶¶ 111, 113–114, 118; Ex. 1003 ¶¶ 356–359). KSR endorses such a rationale, stating that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” 550 U.S. at 417. In this regard, Dr. Wilson testifies that the minimal modifications to Walton040 required for Petitioner’s combination would consist of implementing “the control logic described in Li017 . . . in Walton040’s base station to select between diversity clusters and coherence clusters depending on subscribers’ mobility using existing channel state information (CSI) and informing the subscriber of the selected subchannel configuration using the existing control channel.” Ex. 1046 ¶ 22 (citing Ex. 1003 ¶ 371). Accordingly, we determine that applying Li017’s cluster-based subcarrier allocation technique in Walton040 would have been within the level of skill in the art, and so would not present a “uniquely challenging or difficult” implementation. Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157 (Fed. Cir. 2007).” slip op. at 29
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Thus, we find that Petitioner has proven, by a preponderance of the evidence, that Li017 teaches or suggests the claimed “subchannel configuration” included in the “mobile-station-specific transmission parameters.” The parties do not dispute whether Walton040 and Li017 teach or suggest the other limitations of claim 1. Accordingly, upon review of the information in the Petition and corresponding evidence, and considering Patent Owner’s arguments and evidence, we find Petitioner has proven, by a preponderance of the evidence, on the complete trial record, that the combination of Walton040 and Li017 teaches or suggests the subject matter of claim 1. c) Conclusion for Claim 1 Based on the analysis above, we conclude that Petitioner has proven, by a preponderance of the evidence, that claim 1 is unpatentable under 35 U.S.C. § 103 over the combination of Walton040 and Li017.” slip op. at 35
Patent outcomesUS 10,075,941 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,075,941 - American Honda Motor Co. Inc. / General Motors LLC et al. v. Neo Wireless LLCNo claims unpatentablePTAB · Nov 1, 2024 · IPR2023-00963 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1–18 were not shown unpatentable because the asserted combinations did not disclose the construed starting time-frequency coordinate, which excludes separate time and frequency coordinates.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“After reviewing the parties’ respective positions and the intrinsic evidence cited by the parties, we agree with Patent Owner that the Board’s decision denying institution in IPR2021-01486, finding that “a starting timefrequency coordinate” is not disclosed by separate starting time and frequency coordinates, constitutes a disclaimer which is binding on these proceedings. See Ex. 1014, 27; Aylus, 856 F.3d at 1361; Cupp Computing AS v. Trend Micro Inc., 53 F.4th 1376, 1383 (Fed. Cir. 2022); see also Ex. 1012, 12–13 (Patent Owner’s arguments that a time coordinate and a frequency coordinate is not the same as “a starting time-frequency coordinate.”). As such, we find that the ordinary and customary meaning of “a starting time frequency coordinate” excludes separate time and frequency coordinates. We further agree with Patent Owner that the ’450 Patent Specification is consistent with this construction because it discloses segments of time-frequency resource (e.g., V1, V2, . . . Vm) each having a starting time-frequency coordinate (e.g., index VZ1=0, Vz2=1, VZ3=9 . . . Vm). See Ex. 1001, 6:3–14, 7:7–27, Fig. 6; PO Resp. 16–17. Finally, we agree that the recitations of dependent claims 2 and 3 are not inconsistent with “a starting time frequency coordinate” that does not encompass separate time and frequency coordinates. See PO Resp. 19–21.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“coordinates. See Pet. 44–47. Although Vijayan089 discloses that the assigned segment may be specified by two parameters––the start of the segment and the length of the segment, Vijayan089 further discloses the start of the segment parameter may be given by the starting subband and symbol period. See Ex. 1005 ¶ 74. Petitioner does not direct us to any disclosure in Vijayan089 describing this start of the segment parameter in any additional detail or describing this parameter in terms other than a starting symbol period (i.e., time coordinate) and subband (i.e., frequency coordinate). See Pet. 44–47. Indeed, Petitioner asserts that PLC2 or “Segment 734 includes a starting time-frequency coordinate of: Symbol Period =4, Subband Group =2.” Pet. 47; see Pet. 46 (Petitioner’s annotated Figure 7B of Vijayan089); Ex. 1003 ¶¶ 87, 150. We further agree that Dr. Wilson’s deposition testimony is consistent with Vijayan089’s description of the start of the segment in terms a starting symbol period (i.e., time coordinate) and subband (i.e., frequency coordinate). See Ex. 2007, 149:6–12, 150:10–22, 152:22–153:5. As explained above in Section II.B., we find that separate time and frequency coordinates have been disclaimed from the ordinary and customary meaning of “a starting time-frequency coordinate.” Accordingly, Vijayan089’s disclosure of the start of the segment parameter given by the symbol period (i.e., time coordinate) and starting subband (i.e., frequency coordinate) does not disclose the claimed “a starting time-frequency coordinate” in accordance with its correct construction.” slip op. at 34
- Strike new argumentNew argument disregardedDecided for patent owner
“We agree with Patent Owner that these Reply arguments modifying Vijayan089 in view of Park are untimely. Contrary to Petitioner’s suggestion, Patent Owner does not explicitly propose construing “a starting time-frequency coordinate,” as limited to a “single index.” See PO Resp. 11–21; PO Sur-reply 1–5. A reply may only respond to arguments raised in a response or to address issues discussed in the institution decision. (2018); 37 C.F.R. § 42.23(b)). “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in” the petition. Id. at 74. A petitioner may not submit new arguments or evidence in a reply that it could have presented earlier, for example, to make out a prima facie case of unpatentability. See id. at 73. “[A] reply . . . that raises a new issue or belatedly presents evidence may not be considered.” Id.; see also Axonics, Inc. v. Medtronic, Inc., 75 F.4th 1374, 1381 (Fed. Cir. 2023) (“We have held that a petitioner may not in reply rely on new prior art to teach a claim limitation.”). Accordingly, we decline to consider Petitioner’s belated Reply arguments that it would have been obvious to modify Vijayan089 to use an index.” slip op. at 35
Patent outcomesUS 10,447,450 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,447,450 - American Honda Motor Co. Inc. / General Motors LLC et al. v. Neo Wireless LLCNo claims unpatentablePTAB · Nov 1, 2024 · IPR2023-00793 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1–18 were not shown unpatentable under § 103 because the asserted combinations did not disclose the claimed starting time-frequency coordinate.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the record, we adopt Petitioner’s proposed definition of a person of ordinary skill in the art as it does not materially differ from Patent Owner’s proposed definition and is consistent with the level of skill reflected in the ’450 Patent Specification and the asserted prior art. In any event, our conclusions would be the same under Patent Owner’s definition.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer foundPlain and ordinary meaningDecided for patent owner
“evidence cited by the parties, we agree with Patent Owner that the Board’s decision denying institution in IPR2021-01486, finding that “a starting timefrequency coordinate” is not disclosed by separate starting time and frequency coordinates, constitutes a disclaimer which is binding on these proceedings. See Ex. 1014, 27; Aylus, 856 F.3d at 1361; Cupp Computing AS v. Trend Micro Inc., 53 F.4th 1376, 1383 (Fed. Cir. 2022); see also Ex. 1012, 12–13 (Patent Owner’s arguments that a time coordinate and a frequency coordinate is not the same as “a starting time-frequency coordinate.”). As such, we find that the ordinary and customary meaning of “a starting time frequency coordinate” excludes separate time and frequency coordinates. We further agree with Patent Owner that the ’450 Patent Specification is consistent with this construction because it discloses segments of time-frequency resource (e.g., V1, V2, . . . Vm) each having a starting time-frequency coordinate (e.g., index VZ1=0, Vz2=1, VZ3=9 . . . Vm). See Ex. 1001, 6:3–14, 7:7–27, Fig. 6; PO Resp. 16–17. Finally, we agree that the recitations of dependent claims 2 and 3 are not inconsistent with “a starting time frequency coordinate” that does not encompass separate time and frequency coordinates. See PO Resp. 19–21.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot reached
“Vijayan089 in view of Park are untimely. Contrary to Petitioner’s suggestion, Patent Owner does not explicitly propose construing “a starting time-frequency coordinate,” as limited to a “single index.” See PO Resp. 11–21; PO Sur-reply 1–5. A reply may only respond to arguments raised in a response or to address issues discussed in the institution decision. (2018); 37 C.F.R. § 42.23(b)). “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in” the petition. Id. at 74. A petitioner may not submit new arguments or evidence in a reply that it could have presented earlier, for example, to make out a prima facie case of unpatentability. See id. at 73. “[A] reply . . . that raises a new issue or belatedly presents evidence may not be considered.” Id.; see also Axonics, Inc. v. Medtronic, Inc., 75 F.4th 1374, 1381 (Fed. Cir. 2023) (“We have held that a petitioner may not in reply rely on new prior art to teach a claim limitation.”). Accordingly, we decline to consider Petitioner’s belated Reply arguments that it would have been obvious to modify Vijayan089 to use an index.” slip op. at 35
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“coordinates. See Pet. 44–47. Although Vijayan089 discloses that the assigned segment may be specified by two parameters––the start of the segment and the length of the segment, Vijayan089 further discloses the start of the segment parameter may be given by the starting subband and symbol period. See Ex. 1005 ¶ 74. Petitioner does not direct us to any disclosure in Vijayan089 describing this start of the segment parameter in any additional detail or describing this parameter in terms other than a starting symbol period (i.e., time coordinate) and subband (i.e., frequency coordinate). See Pet. 44–47. Indeed, Petitioner asserts that PLC2 or “Segment 734 includes a starting time-frequency coordinate of: Symbol Period =4, Subband Group =2.” Pet. 47; see Pet. 46 (Petitioner’s annotated Figure 7B of Vijayan089); Ex. 1003 ¶¶ 87, 150. We further agree that Dr. Wilson’s deposition testimony is consistent with Vijayan089’s description of the start of the segment in terms a starting symbol period (i.e., time coordinate) and subband (i.e., frequency coordinate). See Ex. 2007, 149:6–12, 150:10–22, 152:22–153:5. As explained above in Section II.B., we find that separate time and frequency coordinates have been disclaimed from the ordinary and customary meaning of “a starting time-frequency coordinate.” Accordingly, Vijayan089’s disclosure of the start of the segment parameter given by the symbol period (i.e., time coordinate) and starting subband (i.e., frequency coordinate) does not disclose the claimed “a starting time-frequency coordinate” in accordance with its correct construction.” slip op. at 34
Patent outcomesUS 10,447,450 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,447,450 - American Honda Motor Co. Inc. / General Motors LLC et al. v. Neo Wireless LLCNo claims unpatentablePTAB · Nov 1, 2024 · IPR2022-01567 · APJ Kristen L Droesch · IPR · Final written decision
The Board held claims 1–18 not unpatentable because the asserted combinations did not teach the claimed starting time-frequency coordinate, which excludes separate time and frequency coordinates.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the record, we adopt Petitioner’s proposed definition of a person of ordinary skill in the art as it does not materially differ from Patent Owner’s proposed definition and is consistent with the level of skill reflected in the ’450 Patent Specification and the asserted prior art. In any event, our conclusions would be the same under Patent Owner’s definition.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalPlain and ordinary meaningDecided for patent owner
“After reviewing the parties’ respective positions and the intrinsic evidence cited by the parties, we agree with Patent Owner that the Board’s decision denying institution in IPR2021-01486, finding that “a starting timefrequency coordinate” is not disclosed by separate starting time and frequency coordinates, constitutes a disclaimer which is binding on these proceedings. See Ex. 1014, 27; Aylus, 856 F.3d at 1361; Cupp Computing AS v. Trend Micro Inc., 53 F.4th 1376, 1383 (Fed. Cir. 2022); see also Ex. 1012, 12–13 (Patent Owner’s arguments that a time coordinate and a frequency coordinate is not the same as “a starting time-frequency coordinate.”). As such, we find that the ordinary and customary meaning of “a starting time frequency coordinate” excludes separate time and frequency coordinates. We further agree with Patent Owner that the ’450 Patent Specification is consistent with this construction because it discloses segments of time-frequency resource (e.g., V1, V2, . . . Vm) each having a starting time-frequency coordinate (e.g., index VZ1=0, Vz2=1, VZ3=9 . . . Vm). See Ex. 1001, 6:3–14, 7:7–27, Fig. 6; PO Resp. 16–17. Finally, we agree that the recitations of dependent claims 2 and 3 are not inconsistent with “a starting time frequency coordinate” that does not encompass separate time and frequency coordinates. See PO Resp. 19–21.” slip op. at 19
- Strike new argumentNew argument disregardedDecided for patent owner
“We agree with Patent Owner that these Reply arguments modifying Vijayan089 in view of Park are untimely. Contrary to Petitioner’s suggestion, Patent Owner does not explicitly propose construing “a starting time-frequency coordinate,” as limited to a “single index.” See PO Resp. 11–21; PO Sur-reply 1–5. A reply may only respond to arguments raised in a response or to address issues discussed in the institution decision. (2018); 37 C.F.R. § 42.23(b)). “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in” the petition. Id. at 74. A petitioner may not submit new arguments or evidence in a reply that it could have presented earlier, for example, to make out a prima facie case of unpatentability. See id. at 73. “[A] reply . . . that raises a new issue or belatedly presents evidence may not be considered.” Id.; see also Axonics, Inc. v. Medtronic, Inc., 75 F.4th 1374, 1381 (Fed. Cir. 2023) (“We have held that a petitioner may not in reply rely on new prior art to teach a claim limitation.”). Accordingly, we decline to consider Petitioner’s belated Reply arguments that it would have been obvious to modify Vijayan089 to use an index.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“coordinates. See Pet. 44–47. Although Vijayan089 discloses that the assigned segment may be specified by two parameters––the start of the segment and the length of the segment, Vijayan089 further discloses the start of the segment parameter may be given by the starting subband and symbol period. See Ex. 1005 ¶ 74. Petitioner does not direct us to any disclosure in Vijayan089 describing this start of the segment parameter in any additional detail or describing this parameter in terms other than a starting symbol period (i.e., time coordinate) and subband (i.e., frequency coordinate). See Pet. 44–47. Indeed, Petitioner asserts that PLC2 or “Segment 734 includes a starting time-frequency coordinate of: Symbol Period =4, Subband Group =2.” Pet. 47; see Pet. 46 (Petitioner’s annotated Figure 7B of Vijayan089); Ex. 1003 ¶¶ 87, 150. We further agree that Dr. Wilson’s deposition testimony is consistent with Vijayan089’s description of the start of the segment in terms a starting symbol period (i.e., time coordinate) and subband (i.e., frequency coordinate). See Ex. 2007, 149:6–12, 150:10–22, 152:22–153:5. As explained above in Section II.B., we find that separate time and frequency coordinates have been disclaimed from the ordinary and customary meaning of “a starting time-frequency coordinate.” Accordingly, Vijayan089’s disclosure of the start of the segment parameter given by the symbol period (i.e., time coordinate) and starting subband (i.e., frequency coordinate) does not disclose the claimed “a starting time-frequency coordinate” in accordance with its correct construction.” slip op. at 34
Patent outcomesUS 10,447,450 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,447,450 - Nintendo Co., Ltd. / Nintendo Of America Inc. v. Gamevice, Inc.All claims unpatentablePTAB · Oct 29, 2024 · IPR2023-00643 · APJ Matthew S Meyers · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Willner and Park; the Board did not reach the other instituted grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The main distinction between Petitioner’s ordinarily skilled artisan and Patent Owner’s is that Patent Owner’s definition requires “a mechanical engineering degree” whereas Petitioner’s definition allows for a degree in “mechanical, electrical, or computer engineering.” See Pet. Reply 16 (citing Pet. 13). However, Mr. Kitchen states that he qualifies as one of ordinary skill in the art based on Patent Owner’s proffered definition “even without an undergraduate degree in mechanical engineering” because he has “over 40 years of experience in the design and development of interactive products, including specifically with respect to handheld gaming devices.” Ex. 1033 ¶ 7 (citing Ex. 1002 ¶¶ 24–30). Mr. Kitchen asserts that his experience is in “the same category of products claimed in the ’393 patent and described in the prior art references at issue in this proceeding.” Id. In view of this and based on the complete record before us, we view the parties’ proposals as substantially the same because Petitioner’s proposed definition includes the requisite education Patent Owner’s definition requires. Thus, we find (as we did in the Institution Decision) that Petitioner’s level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’393 patent and the prior art of record. See Inst. Dec. 20–21 (citing Okajima, 261 F.3d at 1355). More particularly, we do not agree with Patent Owner that the education component for the level of ordinary skill in the art for computing gaming devices would be limited to just mechanical engineering. We note that, based on the record and evidence before us, our decision and analysis would be the same applying either party’s definition of a person of ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“After reviewing the full record, we determine that it is unnecessary to construe the term “confinement structures,” as it appears in the limitation “a pair of confinement structures” to reach a determination in this proceeding. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). However, we will address the parties’ dispute regarding whether the prior art discloses or teaches physical component(s) that hold(s) a computing device within our merits analysis below. The parties do not dispute the construction of any other claim terms and we find that no other terms require express construction to resolve the controversy between the parties. Accordingly, we do not construe any other claim terms expressly. See Realtime Data, 912 F.3d at 1375 (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., 200 F.3d at 803).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“First, the test for obviousness “is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference, . . . but rather whether ‘a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention.’” Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016); see also Pet. Reply 11–12 (arguing the same). Second, we disagree with Patent Owner’s assertion that the proposed combination would fail “to retain[] computing device 10 in position during normal user operation” because Park’s adjustable bridge “configuration does not allow mobile phone (1) to be seated for stability in the device.” PO Resp. 20 (citing Ex. 1004 ¶ 42; Ex. 2004 ¶ 68). At the outset, we note that Patent Owner’s argument mischaracterizes the disclosure of Park. Instead, we find Park discloses that a “basic configuration of [Park’s] game pad device for a mobile phone according to the present invention” “sufficiently allows mobile phone (1) to be mounted on the device according to the present invention and used.” Ex. 1004 ¶¶ 25, 41. Although Park discloses that “mobile phone (1) may come loose during gaming or become detached in severe cases” (id. ¶ 41), we do not view this disclosure to otherwise negate Park’s teaching that its adjustable bridge (30,40) “sufficiently allows mobile phone (1) to be mounted on the device according to the present invention and used.” Id. We credit Mr. Kitchen’s declaration testimony to that effect. See Ex. 1033 ¶ 47 (declaring that one of ordinary skill in the art would have “understood this disclosure to mean that a computing device (mobile phone) would have been secured by the device for normal use . . . as part of a handheld gaming device.”).” slip op. at 24
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We agree with Petitioner and find more credible Mr. Kitchen’s opinion regarding “normal user operation.” In doing so, we credit Mr. Kitchen’s opinion that Willner’s sidewalls would “function to secure the sides of the computing device and hold it in place” and, “[i]n the combination, Park’s bridge would be adjusted to reduce the length of the bridge and thereby ‘mount’ a computing device by having Willner’s side walls (confinement structures) ‘apply pressure’ to opposing sides of the computing device.” Ex. 1002 ¶¶ 154–156 (citing Ex. 1004 ¶¶ 38–41). We note that the ’393 patent operates in a similar manner using a sufficient compressive load to hold a computing device. More particularly, the ’393 patent discloses that [t]he expansion and contraction of the distance between the pair of confinement structures 316, facilitates placement of the computing device 302 between the pair of confinement structures 316, the application of sufficient compressive load being placed on the computing device 302 to securely hold the computing device between the pair of confinement structures 316. Ex. 1001, 10:11–20. Thus, we find Mr. Kitchen’s opinion credible and supported by the complete record. Accordingly, we find that Petitioner has proven, by a preponderance of the evidence, that the combination of Willner and Park teaches or suggests “a pair of confinement structures,” as recited by limitation 1[b][1].” slip op. at 22
Patent outcomesUS 10,391,393 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,391,393 - PTAB · Oct 15, 2024 · IPR2024-00766 · APJ Brent M Dougal · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim obvious over the asserted prior-art grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one challenged claim would have been obvious over the prior art. See 35 U.S.C. § 314(a).” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“However, each of these asserted modifications is based on a teaching that is not present in Brown. Brown does not teach “a projection that provides resistance against ‘handle’ movement” or that “opening Brown’s ‘cover’ requires bending Brown’s ‘port,’” as asserted by Petitioner. See PO Resp. 22. As repeatedly noted, the identified “projection” appears to be nothing more than a portion of cover 14 the accessory/hose port. Petitioner’s arguments regarding a projection that provides resistance and a bendable port in Brown, appear to be nothing more than an effort to create the limitations of the claims in the prior art based on improper hindsight. For at least the above reasons, the Petition does not show how Brown teaches or suggests all of the limitations of the independent claims.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“Petitioner argues that when cleaning tool 10 (i.e. accessory) is in position on the vacuum, end wall 26 cannot open and, thus, that end wall is inhibited from opening. Pet. 45–46 (citing Ex. 1005, ¶ 37, Fig. 2; Ex. 1002 ¶¶ 143–145 (similar statements from Petitioner’s declarant)). Petitioner then asserts that the catch is therefore inhibited from moving to the disengaged position. Id. at 46. The combination of Dimbylow and Howes does not teach this limitation and Petitioner’s assertions are not persuasive. As can be seen from the above annotated Figure, nothing inhibits Dimbylow’s catch 42 from moving to a disengaged position. See also Prelim. Resp 11–14. Rather, any time Howe’s button is pressed, thereby moving the push-rod (to the right in the Figure), catch 42 would disengage, whether the door opened or not. Though cleaning tool 10 (i.e. accessory) inhibits end wall 26 from opening, it has no impact on movement of catch 42 (i.e. lock engaging member) from the engaged to disengaged position as required by the claim. Thus, the lock engaging member of Petitioner’s combination, i.e., the catch, is not inhibited from moving to a disengaged position when the accessory, i.e., the cleaning” slip op. at 17
- Skill levelSkill level petitioner adoptedOther
“understanding of a person of ordinary skill in the art at the time of the invention (“POSA”). Id. at 13, 17. Petitioner’s declarant asserts that a person of ordinary skill in the art would have had a bachelor’s degree in mechanical engineering or a similar field and 2-3 years of experience in machine design, such as vacuum cleaners. Additional education could offset less experience and vice versa, and a POSA could have also obtained similar knowledge and experience through other means. Ex. 1002 ¶ 42; see also Pet. 22 (making the same assertion without citation to declarant). Patent Owner does not contest the level of skill. Prelim. Resp. 2. We are persuaded, on the present record, that Petitioner’s (and its declarant’s) proposed definition of the ordinarily skilled artisan is consistent with the problems and solutions in the ’477 patent and prior art of record. We adopt the above definition of the level of skill for the purposes of this Decision.” slip op. at 5
Claim construction§ 103 obviousnessPatents in suitUS 10,568,477 - Comcast Cable Communications, LLC v. Touchstream Technologies, Inc.Rehearing grantedPTAB · Oct 9, 2024 · IPR2024-00324 · APJ Michelle N Wormmeester · IPR · Rehearing
Patent Owner’s rehearing request was granted; the Petition was denied and no trial instituted because the challenges did not meet the compelling-merits standard under Fintiv.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s 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). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for patent owner
“Our reviewing court has explained that “[t]he prosecution history modifies the scope of a claim term if ‘the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention.’” Sentry Protection Prods., Inc. v. Eagle Mfg. Co., 400 F.3d 910, 915 (Fed. Cir. 2005) (quoting CCS Fitness, Inc. v. Brunswick Corp., 228 F.3d 1359, 1366–67 (Fed. Cir. 2002)).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“discretion to deny institution due to the advanced state of parallel litigation, taking into consideration the six factors identified in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), as well as applying guidance set forth in a Memorandum regarding the “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” issued by the Director of the U.S. Patent and Trademark Office (hereinafter, “Guidance Memo”).5 Inst. Dec. 6–43. We determined that the first five Fintiv factors favor discretionary denial,6 and that the Petition presents compelling evidence of unpatentability as to independent claims 1, 12, and 17 under the sixth Fintiv factor. Id. at 15–16, 23–43. Because “the PTAB will not deny institution based on Fintiv if there is compelling evidence of unpatentability,” we declined to exercise our discretion to deny. Guidance Memo 5; Inst. Dec. 15–16.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“those arguments. See Inst. Dec. 45–47. As to Petitioner’s arguments on the claimed first and second formats of limitation 1D in particular, we found the record provided “some support” for Petitioner’s position that “it would have been obvious to a [person of ordinary skill in the art] that one or more RTS Media Abstraction Modules could operate at a server, such as in [Aldrey’s] Service Provider Network 103,” even though Petitioner asserted that Mahajan teaches command conversion at the client. Id. at 45–46 (citing Pet. 66–67). Yet assuming Mahajan’s RTS Media Abstraction Module could have operated at a server, as Petitioner argued, it is not readily apparent why an ordinarily skilled artisan would have considered locating the RTS Media Abstraction Module at a server based on Mahajan’s disclosure of command conversion at a client. See also Pet. 66 (“[I]t would have been obvious to a [person of ordinary skill in the art] that the RTS Media Abstraction Module could be located on the client or server.” (emphasis added)). Nor did Petitioner adequately explain why an ordinarily skilled artisan would have considered locating Mahajan’s RTS Media Abstraction Module at a server. We note Petitioner further argued that combining Mahajan and Aldrey would have provided a system where “Aldrey’s end terminal would translate commands associated with a first type of media playing application to a command associated with a second type of media playing application on a STB.” Pet. 68; see also id. at 67 (“Mahajan’s server-command teachings could be implemented on Aldrey’s end terminal remote control.”). Arguing that Aldrey’s end terminal would translate commands seems inconsistent with Petitioner’s earlier argument for locating command conversion at Aldrey’s network service provider. See id. at 66–68. Moreover, it is not readily apparent how command translation by Aldrey’s end terminal––rather than Aldrey’s network service provider––teaches or suggests the format of a command sent from the end terminal to the network service provider is different from the format of a command sent from the network service provider to the STB. Petitioner did not close these logical gaps, leaving its case short of compelling.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 11,048,751 - PTAB · Oct 9, 2024 · IPR2024-00733 · APJ Matthew S Meyers · IPR · Institution
The Board instituted IPR on claims 1–14 and all asserted grounds, finding a reasonable likelihood of success based on anticipation by Liddell and obviousness over Simpson and Liddell.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.”” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingTerm construed petitioner constructionDecided for petitioner
“preamble term “hand carriable” does not limit the claimed apparatuses. “[A] preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’” Catalina Marketing, 289 F.3d at 808 (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). This rule against giving effect to intended-use language in the preamble “reflects a longstanding substantive aspect of the patent statue—specifically, the ‘well settled’ fundamental principle ‘that the recitation of a new intended use for an old product does not make a claim to that old product patentable.’” Arctic Cat Inc. v. GEP Power Products, Inc., 919 F.3d 1320, 1328 (Fed. Cir. 2019) (quoting In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)). In this case, we view the phrase “hand carriable,” as it appears in the preamble, to be indicative of an intended use of the claimed apparatuses, rather than a structural limitation, and as such, we do not see it to be limiting based on the current record. Patent Owner does not point to any particular structural limitation required by the preamble term “hand carriable.” See Prelim. Resp. 2–10. Although the independent claims each recite “a handle,” the claims do not explicitly tie this limitation to the “hand carriable” language in the preambles. In any case, to the extent the handle recited in the claims may be used for carrying the claimed apparatus, the claims need not rely on the preamble term “hand carriable” for antecedent basis, as the handle limitation is introduced in the body of the claims. In other words, with respect to the functionality of carrying the apparatus by hand, the claim bodies recite “a structurally complete invention.” Catalina Marketing, 289 F.3d at 808.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Reference is prior artInstituted
“reasonable likelihood that it would prevail in challenging the patentability of independent claim 1. In our view, Petitioner’s analysis, on this record, adequately identifies where all the elements of claim 1 are found in Liddell.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“On the current record, we find that the Petition provides sufficient rationale to modify Simpson in view of Liddell. See Pet. 57–61 (citing Ex. 1002 ¶¶ 250–267). For example, Petitioner contends that one of ordinary skill in the art would have been motivated to incorporate Liddell’s cyclonic separating apparatus into Simpson’s vacuum cleaner in order to reap “the benefits of cyclonic separation, including maintaining steady suction as the separator fills with dirt.” Id. at 59 (citing Ex. 1002 ¶¶ 256– 259). Petitioner explains that Organ establishes that “bagless vacuums like ‘cyclonic’ vacuums were ‘becoming increasingly popular’” in the prior art because they are able “to maintain a consistently high level of suction, even as the collecting chamber fills with dirt” (id. (citing Ex. 1006, 1:8–13)), and relying on the declaration testimony of Dr. Giachetti, argues that one of ordinary skill in the art would have “would have been motivated to substitute Simpson’s dust separation system with a bagless cyclonic separator for the same reason” (id. (citing Ex. 1002 ¶ 281)).” slip op. at 38
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,327,607 - PTAB · Oct 1, 2024 · IPR2024-00692 · APJ Matthew S Meyers · IPR · Institution
The Board instituted IPR of claims 1–9 and 11–21 on all asserted grounds, finding a reasonable likelihood of prevailing on obviousness over Kane and Beckley.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.”” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“conclude that, at this stage of the proceeding, Petitioner has shown a reasonable likelihood that it would prevail in challenging the patentability of independent claim 1. In our view, Petitioner’s analysis, on this record, adequately identifies where all the elements of claim 1 are found in Kane and Beckley. We also determine that Petitioner provides sufficient arguments and evidence, at this stage of the proceeding, to support its reasoning that a person having ordinary skill in the art would have been motivated to modify Kane’s compact wallet to incorporate the removable clip taught by Beckley, as Petitioner proposes.” slip op. at 34
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“As explained by the Federal Circuit, [f]or objective evidence of secondary considerations to be relevant, there must be a nexus between the merits of the claimed invention and the objective evidence. See In re GPAC, 57 F.3d 1573, 1580 (Fed. Cir. 1995). A showing of nexus can be made in two ways: (1) via a presumption of nexus, or (2) via a showing that the evidence is a direct result of the unique characteristics of the claimed invention. A patent owner is entitled to a presumption of nexus when it shows that the asserted objective evidence is tied to a specific product that “embodies the claimed features, and is coextensive with them.” Brown & Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000).” slip op. at 37
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“previously were presented to the Office.”8 Our § 325(d) analysis employs a two-prong framework: (1) whether the prior art and arguments presented in the petition are the same or substantially the same as those previously presented to the Office; and (2) if so, whether the petitioner has demonstrated a material error by the Office in its prior consideration of those prior art and arguments. Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte GmbH, IPR2019-01469, Paper 6 (“Advanced Bionics”), 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 41
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,791,808 - PTAB · Sep 18, 2024 · IPR2024-00690 · APJ Matthew S Meyers · IPR · Institution
Instituted IPR of claims 1–28 on all asserted grounds; the Board found a reasonable likelihood that Peter and Neroni render at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of all challenged claims on all asserted grounds pursuant to 35 U.S.C. § 314. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–1360 (2018) (requiring institution on all claims, if any); see also Patent Trial and Appeal Board Consolidated Trial Practice Guide 64 (Nov. 2019) (“Trial Practice Guide”) (providing guidance in view of SAS).1” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of invention. Graham, 383 U.S. at 17. Factors pertinent to determining the level of ordinary skill in the art include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. Moreover, these factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Further, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that one of ordinary skill in the art (“POSITA” or “POSA”) would have had a bachelor’s degree in mechanical engineering or a similar field and 2–3 years of experience in fluid dynamics and/or machine design for devices related to fluid dynamics, such as vacuum cleaners. Additional education could offset less experience and vice versa, and a POSA could have also obtained similar knowledge and experience through other means. Pet. 11. At this stage of the proceeding, “Patent Owner does not challenge Petitioners’ proposed definition of a POSITA,” but “reserves the right to provide an alternative definition of a POSITA if IPR is instituted.” Prelim. Resp. 3. On the current record, we determine that Petitioner’s definition of a person of ordinary skill in the art is consistent with the scope and content of the ’550 patent and the asserted prior art, and, at this stage, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Under that standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. See Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Petitioner “do[es] not believe any claim construction is necessary to resolve the parties’ controversy in this Petition, and the claims should be given their plain and ordinary meaning for purposes of this IPR.” Pet. 11. “Patent Owner does not submit any terms for construction,” but “reserves the right to subsequently submit claim terms for construction should the Board institute IPR.” Prelim. Resp. 3. We agree with the parties that, at this stage, no terms require explicit construction to resolve the issues presented by the arguments and evidence of record to reach a decision on institution. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“On the current record, we find that the Petition provides sufficient rationale to modify Peter in view of Neroni. See Pet. 68–73 (citing Ex. 1002 ¶¶ 278–287). For example, Petitioner contends that one of ordinary skill in the art would have been motivated to incorporate Neroni’s teachings of a power cleaning tool adaptor into Peter’s cleaning tool in order to “improve cleaning . . . by agitating the surface being cleaned.” Pet. 71–72 (citing Ex. 1007, 1–2; Ex. 1002 ¶ 285). Petitioner explains that Neroni establishes that “powered cleaning tools were common” in the prior art (id. at 72 (citing Ex. 1011, 1:17–49; Ex. 1002 ¶ 285)), and relying on the declaration testimony of Dr. Giachetti, argues that one of ordinary skill in the art would have “understood the well-known benefits of a powered floor tool and would’ve been motivated to incorporate Neroni’s electrical system into Peter to achieve these benefits” (id. (citing Ex. 1002 ¶ 286). Patent Owner argues that one of ordinary skill in the art would not have been motivated to combine the vacuums taught by Peter and Neroni because they “are directed to different types of vacuum cleaners” and “each [is concerned with] solving different problems with their respective vacuum cleaners.” Prelim. Resp. 19. However, other than pointing out that the vacuum cleaners in Peter and Neroni are different, Patent Owner itself provides conclusory statements, and fails to adequately explain what these differences are, or why they would deter one of ordinary skill in the art from combining the two references with a reasonable expectation of success. Patent Owner does not argue, and we see no reason to believe, that incorporating Neroni’s teachings of a power cleaning tool adaptor into Peter’s cleaning tool is not within the ability of one of skill in the art. See KSR Int’l Co., 550 at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Accordingly, on the current record, we determine that Petitioner has provided sufficient arguments and evidence to support its assertion that one of ordinary skill in the art would have been motivated to combine Peter and Neroni. See 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.”).” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,117,550
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.