• Lululemon Athletica Canada Inc. / Lululemon USA Inc. v. Nike, Inc.All claims unpatentable
  PTAB · Jun 25, 2024 · IPR2023-00348 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1, 5–7, and 12 are unpatentable: claims 1 and 5–7 are anticipated by Lofi, and claims 1, 5–7, and 12 are obvious over Maeueler and Kitagawa.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’930 patent, the background technical field, the prior art, and Petitioner’s unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Dr. Fischer (Ex. 1005 ¶ 44).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “Claim 1 recites, in relevant part, “providing first instructions to a user to perform a first athletic movement.” Ex. 1001, 26:17–18. The claim language itself suggests that “a first athletic movement” is simply the physical exercises, drills, or activities the user is instructed to perform via the first instructions. See Pet. Reply 4 (Petitioner arguing that the “instructions” recited in claim 1 “define the first and second athletic movements”). So, if the “first instructions” (notably plural) instructed a user to run one mile, then running one mile would be the “first athletic movement”; and likewise, if the “first instructions” instructed a user to perform 10 squats, perform 10 push-ups, and run one mile, then performing the 10 squats, performing 10 push-ups, and running one mile would be the “first athletic movement.” Contrary to Patent Owner’s proposed construction, we find no suggestion in claim 1 that “a first athletic movement” should be limited to a single “athletic movement” or “a single type of exercise or athletic activity.” Indeed, a single “type of exercise” or single “athletic activity” both appear to be proverbial “noses of wax,” as Patent Owner provides no explanation for how the skilled artisan would definitively distinguish one type of exercise or athletic activity from another (e.g., “weightlifting” could be considered an athletic activity or a “type” of exercise, yet it comprises countless weighted physical motions and sequences; similarly, “swimming” could be considered an athletic activity or a “type” of exercise, yet it too comprises many physical forms or techniques invoking many different physical motions and sequences (such as breaststroke, backstroke, butterfly, and sidestroke). We note that claim 6, which depends directly from independent claim 1, recites: “[W]herein the first instructions and the second instructions include a plurality of drills configured to test a plurality of fitness attributes of the user and a plurality of athleticism attributes of the user.” Ex. 1001, 26:57–60 (emphases added). Although less than artfully worded, we find that dependent claim 6 plainly requires that the first (and second) instructions provided to the user in claim 1 instruct the user on performing “a plurality of drills” (i.e., more than a single drill), which further supports our interpretation of “a first athletic movement.” See Pet. Reply 4. Patent Owner argues, inter alia, claim 6 specifies that “the first instructions and second instructions must be selected from a specific ‘plurality of drills’— rather than from some other source (e.g., an athletic competition).” PO Surreply 5–6 (emphasis added); see id. at 6–7 (Patent Owner arguing “claim 6 simply requires the first and second instructions to identify a first and second ‘athletic movement’ that are selected from a certain catalog of drills” (emphasis added)). We find Patent Owner’s attempt to contort “includes” to mean “selected from” a certain grouping unavailing, because “including” A, B, and C is simply not the same as “select[ing] [one] from” A, B, and C.” slip op. at 19

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

    “Both parties argue that the terms “first instructions” and “first activity data” should have their ordinary and customary meanings or otherwise do not require construction to resolve the controversy between the parties. PO Resp. 21–22; Pet. Reply 8–10. We agree.” slip op. at 25

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

    “Claims: We turn first to the claim language itself. We are mindful of Judge Rich’s guidance from over thirty years ago: in all aspects of claim construction, “the name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (quoting Giles Sutherland Rich, Extent of Protection and Interpretation of Claims–American Perspectives, 21 Int’l Rev. Indus. Prop. & Copyright L. 497, 499 (1990)). Claim 1 recites, in relevant part, “providing first instructions to a user to perform a first athletic movement.” Ex. 1001, 26:17–18. The claim language itself suggests that “a first athletic movement” is simply the physical exercises, drills, or activities the user is instructed to perform via the first instructions. See Pet. Reply 4 (Petitioner arguing that the “instructions” recited in claim 1 “define the first and second athletic movements”). So, if the “first instructions” (notably plural) instructed a user to run one mile, then running one mile would be the “first athletic movement”; and likewise, if the “first instructions” instructed a user to perform 10 squats, perform 10 push-ups, and run one mile, then performing the 10 squats, performing 10 push-ups, and running one mile would be the “first athletic movement.” Contrary to Patent Owner’s proposed construction, we find no suggestion in claim 1 that “a first athletic movement” should be limited to a single “athletic movement” or “a single type of exercise or athletic activity.” Indeed, a single “type of exercise” or single “athletic activity” both appear to be proverbial “noses of wax,” as Patent Owner provides no explanation for how the skilled artisan would definitively distinguish one type of exercise or athletic activity from another (e.g., “weightlifting” could be considered an athletic activity or a “type” of exercise, yet it comprises countless weighted physical motions and” slip op. at 19

  Patent outcomesUS 10,188,930 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,188,930
• Lululemon Athletica Canada Inc. / Lululemon USA Inc. v. Nike, Inc.All claims unpatentable
  PTAB · Jun 25, 2024 · IPR2023-00349 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1–5, 7, 11, and 13 are unpatentable as obvious over Sirmans and Kobayashi; the Board did not reach the remaining grounds.

  RulingsFinal written decision

  • BurdenUnpatentable

    “period,” “should be given [its] ordinary and customary meaning,” which according to Patent Owner, is “receiving an activity time period from a user during a goal setting operation.” PO Resp. 11–12 (emphasis added); see id. at 11–13; PO Sur-reply 2–8. Petitioner proposes that limitation 1[b] also should be given its ordinary and customary meaning, but contends the meaning is simply what it recites, “receiving an activity time period,” which does not require the “activity time period” to be received “from a user during a goal setting operation.” Pet. Reply 2–6; Pet. 18. We agree with Petitioner, and determine that limitation 1[b] does not require the “activity time period” to be received “from a user during a goal setting operation,” as discussed below.” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “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. 1006 ¶ 42). Patent Owner “does not dispute [Petitioner’s] proposed level of skill in the art” in this case. PO Resp. 11.” slip op. at 10

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

    “period,” “should be given [its] ordinary and customary meaning,” which according to Patent Owner, is “receiving an activity time period from a user during a goal setting operation.” PO Resp. 11–12 (emphasis added); see id. at 11–13; PO Sur-reply 2–8. Petitioner proposes that limitation 1[b] also should be given its ordinary and customary meaning, but contends the meaning is simply what it recites, “receiving an activity time period,” which does not require the “activity time period” to be received “from a user during a goal setting operation.” Pet. Reply 2–6; Pet. 18. We agree with Petitioner, and determine that limitation 1[b] does not require the “activity time period” to be received “from a user during a goal setting operation,” as discussed below.” slip op. at 19

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

    “Petitioner argues the skilled artisan would have had “a strong motivation” to combine the teachings of Sirmans and Kobayashi, which are “in the same field of personal fitness monitoring,” because doing so would have “further incentivize[d] regular exercise,” and that the skilled artisan would have done so “with a high likelihood of success.” Pet. 62–63 (citing Ex. 1006 ¶¶ 124–128). Petitioner argues “it would [have been] a simple modification to include Kobayashi’s recognition of consecutive 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). In sum, Petitioner contends Sirmans teaches determining whether received athletic activity data exceeds a first activity goal for a predetermined number of activity time periods, and turns to Kobayashi for teaching recognizing and rewarding users for achieving goals for consecutive activity time periods. See Pet. 60–63. Based on the foregoing evidence and the reasons stated in the Petition at pages 60–63, we find Petitioner sufficiently establishes that the combination of Sirmans and Kobayashi teaches or fairly suggests limitation 1[d]. Except as discussed above concerning limitation 1[b] (activity time period), Patent Owner does not contest that this limitation is present in the combination. See generally PO Resp.” slip op. at 27

  Patent outcomesUS 9,259,615 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,259,615
• Nespresso USA, Inc. v. K-Fee System GmbHInstituted
  PTAB · Jun 25, 2024 · IPR2024-00299 · APJ James J Mayberry · IPR · Institution

  The Board instituted review of claims 1–8 based on a reasonable likelihood that claim 1 is obvious over Yoakim, Jarisch ’929, Rossi, and Rapparini.

  RulingsInstitution decision

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

    “institute review. 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (2023) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends that a person of ordinary skill in the art would have had “a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products, and experience with sensors for recognizing an identifier.” Pet. 16 (referencing Ex. 1003 ¶ 40; IPR2022-01574, Paper 12, 15). Patent Owner does not dispute Petitioner’s characterization of the level of ordinary skill in the art of the ’910 patent. For purposes of this Decision, based on the prior art, the sophistication of the technology at issue, and Mr. Jobin’s Declaration testimony, we adopt Petitioner’s unopposed definition of the level of ordinary skill. The ’901 patent, as well as the prior art of record, includes systems that use identifiers on a capsule to control the operation of a beverage machine. See, e.g., Ex. 1001, 1:28–34 (“[T]he present invention . . . has an identifier, which allows to individualize the respective portion capsule.”); Ex. 1004 ¶ 25 (discussing the system’s “identification means”); Ex. 1006 ¶ 1 (“The present invention relates in particular to coding supports adapted to store information related to a capsule, capsules associated with/for embedding coding supports, reading and processing arrangements for reading and using such information for preparing a beverage.”); Ex. 1041, code (57) (“The process for controlling the operation of an edible-product making machine [includes] . . . recogni[zing] an” slip op. at 17

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

    “that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc) (“We have frequently stated that the words of a claim ‘are generally given their ordinary and customary meaning.’” (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).” slip op. at 18

  • Obviousness (§103) › Analogous artAnalogous artOther

    “a) Petitioner’s contentions Petitioner contends that Yoakim, Jarisch ’929, Rossi, and Rapparini are “analogous art in the field of portion capsule beverage extraction, each disclosing an invention that may be applied in automatic coffee/expresso machines.” Pet. 37 (referencing Ex. 1004 ¶¶ 2, 3; Ex. 1006 ¶¶ 1, 2; Ex. 1008 ¶ 1; Ex. 1041, 3; Ex. 1003 ¶ 220); cf. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“References within the statutory terms of 35 U.S.C. § 102 qualify as prior art for an obviousness determination only when analogous to the claimed invention.”). Patent Owner does not dispute this contention at this stage of the proceeding.” slip op. at 20

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,554,910
• Nespresso USA, Inc. v. K-Fee System GmbHInstitution denied
  PTAB · Jun 10, 2024 · IPR2024-00239 · APJ Jon B Tornquist · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 would have been obvious over either asserted combination.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing with respect to any of claims 1–20 of the ’094 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

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

    “The express language of the claim, however, does not support using the “central axis” as the measuring point for determining if one object is laterally offset from another. For example, the term “central axis” is not used in the relevant claim phrase and the dictionary definitions of “lateral” relied upon by Petitioner and Mr. Jobin to show the ordinary meaning of the claim term do not suggest that the “central axis” is the reference point for determining whether a first object is “laterally offset” from a second object. As such, we determine that the claim language supports Patent Owner’s construction requiring that the “groove” be “off to the side” of the entire mandrel, and not merely the “central axis” of the mandrel. Prelim. Resp. 54. We must also resolve whether the entire groove is required to be laterally offset from the chamfered mandrel, or only a portion of it. On this point, the claims do not use the term “portion,” but rather specify that the “groove” is “laterally offset from the chamfered mandrel.” Ex. 1001, 14:4– 5, 15:19–20. This suggests that the entire “groove” must be offset from the “chamfered mandrel.”” slip op. at 10

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

    “That argument, however, does not explain why it would have been obvious to laterally offset the groove of Yoakim from the chamfered mandrel. Rather, as demonstrated by Mr. Jobin’s testimony, this argument relates to the general use of a sealing member in a groove, to the extent it was ultimately determined that such a configuration is not expressly disclosed in Yoakim. Id.; Ex. 1003 ¶ 296 (“It would have been obvious to one skilled in the art to position a sealing member in a groove to solidify the between counter-force portion 161 and engaging portion 157 in Figure 35 of Yoakim is more appropriately identified as the claimed “groove.” Prelim. Resp. 60–61. We need not resolve this issue, however, as Petitioner does not persuasively demonstrate that either potential “groove” is “laterally offset” from the chamfered mandrel. placement of the seal and improve its sealing stability and strength. Furthermore, it would have been obvious to one skilled in the art to utilize a groove and seal configuration in the brewing head . . . .”) (emphasis added). Even if we interpret the recited portion of the Petition as an argument for placing the groove entirely to the side of the mandrel in Yoakim, the Petition does not persuasively explain why one of ordinary skill in the art would have sought to do so. In Figure 35 of Yoakim, the seal and groove, as well as an elastic loading means, act as a valve means to control the level of pressure exerted in the capsule and “optimize interaction of water and the ground coffee particles to obtain a good extraction of the coffee and aroma compounds.” Ex. 1004 ¶¶ 370–372, 382, 396–398, 434–436, 445; Ex. 1003 ¶¶ 286–290; Pet. 63. These are the same beneficial properties relied upon by Petitioner to support the proposed combination, and Petitioner does not persuasively explain why one of ordinary skill in the art would have modified Yoakim in order to achieve results that are already obtained in the identified embodiment. Pet. 63. In view of the foregoing, we determine that Petitioner does not demonstrate a reasonable likelihood that claims 1 and 12 would have been obvious over the combined disclosures of Yoakim, Jarisch 929, and Rossi.” slip op. at 20

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,542,094
• Mahle Behr Charleston Inc. v. Frank Amidio CatalanoOther
  PTAB · May 24, 2024 · IPR2023-00861 · APJ Christopher M Kaiser · IPR · Remand

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable under any asserted ground.

  RulingsRemand decision

  • RemandOther

    “Accordingly, the Director instructed us to “determine whether Petitioner has demonstrated that Figure 1 of Godefroy ‘is clear on its face’ or would have reasonably suggested the placement of Godefroy’s sacrificial anode ‘within 10 inches’ of the hot liquid inlet.” Id. at 9. “In making this determination,” the Director instructed us to “consider whether the expert testimony provides sufficient ‘technical detail, explanation, or statements supporting why the expert determines that the feature in question was required or would have been obvious based on the prior art disclosure.’” Id. In addition, although the Director’s decision “is limited to [our] application of Hockerson to the grounds in the Petition involving Godefroy,” the Director instructed us also to “consider what effect, if any, this decision has on the other asserted grounds.” Id. Finally, the Director instructed us to “set forth [our] interpretation” of “the limitation ‘within 10 inches of a hot liquid inlet to the radiator.’” Id. at 8 n.4.” slip op. at 4

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

    “original decision, the Director’s decision, and the evidence currently of record, we determine that Petitioner has not shown a reasonable likelihood that it will prevail in showing that at least one of the challenged claims is unpatentable. Accordingly, we do not institute an inter partes review of any challenged claim based on any ground asserted in the Petition. IV. ORDER For the reasons given, it is: ORDERED that, pursuant to 35 U.S.C. § 314, the Petition is denied, and no inter partes review is instituted.” slip op. at 19

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

    “evidence. The challenged claims require that a sacrificial anode be placed within a certain distance—10 inches—of the hot liquid inlet, and, because the inlet has some non-zero size, it might be possible for an anode to be within that distance from some parts, but not from all parts, of the inlet. Accordingly, specifying the center axis of the inlet as the point from which to measure the distance to the anode improves on the plain words of the claim in terms of achieving the claim’s objective of placing the anode within a specified distance of the inlet. Moreover, when discussing the distance from the inlet to the anode, the specification of the ’494 patent uses the language “within 10 inches in any direction of the center axis of the inlet connection.” Ex. 1001, 7:61–64. Thus, the intrinsic evidence supports adopting Petitioner’s claim construction. Petitioner’s declarant, Dr. Medlin, relies on Petitioner’s proposed construction. See, e.g., Ex. 1004 ¶¶ 20 (noting that the construction “within 10 inches of the center axis of [a] hot liquid inlet” “ha[s] been adopted by Petitioner”), 96 (“the sacrificial anodes contained in each of the turbulators 2 would be placed within 10 inches of a center axis of a hot liquid inlet to the radiator of Tomosada”), 144 (“A POSITA would understand from Figure 1 that the sacrificial anode 14 is within 10 inches of a center axis of a hot liquid inlet”), 267 (“These teachings would further motivate a POSITA to located the sacrificial anode 12 within 10 inches of a center axis of the hot liquid inlet.”). This support for Petitioner’s proposed construction provides further reason for us to adopt it. Because it is supported by the intrinsic evidence of record, because Patent Owner proposes no alternative construction, and because Petitioner’s expert supports it, we adopt the construction of “within 10 inches of a hot liquid inlet to the radiator” that Petitioner proposes. Thus, we construe this term as “within 10 inches of the center axis of a hot liquid inlet to the radiator.” In other words, when discussing the distance between a hot liquid inlet and a sacrificial anode, we interpret “hot liquid inlet” as “center axis of the hot liquid inlet.”” slip op. at 5

  • BurdenNot shown unpatentable

    “Inherency may be relied upon in arguing either anticipation or obviousness. Schering, 339 F.3d at 1377 (applying inherency in an anticipation context); Par Pharma. Inc. v. TWI Pharma., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014) (applying inherency in an obviousness context). In both cases, however, “[t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). Instead, “the limitation at issue necessarily must be present, or the natural result of the combination of elements expressly disclosed by the prior art.” Par Pharma., 773 F.3d at 1195–96. Here, Petitioner has not shown sufficiently that, in Godefroy, the sacrificial anode necessarily is placed within 10 inches of the center axis of the hot liquid inlet. Dr. Medlin testifies that Figure 1 of Godefroy shows that “an entirety . . . or at least a significant portion of the sacrificial anode 14, is within 10 inches of a center axis of the inlet.” Ex. 1004 ¶ 144. But we cannot say that Figure 1 of Godefroy is clear on its face, or reasonably suggests, that this is necessarily the case. There are no dimensions shown on Figure 1, so it is unclear from the figure what the diameter of pipe 12 is. If that diameter is larger than 20 inches, then it simply is untrue that “sacrificial anode 14 is . . . necessarily placed within 10 inches of a center axis of a hot liquid inlet to the radiator,” as Dr. Medlin testifies. Id. ¶ 361. As noted above, neither Petitioner nor Dr. Medlin relies on the hot liquid inlet of Godefroy having any particular diameter, and Godefroy is silent as to the diameter of its inlet. Pet. 69–70; Ex. 1004 ¶¶ 144, 359–361, 381–382, 406–408; Ex. 1008, 1–15. Moreover, as Patent Owner notes, there is a wide range of sizes of radiators, including automobile radiators, available. Prelim. Resp. 3–5; Exs. 2001–2003. In the absence of any testimony or other evidence that tends to show that radiator inlet pipes necessarily have diameters less than 20 inches, Petitioner has not shown sufficiently that the diameter of Godefroy’s inlet pipe is small enough to ensure that any portion of the anode necessarily is within 10 inches of the center axis of the inlet.” slip op. at 11

  Claim constructioncites Phillips
• Canon U.S.A., Inc. / Canon Inc. v. Slingshot Printing LLCAll claims unpatentable
  PTAB · May 20, 2024 · IPR2022-01541 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–7, 9, 10, 20–22, and 24 are unpatentable as obvious over Hamafuku, Whitman, and Imanaka, with Cleland added for claim 5.

  RulingsFinal written decision

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

    “Upon review of the prior art of record, we determine that no claim terms require construction for purposes of this Final Written Decision. See 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)).” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Upon review of the prior art of record, we adopt Petitioner’s definition of a person of ordinary skill in the art as it is consistent with the prior art of record, but note that neither party contends the outcome of this case depends on whether a person of ordinary skill could include an individual with a degree in Materials Science.” slip op. at 10

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

    “In this case, there was a known desire to increase nozzle pitch in inkjet printheads, Imanaka’s heater and nozzle configuration had been used in the art to achieve this goal, and there is no suggestion that combining the teachings of Hamafuku, Whitman, and Imanaka was beyond the skill of an ordinarily skilled artisan. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1381 (Fed. Cir. 2023). Thus, we credit the testimony of Mr. Curley that one of ordinary skill in the art would have sought to use Imanaka’s heater and nozzle pitch in Hamafuku in order to provide a more compact and higher density printhead. Ex. 1002 ¶¶ 404–05. A conclusion of obviousness requires a reasonable expectation of success. Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1365 (Fed. Cir. 2016). This inquiry asks whether one of ordinary skill in the art would have had a reasonable expectation of combining the references to achieve what is claimed in the patent-at-issue. Id. at 1367. The inquiry does not look to whether unclaimed elements or functions would or would not also be achieved, or whether “one would reasonably expect the prior art reference to operate as those references intended once combined.” Id.” slip op. at 42

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

    “As noted by Patent Owner, the components of Imanaka are made of silicon-based materials, manufactured using thin film technology. PO Resp. 53–54 (citing Ex. 1008, 6:50–61). We are not persuaded, however, that Imanaka’s preference for silicon-based materials would teach away from, or otherwise discourage, one of ordinary skill in the art from combining Hamafuku, Whitman, and Imanaka. Imanaka does not suggest that failure to use silicon-based materials would result in an inoperable device. Rather, Imanaka states that use of silicon-based materials may “improve the mechanical characteristics” and “reliability” of “the liquid discharge head.” Ex. 1008, 6:50–61. Given the considerable increase in printhead nozzle pitch and print resolution provided by Imanaka’s heater and nozzle pitch configuration, we are not persuaded that a failure to capture the same improvement in mechanical characteristics and reliability from the use of silicon-based materials would prevent one of ordinary skill in the art from implementing Imanaka’s nozzle pitch in Hamafuku and Whitman or counsel against this modification.” slip op. at 41

  Patent outcomesUS 7,152,951 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,152,951
• Dropbox, Inc. / Microsoft Corporation v. Datanet, LLCInstituted
  PTAB · May 8, 2024 · IPR2024-00080 · APJ Bach V Hoang · IPR · Institution

  The Board instituted IPR on claims 1–21 and all asserted grounds after finding a reasonable likelihood that claim 1 would be obvious over Schneider.

  RulingsInstitution decision

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

    “Institution of Inter Partes Review Because we are persuaded that Petitioner has shown a reasonable likelihood of prevailing in showing that the subject matter of claim 1 would have been obvious over Schneider, we institute inter partes review of all claims and all challenges raised in the Petition. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2020) (35 U.S.C. § 314 “simply requires [the Director] to decide whether the petitioner is likely to succeed on ‘at least 1’ claim. Once that single claim threshold is satisfied, it doesn’t matter whether the petitioner is likely to prevail on any additional claims; the Director need not even consider any other claim before instituting review.”); 37 C.F.R. § 42.108(a).” slip op. at 23

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “35 U.S.C. § 314(a) to deny institution in deference to the two co-pending district court infringement litigations. See Pet. 4. In support, each Petitioner entity (Dropbox, Inc. and Microsoft Corporation) “stipulates that, if the Board institutes IPR, it will not pursue in its parallel district court proceeding the grounds raised, or which reasonably could have been raised, in” the Petition. Id. Petitioner asserts this stipulation means “the PTAB will not discretionarily deny institution in view of parallel district court litigation.” Id. (quoting USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)7 at 3, 7). Patent Owner does not address discretionary denial in its Preliminary Response. We do not exercise the authority to discretionarily deny institution.” slip op. at 36

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “held a bachelor’s degree in computer science, electrical engineering, computer engineering, or a closely related field, and one or more years of experience in the design and development of file management, restoration, and archival systems.” Pet. 13–14 (citing Ex. 1004 ¶¶ 29–32). Petitioner further asserts “[m]ore education, e.g., a Master’s or PhD could compensate for a lack of work experience and vice versa.” Id. Patent Owner does not dispute this assessment. See Prelim. Resp. 9 (“Patent Owner does not offer a competing definition at this time, because even under Petitioner’s proposed definition the Petition fails to present a reasonable likelihood of success.”). For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’850 patent and the asserted prior art.” slip op. at 7

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

    “Neither party proposes any claim terms for construction. Petitioner states it “appl[ies] the plain and ordinary meaning of all claim terms.” Pet. 14. Patent Owner states it “does not believe any claim constructions are necessary based on the arguments presented by Patent Owner at this time.” Prelim. Resp. 26. We conclude, at this stage, that it is not necessary to address the construction of any claim terms or phrases. See 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))).” slip op. at 8

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR
  Patents in suitUS 10,585,850
• Dropbox, Inc. / Microsoft Corporation v. Datanet, LLCInstituted
  PTAB · May 8, 2024 · IPR2024-00079 · APJ George R Hoskins · IPR · Institution

  Instituted IPR of claims 1–6, 8–20, and 23–31 on both asserted obviousness grounds, finding a reasonable likelihood of prevailing on at least one claim.

  RulingsInstitution decision

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

    “We have reviewed the preliminary record, and we conclude Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions at least for claim 1. First, we summarize the disclosures of Kenley and Long, then we consider the parties’ opposing contentions concerning the challenged claims.” slip op. at 11

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

    “We conclude Petitioner has explained with supporting evidence how the combination of Kenley and Long would have motivated a person of ordinary skill in the art to practice the invention of claim 1 with a reasonable expectation of success and without hindsight, sufficiently to justify institution of review. In particular, on this record, we conclude a person of ordinary skill in the art would have been motivated to modify Kenley’s process of backing up files, by triggering the creation of an archive file whenever a file is modified using three successive backup memories per the teachings of Long. See Pet. 13, 18. Dr. Maier testifies in support that this would have been done to improve the reliability of Kenley’s file archiving process, by avoiding the potential loss of data created in between Kenley’s archiving of files at predetermined time intervals. See Pet. 13–15, 18; Ex. 1003 ¶¶ 49–50, 52–53, 58. Patent Owner does not materially dispute the increased reliability benefits achieved by modifying Kenley’s file-based backup process in this fashion, in the present preliminary record. Instead, Patent Owner pre-supposes that Petitioner’s case for obviousness is premised on the bodily incorporation of Long’s sector-based archiving process into Kenley’s file-based archiving process. However, that is not what Petitioner proposes, as summarized in detail above. Moreover, the test for obviousness is not whether the features of one reference (such as Long) may be bodily incorporated into the structure or process of the other reference (such as Kenley), but rather is “what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Further, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” and “in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR, 550 U.S. at 420–21. On the present record, we discern no reason why a person of ordinary skill in the art would have been deterred from modifying Kenley’s file archiving process to be triggered whenever a file is modified and to use three successive backup memories per the teachings of Long, or would not have expected success in doing so.” slip op. at 25

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

    “Even considering the merits of Patent Owner’s reliance on Schneider as teaching away as being pertinent to Petitioner’s Ground One, we find on the present record that Schneider discusses various differences between file-based backup processes and sector-based backup processes, including some pros and cons of each approach. See Ex. 1020, 2:23–3:2, 5:8–16, 6:1– 7, 6:18–22, 14:4–9, 24:20–27; Prelim. Resp. 22–23. For example, a sector-based backup is faster and requires less administration than a file-based backup (see Ex. 1020, 2:22–28, 6:18–22, 24:20–22), whereas a file-based backup can be restored more efficiently than a sector-based backup (see id. at 2:28–3:2). We conclude on the present record that Schneider does not criticize, discredit, or otherwise discourage file-based backup processes, as is required for a teaching away. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Indeed, Schneider expressly recognizes that its methods may be used in connection with file-based backup processes. See Ex. 1020, 11:4–5 (“[T]he present invention can also be implemented as part of the operating system.”), 24:1–19 (“The present invention can be implemented either at the sector (disk) level or as part of an operating system’s filing system at the file level.”).” slip op. at 27

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “We conclude Petitioner’s stipulation is commensurate in scope with a Sotera stipulation. See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, at 13–14, 18–19 (PTAB Dec. 1, 2020) (precedential); Guidance Memo, at 3. The Guidance Memo states: Consistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB. Guidance Memo, 3, 7–8. For this reason, we do not deny institution in view of the two co-pending district court infringement litigations.” slip op. at 41

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 9,218,348
• Mara Renewables Corporation v. DSM IP Assets, B.V.Institution denied
  PTAB · Apr 18, 2024 · IPR2024-00070 · APJ Zhenyu Yang · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–15 were anticipated by Radianingtyas or obvious over either asserted combination.

  RulingsInstitution decision

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

    “We have authority under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one claim challenged in the Petition. Accordingly, we deny institution of an inter partes review.” slip op. at 2

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

    “claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe the claim term “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (holding that the words of a claim “are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application”). Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any claim term.” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not provide a definition of the level of ordinary skill in the art. See Prelim. Resp. 19. Patent Owner also states that any differences between the parties’ proposed definition of the skill level would not impact its arguments. Id. For purposes of this Decision, we adopt Petitioner’s definition of the skill level because it is consistent with the prior art’s demonstration of the level of ordinary skill at the relevant time. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 7

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

    “triglyceride, DHA, and heptadecanoic acid content recited therein. In order to anticipate a claim, a prior art reference “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.” NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008) (quotation marks omitted). A reference, however, can anticipate a claim “even if it does not expressly spell out all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would at once envisage the claimed arrangement or combination.” Microsoft Corp. v. Biscotti, Inc., 878 F.3d 1052, 1068 (Fed. Cir. 2017) (quotation marks and brackets omitted). As explained below, here, Petitioner has not shown Radianingtyas discloses a microbial oil comprising the required triglyceride, DHA and heptadecanoic acid content. Specifically, although the exemplified strain ONC-T18 produces oil that meets the claimed triglyceride fraction and heptadecanoic acid level, Petitioner has not shown the same oil contains the recited DHA level.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,207,363
• Alivecor, Inc. v. Apple Inc.Institution denied
  PTAB · Apr 3, 2024 · IPR2023-01434 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.

  RulingsInstitution decision

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

    “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 not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’898 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends that: A person of ordinary skill in the art (“POSITA”) at the time of the alleged invention would have been a person with a working knowledge of physiological monitoring technologies and human interface design. That person would have had a Bachelor of Science degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to physiological monitoring technologies and human interface design (Ex. 1003, ¶45). Alternatively, that person could have also had a Master of Science degree in a relevant academic discipline with less than a year of related work experience in the same discipline (Ex. 1003, ¶45). More education can supplement practical experience and vice versa (Ex. 1003, ¶45). Pet. 5–6. Patent Owner does not address the level of ordinary skill in the art. 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 11

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

    “The general rule is that “the indefinite article ‘a’ means ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’” Salazar v. AT&T Mobility LLC, 64 F.4th 1311 (2023); see also Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342–43 (Fed. Cir. 2008) (“An exception to the general rule that ‘a’ . . . means more than one only arises where the language of the claims themselves, the specification, or the prosecution history necessitate a departure from the rule.”). And, the use of “the” (as in “the detailed view”) indicates that the recited part of the claim is a reference back to the corresponding part of a previous recitation (i.e., “a detailed view”). Finjan LLC v. SonicWall, Inc., 84 F.4th 963, 974 (Fed. Cir. 2023) (“Similar to this court’s holding that ‘said’ indicates part of a claim limitation refers to the corresponding part of a previously claimed limitation, . . . , the use of ‘the’ also indicates the claimed term refers to an antecedent term.”). However, whether “a detailed view” means “one or more detailed views” is a separate issue from whether the claims require the same detailed view to have both of the recited components. See Finjan, 84 F.4th at 974 (“[T]hat is a separate issue from whether the claims require the same component to perform multiple functions or satisfy multiple limitations of a claim.”). The plain language of “a detailed view” followed by the recitation of “the detailed view” comprising two components suggests that the “detailed view” must be tied to both of those components. See id. (“In [Traxcell Techs., LLC v. Nokia Sols. & Networks Oy, 15 F.4th 1136, 1143–44 (Fed. Cir. 2021)], we explained that ‘[a]s a matter of plain language, reciting ‘a computer’ (or a ‘first computer’) that performs a function, and then further reciting that ‘the computer’ (or ‘said first computer’) performs multiple additional functions, suggests that such ‘computer’ must be tied to all those functions.’ . . . This same rationale is relevant in analyzing the claims here.”); see also id. (The court agreeing with SonicWall’s argument “that even if the reference to ‘a computer’ may mean ‘one or more computers,’ the subsequent references to ‘the computer’ can only be satisfied by the same ‘one or more computers’ that satisfied the first limitation.”); Salazar, 64 F.4th at 1317 (“We agree with the district court that while the claim term ‘a microprocessor’ does not require there be only one microprocessor, the subsequent limitations referring back to ‘said microprocessor’ require that at least one microprocessor be capable of performing each of the claimed functions.”). We determine that, even if plural detailed views are allowed, the claim requires a single one of those views to have both a graph representation and a selectable data sharing option.” slip op. at 15

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

    “We agree with Patent Owner. For the reasons discussed above, we construe independent claims 1 and 23 as requiring the “detailed view” to have both a graph representation and a selectable data sharing option. See supra Section II.C. Petitioner does not identify adequately any disclosure in Molettiere of displaying a single view having both components. Thus, Petitioner has not shown adequately that Molettiere is anticipatory. Additionally, we agree with Patent Owner’s argument that Petitioner does not articulate adequately any obviousness contentions regarding how or why a person of ordinary skill in the art would have combined the relied-on figures of Molettiere to arrive at the recited detailed view having both components. See Prelim. Resp. 9–10; Pet. 10–14. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge to independent claim 1 and independent claim 23 as anticipated by or obvious over Molettiere. For the same reasons, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in its challenge to dependent claims 2– 11, 18, 20–22, 25–34, 41, and 43–45 as anticipated by or obvious over Molettiere. E. The Alleged Unpatentability of Claims 1, 3, 9, 10, 16, 18, 23, 26, 32, 33,” slip op. at 24

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,270,898

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.