- PTAB · Nov 21, 2023 · PGR2023-00026 · APJ Susan L C Mitchell · PGR · Institution
The Board denied institution because Petitioner did not show it was more likely than not that claims 1–19 were unpatentable, including because the proposed prior-art combination lacked a sufficient reason to select Ruminococcus for skin …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of post-grant review is authorized by statute only when “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”1 35 U.S.C. § 324; see 37 C.F.R. § 42.4. Upon considering the Petition, Preliminary Response, and the cited evidence, we conclude that Petitioner has not satisfied its burden under 35 U.S.C. § 324 to show that it is more likely than not that at least 1 of the claims challenged in the Petition is unpatentable.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“7 Patent Owner requested that we exercise our discretion to deny institution under 35 U.S.C. § 325(d). See Prelim. Resp. 11–49. Because we determine on the merits that no post-grant review should be instituted, we will not address Patent Owner’s arguments concerning Section 325(d).” slip op. at 44
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner counters that Petitioner has set the level of skill of a person of ordinary skill in the art too low. Prelim. Resp. 9–11; Ex. 2001 ¶ 25. Patent Owner asserts that a POSA would have a more advanced degree than a bachelor of science and would have more specific work experience. Id. For instance, Patent Owner asserts: A POSA for the ’838 Patent typically would have an advanced degree, such as an M.D. or a Ph.D., with experience and training in oncology, have several years of experience with administering oncology treatments to subjects and evaluating results of such treatments, and have experience or knowledge in microbiome science and its modulation, inclusive of studies that involve stool microbiome profiling, as well as experience in, or knowledge of, related research and development of bacterial-based cancer treatments. A POSA may also have worked as part of a multi-disciplinary team and drawn upon not only his or her own skills, but also taken advantage of certain specialized skills of others in the team, to solve a given problem. For example, such a team may include a clinician, an immunologist, microbiologist, bioinformatician, molecular biologist, manufacturing specialist, and/or pharmaceutical formulator. Prelim. Resp. 9–10 (citing Ex. 2001 ¶¶ 26–27). Patent Owner concludes that by applying the inappropriately low level of skill of a POSA, “Petitioner overstates the amount of guidance needed in the specification to describe and enable the claimed methods.” Prelim. Resp. 11. Patent Owner confirms, however, that all arguments on all grounds presented in the Preliminary Response “apply regardless of which party’s POSA definition is used.” Prelim. Resp. 11 n.2. We disagree with Patent Owner that a POSA is required to have a” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“Patent Owner acted as its own lexicographer and expressly defined “isolated” and “purified” as follows. The term “isolated” encompasses a bacterium or other entity or substance that has been (1) separated from at least some of the components with which it was associated when initially produced (whether in nature or in an experimental 6 Available at https://www.uspto.gov/sites/default/files/documents/IndefinitenessMemo.pd f?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email& utm_name=&utm_source=govdelivery&utm_term=. setting), and/or (2) produced, prepared, purified, and/or manufactured by the hand of man. Isolated bacteria may be separated from at least about 10%, about 20%, about 30%, about 40%, about 50%, about 60%, about 70%, about 80%, about 90%, or more of the other components with which they were initially associated. In some embodiments, isolated bacteria are more than about 80%, about 85%, about 90%, about 91%, about 92%, about 93%, about 94%, about 95%, about 96%, about 97%, about 98%, about 99%, or more than about 99% pure. As used herein, a substance is “pure” if it is substantially free of other components. The term “purify,” “purifying” and “purified” refer to a bacterium or other material that has been separated from at least some of the components with which it was associated either when initially produced or generated (e.g., whether in nature or in an experimental setting), or during any time after its initial production. A bacterium or a bacterial population may be considered purified if it is isolated at or after production, such as from a material or environment containing the bacterium or bacteria population, and a purified bacterium or bacterial population may contain other materials up to about 10%, about 20%, about 30%, about 40%, about 50%, about 60% about, 70%, about 80%, about 90% or above about 90% and still be considered “isolated.” In some embodiments, purified bacteria and bacterial populations are more than about 80%, about 85%, about 90%, about 91%, about 92%, about 93%, about 94%, about 95%, about 96%, about 97%, about 98%, about 99%, or more than about 99% pure. In the instance of bacterial compositions provided herein, the one or more bacterial types present in the composition can be independently purified from one or more other bacteria produced and/or present in the material or environment containing the bacterial type. Bacterial compositions and the bacterial components thereof are generally purified from residual habitat products. Ex. 1001, 28:40–29:11. In reviewing the express definitions of “isolated” and “purified,” it is not surprising that the two similar terms, “isolated” and “purified,” may have overlapping definitions. We agree with Patent Owner that such overlap does not mean the definitions lack “reasonable clarity, deliberateness, and precision” that would inform a POSA with reasonable certainty about the scope of claim 1. We also agree with Patent Owner that a POSA would understand the two parts of the definition of “isolated” set forth above.” slip op. at 30
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · Graham · NautilusPatents in suitUS 11,395,838 - PTAB · Nov 21, 2023 · IPR2023-01165 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR of claims 1–20 on all petition grounds, finding a reasonable likelihood that Peloton would show at least one claim obvious over Morris and Ray.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . 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). For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“G. Level of Ordinary Skill in the Art Petitioner, supported by Mr. Rawl’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “is a person having: (i) a bachelor’s degree in an exercise related field or mechanical or electrical engineering and (ii) three to five years of industry experience in designing cardiovascular exercise equipment (such as treadmills, bicycles, steppers, ellipticals) or in a similar field.” Pet. 12 (citing Ex. 1002 ¶¶ 31–34).6 Petitioner also asserts that a person could qualify as an ordinarily skilled artisan with less education but more experience or less experience but more education. Id. (citing Ex. 1002 ¶¶ 31–34). Patent Owner has not taken a position as to the level of ordinary skill in the art at this stage of the proceeding. At this stage of the proceeding and on the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’340 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt Petitioner’s level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. 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)). Petitioner “does not believe construction of any term is necessary to resolve the invalidity challenges in this Petition.” Pet. 11 (citing Ex. 1002 ¶¶ 29–30). Petitioner explains that, as of the filing of the Petition, none of the claim terms recited in the ’340 patent have been construed in a prior proceeding. Id. Patent Owner has not taken a position as to claim construction at this stage of the proceeding. On the present record, we need not construe any claim terms expressly because none are in dispute. See Realtime Data, 912 F.3d at 1375.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“3. Motivation to Combine and Reasonable Expectation of Success Petitioner contends Morris and Ray describe exercise equipment (e.g., treadmills) that detect a user’s presence while using the equipment and present the user’s exercise data on a display while a user is exercising to motivate the user to exercise and improve the user’s exercise experience. Pet. 12. Petitioner asserts one of ordinary skill in the art would have been motivated to combine the complementary teachings of Morris and Ray by incorporating Ray’s camera and software instructions for validating user exercise data in Morris’ treadmill apparatus with a reasonable expectation of success. Id. at 13. In particular, Petitioner contends Morris provides an express motivation to install and use Ray’s camera for user detection by teaching that “its exercise equipment could be fitted with optical sensor(s).” Id. (citing Ex. 1006 ¶ 33). Additionally, Petitioner asserts Morris’ treadmill includes an information processing system that processes sensor signals and includes virtual reality content on a screen displayed to the user. Id. (citing Ex. 1006 ¶¶ 32, 34–36, 50, 56–58, Figs. 6, 11–12C, claims 29–37). Thus, Petitioner contends “the signal processing and display system of Morris had the necessary capabilities to accommodate Ray’s user detection/validation software and implement, with a reasonable expectation of success, its functionalities that included producing and presenting the motivational image of the user exercising.” Id. at 13–14. Additionally, Petitioner contends one of ordinary skill in the art would have been motivated to combine the teachings of Morris and Ray because of “Ray’s express teachings that its user validation/motivation technology could be ‘easily and affordably merged’ into a treadmill.” Pet. 14 (quoting Ex. 1004, 9:55–57). Petitioner asserts incorporating these features into Morris’ treadmill “would have been obvious and produced predictable results with a reasonable expectation of success.” Id. (citing Ex. 1002 ¶¶ 142–143).” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,227,340 - PTAB · Nov 21, 2023 · IPR2023-01164 · APJ James P Calve · IPR · Institution
The Board instituted IPR on claims 1–20 because Peloton showed a reasonable likelihood of prevailing on claims 1, 2–7, and 10–20 over Morris and Ray.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). 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). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“degree in an exercise related field or mechanical or electrical engineering and (ii) three to five years of industry experience in designing cardiovascular exercise equipment (such as treadmills, bicycles, steppers, ellipticals) or in a similar field” Pet. 16 (citing Ex. 1002 ¶¶ 31–34). Petitioner also asserts that a person could qualify as an ordinarily skilled artisan with less education but more experience or less experience but more education. Id. At this stage, Patent Owner does not address the level of ordinary skill in the art. On the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the ’375 patent and the prior art of record. Therefore, we adopt Petitioner’s level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any claim constructions and asserts that” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“such as treadmills that detect a user’s presence on the treadmill and present the user’s exercise data on a display while the user is exercising to provide a number of similar benefits including motivating a user to exercise. Pet. 16– 17 (citing Ex. 1006 ¶¶ 5, 26, 35, Abstr.; Ex. 1004, 5:41–48, 8:22–26, 11:56– 61, 13:20–30, Abstr.). Petitioner contends that a skilled artisan would have been motivated to combine the complementary teachings of Morris and Ray that addressed these similar objectives to achieve predictable results. Id. at 16–17 (citing Ex. 1002 ¶¶ 137–140). Petitioner asserts that a skilled artisan would have incorporated Ray’s camera and software instructions to validate a user’s exercise data into Morris’ treadmill with a reasonable expectation of success because Morris expressly taught that “its exercise equipment could be fitted with optical sensor(s).” Id. at 17 (citing Ex. 1006 ¶ 33).” slip op. at 15
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,796,375 - PTAB · Nov 21, 2023 · IPR2023-01163 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board instituted review of claims 1–20 on all asserted grounds after finding a reasonable likelihood that claims 1–9, 12, and 14–20 would have been obvious over Morris and Ray.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“record, Petitioner has shown sufficiently that Morris and Ray, in combination, teach or suggest each element of independent claim 1. Petitioner has also sufficiently shown that one of ordinary skill in the art would have been motivated to combine the teachings of Morris and Ray as proposed and would have had a reasonable expectation of success in doing so. Accordingly, we determine that Petitioner has shown a reasonable likelihood that it would prevail in establishing that the subject matter of claim 1 would have been obvious over Morris and Ray.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“have been motivated to combine Morris and Ray by adding several of Ray’s features to Morris’ treadmill, including Ray’s camera, its functionality of displaying a motivational image, and its ability to transmit exercise data to a remote location, and that the ordinarily skilled artisan would have had a reasonable expectation of success in achieving the combination proposed. Pet. 16–18. Petitioner asserts that an ordinarily skilled artisan would have been motivated to combine Morris and Ray because they provide complementary teachings and address similar objectives. Pet. 16 (citing Ex. 1004, Abstr., 5:41–48, 8:22–26, 11:56–61, 13:20–30; Ex. 1006 ¶¶ 6, 25, 33, 35, Abstr.; Ex. 1002 ¶¶ 135–138). Petitioner also asserts that Morris contemplates use of an optical sensor, provides exercise data and “a human analog display that mimic[s] the user’s bouncing motion,” and includes a signal processing and display system with the necessary capabilities to implement the combination. Id. at 16–17 (citing Ex. 1002 ¶¶ 139–143; Ex. 1006 ¶¶ 32–36, 50, 56–58, claims 29–37, Figs. 6, 11–12C). Petitioner further asserts that Ray expressly teaches that “its user validation and motivation technology could be ‘easily and affordably merged’ into a treadmill.” Id. at 18 (quoting Ex. 1004, 9:55–57) (citing Ex. 1002 ¶¶ 143–144). Finally, Petitioner contends that an ordinarily skilled artisan would have been motivated to make the proposed combination because it would have improved Morris’ the user as the intensity and duration of exercise increased” and Ray’s ability to share exercise data with a remote location. Id. (citing Ex. 1004, 7:11–22, 11:55–59, 13:50–57; Ex. 1006 ¶ 50; Ex. 1002 ¶¶ 138, 145); see also id. at 16 (arguing user motivation would have motivated the combination) (citing Ex. 1004, 8:22–26, 11:56–61; Ex. 1006 ¶ 25). At this stage, we are persuaded that Petitioner has made a sufficient showing that one of ordinary skill in the art would have been motivated to combine Morris and Ray with a reasonable expectation of success.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any express claim constructions and states that the “claims . . . have not been construed by any courts as of the filing of th[e] Petition.” Pet. 15 (citing Ex. 1002 ¶¶ 29–30). At this stage, Patent Owner does not address the construction of any term or phrase. We determine that it is not necessary to expressly construe any claim terms or phrases for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to 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
- Skill levelSkill level petitioner adoptedDecided for petitioner
“steppers, ellipticals) or in a similar field.” Pet. 15 (citing Ex. 1002 ¶¶ 31– 34). Petitioner also asserts that a person could qualify as an ordinarily skilled artisan with less education but more experience or less experience but more education. Id. At this stage, Patent Owner does not address the level of ordinary skill in the art. At this stage of the proceeding and on this record, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’227 patent.” slip op. at 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,032,227 - PTAB · Nov 17, 2023 · IPR2023-00894 · APJ Robert A Pollock · IPR · Institution
The Board instituted IPR on claims 1–15 on all petitioned grounds, finding a reasonable likelihood of prevailing and declining discretionary denial under Fintiv and § 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Legal Standards “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownNo construction neededOther
“to be construed.” 37 C.F.R. § 42.104(b)(3). But only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an AIA trial proceeding). For the purpose of this Decision, we need address only the terms “bore” and “at a terminal end.”” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Contrary to Patent Owner’s analysis, we preliminarily construe a “bore” as “a hole or passage made by or as if by the turning or twisting movement of a tool such that its interior walls have a cylindrical cross-section, and which do not exclude and may include holes or passages having tapered or stepped longitudinal cross-sections.” See supra Section II.C.1. As such, and on the limited record before us, Cognet discloses a bore and further satisfies all elements of claim phrase 1[c][iii]. c) Conclusion as to Ground 1 In view of the above preliminary construction, Petitioner establishes sufficiently that Cognet discloses claim element 1[c][iii]. Patent Owner does not dispute any other element of Ground 1 in its Preliminary Response. Having considered the evidence of record, we determine that Petitioner has established sufficiently that these remaining elements are also disclosed in Cognet. According, and solely for the purpose of institution, Petitioner has demonstrated a reasonable likelihood that Cognet anticipates claim 1.” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“On the present record, we decline to speculate whether the pending motion to stay might be successful. Accordingly, Fintiv Factor 1 is neutral.” slip op. at 29
Claim construction§ 102 anticipationDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,298,166 - Apple Inc. v. Alivecor, Inc.All claims unpatentablePTAB · Oct 26, 2023 · IPR2022-01186 · APJ Jeffrey N Fredman · IPR · Final written decision
Claims 1–14 are unpatentable as obvious, including under the Albert–Vyshedskiy–Platt and Batkin–Vyshedskiy grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had either (1) at least a bachelor of science in electrical engineering, mechanical engineering, or biomedical engineering, or a related discipline, with at least two years of relevant multidisciplinary work experience designing wearable devices and/or sensors for measuring physiological signals or parameters of mammals, or (2) a medical degree and at least five years of relevant work experience designing wearable devices and/or sensors for measuring physiological signals or parameters of mammals. Pet. 5; Ex. 1003 ¶ 15. Patent Owner “applies the level of skill provided in the petition.” PO Resp. 9; Ex. 2003 ¶ 25. The level of ordinary skill in the art usually is evidenced by the prior art references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). For this decision, we apply Petitioner’s stated level of ordinary skill in the art, which is consistent with the level of skill reflected in the ’042 patent and the prior art of record.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Here, we construe only those claim terms that require analysis to determine the patentability of the challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”). Petitioner asserts “no formal claim constructions are necessary in this proceeding.” Pet. 5–6. Patent Owner asserts “no claim term needs to be expressly construed to find that Petitioner has not met its burden in establishing the unpatentability of the claims by a preponderance of the evidence. EX2003, ¶¶26-27.” PO Resp. 9. We agree that no terms require claim construction.” slip op. at 7
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner
“Ph.D., in support of the asserted grounds. Ex. 1003. Patent Owner relies upon the declaration of Dr. Roozbeh Jafari, Ph.D. Ex. 2003. Based on the statements of qualifications and curricula vitae, we find Petitioner’s declarant Dr. Sarrafzadeh qualified to provide technical opinions from the perspective of a person of ordinary skill in the art in this proceeding. See 1 Because the patent was filed before March 16, 2003, pre-AIA § 103(a) is applicable. 2 Albert et al., US 5,735,285, issued Apr. 7, 1998. Ex. 1022. 3 Vyshedskiy et al., US 2004/0220488 A1, published Nov. 4, 2004. Ex. 1005. 4 Platt et al., US 6,485,416, issued Nov. 26, 2002. Ex. 1006. 5 Annavaram et al., Multimodal Sensing for Pediatric Obesity Applications, Proceedings of the International Workshop on Urban, Community, and Social Applications of Networked Sensing Systems (UrbanSense) 1–5 (Nov. 2008). Ex. 1007. 6 Batkin et al., US 2005/0239493 A1, published Oct. 27, 2005. Ex. 1008. 7 Sacco Boschetti, US 7,394,899 B2, issued July 1, 2008. Ex. 1021. curricula vitae, we find Patent Owner’s declarant Dr. Jafari qualified to provide technical opinions from the perspective of a person of ordinary skill in the art in this proceeding. See Ex. 2003 ¶¶ 1–9.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“Patent Owner asserts that Petitioner’s reliance on avoidance of voice interference as a rationale is based on hindsight. See PO Resp. 17–19. Petitioner does not point to any specific disclosure in either Albert, Vyshedskiy, or Platt that suggests voice interference would have been an issue in the transmission of the ECG acoustic signals, instead relying on statements of Dr. Sarrafzadeh such as to choose a carrier frequency from about 6 kHz to about 20 kHz (e.g., 42 f3=7,500 Hz, f4=10,000 Hz, f5=12,500 Hz, f6=15,000 Hz, f7=17,500 Hz, f8=20,000 Hz) to avoid interference from human voice, which can reach the frequency of about 5 kHz. Ex. 1003 ¶ 53 (cited in Pet. 12). Dr. Jafari acknowledges in deposition testimony that “the interference was a known fact. But in the context of how this invention is expected to operate, was novel at the time in my opinion.” Ex. 1027, 65:23–65:1. We agree with Dr. Jafari and Patent Owner that simply because interference of sound waves was a known phenomenon at the time of the invention does not demonstrate that the ordinary artisan would have had reason to select particular carrier frequencies for the ECG acoustic signals that avoided human voice frequencies in the absence of any disclosure that such frequencies were known to interfere. Rather, we agree with Patent Owner that this is hindsight reasoning because until the ’042 patent pointed out this concern in the context of claim 1, there is no indication the prior art recognized that human voice interference was an issue.” slip op. at 29
Patent outcomesUS 9,649,042 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,649,042 - Apple Inc. v. Alivecor, Inc.Some claims unpatentablePTAB · Oct 26, 2023 · IPR2022-00872 · APJ Jeffrey N Fredman · IPR · Final written decision
Claims 1, 2, 4–8, 10, 12, and 13 are unpatentable as obvious; claims 3, 9, and 11 were not shown unpatentable because the combinations lacked a persuasive reason to record spoken messages simultaneously with ECG …
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“PO Resp. 9. Patent Owner asserts “a POSA would have understood the plain and ordinary meaning of the term ‘acoustic signal’ [is] a signal that is transmitted as a sound wave through the ambient environment.” Id.; Ex. 2003 ¶ 25. Patent Owner therefore asserts a POSA would have understood the claimed “frequency modulated ECG acoustic signal” is a signal that is transmitted as a sound wave through the ambient environment, [and excludes] signals transmitted by electronic or wireless radio means, because claim 1 requires the acoustic signal to be “received from a built-in microphone of the smartphone.” PO Resp. 9; Ex. 2003 ¶ 26. Petitioner responds by asserting that “a POSITA would have understood that acoustic transmission is a form of wireless transmission.” Pet. Reply 24; Ex. 1021, 46:7–47:5 (citing the Jafari Deposition where Dr. Jafari stated “in the event of an acoustic signal, there is no need to connect a wire”) Having considered the entire record, we do not find there is a substantive dispute over the term “acoustic signal” as both Patent Owner and Petitioner agree that acoustic signals include wireless signals transmitted as a sound wave through the environment. We will apply this understanding in our further analysis.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) would have had either (1) at least a bachelor of science in electrical engineering, mechanical engineering, or biomedical engineering, or a related discipline, with at least two years of relevant multidisciplinary work experience designing wearable devices and/or sensors for measuring physiological signals or parameters of mammals, or (2) a medical degree and at least five years of relevant work experience designing wearable devices and/or sensors for measuring physiological signals or parameters of mammals.” slip op. at 5
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner
“interference of sound waves was a known phenomenon at the time of the invention does not demonstrate that the ordinary artisan would have had reason to select particular carrier frequencies for the ECG acoustic signals that avoided human voice frequencies in the absence of any disclosure that such frequencies were known to interfere. Rather, we agree with Patent Owner that this is hindsight reasoning because until the ’882 patent pointed out this concern in the context of claim 1, there is no indication the prior art recognized that human voice interference was an issue.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMixed
“that Vyshedskiy’s disclosure of a list of preferred carrier frequencies represents a permissible “obvious to try” situation. In KSR, the Supreme Court stated that a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103. KSR, 550 U.S. at 421. And simply because the prior art “discloses a multitude of effective combinations does not render any particular formulation less obvious.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). The instant facts represent a situation where, at the time of invention in 2010, it would have been obvious to try the known carrier frequencies of Vyshedskiy for modulation of the acoustic ECG signal of Albert in the claimed frequency range of 6 kHz to 20 kHz because these carrier frequencies would have been obvious alternatives to try to address Vyshedskiy’s disclosed design need for simultaneous measurement of heart sound auscultation and ECG heart cycle. See Pet. 17 (citing Ex. 1005 ¶¶ 13– 15).” slip op. at 27
Patent outcomesUS 8,509,882 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,509,882 - Extractiontek Sales LLC v. Gene Pool Technologies, Inc.No claims unpatentablePTAB · Oct 23, 2023 · IPR2022-00832 · APJ Cynthia M Hardman · IPR · Final written decision
Claims 1–19 were not shown unpatentable under the six §103 grounds because Petitioner failed to articulate an adequately supported reason to combine Hebert with Britt or Buese.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“On the full trial record, we adopt Petitioner’s proposed level of ordinary skill in the art, with Patent Owner’s additions. The additions are consistent with the evidence of record. For example, we find that adding chemistry and biology degrees is appropriate in view of Dr. Miller’s testimony that college-level chemistry and biology courses typically include training on extractive technologies. Ex. 1021 (Miller Tr.), 38:9–39:18. We also agree with Patent Owner that the educational level of the inventors may be considered (see Env’t Designs, Ltd., 713 F.2d at 696), and on this record, we accept Patent Owner and Dr. Miller’s undisputed representation that “named inventor Jason Wasserman had a bachelor’s degree in Agricultural Science and Sustainable Agriculture, a life sciences degree.” Ex. 2008 (Miller Decl.) ¶ 42; PO Resp. 4. Thus, for the reasons above, we define a person of ordinary skill in the art as someone who would have had (1) a bachelor’s degree in chemistry, biology, mechanical engineering, chemical engineering, petroleum engineering, or an equivalent field of physical science, life science, or engineering; and some academic or industry experience working with, designing, or studying methods of extracting solute from a source material or similar devices; or (2) at least four years of industry experience working with, designing, or studying methods of extracting solute from a source material or similar devices.” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Mr. Chess. First, as noted above, his declaration simply parrots the arguments in the Petition and thus does not add any analysis not already discussed above. See, e.g., TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (“conclusory expert testimony is inadequate to support an obviousness determination”); InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1353–54 (Fed. Cir. 2014) (reversing district court’s judgment of invalidity because the expert testimony “failed to provide any meaningful explanation for why one of ordinary skill in the art would be motivated to combine these references at the time of this invention”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, 15 (PTAB Aug. 24, 2022) (precedential). Second, we agree with Patent Owner that Mr. Chess’s opinion on motivation to combine is entitled to little, if any, weight in view of his crossexamination testimony, which expressly undermined any reason to combine Britt and Hebert. See PO Resp. 2–3, 12. When specifically asked to explain paragraph 73 of his Declaration regarding his opinion articulating a motivation to combine Britt and Hebert, Mr. Chess responded: “I’m personally not motivated to combine anything from any of these guys together. I think they’re all knuckleheads and didn’t know what they were doing, to be frank.” Id. at 24 (quoting Ex. 2009 (Chess Depo. Tr.), 185:2–6, see also 181:11–12 and 183:5 (directing Mr. Chess to paragraph 73 of his Declaration)). Petitioner attempts to rehabilitate this testimony by arguing that during cross-examination, Mr. Chess identified “inefficiencies” that” slip op. at 29
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“We agree with Petitioner that “exposing . . . for a predetermined period of time” should “be given [its] plain and ordinary meaning.” Reply 7–8. To the extent the plain and ordinary meaning needs elaboration, we adopt the agreed-upon construction of “predetermined period of time” from the related district court litigation, i.e., a “period of time determined in advance.”12 Ex. 3001, 11. For clarity, we note that nothing in this plain and ordinary meaning limits the term to a batch process or excludes a continuous process. We do not see any basis to read into this limitation requirements that the source material contact a volume of solvent within a closed or sealed container. See Sur-reply 4. Although the Specification indicates that the step of exposing the source material to the solvent for a predetermined period of time may take place in a canister that is “closed to fluid communication,” Patent 12 Patent Owner appears to acquiesce to this construction in this case, stating that “Patent Owner is not proposing a different construction of the limitation ‘predetermined period of time,” which the parties to the District Court action agreed means ‘period of time determined in advance.’” Sur-reply 3–4. Owner has not pointed us to any persuasive intrinsic evidence indicating that the exposing step must take place in a canister that is “closed to fluid communication.” The Specification “uses the broad permissive term ‘may’ when describing a ‘user may use the output valves to direct the extract mixture contained in an associated canister to extract container.’” Reply 10 (quoting Ex. 1001, 5:37–39, emphasis Petitioner’s). Accordingly, Patent Owner does not persuade us that the intrinsic record “strongly support[s] that ‘exposing the source material to the solvent for a predetermined period of time to create an extract mixture’” requires a batch process or excludes a continuous process. See PO Resp. 6. 2. Conclusion We determine that “exposing . . . for a predetermined period of time” should be given its plain and ordinary meaning, i.e., “exposing . . . for a period of time determined in advance.”” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“The failing in Petitioner’s arguments is that the Petition never identifies what “rationale” Hebert allegedly provides for a person of ordinary skill in the art “to expose the source material to the solvent for a predetermined period of time.” Pet. 14. We have examined each citation and argument in the Petition, but find no articulation of a reason why a person of ordinary skill in the art would have applied this teaching in Hebert to Britt and Buese’s processes. We walk through each citation and argument below.13” slip op. at 24
Patent outcomesUS 9,145,532 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 9,145,532 - Extractiontek Sales LLC v. Gene Pool Technologies, Inc.Some claims unpatentablePTAB · Oct 23, 2023 · IPR2022-01011 · APJ Cynthia M Hardman · IPR · Final written decision
Claims 1–7 and 9–11 are unpatentable over the asserted obviousness grounds; claims 8 and 12–20 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“On the full trial record, we adopt Petitioner’s proposed level of ordinary skill in the art, with Patent Owner’s additions. The additions are consistent with the evidence of record. For example, we find that adding chemistry and biology degrees is appropriate in view of Dr. Miller’s testimony that college-level chemistry and biology courses typically include training on extractive technologies. Ex. 1017 (Miller Tr.), 38:9–39:18. We also agree with Patent Owner that the educational level of the inventors may be considered (see Env’t Designs, Ltd., 713 F.2d at 696), and on this record, we accept Patent Owner and Dr. Miller’s undisputed representation that “named inventor Jason Wasserman had a bachelor’s degree in Agricultural Science and Sustainable Agriculture, a life sciences degree.” Ex. 2008 (Miller Decl.) ¶ 32; PO Resp. 5. Thus, for the reasons above, we define a person of ordinary skill in the art as someone who would have had (1) a bachelor’s degree in chemistry, biology, mechanical engineering, chemical engineering, petroleum engineering, or an equivalent field of physical science, life science, or engineering; and some academic or industry experience working with, designing, or studying methods of extracting solute from a source material or similar devices; or (2) at least four years of industry experience working with, designing, or studying methods of extracting solute from a source material or similar devices.” slip op. at 11
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Based on this experience, we determine that Dr. Miller qualifies as a person of ordinary skill in the art because by 1992, he had “at least four years of industry experience working with, designing, or studying methods of extracting solute from a source material or similar devices,” as required by the level of ordinary skill we adopt herein. He also avers that he gained additional training and engaged in additional extraction work prior to the effective filing date. Id. Additionally, between 2015 and 2020, Dr. Miller “enter[ed] the cannabis extraction and concentration industry, designing, building, and operating [his] own facility,” further qualifying him as a person of ordinary skill in the art. Ex. 2002 (Miller Decl.) ¶ 10; see also Reply 6 (acknowledging Dr. Miller’s post-2015 “experience and expertise in closed loop extraction systems”). Although this work started in 2015 (two years after the effective filing date of 2013), a person of ordinary skill in the art need not have been one of ordinary skill at the time of a patent’s filing date. See U.S. Endoscopy Group, Inc. v. CDX Diagnostics, Inc., IPR2014-00639, Paper 27, at 18 (Sept. 14, 2015) (“A witness must provide testimony about the level of skill in the art as of the critical date; however, the witness need not have acquired that knowledge as of the critical date.”). For the reasons discussed above, we determine that Dr. Miller is qualified in this proceeding to testify from the perspective of a person of ordinary skill in the art.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We find that Patent Owner has the better argument. Patent Owner’s citations demonstrate that “[t]he ’751 patent consistently describes ‘solvent collection line’ as a line, a pipe, hose, or tube used for the transport of gasses or liquids,” and that this usage is consistent with the way both parties’ declarants use the term “line.” PO Resp. 29–30; Ex. 1001, 9:16–10:41, 14:65–15:10, Figs. 1, 2, 5; Ex. 2002 (Miller Decl.), ¶ 60; Ex. 2003 (Chess Depo. Tr.), 100:6–17, 145:20–146:7, 169:18–171:2. In contrast, Petitioner’s argument is undermined by the same passage it cites. Specifically, “what the ’751 Patent explains in the same paragraph Petitioner cites is that the ‘solvent collection line 190 is configured to pass through condensing system 105 between second pump 102 and solvent collection container 15.’” Sur-reply 14–15 (quoting Ex. 1001, 8:60–63) (emphasis Patent Owner’s). “Figure 5 shows that both ‘solvent collection line 190’ and ‘coolant line 109’ are still ‘lines’ as they pass through ‘first condenser column 107.’” Id. at 15 (citing Ex. 1001, Fig. 5, 9:48–58). Figure 1, in contrast, shows that coolant pump 104 is a component that is distinct from coolant line 109. See id. (citing Ex. 1001, Fig. 1, 9:6–25). For the above reasons, we construe “line” to mean “a pipe, hose, or tube.”” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We need not define the exact contours of a “canister interface,” including deciding whether it is “more than a mere connector.” Nor do we need to construe the claim term “support.” It is sufficient to note that a canister interface is not simply the system’s canisters themselves. The plain language of the claims recite that the “canister interface” must be configured to “support” the canisters (thereby distinguishing the canister interface from the canisters themselves). The Specification likewise distinguishes the canister interface and the canisters, indicating that the canister interface “allow[s] canisters to be easily detached and reattached.” Ex. 1001, 11:61– 62. Similarly, Mr. Chess distinguished a “detachable canister interface” from the system’s canisters/containers, characterizing the former as a “fitting of some sort so that you can disconnect or connect the solvent source container to the extraction vessel or canister.” Ex. 2003 (Chess Depo. Tr.), 182:10–16 (emphasis added).” slip op. at 46
Patent outcomesUS 9,144,751 mixedClaim construction§ 103 obviousnesscites KSRPatents in suitUS 9,144,751 - Amphenol Corp. v. PPC Broadband, Inc.All claims unpatentablePTAB · Oct 23, 2023 · IPR2022-00719 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–5, 8–15, and 18 are unpatentable as obvious over Youtsey, Lionetto, and Horak; the Board did not reach the alternative Tarrant and Bell ground.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“in that neither party proposes constructions for any specific claim terms. See generally PO Resp.; Pet. Reply; PO Sur-reply. Accordingly, based on our review of the complete record, we maintain and reaffirm that no explicit construction of any claim term is needed to resolve the issues presented by the parties and resolved in this Decision. See Realtime Data, 912 F.3d at 1375.” slip op. at 13
- Skill levelOther
“G. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Dickens’ testimony, proposes that a” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“(f) Analysis and Conclusion as to Motivation to Modify Youtsey Having considered and balanced the prior art for all that it teaches,” slip op. at 89
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“For these reasons, Patent Owner’s first objective indicia argument is unavailing. Petitioner’s Patent Application Patent Owner argues that Petitioner, in its own U.S. Patent Application No. 13/530,831 (see Ex. 2013, “the ’831 Application”) filed several years after the ’983 patent’s priority date, took positions contrary to and belying Petitioner’s positions in this proceeding. See PO Resp. 2, 71–73. In particular, according to Patent Owner, the ’831 Application “included claims directed to the same coupler-body grounding member/path limitations at issue here,” demonstrating that “five of Petitioner’s own inventors (i.e., [persons of ordinary skill in the art]) understood that a coupler-body grounding member/path was patentable.” Id. (citing Ex. 2013, code (57), Figs. 4, 5, ¶¶ 3, 5, 14, 18, claim 1; Ex. 2014, 4:6–14; Ex. 2015, 3– 6; Ex. 2016, 2); PO Sur-reply 3; Ex. 2001 ¶¶ 190–199. Patent Owner cites Andersen Corp. v. Pella Corp., 300 F. App’x 893, 899–900 (Fed. Cir. 2008), as “finding statements made in the accused infringer’s own patent applications provided objective evidence that the challenged claims were not obvious.” PO Resp. 73. Petitioner in reply points out that the original claims of the ’831 Application were rejected by the Examiner, and the claims were not allowed until they were amended “to require the grounding member to be ‘exposed outside of the connector body,’ supporting that other features attribute to the non-obviousness of [Petitioner’s] claimed invention.” Pet. Reply 19–20; see Ex. 2014, 3:35–4:15 (issued claim 1 from the ’831 Application). Petitioner distinguishes the Andersen decision cited by Patent Owner as involving “long-felt need, the failure of others, unexpected results, copying, and praise by others,” none of which are present here. Pet. Reply 20. Patent Owner replies that the Examiner’s rejection in the ’831 Application “fails to change the fact that Petitioner’s own inventors thought that the original claims were nonobvious.” PO Sur-reply 3. Patent Owner additionally notes that the “rejection was based on a parent patent to the ’983 [p]atent,” which Patent Owner argues “confirm[s] that Petitioner’s inventors were trying to patent the same claimed invention believing it to be patentable.” Id. (citing Ex. 2015, 4–5).” slip op. at 94
Patent outcomesUS 10,446,983 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,446,983
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.