• Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCAll claims unpatentable
  PTAB · Jan 22, 2016 · IPR2014-01556 · APJ Fred E Mckelvey · IPR · Final written decision

  Claims 1–4, 6–7, and 9–16 are unpatentable under § 103(a) over the combined prior art; the anticipation grounds do not establish unpatentability.

  RulingsFinal written decision

  • Strike new argumentNew argument disregardedDecided for patent owner

    “(a) A party may request oral argument on an issue raised in a paper at a time set by the Board. The Trial Practice Guidelines advise as follows: A party may rely upon evidence that has been previously submitted in the proceeding and may only present arguments relied upon in the papers previously submitted. No new evidence or arguments may be presented at the oral argument. Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (col. 2) (Aug. 14, 2012) (italics added). The rationale in support of the Rule and Guideline is fundamental fairness to an opponent. 37 C.F.R. § 42.1(b) (Part 42 “shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding.”) It is not just to an opponent for a party to raise an argument not based on the Petition, Opposition, or Reply, or to discuss evidence not in the record. Why? There is no meaningful opportunity for the opponent to rebut the argument or address the evidence. Likewise, the Board is at a disadvantage because judges do not prepare for oral argument based on arguments and evidence not present in the record. To the extent that arguments and discussions took place at oral argument in this case contrary to the principles set out above, those arguments and discussions have not been considered in rendering a decision on the merits.” slip op. at 5

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

    “We disagree with Petitioner’s “comprising” position. While the regeneration gas can “comprise” elements not set out in parts [A1] and [A2] of claim 1, as reproduced above, part [A2] is restricted to an inert carrier gas. According to the ʼ911 patent, the regeneration gas is substantially oxygen free, albeit the regeneration gas can contain up to one percent oxygen. Ex. 1001A, col. 3:27–29. A regeneration gas containing more than one percent oxygen would cease to be a regeneration gas within the meaning of claim 1. Any reasonable interpretation of “regeneration gas,” consistent with the Specification, would require that the regeneration gas have no more than up to one percent oxygen. In reaching our conclusion, we have not added a limitation from the Specification into claim 1 of the ʼ911 patent; rather, we interpret the meanings of “regeneration gas” and “inert carrier gas” as set out in the claim.” slip op. at 16

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

    “to doubt that the NOx released by the [Hirota] absorbent . . . [would] be reduced . . . by . . . [the Hirota] process” “provid[ed] there is sufficient reductant present.” Ex. 1056, page 89:18–21. However, Dr. Crocker’s cross-examination testimony does not establish that the Hirota process anticipates the process of claim 1 of the ʼ911 patent. The issue here is not whether Hirota is operative; rather, it is whether Hirota operates with “an inert carrier gas” within the meaning of claim 1 of the ʼ911 patent. During oral argument, Petitioner called attention to the wording of Hirota, with emphasis on the fact Hirota does not use the word “shall” or “must” but rather uses the word “is.” Transcript of Oral Argument, Paper 56, page 4:7 through page 5:15. According to Petitioner, under a broadest reasonable interpretation standard, the regeneration gas of claim 1 should be interpreted broadly. Id. at page 5:12–15. But, Petitioner previously had agreed that it makes no “difference what the claim construction is here,” (id. at page 3:20–23). We view the “shall,” “must,” and “is” discussion as a formalistic wordsmithing side-show given that the meaning of the regeneration gas is clear from its description in the Specification. We find that Hirota does not describe the subject matter of claim 1 of the ʼ911 patent. Accordingly, Petitioner has failed to prove that Hirota anticipates claim 1 of the ʼ911 patent.” slip op. at 22

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “Likewise, Land justifies a holding that joint inventors Guth and Campbell (Ex. 1004A) are separate entities vis-à-vis joint inventors of the Guth, Campbell, and Wagner ʼ911 patent (Ex. 1001A). Patent Owner maintains that Guth ʼ758 and Campbell’s “work may not be used against [them] unless there is a time bar under 35 U.S.C. 102(b).” Paper 28, page 19 (quoting MPEP § 2136.05 (7th ed. July 1998)). However, Guth and Campbell’s work is not being used against them; it is being used against the inventive entity of the ʼ911 patent: Guth, Campbell, and Wagner. At oral argument, counsel for Patent Owner stated “[s]o what I’m saying is I agree that Land probably applies.” Transcript of Oral Argument, Paper 56, page 14:19–20. On the record before us, there is insufficient evidence that Wagner contributed to, or is a joint inventor of, the subject matter described and/or claimed in the ʼ911 patent.” slip op. at 39

  Patent outcomesUS 5,953,911 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 5,953,911
• Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCAll claims unpatentable
  PTAB · Jan 22, 2016 · IPR2014-01555 · APJ Fred E Mckelvey · IPR · Final written decision

  Claims 1–2, 7–12, 14–17, 19, 21–24, and 31–42 are unpatentable based on the grounds sustained in the final written decision.

  RulingsFinal written decision

  • Strike new argumentNew argument consideredDecided for petitioner

    “Unlike Corning, the inherency theory matured during cross- examination of Patent Owner’s witness, Dr. Crocker. Ultimately, in our view, Dr. Crocker agreed that no platinum migrated to the alkali metal layer—based on an analysis with a correct “0.018” number. The Reply evidence, consistent with Dr. Crocker’s testimony, agreed that a correct number is “0.018” and on that basis, Petitioner’s witness agreed with Dr. Crocker. Further, unlike Corning, a whole new theory of anticipation did not arise in the first instance with the Reply; rather, it was essentially developed during cross-examination of Patent Owner’s witness.” slip op. at 74

  • ExcludeMotion to exclude, deniedMixed

    “The fact that evidence is filed with a reply does not mean the evidence is per se inadmissible. The exhibits relate to the issue of whether there is a typographical error in Example 1 of Hoekstra, i.e., is “2.018” a typographical error which should be “0.018.” In presenting the Petition, Petitioner’s witness Dr. Farrauto explained why he felt Hoekstra’s Example 1 anticipates claim 1 of the ʼ558 patent. Dr. Crocker, Patent Owner’s witness, disagreed with Dr. Farrauto’s explanation.” slip op. at 73

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedMixed

    “While the matter of assigning the weight to be given to the testimony of the two witnesses in this case is a close call, based on the direct and crossexamination testimony with respect to Kinoshita and its Example 3, and to the extent that there is a conflict between Dr. Crocker’s testimony and that of Dr. Farrauto, we credit the testimony of Dr. Crocker over that of Dr. Farrauto. However, even if one were to find the testimony of Dr. Crocker and Dr. Farrauto evenly balanced, then a preponderance of the evidence on inherency does not emerge. Under those circumstances, the party with the burden of proof cannot be said to have proved its case. See Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1580 n.11 (Fed. Cir. 1988) (where a party is under a burden to establish a fact by a preponderance of the evidence and where the evidence is so evenly balanced that no preponderance emerges, the party having the burden of persuasion necessarily loses). We are also concerned that Example 3 does not describe enough detail to indicate clearly whether there is enough potassium to cover the platinumimpregnated alumina. Ex. 2002 ¶ 32.” slip op. at 51

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

    “We hold that “intimately and entirely coated” mean exactly what it says. In other words, it means the embodiment shown in Figs. 1a through 1c of the ʼ558 patent drawings and associated discussion in the written description portion of the specification. We appreciate why both parties would prefer a broader construction, i.e., “intimately and entirely coated” means (1) coated with a monolayer where catalytic action would occur through diffusion (our construction) as well as (2) direct contact with the combustion gas without diffusion. Petitioner would favor a broader construction because Takeshima anticipates a direct contact embodiment. Patent Owner would favor a broader construction because more “material” might infringe claim 1. Takeshima Figs. 5(A) and 5(B) describe an embodiment where the exhaust gas directly contacts the catalyst. A direct contact embodiment does not fall within the scope of claim 1 of the ʼ558 patent. Accordingly, Takeshima does not describe the “intimately and entirely coated” limitation of claim 1.” slip op. at 23

  Patent outcomesUS 5,451,558 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 5,451,558
• Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCSome claims unpatentable
  PTAB · Jan 22, 2016 · IPR2014-01557 · APJ Fred E Mckelvey · IPR · Final written decision

  Claims 1, 5, 6, 9, 10, 12, 16, and 39 are unpatentable under § 103; claims 41, 45, 46, and 49 were not shown unpatentable because the combinations did not disclose an indicator reporting the …

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Dr. Farrauto noted that MECA describes testing using a 90 mm Pallflex filter. Ex. 2009, page 29:4–page 30:20. His uncontradicted cross-examination supports a finding that one skilled in the art (1) knows the nature of the Pallflex filter and (2) would have been able to use the Pallflex filter in the diesel engine Otake environment. Opposing Dr. Farrauto’s testimony, all we have is an argument by counsel for Patent Owner. Paper 21, pages 8–9. As MECA shows, use of a DPF-A filter with a catalyst coated directly on the filter” slip op. at 24

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “1. Claim 1 Claim 1 is not as narrow as Patent Owner would have us believe. It covers reducing “particulate matter” (i.e., “small particles of solid or liquid suspended in a gas”). These are precisely the “particulate matters” described by MECA. See Ex. 1008A, Figure 6, renumbered page 15—discussed in more detail above.” slip op. at 24

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

    “Dr. Farrauto noted that MECA describes testing using a 90 mm Pallflex filter. Ex. 2009, page 29:4–page 30:20. His uncontradicted cross-examination supports a finding that one skilled in the art (1) knows the nature of the Pallflex filter and (2) would have been able to use the Pallflex filter in the diesel engine Otake environment. Opposing Dr. Farrauto’s testimony, all we have is an argument by counsel for Patent Owner. Paper 21, pages 8–9. As MECA shows, use of a DPF-A filter with a catalyst coated directly on the filter reduced particulate matter to very low levels. Ex. 1008A, renumbered page 15, Figure 6. Patent Owner is using a known filter for its intended purpose to obtain an expected result—reduction in particular matter.” slip op. at 24

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

    “3. Conclusion We hold that Petitioner has established by a preponderance of the evidence that the subject matter of claim 1 would have been obvious to a person having ordinary skill in the art. Patent Owner has not argued the separate patentability of dependent claims 5, 9, and 39. Accordingly, those claims fall with claim 1. We hold that Petitioner has not established by a preponderance of the evidence that the subject matter of claim 41 would have been obvious.” slip op. at 30

  Patent outcomesUS 7,951,346 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,951,346
• Flir Systems, Inc. v. Leak Surveys, Inc.All claims unpatentable
  PTAB · Sep 3, 2015 · IPR2015-00065 · APJ Trevor M Jefferson · IPR · Final written decision

  Claims 1–28 and 30–58 of the ’813 patent and claims 1–7 and 9–20 of the ’496 patent are unpatentable as obvious under § 103.

  RulingsFinal written decision

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

    “construction of “leak” deviates from the ordinary meaning of the term. PO Resp. 31–33. LSI relies on extrinsic evidence to supports its contention that the ordinary meaning of “leak” as recited in the ’813 and ’496 patents is limited to unintended or fugitive emissions. PO Resp. 33. LSI’s contention fails to recognize and distinguish the express teaching that chemicals of interest from flares, exhausts, vents or blow off valves are expressly described as uses of the claimed invention. Ex. 1001, 12:17–25. Indeed, one portion of the specification that LSI relies on to distinguish known versus unknown emissions, indicates that the invention is used to survey known emissions of gas from vents. Ex. 1001, 20:28–31; see PO Resp. 34. Although LSI admits that exhaust valves and flares will have known emissions and that the invention is used to survey these structures (PO Resp. 32), LSI argues that the term “leak” does not include the known emissions from these structures, as the ordinary use of the term is limited to fugitive or unknown emissions. We disagree, concluding that a person of ordinary skill in the art would understand that the specification describes a chemical of interest that is present in valves and exhausts that have known emissions. Ex. 1001, 12:22, 20:28–32.15 Under the broadest reasonable interpretation, LSI’s extrinsic evidence does not persuade us that a person of ordinary skill in the art would understand that “leak” as used in the specification and claims is limited to only unknown or fugitive emissions. Accordingly, on the full record, we maintain our construction of “leak” as including both fugitive and non-fugitive emissions.” slip op. at 11

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

    “PO Resp. 27. Specifically, LSI argues that “in the context of the full claims, this limitation should be construed to mean that an infringing method must operate to image gas leaks under real-world field conditions, without taking steps to artificially control any variables such as background temperature, wind, etc.” Id. at 25. LSI does not provide any argument or evidence that the patent describes the range of “real-world” versus “artificially controlled” conditions. Instead, LSI’s construction merely seeks to eliminate any conditions obtained in a lab or test setting from ambient conditions in other settings. We are not persuaded that the patent claims’ references to variable ambient conditions are limited to “real-world” conditions. As we previously noted, a person having ordinary skill in the art would understand that the claimed system and method would typically be used outdoors, where environmental conditions change, at the point where a leak may occur. Dec. ’411, 18. For example, in the summer, a chemical of interest may be present at higher temperature than the same chemical of interest in the winter. Id. Similarly, exhaust temperature may vary depending on conditions. LSI admits that “the claim does not specify what the normal operating conditions would be” under given circumstances. Oral Argument Transcript (“Tr.”) 62:23–24. LSI also admits that a smokestack, for example, would have “a different range of normal operating conditions.” Tr. 63:6–8. Because these conditions vary and the ’813 and ’496 patent specifications are silent on the range or limits of normal operating conditions, we are not persuaded by LSI’s attempt to exclude controlled environments from the claimed ambient conditions. See PO Resp. 26–27. We find no support for LSI’s contention that “variable ambient conditions” or “normal operating in variable ambient conditions” is limited to those instances that are not constrained or controlled in some artificial manner. Id. On the full record, we maintain our constructions of “produce a visible image of the chemical emanating from the component under variable ambient conditions of the area around the leak” as meaning “being able to produce a visible image under the ambient conditions of the area around the leak.”” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We are not persuaded by LSI’s arguments. The case LSI relies on, Virginia Innovation, is neither binding authority nor persuasive authority. The facts in Virginia Innovation can be distinguished from the facts of the present case, as the prior art in question in Virginia Innovation was not sufficiently shown to be generally on sale to the interested public, and was instead “restricted” to members of a publishing organization, which required membership dues for access. See 983 F. Supp. 2d at 737–38. Indeed, the district court in Virginia Innovation noted that there was no evidence that the document was available for sale to the general public outside of the publishing organization members. Id. In the present case, no membership fee or organization membership is required for access to the Merlin User’s Guide, which testimony shows was available and sold to the interested public as early as late 2000. See Ex. 1026 ¶¶ 17–19; Ex. 1024 ¶¶ 12–14; Ex. 1016 ¶ 12. Based on the complete record, we find by a preponderance of the evidence that distribution of the Merlin User’s Guide with the sale of the Merlin MID camera shows sufficient public accessibility and distribution. The cost to obtain the camera does not negate the evidence that the camera and accompanying user’s guide was available to the interested public. The testimony evidence shows that the Merlin User’s Guide was available for sale and distribution to the interested as early as 2000. Thus, FLIR has shown by a preponderance of the evidence that the Merlin User’s Guide was a publicly available printed publication.” slip op. at 22

  • Skill levelSkill level board ownOther

    “relevant experience with passive IR (infrared) systems in addition to the requisite engineering or physics education. Paper 2, 10–11 (IPR ’065); Reply 19–20. LSI contends that in addition to the requisite physics or optical science/engineering education a person of ordinary skill the art would have experience developing IR camera systems generally. PO Resp. 22. LSI’s contention is that FLIR’s definition of a person of ordinary skill is too narrowly focused on passive IR systems and is evidence of hindsight bias. PO Resp. 23. LSI’s arguments are contradictory and confusing; asserting not only that FLIR’s person of ordinary skill in art is overly narrow and defined as a “specialist in the [’813 and ’496 patents’] specific solution to the problem being solved,” but also that FLIR’s artisan “would not [] have been familiar with the technical problem being addressed by the invention.” PO Resp. 22 (emphasis omitted). Regardless, FLIR argues that the invention would have been obvious under either FLIR’s or LSI’s proposed person of ordinary skill in the art. Reply 20. Based on the full record, we find that the level of ordinary skill in the art is evidenced by the prior art references and the type of problems and solutions described in the ’813 and ’496 patents (Ex. 1001, 1:25–2:34), and includes experience in imaging of chemical gases using IR camera systems generally in addition to the requisite engineering, physics or optical science education. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Moreover, and apart from any differences of opinion between FLIR and LSI on the precise background and knowledge of one skilled in the art, the prior art itself is highly indicative of the level of skill. See id. (“the level of ordinary skill in the art . . . was best determined by appeal to the references of record”). In any event, we do not find that a person of ordinary skill’s understanding of the teachings of the prior art would differ if an ordinarily skilled artisan possessed knowledge of both active and passive IR systems rather than knowledge of passive IR systems alone. See PO Resp. 22–24.” slip op. at 23

  Patent outcomesUS 8,426,813 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,426,813
• Flir Systems, Inc. v. Leak Surveys, Inc.All claims unpatentable
  PTAB · Sep 3, 2015 · IPR2014-00434 · APJ Trevor M Jefferson · IPR · Final written decision

  Claims 1–28 and 30–58 of the ’813 patent and claims 1–7 and 9–20 of the ’496 patent are unpatentable as obvious over the instituted prior-art combinations.

  RulingsFinal written decision

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

    “construction of “leak” deviates from the ordinary meaning of the term. PO Resp. 31–33. LSI relies on extrinsic evidence to supports its contention that the ordinary meaning of “leak” as recited in the ’813 and ’496 patents is limited to unintended or fugitive emissions. PO Resp. 33. LSI’s contention fails to recognize and distinguish the express teaching that chemicals of interest from flares, exhausts, vents or blow off valves are expressly described as uses of the claimed invention. Ex. 1001, 12:17–25. Indeed, one portion of the specification that LSI relies on to distinguish known versus unknown emissions, indicates that the invention is used to survey known emissions of gas from vents. Ex. 1001, 20:28–31; see PO Resp. 34. Although LSI admits that exhaust valves and flares will have known emissions and that the invention is used to survey these structures (PO Resp. 32), LSI argues that the term “leak” does not include the known emissions from these structures, as the ordinary use of the term is limited to fugitive or unknown emissions. We disagree, concluding that a person of ordinary skill in the art would understand that the specification describes a chemical of interest that is present in valves and exhausts that have known emissions. Ex. 1001, 12:22, 20:28–32.15 Under the broadest reasonable interpretation, LSI’s extrinsic evidence does not persuade us that a person of ordinary skill in the art would understand that “leak” as used in the specification and claims is limited to only unknown or fugitive emissions. Accordingly, on the full record, we maintain our construction of “leak” as including both fugitive and non-fugitive emissions.” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We are not persuaded by LSI’s arguments. The case LSI relies on, Virginia Innovation, is neither binding authority nor persuasive authority. The facts in Virginia Innovation can be distinguished from the facts of the present case, as the prior art in question in Virginia Innovation was not sufficiently shown to be generally on sale to the interested public, and was instead “restricted” to members of a publishing organization, which required membership dues for access. See 983 F. Supp. 2d at 737–38. Indeed, the district court in Virginia Innovation noted that there was no evidence that the document was available for sale to the general public outside of the publishing organization members. Id. In the present case, no membership fee or organization membership is required for access to the Merlin User’s Guide, which testimony shows was available and sold to the interested public as early as late 2000. See Ex. 1026 ¶¶ 17–19; Ex. 1024 ¶¶ 12–14; Ex. 1016 ¶ 12. Based on the complete record, we find by a preponderance of the evidence that distribution of the Merlin User’s Guide with the sale of the Merlin MID camera shows sufficient public accessibility and distribution. The cost to obtain the camera does not negate the evidence that the camera and accompanying user’s guide was available to the interested public. The testimony evidence shows that the Merlin User’s Guide was available for sale and distribution to the interested as early as 2000. Thus, FLIR has shown by a preponderance of the evidence that the Merlin User’s Guide was a publicly available printed publication.” slip op. at 22

  • Skill levelSkill level board ownOther

    “relevant experience with passive IR (infrared) systems in addition to the requisite engineering or physics education. Paper 2, 10–11 (IPR ’065); Reply 19–20. LSI contends that in addition to the requisite physics or optical science/engineering education a person of ordinary skill the art would have experience developing IR camera systems generally. PO Resp. 22. LSI’s contention is that FLIR’s definition of a person of ordinary skill is too narrowly focused on passive IR systems and is evidence of hindsight bias. PO Resp. 23. LSI’s arguments are contradictory and confusing; asserting not only that FLIR’s person of ordinary skill in art is overly narrow and defined as a “specialist in the [’813 and ’496 patents’] specific solution to the problem being solved,” but also that FLIR’s artisan “would not [] have been familiar with the technical problem being addressed by the invention.” PO Resp. 22 (emphasis omitted). Regardless, FLIR argues that the invention would have been obvious under either FLIR’s or LSI’s proposed person of ordinary skill in the art. Reply 20. Based on the full record, we find that the level of ordinary skill in the art is evidenced by the prior art references and the type of problems and solutions described in the ’813 and ’496 patents (Ex. 1001, 1:25–2:34), and includes experience in imaging of chemical gases using IR camera systems generally in addition to the requisite engineering, physics or optical science education. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Moreover, and apart from any differences of opinion between FLIR and LSI on the precise background and knowledge of one skilled in the art, the prior art itself is highly indicative of the level of skill. See id. (“the level of ordinary skill in the art . . . was best determined by appeal to the references of record”). In any event, we do not find that a person of ordinary skill’s understanding of the teachings of the prior art would differ if an ordinarily skilled artisan possessed knowledge of both active and passive IR systems rather than knowledge of passive IR systems alone. See PO Resp. 22–24.” slip op. at 23

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

    “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the [inventor].” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We will not, however, “read into a reference a teaching away from a process where no such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). LSI’s evidence that the Merlin references disclose an emission based instrument and that Kulp and Strachan disclose an absorption based instrument, does not show that the references teach away from their combination. Indeed, LSI’s citation to the testimony of Dr. Martini does not demonstrate that the Merlin references discourage their combination with Strachan or Kulp. To the contrary, the record shows that a person of ordinary skill in the art would have combined the filter teachings of Strachan with the camera disclosed in the Merlin references. Ex. 1030, 50:1–16, 84:14–85:19, 87:16–88:19, 160:4–14; see Ex. 1036 ¶ 22. Although LSI’s witness, Dr. Hossack, disputes where the filter would have been placed on a Merlin camera, he does not dispute that Strachan discloses modifying a similar camera to detect gas. Ex. 1030, 50:1–16, 84:14–85:19, 87:16–88:19; 160:4–14. LSI’s argument that the combinations of the Merlin camera disclosed in the Merlin references would destroy the intended functionality of the camera and fundamentally alter its principle of operation is equally unpersuasive. See PO Resp. 49–52. LSI has not shown that modification of the Merlin camera as disclosed in the Merlin User’s Guide or Brochure would no longer be useful for imaging gas as described. We credit the testimony of Dr. Sandsten in finding that the Merlin MID operates on the principles of thermography before and after modification as disclosed in Kulp and Strachan. Ex. 1036 ¶ 74. In addition, modification of such a camera is expressly taught by Strachan and Kulp. Therefore, regardless of whether the possibility of modifying the Merlin MID camera was disclosed in the Merlin references, the combination of Kulp and/or Strachan with the Merlin references teaches one of ordinary skill in the art that the standard filter could be replaced in a passive IR camera, such as the Merlin MID, to improve imaging. See, e.g., Ex. 1030, 50:1–16, 84:14–85:19, 87:16–88:19; 160:4–14; Reply 15. Indeed, Strachan and Kulp both disclose that gas can be successfully imaged by optimizing the spectral selectivity of a passive IR system using a narrow bandpass filter tuned to the gases of interest. Kulp specifically discloses that a cold filter and Strachan includes a Dewar flask for cooling. Ex. 1008, 493; Ex. 1012, 270. LSI’s arguments regarding the modifications of the camera disclosed in the Merlin references fail to address the teachings of the Merlin references in combination with Kulp and/or Strachan. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (attacking references individually cannot demonstrate nonobviousness; rather, the test is what the combined teachings of the references would have suggested to one of ordinary skill in the art). slip op. at 35

  Patent outcomesUS 8,193,496 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,193,496
• Flir Systems, Inc. v. Leak Surveys, Inc.All claims unpatentable
  PTAB · Sep 3, 2015 · IPR2014-00411 · APJ Trevor M Jefferson · IPR · Final written decision

  Claims 1–28 and 30–58 of the ’813 patent and claims 1–7 and 9–20 of the ’496 patent are unpatentable as obvious over the listed prior-art combinations.

  RulingsFinal written decision

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

    “construction of “leak” deviates from the ordinary meaning of the term. PO Resp. 31–33. LSI relies on extrinsic evidence to supports its contention that the ordinary meaning of “leak” as recited in the ’813 and ’496 patents is limited to unintended or fugitive emissions. PO Resp. 33. LSI’s contention fails to recognize and distinguish the express teaching that chemicals of interest from flares, exhausts, vents or blow off valves are expressly described as uses of the claimed invention. Ex. 1001, 12:17–25. Indeed, one portion of the specification that LSI relies on to distinguish known versus unknown emissions, indicates that the invention is used to survey known emissions of gas from vents. Ex. 1001, 20:28–31; see PO Resp. 34.” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We are not persuaded by LSI’s arguments. The case LSI relies on, Virginia Innovation, is neither binding authority nor persuasive authority. The facts in Virginia Innovation can be distinguished from the facts of the present case, as the prior art in question in Virginia Innovation was not sufficiently shown to be generally on sale to the interested public, and was instead “restricted” to members of a publishing organization, which required membership dues for access. See 983 F. Supp. 2d at 737–38. Indeed, the district court in Virginia Innovation noted that there was no evidence that the document was available for sale to the general public outside of the publishing organization members. Id. In the present case, no membership fee or organization membership is required for access to the Merlin User’s Guide, which testimony shows was available and sold to the interested public as early as late 2000. See Ex. 1026 ¶¶ 17–19; Ex. 1024 ¶¶ 12–14; Ex. 1016 ¶ 12. Based on the complete record, we find by a preponderance of the evidence that distribution of the Merlin User’s Guide with the sale of the Merlin MID camera shows sufficient public accessibility and distribution. The cost to obtain the camera does not negate the evidence that the camera and accompanying user’s guide was available to the interested public. The testimony evidence shows that the Merlin User’s Guide was available for sale and distribution to the interested as early as 2000. Thus, FLIR has shown by a preponderance of the evidence that the Merlin User’s Guide was a publicly available printed publication.” slip op. at 22

  • Skill levelSkill level board ownDecided for patent owner

    “relevant experience with passive IR (infrared) systems in addition to the requisite engineering or physics education. Paper 2, 10–11 (IPR ’065); Reply 19–20. LSI contends that in addition to the requisite physics or optical science/engineering education a person of ordinary skill the art would have experience developing IR camera systems generally. PO Resp. 22. LSI’s contention is that FLIR’s definition of a person of ordinary skill is too narrowly focused on passive IR systems and is evidence of hindsight bias. PO Resp. 23. LSI’s arguments are contradictory and confusing; asserting not only that FLIR’s person of ordinary skill in art is overly narrow and defined as a “specialist in the [’813 and ’496 patents’] specific solution to the problem being solved,” but also that FLIR’s artisan “would not [] have been familiar with the technical problem being addressed by the invention.” PO Resp. 22 (emphasis omitted). Regardless, FLIR argues that the invention would have been obvious under either FLIR’s or LSI’s proposed person of ordinary skill in the art. Reply 20. Based on the full record, we find that the level of ordinary skill in the art is evidenced by the prior art references and the type of problems and solutions described in the ’813 and ’496 patents (Ex. 1001, 1:25–2:34), and includes experience in imaging of chemical gases using IR camera systems generally in addition to the requisite engineering, physics or optical science education. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Moreover, and apart from any differences of opinion between FLIR and LSI on the precise background and knowledge of one skilled in the art, the prior art itself is highly indicative of the level of skill. See id. (“the level of ordinary skill in the art . . . was best determined by appeal to the references of record”). In any event, we do not find that a person of ordinary skill’s understanding of the teachings of the prior art would differ if an ordinarily skilled artisan possessed knowledge of both active and passive IR systems rather than knowledge of passive IR systems alone. See PO Resp. 22–24.” slip op. at 23

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

    “Based on the full record, we find, by a preponderance of the evidence, that FLIR has provided articulated reasons with rational underpinnings for the proposed combinations of prior art. FLIR’s evidence shows that combinations of the Merlin Brochure with Strachan or the Merlin User’s Guide with Kulp is the combination of known elements that yield predictable results. See Paper 2, 17–18 (citing Ex. 1006 ¶ 55), 20–21 (citing Ex. 1006 ¶ 60) (IPR ’065); Paper 2, 37–38 (citing Ex. 1006 ¶ 81) (IPR ’411). In addition, we find by a preponderance of the evidence that the prior art demonstrates that it would have been an obvious design choice to one skilled in the art to replace the filters disclosed in Strachan and Kulp to target hydrocarbon gases of interest using the camera disclosed in the Merlin Brochure and Merlin User’s Guide. Paper 2, 38–39 (citing Ex. 1006 ¶¶ 81– 82) (IPR ’411). Accordingly, we do not agree with LSI that FLIR’s expert testimony is conclusory. PO Resp. 23, 61, 67–68.” slip op. at 39

  Patent outcomesUS 8,426,813 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,426,813
• Allscripts Healthcare Solutions, Inc. v. Mymedicalrecords, Inc.All claims unpatentable
  PTAB · Aug 26, 2015 · CBM2015-00022 · APJ Barbara A Parvis · CBM · Final written decision

  Claims 8–12 are unpatentable under § 101 as directed to nonstatutory subject matter; the Board did not reach the anticipation or obviousness grounds.

  RulingsFinal written decision

  • BurdenUnpatentable

    “Second, we consider the challenged claims as an ordered combination. Id. at 2359. On this record, when viewed as a whole, the challenged claims 8–12 simply recite the concept of user management performed by a generic computer. The challenged claims, for example, do not purport to improve the functioning of the computer itself. Nor do they improve another technology or technical field. Petitioner additionally relies on the Declaration of Dr. Bysinger (Pet. 20–28), who testifies that the recited elements including “server,” “storing files . . . in a computer readable storage medium,” and “user interface on a computing device” were well-known conventional concepts in 2005. Ex. 1008 ¶¶ 30–32. Dr. Bysinger additionally states “the abstract idea of privately accessing and managing patient medical records . . . [has] existed since at least the promulgation of HIPAA.” Id. ¶ 33. We credit Dr. Bysinger’s statements because they are consistent with the challenged claims. Challenged dependent claims 9–12 add nothing that alters the above analysis under § 101. Claims 9, 10, 11, and 12 recite additional limitations, such as wherein the access information comprises a password, receiving files from a second provider, wherein the files comprise image format files including wills and powers of attorney, respectively. Based on the present record, these comprise either generic limitations, such as using a password for access or sending a file in a known image format, or they relate to organizing human activities, such as user management of legal and financial documents, in addition to health records. Accordingly, we determine that Petitioner has shown by a preponderance of the evidence that claims 8–12 of the ’466 Patent are unpatentable under 35 U.S.C. § 101, because they are directed to non-statutory subject matter.” slip op. at 11

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “Petitioner asserts that claims 8–12 of the ’466 Patent are unpatentable under 35 U.S.C. § 101, because they are directed to the abstract concept of allowing individuals to manage and access their health records and other medical or legal files privately. Pet. 19. We agree with Petitioner that the claimed invention is directed to an abstract idea: privately managing files by the user. The preamble and all claim limitations of the challenged claims support this view of the claims, and the ’466 Patent consistently describes the invention as allowing an individual to control access to their medical records. See, e.g., Ex. 1001, 5:21–23. Management or control by the user or patient rather than by the health care provider is a method of organizing a human activity. On this record, the concept is an abstract idea, just like the basic hedging concept at issue in Bilski and the abstract idea of intermediated settlement in Alice.3” slip op. at 8

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “We conclude that receiving and sending data is a routine and conventional computer function. As explained in Alice, “use of a computer to obtain data . . . and issue automated instructions . . . are ‘well-understood, routine, conventional actitiv[ies]’ previously known to the industry.” Alice, 134 S. Ct. 2359; see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the information over a network—with no further specification—is not even arguably inventive.”). Restricting access by password also is routine and conventional. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 712–13, 717 (Fed. Cir. 2014) (determining that representative claim 1 is patent ineligible although it recites “a fourth step of restricting general public access.”). Similarly, providing a user interface is an insignificant activity. See Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1342–43 (Fed. Cir. 2013) (determining that claim 1 is patent ineligible although it recites a “claim folder,” which “manages claim information . . . by providing a structured and easy to use interface.”). Claim 8 includes additional recitations relating to how data is stored and managed on the server. We determine that these limitations recite generic functions performed by a generic server and computing device. Storing files is a basic computer function. See Alice, 134 S. Ct. at 2359 (“Using a computer to create and maintain ‘shadow’ accounts amounts to electronic recordkeeping—one of the most basic functions of a computer.”). Additionally, regarding the recitation in challenged claim 8 of “wherein the files are maintained on the server independently from any files maintained by the health care provider” (Ex. 1001, 17:18–19 (emphasis added)), we note the representative claim in Alice had a similar recitation. See Alice, 134 S. Ct. at 2352. In particular, in Alice, the representative claim included the following:” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Petitioner additionally relies on the Declaration of Dr. Bysinger (Pet. 20–28), who testifies that the recited elements including “server,” “storing files . . . in a computer readable storage medium,” and “user interface on a computing device” were well-known conventional concepts in 2005. Ex. 1008 ¶¶ 30–32. Dr. Bysinger additionally states “the abstract idea of privately accessing and managing patient medical records . . . [has] existed since at least the promulgation of HIPAA.” Id. ¶ 33. We credit Dr. Bysinger’s statements because they are consistent with the challenged claims.” slip op. at 11

  Patent outcomesUS 8,301,466 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Bilski
  Patents in suitUS 8,301,466
• Greene’S Energy Group, LLC v. Oil States Energy Services, LLCNo claims unpatentable
  PTAB · May 1, 2015 · IPR2014-00364 · APJ William A Capp · IPR · Final written decision

  The Board found claims 1–13, 27, and 30–32 not shown unpatentable because the proposed obviousness combinations did not establish the claimed mechanical lockdown mechanism and its required function.

  RulingsFinal written decision

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

    “The parties do not dispute that a “lockdown mechanism” maintains the mandrel in a fixed position during a fracking or well treatment operation. Thus, we will construe “lockdown mechanism” to mean “machinery for maintaining [the mandrel] in a fixed position during a fracking or well treatment operation.” This leaves us to determine what it means for a lockdown mechanism to be “mechanical” and whether the correct construction requires imposing a further definitional limitation regarding a range of adjustment. Oil States points out that the Specification differentiates a mechanical mechanism from hydraulic mechanisms. PO Resp. 12. The Specification distinguishes the instant invention from an earlier invention by the same inventor that discloses a hydraulic unit. Ex. 1001, 2:28–63. The Specification further states that: a mechanical lockdown mechanism for securing the BOP protector mandrel in an operative position is considered more reliable because a source of pressurized hydraulic fluid is not required. Id. at 2:3–6; see also id. at 3:53–56. Greene does not challenge that this language in the Specification effectively differentiates a mechanical lockdown mechanism from a hydraulic mechanism. Thus, we construe “mechanical” lockdown mechanisms as being limited to purely mechanical means such as nuts and bolts and the like. We further clarify that the principal holding force that maintains the mandrel in a fixed position is not a dynamic force such as through hydraulic, pneumatic, or electrical means or the like.” slip op. at 8

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

    “Oil States’s effort to read a “broad range of adjustment” limitation into the definition of mechanical lockdown mechanism in claim 1 renders the dependent limitation in claim 3 superfluous. Claim 2 claims an elongated spiral thread. There is no need to add a further limitation to claim 3 to provide for adjustment to compensate for variations in the distance between a top of the blowout preventer and the top of the casing of different wellheads if a “broad range of adjustment” is already contemplated in the meaning of mechanical lockdown mechanism. 8 It is well-settled that each claim does not necessarily cover every feature disclosed in the specification. See Ventana Med. Sys., Inc. v. Biogenex Labs, Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006). When a claim addresses only some of the features disclosed in the specification, it is improper to limit the claim to other unclaimed features. Id. Here, Oil States’s inclusion of adjustment limitations in claims 2 and 3 belie an intention to limit the scope of the term “mechanical lockdown mechanism” in claim 1 to mechanisms that provide a broad range of adjustment.9 Thus, we decline to adopt Oil States’s proposed construction. We construe a “lockdown mechanism” to mean “machinery for maintaining [the mandrel] in a fixed position.” In the context of lockdown mechanisms, we construe the adjective “mechanical” to mean that the lockdown mechanism is limited to purely mechanical means such as nuts and bolts and the like so that the principal holding force that maintains the mandrel in a fixed position 8 In the Summary of the Invention section of the Specification, the topic sentence of the paragraph describing an embodiment with a “significant range of adjustment,” qualifies the description of such embodiment with the word “preferably.” Ex. 1001, 3:8–27. This suggests that this passage of the Specification merely describes one embodiment and not the entire invention. 9 To the extent that claim 1 requires the mechanical lockdown mechanism to have any range of adjustment, such adjustment requirement may be found in the claim limitation directed to the lockdown mechanism being “adapted to ensure that the annular sealing body is securely seated against the top of the casing when the mandrel is in the operative position” and not in definition of “mechanical lockdown mechanism” per se.” slip op. at 11

  • Skill levelSkill level board ownOther

    “Green’s expert, Mr. Shackelford, opines that the person of ordinary skill in the art at the time of the invention of the ’993 patent would have had a Bachelor-level degree in a recognized engineering discipline and practical job exposure of several years with oil and gas well operations. Ex. 1002 ¶ 13. Mr. Shackelford’s testimony is entirely conclusory with no supporting factual analysis. Oil States contends that the level of ordinary skill in the art is “relatively low,” but does not articulate or explain what it means by this characterization. PO Resp. 22. Oil States’s expert, Dr. Wooley, merely adopts Mr. Shackelford’s position and, like Mr. Shackelford, fails to provide any supporting factual analysis. Merely reciting a college degree and a number of years of experience provides little guidance as to the actual capabilities of a person of ordinary skill in the art. Neither party presents a detailed evidentiary showing under the factors recited in Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). 13” slip op. at 22

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

    “combine references is a question of fact. In re Constr. Equip. Co., 665 F.3d 1254, 1255 (Fed. Cir. 2011). Greene fails to persuade us that a person of ordinary skill in the art would have had reason to combine Herricks and McLeod to achieve the invention claimed in claims 1 and 27 of the ’993 patent. Because the mechanical lockdown mechanism in McLeod is intended to be used with a mandrel that packs off at an indeterminate point in the casing, rather than at a fixed point and, therefore, does not disclose any range of adjustment to accommodate production trees of varying heights as would be necessary to be operable in systems designed for fixed point packoff, the proposed combination does not provide a mechanical lockdown mechanism that is adapted to securely seat a mandrel against the top of the casing as required by claim 1. Similarly, the proposed combination does not provide a method for engaging the mechanical lockdown mechanisms to lock the mandrel in the operative position such that the annular sealing body is in fluid sealing engagement with a top of a casing of the well as required by claim 27.” slip op. at 30

  Patent outcomesUS 6,289,993 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,289,993
• Medtronic, Inc. / Medtronic Vascular, Inc. v. Lifeport Sciences LLCNo claims unpatentable
  PTAB · Apr 21, 2015 · IPR2014-00288 · APJ Robert A Pollock · IPR · Final written decision

  Claims 1–5, 7–13, 15, and 16 were not shown unpatentable because the cited references did not establish the claimed permanent curve.

  RulingsFinal written decision

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

    “Considering the teachings of the Specification, we conclude that the curve element must be permanent, as recited in the claims, rather than “resiliently flexible.” The Specification teaches that in some embodiments, the hook or protrusion “is resiliently flexible so as to form a substantially straight profile when compressed,” (Ex. 1001, Abstract) but “may be permanently-deformed into the curved configuration by heat setting the material” (id. at 6:1–4). As emphasized by Lifeport, the Specification teaches that a permanently deformed hook and frame—and, thus, a permanent curve—can be produced by heating Nitinol hook and frame combinations “at 550° for ten minutes.” Resp. 25–26 (citing Ex. 1001, 6:3– 4); see Ex. 2001 ¶ 77. When thus “permanently deformed,” “hook 20 may still be compressed into alignment with the frame 22 without losing the preset curve,” and subsequently “deployed in the curved configuration by releasing.” Ex. 1001, 6:7–9 (emphases added). We further note that the Specification makes clear that the disclosed hooks are incorporated into a variety of devices deployed in the veins of living bodies (see, e.g., Ex. 1001, 3:60–4:8), and subject to various physical forces therein. The ’662 patent, thus, discloses an embodiment having “a plurality of hooks 20 from the same incisions 40,” which “could form hooks 20 which project in opposing directions” and “provide superior resistance to radial and axial loads from the corporeal lumen and blood flow.” Ex. 1001, 5:33–37. In light of the foregoing, we refine our construction of “permanent curve” to be “a preset curve that maintains a fixed arc throughout normal use regardless of what configuration the device is in.” Insofar as Petitioners, and/or Petitioners’ expert, argue that the challenged claims are unpatentable under multiple constructions of this term, we address only those arguments relevant to this construction below.” slip op. at 10

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

    “Lifeport has the more persuasive position. First, we note that endoprostheses such as those disclosed in the ’662 patent are deployed and function in a living body (see, e.g., Ex. 1001, 3:60–4:8). Accordingly, our construction of permanent curve as a preset curve that maintains a fixed arc throughout normal use regardless of the configuration of the device, is not limited to sheathed and unsheathed configurations taken in isolation. Thus, whereas Dr. Loomis’s analysis of Lefebvre focuses on the force applied by a catheter sheath impinging on a single tooth of the Lefebvre device, “throughout normal use” more broadly encompasses the deployed configuration of Lefebvre Figure 3 in which teeth 6, 7 penetrate into the vein wall “one in the direction of flow of the blood and the other in the opposite direction.” See Ex. 1003, 1:64–66. Dr. Loomis addressed the compressive effects during the application of a catheter sheath. We find no evidence that Dr. Loomis addressed compressive, hemodynamic, or other forces on the Lefebvre teeth when the device is deployed and functioning in normal use.9 9 Although an analysis of the forces applied to the Lefebvre device when it is deployed in a vein is among the issues raised in Medtronic’s Motion to Exclude Evidence, we need not resort to Dr. Loomis’s contested testimony as the omission is self-evident. We also are not persuaded by Medtronic’s assertion that Figure 3 and column 3, lines 34–42, of Lefebvre demonstrate The evidence of record is, therefore, insufficient to demonstrate that Lefebvre maintains a permanent curve as properly construed.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “Lazarus specifically teaches that by modifying hooks like those of Lefebvre to make them sharper, or to configure them as barbs or arrowheads, more secure anchoring of the device can be achieved. . . . Thus, a person of skill in the art dealing with the problem of intraluminal device migration would have been motivated to combine the teaching of Lazarus with that of Lefebvre to achieve even stronger anchoring of the device to the lumen wall. For the reasons discussed above, we find that Lefebvre fails to disclose or suggest the “permanent curve” set forth in independent claims 1 and 10, from which claims 7, 8, and 15 depend. As there is no assertion of record that the missing element is provided in Lazarus, we conclude that Petitioners have not proven by a preponderance of the evidence that the combination of Lefebvre and Lazarus renders claims 7, 8, and 15 unpatentable under 35 U.S.C. § 103(a).” slip op. at 22

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

    “We do not discern, nor does Dr. Loomis adequately explain, how the angular relationship of White’s engagement members, whether in an expanded, flat, or inwardly-projection configuration, comports with our construction of permanent curve. At best, Dr. Loomis identifies changes in the shape of White’s engagement members in response to temperature or compressive forces. On their face, such changes are incompatible with a permanent curve that is a preset curve that maintains a fixed arc throughout normal use regardless of what configuration the device is in. Dr. Loomis has not convinced us of a contrary interpretation of the White reference. Accordingly, we credit Ms. Gold’s testimony that “[n]othing in the disclosure of White indicates that the engagement members 21 have a permanent curve.” Ex. 2001 ¶ 59.” slip op. at 27

  Patent outcomesUS 7,147,662 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,147,662
• Medtronic, Inc. v. Nuvasive, Inc.All claims unpatentable
  PTAB · Apr 3, 2015 · IPR2014-00075 · APJ Francisco C Prats · IPR · Final written decision

  Claims 1, 2, 4, 5, 10, 15, 17, and 18 are unpatentable as obvious over Branch, Obenchain, Blewett, and Koros ’493.

  RulingsFinal written decision

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

    “allow safe and reproducible avoidance of nerves along a lateral trans-psoas path in a fashion that avoids the bony posterior elements of the spinal column. Ex. 1018, 11:51–54. Claim 1, however, does not require the “trans-psoas path” to pass through any particular portion of the psoas muscle, nor does the claim require any particular degree or extent of passage through the psoas. Moreover, the ’767 patent does not expressly define “trans-psoas path.” See also Tr. 39:12–40:1, 113:5–114:3 (conceding that the claims are not limited to any particular approach through the psoas muscle). Accordingly, we conclude that the broadest reasonable construction, consistent with the ’767 patent specification, of “trans-psoas path,” encompasses a path which passes through any portion of the psoas muscle, regardless of the degree or extent of the passage.” slip op. at 9

  • Skill levelOther

    “As to the level of ordinary skill in the pertinent art, the parties, as discussed below, challenge their opposing experts’ conclusions and qualifications. Nonetheless, neither party asserts specifically that the ultimate conclusion of obviousness turns on adoption of a particular level of ordinary skill. In that regard, the parties’ experts advance slightly different opinions as to the level of ordinary skill in the pertinent art. See Ex. 1016 ¶ 11 (Watkins Decl.)); Ex. 2020 ¶ 17 (Phillips Decl.). Both experts, nonetheless, agree generally that an ordinarily skilled artisan at the critical time would have been an experienced spinal surgeon, or an experienced engineer or professional involved in the implementation or design of surgical instruments for use in spinal surgery, with significant access to orthopedic or neurosurgeons. See id. When evaluating the parties’ contentions regarding the scope and content of the prior art, and the differences between the prior art and the challenged claims, we take into consideration both parties’ assertions regarding the level of ordinary skill. We note also that the level of ordinary skill in the art may be evidenced by the cited references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12

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

    “Given Blewett’s teachings, Petitioner persuades us that an ordinarily skilled artisan, creating initial access into a patient for spinal surgery, using guidewires and a plurality of dilators as taught by Branch, would have been prompted to equip the initial dilator with a nerve monitoring electrode, as required by claim 1 of the ’767 patent, to allow the surgeon to avoid nerves. Petitioner persuades us also that an ordinarily skilled artisan would have been prompted to equip Branch’s retractor blades with a fixation element, as claim 1 requires. Specifically, Koros ’493 discloses that, in a system for providing spinal access similar to that described by Branch, providing two fixation screws that extend distally from the retractor blades, is “advantageous to provide stability and improve support for the distractor system.” Ex. 1006, 6:57–58.” slip op. at 14

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

    “A reference does not teach away . . . if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). In the instant case, as noted above, the Obenchain reference teaches expressly the suitability of a lateral, psoas-traversing pathway when performing minimally invasive surgery on the lumbar spine. Ex. 1003, 6:22–31 (“If desired, the surgery may traverse through the psoas muscle. . . . [F]or example, where the patient has extensive abdominal adhesions, it may be preferred to use a lateral puncture of the abdomen to avoid bowel perforation, and entry into the disc space is lateral, transversing the psoas muscle . . . .”) (emphasis added). Given this express teaching, Petitioner persuades us (Reply 2, 13–14) that the Obenchain reference does not teach away from the lateral trans-psoas pathway required by claim 1 of the ’767 patent. slip op. at 16

  Patent outcomesUS 8,016,767 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,016,767

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.