• Amneal Pharmacuticals LLC v. Hospira Inc.Institution denied
  PTAB · Feb 3, 2017 · IPR2016-01580 · APJ Michael J Fitzpatrick · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–9 obvious over any asserted ground.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Upon consideration of the Petition and Preliminary Response, and for the reasons explained below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to any claim challenged in the Petition. See 35 U.S.C. § 314(a); 37 C.F.R § 42.108. The Petition is denied.” slip op. at 2

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

    “In sum, Petitioner has not shown that the relied-upon prior art teaches “wherein the liquid pharmaceutical composition when stored in the glass container for at least five months exhibits no more than about 2% decrease in the concentration of dexmedetomidine,” or that it is inherent. That limitation is recited by claim 1 and incorporated by all other challenged claims via their dependency on claim 1. Accordingly, there is not a reasonable likelihood of Petitioner prevailing in challenging any of claims 1–9 as unpatentable over 2010 Precedex Label and Palmgren. C. The Remaining Grounds Petitioner challenges claims 1–9 as unpatentable over Aantaa, the 2010 Precedex Label, and Palmgren as well as over the 2010 Precedex Label, De Giorgi, Eichhorn, Palmgren, and Lavoisier. Pet. 11–12. In both of these additional grounds, Petitioner relies on the same flawed inherency argument. See Pet. 37–38, 56. Accordingly, there likewise is not a reasonable likelihood of Petitioner prevailing in challenging claims 1–9 on either of these remaining grounds.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “In sum, Petitioner has not shown that the relied-upon prior art teaches “wherein the liquid pharmaceutical composition when stored in the glass container for at least five months exhibits no more than about 2% decrease in the concentration of dexmedetomidine,” or that it is inherent. That limitation is recited by claim 1 and incorporated by all other challenged claims via their dependency on claim 1. Accordingly, there is not a reasonable likelihood of Petitioner prevailing in challenging any of claims 1–9 as unpatentable over 2010 Precedex Label and Palmgren. C. The Remaining Grounds Petitioner challenges claims 1–9 as unpatentable over Aantaa, the 2010 Precedex Label, and Palmgren as well as over the 2010 Precedex Label, De Giorgi, Eichhorn, Palmgren, and Lavoisier. Pet. 11–12. In both of these additional grounds, Petitioner relies on the same flawed inherency argument. See Pet. 37–38, 56. Accordingly, there likewise is not a reasonable likelihood of Petitioner prevailing in challenging claims 1–9 on either of these remaining grounds.” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “It is irrelevant that the 2010 Precedex Label does not explicitly disclose this inherent property of the Precedex® solutions therein.” Pet. 22. But, like its “stable for two years” argument, Petitioner’s inherency argument speaks to the concentrated form of dexmedetomidine-HCl disclosed in the 2010 Precedex Label, which is outside the scope of claim 1, and not to a “ready to use” diluted form. Moreover, the stated basis for Petitioner’s inherency assertion is that “the Precedex™ solutions disclosed in the 2010 Precedex Label were stored under identical conditions – sterile, in a sealed glass container – as those in Example 1 of the ’106 patent which exhibited no more than about 2% decrease in the concentration.” Id. at 22 (citing Ex. 1001, 13:35–43; Ex. 1007, ll. 207–08, 697–701). But, the conditions were not identical; they employed different concentrations and temperatures. More specifically, the 2010 Precedex Label discloses glass vial storage of dexmedetomidine-HCl at a concentration of 100 mcg/mL concentration and a temperature of “25°C (77°F) with excursions allowed from 15 to 30°C (59 to 86°F),” whereas Example 1 of the ’106 patent presents five-month stability data for dexmedetomidine-HCl at a concentration of just 4 mcg/mL and at a temperature of 40°C. Compare Ex. 1007, lines 697–701, with Ex. 1001, 13:28–37, 45–47, 14:4–14. slip op. at 8

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,648,106
• Arctic Cat, Inc. v. Polaris Industries, Inc.All claims unpatentable
  PTAB · Feb 1, 2017 · IPR2015-01788 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–6 are unpatentable as obvious over Enokimoto and Dangauthier; claims 7–16 are unpatentable as obvious over Enokimoto, Dangauthier, and Bennett.

  RulingsFinal written decision

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

    “Specification discloses indirect coupling through a bearing carrier for the control arms and radius arms, but Patent Owner contends that coupling precludes indirect coupling through a bearing carrier for the claimed dampening member. As Petitioner persuasively argues, however, the Specification does not create a sufficiently clear disclaimer or distinction that limits “coupling” for dampening members to a bearing or other indirect coupling, while, at the same time, not limiting the same term “coupling” for the radius arms and control arms. See Pet. Reply 2; Ex. 1001 ¶ 67; Ex. 1028 ¶¶ 4–5 (testifying that “coupling” should not be differently construed for different components). And as noted above, Patent Owner concedes that coupling, even for the dampening member, includes indirect coupling via “a bearing or a bushing.” See PO Resp. 15. The Specification simply does not describe or differentiate coupling via a bearing and a bushing versus a bearing carrier, or coupling for a dampening member versus a control arm, radius arm, or other component, in a sufficient manner that allows, let alone requires, a narrowing of coupling for one suspension element (dampening member) versus another (control and radius arms).” slip op. at 11

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

    “Given the similar location of Enokimoto’s engine and radius arm relative to a vehicle frame, Petitioner proposes modifying Enokimoto to include a sway bar, i.e., modifying Enokimoto’s radius arm 45 in a fashion similar to Dangauthier’s radius arm 3 and sway bar 13. See Pet. 32–36. As noted above, Patent Owner acknowledges that skilled artisans would have been motivated to add a sway bar to Enokimoto, but contends that they would not use Dangauthier’s system. See PO Resp. 44–45; Ex. 2044 ¶ 107. Patent Owner’s central thrust urges nonobviousness because skilled artisans allegedly would have ignored Dangauthier’s teachings and instead, modified Dangauthier to implement another sway bar mounting location. As Dr. Davis testifies, however, “nothing in Dangauthier or Enokimoto suggests to one of ordinary skill that Dangauthier’s sway bar should be re-engineered if applied to different vehicles.” See Ex. 1028 ¶ 8 (emphasis added). Dr. Moskwa also contends that “Dangauthier’s compact suspension does not allow space for an engine between the rear drive unit and the sway bar,” and “[t]hat is why Dangauthier places his suspension system rearward of his engine.” See Ex. 2044 ¶ 107. Patent Owner makes a related argument that Dangauthier’s teaching of a “compact” rear suspension system “does not allow space for an engine.” PO Resp. 44–45. This testimony and these arguments focus too narrowly on Dangauthier’s engine location and rear differential space. Contrary to the testimony, no persuasive evidence exists on this record showing that Dangauthier’s system uses a forward engine due to a lack of rear space; rather, the system simply employs a forward engine with a rear drive train with differential D that takes up similar space that a small engine would. See Ex. 1004, Fig. 2 (differential D). In addition, the proposed combination relies primarily on Enokimoto’s engine location and size and Dangauthier’s suggestion of a sway bar located near the pivot point of a radius arm for any type of engine location. See Ex. 1004, Figs. 1–3; 1:11–17. Petitioner does not rely on using any alleged specific size related to Dangauthier’s suspension system or on bodily incorporating all aspects of that suspension system.” slip op. at 26

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “Similar to the situation in ClassCo, we afford the evidence of commercial vehicle sales and praise little weight, because we determine that the broadly recited claims capture features well-known in the art, and they do not recite or require several features that Patent Owner’s cited literature touts as important and describes as part of an “entire [vehicle] package.” See Ex. 2027, 26 (describing the “ultimate thrill ride this entire package creates”) (emphasis added). In making these findings as outlined below with more particularity, we stress that we do not require Patent Owner to show success for each commercial or disclosed embodiment that falls in the scope of the challenged claims. See infra notes 11 (nexus presumed), 14 (summarizing some cited precedent).” slip op. at 55

  Patent outcomesUS 8,746,719 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,746,719
• Arctic Cat, Inc. v. Polaris Industries Inc.All claims unpatentable
  PTAB · Jan 30, 2017 · IPR2015-01783 · APJ Phillip J Kauffman · IPR · Final written decision

  Claims 60–62, 65–69, and 78–86 are unpatentable as obvious over the grounds listed in the Order.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedOther

    “would not have positioned the seats lower in the frame, because it would have necessitated overhauling Nechushtan’s frame structure. PO Resp. 37; Ex. 2030 ¶ 80. This contention is unpersuasive. Patent Owner’s expert presents a single sentence opining that the modification would have required overhauling Nechushtan’s frame structure. Ex. 2030 ¶ 80 (last sentence). This opinion is not accompanied by underlying facts or data, and does not explain persuasively why that is the case. We are persuaded by Petitioner’s argument and evidence that such alterations of the vehicle frame were predictable and within the ability of a person of ordinary skill to accomplish. Pet. Reply. 12; see also Pet. 24–26; Ex. 1008, Fig. 2; Ex. 1001 ¶ 139.” slip op. at 32

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “LEVEL OF SKILL IN THE ART The analysis of Petitioner’s expert, Dr. Davis, is predicated on the level of skill in the art being either: (1) a bachelor’s degree in mechanical engineering or a related field, and at least one year of experience working in automotive engineering or a related field, or (2) experience working in the field of automotive engineering for 2–3 years. See Ex. 1001 ¶ 27. Patent Owner does not contest Petitioner’s assertion. The prior art of record 9 U.S. Patent No. 5,954,364, issued Sept. 21, 1999 (Ex. 1008). 10 U.S. Patent No. 3,407,893, issued Oct. 29, 1968 (Ex. 1010). 11 U.S. Patent No. 5,327,989, issued July 12, 1994 (Ex. 1009). 12 U.S. Patent No. 4,693,134, issued Sept. 15, 1987 (Ex. 1012). 13 U.S. Patent No. 5,251,713, issued Oct. 12, 1993 (Ex. 1015). 14 Hart’s Hunter, Dirt Wheels Magazine, Dec. 1998 (Ex.1004). 15 U.S. Patent No. 7,270,336, issued Sept. 18, 2007 (Ex. 1013). 16 Exhibit 2032 is a redacted public version of Exhibit 2031. reflects a level of skill consistent with that asserted by Petitioner. We apply this level of skill to our analysis below.” slip op. at 14

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

    “Each of the grounds of unpatentability relies on Nechushtan, and Nechushtan discloses a space frame for “all-terrain vehicles.” Ex. 1008, 1:17–20, Figs. 1, 2; Pet. 8 (Nechushtan is an all-terrain vehicle). We need not determine if the preamble of claim 60 is limiting, because each of Petitioner’s proposed combinations is for an all-terrain vehicle. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that only those terms which are in controversy need to be expressly construed, and only to the extent necessary to resolve the controversy).” slip op. at 12

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

    “1. Previous Determinations In the Institution Decision, we determined that a front, mid, and rear frame portion as recited in claim 60 should be given their plain and ordinary meaning, with no further construction being necessary. Dec. 6–7. In the Institution Decision, we adopted Petitioner’s interpretation that broadest reasonable construction the claim term “vertical member” recited in claim 67, was “a member generally perpendicular to the horizontal axis of the vehicle.” Dec. 7. In the Institution Decision, we also determined that claim 60 does not required that the floorboard and base portions of the passenger compartment be distinct. Dec. 8–9. Neither party challenges these determinations, and, accordingly, we adopt them here. See SAS Institute, Inc. v. ComplementSoft, LLC., 825 F.3d 1341, 1351 (Fed. Cir. 2016) (The Board may not change claim interpretation from the institution decision where neither party anticipated that “already-interpreted terms were actually moving targets.”).” slip op. at 11

  Patent outcomesUS 8,827,028 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,827,028
• Arctic Cat, Inc. v. Polaris Industries Inc.All claims unpatentable
  PTAB · Jan 30, 2017 · IPR2015-01781 · APJ Phillip J Kauffman · IPR · Final written decision

  Claims 88, 90–101 are unpatentable as obvious over Nechushtan combined with Hill and the respective additional references.

  RulingsFinal written decision

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

    “Each of the grounds of unpatentability relies on Nechushtan, and Nechushtan discloses a space frame for “all-terrain vehicles.” Ex. 1008, 1:17–20, Figs. 1, 2; Pet. 7, 10 (Nechushtan is an all-terrain vehicle). We need not determine if the preamble of claim 88 is limiting, because each of Petitioner’s proposed combinations is for an all-terrain vehicle. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that only those terms which are in controversy need to be expressly construed, and only to the extent necessary to resolve the controversy).” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached

    “not “give life, meaning, and vitality” to the claims. Pet. Reply 2 (quoting Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)). Petitioner goes on to assert that if the Board interprets the preamble as limiting, the broadest reasonable interpretation is a “vehicle capable of driving on a variety of terrains.” Id. (citing Ex. 1002, 1:13-14). Each of the grounds of unpatentability relies on Nechushtan, and Nechushtan discloses a space frame for “all-terrain vehicles.” Ex. 1008, 1:17–20, Figs. 1, 2; Pet. 7, 10 (Nechushtan is an all-terrain vehicle). We need not determine if the preamble of claim 88 is limiting, because each of Petitioner’s proposed combinations is for an all-terrain vehicle. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that only those terms which are in controversy need to be expressly construed, and only to the extent necessary to resolve the controversy).” slip op. at 12

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

    “1. Previous Determinations In the Institution Decision, we determined that front, mid, and rear frame portions as recited in claim 88 should be given their plain and ordinary meaning, with no further construction being necessary. Dec. 8–9. In the Institution Decision we also determined that claim 88 does not require that the floorboard and base portions of the passenger compartment be distinct. Dec. 9–10. Neither party challenges these determinations, and, accordingly, we adopt them here. See SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016) (The Board may not change a claim interpretation from the institution decision where neither party anticipated that “already-interpreted terms were actually moving targets.”).” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “LEVEL OF SKILL IN THE ART The analysis of Petitioner’s expert, Dr. Davis, is predicated on the level of skill in the art being either: (1) a bachelor’s degree in mechanical engineering or a related field, and at least one year of experience working in automotive engineering or a related field, or (2) experience working in the field of automotive engineering for 2–3 years. See Ex. 1001 ¶ 27. Patent Owner does not contest Petitioner’s assertion. The prior art of record reflects a level of skill consistent with that asserted by Petitioner. We apply this level of skill to our analysis below.” slip op. at 14

  Patent outcomesUS 8,827,028 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,827,028
• Great West Casualty Company / Bitco General Insurance Corporation et al. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Jan 17, 2017 · IPR2015-01707 · APJ Michael W Kim · IPR · Final written decision

  Claims 11–13 and 15–20 are unpatentable: claims 11, 12, and 16–20 as obvious over Payne, and claims 13 and 15 as obvious over Payne and Ackley.

  RulingsFinal written decision

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

    “guidance in resolving this disagreement. To that end, the relevant portion of independent claim 11 recites “at least one server operative to store one or more of: a) content, b) links to content.” As an initial matter, controlling precedent from our reviewing court instructs us that different claim terms are presumed to have different meanings. Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (“[T]he use of two terms in a claim requires that they connote different meanings.”); CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of . . . evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”). Accordingly, on a high level, each of the following express claim terms are presumed to have different meanings: “content”; and, “links to content.”” slip op. at 8

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

    “We disagree with Patent Owner because Patent Owner’s assertions are misplaced. Most prominently, were O’Neil the only factual support for Patent Owner’s position, it may be persuasive. Petitioner’s proposed modification, however, relies not only on O’Neil, but also on Payne and the Declaration of Dr. Greenspun. Pet. 48–49 (citing Ex. 1003 ¶¶ 240, 241; Ex. 1006, 6:9–42, 8:38–53, 9:64–10:1, 5:16–25, and Fig. 5); see also Ex. 1003 ¶ 272. In short, we are persuaded that the following findings in Payne asserted by Petitioner are accurate, and that it supports adequately Petitioner’s proposed modification. The system of Payne already includes functionality requiring a user to log on to an account, Ex. 1006 at 6:9–42, 8:38–53, so it would have been trivial to place the log in functionality directly on the digital advertising documents, which are web pages, see id. at 9:64–10:1, 5:16–25, Fig. 5. Ex. 1003 at ¶ 240. When a patent simply arranges old elements, each performing the same function it had been known to perform and together yielding no more than one would expect from such an arrangement, the combination is obvious. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Pet. 48; see also Reply 11–16. As counter-evidence, Patent Owner cites to paragraphs 46–48 of the Declaration of Dr. Papakonstantinou. Those paragraphs, however, suffer from the same logical flaw identified above.” slip op. at 23

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Insofar as Patent Owner is asserting that Payne and Ackley are non- analogous art, we disagree. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). To that end, Payne discloses that it relates to the field of “user-interactive network sales systems for implementing an open marketplace for goods or services over computer networks such as the Internet.” Ex. 1006, 1:14–17. Ackley discloses that it relates to the field “computer-based systems and methods that enable sales transactions between third parties through a communications network, such as internet auctions and classified systems.” Ex. 1008, 1:21–25. We see little daylight between these two fields, especially given that Ackley’s use of the word “such as” with “internet auctions” indicates that such “internet auctions” are a non-limiting example, and, thus, do not materially limit Ackley’s field of endeavor.” slip op. at 28

  Patent outcomesUS 7,516,177 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,516,177
• Great West Casualty Company / Bitco General Insurance Corporation et al. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Jan 17, 2017 · IPR2015-01706 · APJ Michael W Kim · IPR · Final written decision

  Claims 11, 12, and 16–20 are unpatentable as obvious over MyLibrary.

  RulingsFinal written decision

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

    “In summary, we construe “content” as “electronic data embodying information for an individual or individuals,” and excluding “links to content,” but not excluding “content” associated with the “links to content.”5” slip op. at 16

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “written decision is issued shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (Affirming that USPTO has statutory authority to construe claims according to 37 C.F.R. § 42.100(b).). When applying that standard, we interpret the claim language as it would be understood by one of ordinary skill in the art in light of the Specification. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we generally give claim terms their ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning ‘is the meaning that the term would have to a person of ordinary skill in the art in question.’”). For the purposes of this decision, and on this record, we determine that most claim terms do not need express interpretation. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only those terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy.).” slip op. at 5

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

    “7. Conclusion We are persuaded that Petitioner has shown, by a preponderance of the evidence, that claims 11, 12, and 16–20 are unpatentable as obvious in view of MyLibrary. In addition to findings we make above in connection with our analysis of claims 11, 12, and 16–20 as obvious in view MyLibrary, we also adopt as our findings Petitioner’s positions as to how MyLibrary discloses each of the limitations of claims 11, 12, and 16–20. We further adopt as our own Petitioner’s rationales for modifying MyLibrary, as referenced above.” slip op. at 32

  Patent outcomesUS 7,516,177 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,516,177
• Inline Packaging, LLC v. Graphic Packaging International, Inc.All claims unpatentable
  PTAB · Jan 10, 2017 · IPR2015-01609 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–53 are held unpatentable: claims 1–4, 6–24, 26–29, and 31–33 as obvious over Kato and Clough; other claims under the stated § 103 grounds.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert discountedOther

    “Patent Owner cites to the Declaration of Dr. Floros to support many of its assertions set forth above, in particular, that Kato does not provide any indication that it would have been modified to include the microwave energy interactive material of Clough. See Ex. 2007, 28–38, 40–44. Dr. Floros’ testimony is unpersuasive for the same reasons as set forth above, and need not be repeated here.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proffers that a hypothetical person of ordinary skill in the art, with respect to and at the time of the ’078 patent, would have been a packaging professional with at least an undergraduate degree in packaging science (or related field) or comparable training/experience and would have had at least three (3) years of professional experience in the design of packaging materials for consumer products that are made from paperboard. Pet. 5. Patent Owner did not offer a skill level in the Patent Owner Response.4 Based on our review of the overall record, including the ’078 patent, we concur with the Petitioners’ assessment of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8

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

    “wherein the cut in the first end panel is substantially T-shaped” Dependent claims 4, 24, 36, and 49 each recite “wherein the cut [in] the first end panel is substantially T-shaped.” Dependent claims 30 and 43 recite substantially the same, with “slit” instead of “cut.” In the Patent Owner Preliminary Response, the Patent Owner asserted that the aforementioned claim limitation should be construed as “having a shape that closely resembles the capital letter ‘T’.” Prelim. Resp. 6–7 (citing Ex. 1001, 17:8–11). In the Decision on Institution, we agreed, although we clarified that we do not discern that the proposed construction provides any additional substantive clarity relative to the plain language. Dec. 7–8. After the Decision on Institution, while Patent Owner and Petitioner disagree with the application of the aforementioned claim construction, as set forth below, neither Patent Owner nor Petitioner has expressed disagreement with the construction itself. After considering anew the basis for our previous construction, we see no need for modification. slip op. at 7

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

    “one of ordinary skill would not have modified Kato, which meets need (1), to include the microwave energy interactive material of Clough, so as to also meet need (2), because Kato is only directed to a container for holding an already-prepared (i.e., ready-to-eat) food item, and does not mention anything about a microwave browning and crisping package. PO Resp. 35– 36 (citing Exs. 1003, 2001, 2007). While Patent Owner’s assertions will be assessed in more detail below, fundamentally, Patent Owner’s assertions are misplaced as Clough, and not Kato, is cited for being directed to a microwave browning and crisping package. Pet. 14–16 (citing Exs. 1003, 1008). We agree with Petitioner that one skilled in the art would have recognized that Kato’s paperboard sleeve would have been used to microwave food therein and, thus, that one skilled in the art would have had ample reason to modify and improve Kato’s paperboard sleeve to brown and crisp food using Clough’s known technique of adding microwave interactive material to a sleeve to realize the advantages set forth in Clough. Pet. 14–16 (citing Ex. 1003 ¶¶ 106–114, 116–120; Ex. 1008). Primarily, Patent Owner’s assertions are flawed because they are almost uniformly directed to Kato alone. Essentially, Patent Owner is asserting that one of ordinary skill, when reading Kato, would discern that Kato is a perfect product for its stated purpose, that the stated purpose can never change or be added to, and, thus, that one of ordinary skill would never look outside the narrow confines of Kato for any modifications, no matter what improvements and advantages such modifications may bring. Such assertions are contrary to almost every doctrine of obviousness under KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). For example, KSR states “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR at 421. Patent Owner’s inflexible approach to Kato is more akin to that of an automaton, than to one of ordinary creativity. Furthermore, KSR explains explicitly that the ordinary artisan recognizes “that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR at 420 (emphasis added). No one disputes that Kato’s primary stated purpose aligns with need (1), i.e., a container for holding an already-prepared (i.e., ready-to-eat) food item. We are unpersuaded, however, that this primary stated purpose of Kato should be held in such high esteem so as to exclude all other purposes known in the art, such as need (2), especially when KSR counsels that “uses beyond their primary purposes” must be considered. To that end, the record is replete with evidence concerning the advantages of modifying a paperboard sleeve, including that of Kato, with the microwave energy interactive material of Clough in order to brown and crisp food, so as to meet need (2). See, e.g., Ex. 1008, 1:48–68, 2:1–3, 18– 31, 3:10–19, 63–68, 4:1–9, 28–37; Ex. 1003 ¶¶ 116–120. Patent Owner would have us believe that such a purpose is irreconcilably in conflict with Kato’s stated purpose. We disagree. As a matter of logic, Kato must be made of some type of material, and we are persuaded that Clough provides sufficient objective evidentiary support for the notion that one of ordinary skill would have had reason to include in the paperboard sleeve of Kato the microwave energy interactive material of Clough in order to brown and crisp food.” slip op. at 13

  Patent outcomesUS 8,872,078 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,872,078
• Taiwan Semiconductor Manufacturing Company Limited v. Godo Kaisha IP Bridge 1Institution denied
  PTAB · Jan 5, 2017 · IPR2016-01367 · APJ Michael J Fitzpatrick · IPR · Institution

  The Board denied institution because Wollesen did not disclose the claimed interlayer insulating film, and Jeng did not cure that deficiency.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Upon consideration of the Petition and Preliminary Response, and for the reasons explained below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to any claim challenged in the Petition. See 35 U.S.C. § 314(a); 37 C.F.R § 42.108. The Petition is denied.” slip op. at 2

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

    “We are in general agreement with Patent Owner’s proposed construction. However, our construction adds the word “other” and is as follows: an insulating film located between but not within other layers. Our construction is supported sufficiently by the intrinsic evidence alone. The ’980 patent uses the terms “interlayer” and “buried” to refer to two distinct configurations of insulating films. The term “interlayer insulating film” is described with something (namely, a metal wire layer) formed on top of it. E.g., Ex. 1001, Abstract (“A plurality of metal wires are formed on an underlying interlayer insulating film.”), 13:39–41 (“As is shown in FIG. 10, on an underlying interlayer insulating film 11 is formed a metal wire layer including a plurality of metal wires 12.”); see also id. at Fig. 1 4 The ’980 patent identifies several priority applications, having a range of filing dates from September 10, 1996 through November 19, 2007. Ex. 1001, [22], [64], [60], [30]; see also id. at 1:10–20 (identifying the U.S. priority applications). The ’811 patent was filed within this range—on December 20, 2000. Ex. 2003, [22]. In its Preliminary Response, Patent Owner does not argue for entitlement to any particular priority date. On this record, we find the ’811 patent’s disclosure probative of what a person of ordinary skill in the art would have understood “intralayer” to mean in the context of semiconductors. (illustrating the same). In contrast, the term “buried insulating film” is described with something (namely, metal wires) buried within it. E.g., id., Abstract (“Areas among the metal wires are filled with a buried insulating film.”), 13:39–48 (“The metal wires 12 are buried in the insulating film 13.”), Fig. 1 (ref. 11, 13); see also id. at Fig. 1 (illustrating the same); dependent claims 19 and 36 (reciting “wherein said first dielectric film is buried, among said areas among said metal wires, at least in an area having a minimum pitch between said metal wires.”). Patent Owner’s extrinsic evidence, discussed above, also supports our construction.” slip op. at 9

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

    “An “interlayer insulating film” within the meaning of claims 18 and 35 is an insulating film located between but not within other layers. As Patent Owner correctly points out, in Wollesen, dielectric layer 9 is located, at least partially, within the same layer as conductive layer 8. See Prelim. Resp. 24 (“dielectric layer 9 would be considered an ‘intralayer’ dielectric, not an ‘interlayer’ insulating film”). Put another way, conductive layer 8 is buried within dielectric layer 9 in a manner similar to that of the ’980 patent’s metal wires 12 buried within buried insulating film 13. See Ex. 1001, 13:39–48, Fig. 1. Accordingly, dielectric layer 9 is not an interlayer insulating film within the meaning of claims 18 and 35.5 5 The Wollesen embodiment that Petitioner asserts as anticipatory also includes “[i]nterlayer dielectric layer 6.” Ex. 1006, 1:57. Petitioner does not argue, however, that it meets the “interlayer insulating film” limitation of claims 18 and 35. Indeed, so arguing would have compromised Petitioner’s arguments with respect to other limitations of claims 18 and 35. Petitioner has not shown how any of the challenged claims, all of which recite or incorporate “an interlayer insulating film,” is anticipated by Wollesen.” slip op. at 12

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

    “C. Obviousness over Wollesen and Jeng Petitioner’s obviousness challenge relies additionally on Jeng but not in a manner that would cure the deficiency of Wollesen identified above. More specifically, Petitioner relies additionally on Jeng to meet a different limitation of claims 18 and 35, namely “a surface protecting film including a first dielectric film with a small dielectric constant for filling at least a part of areas among said metal wires in said metal wire layer,” and no other limitations. Pet. 52–57. Accordingly, Petitioner has not shown how any of the challenged claims would have been obvious over Wollesen and Jeng.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
• Valeo North America, Inc. / Valeo S.A. et al. v. Magna Electronics Inc.All claims unpatentable
  PTAB · Dec 22, 2016 · IPR2015-01414 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1, 3–12, 14, 15, 17, 19–52, 54–67, 69–79, and 81–86 are unpatentable under § 103(a) over the 17 combinations listed in the order.

  RulingsFinal written decision

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

    “The fact that other parts of the claims recite locations of the image capture devices and the overlap zones does not mean that anything more should be read into the “without duplication of objects” clause, which appears clear on its face. Further, the claims do not say anything about parallax or require that the problem of parallax be solved for the synthesized image. Indeed, parallax is not the same as the duplication of objects. See Ex. 1066 ¶ 11 (“Duplication . . . is different from parallax. For example, when each of the cameras have a common center of projection, there will be little or no parallax, but given their overlapping fields of view, the cameras may nonetheless capture the same objects multiple times resulting in duplication.” (citation omitted)). Thus, we are not persuaded that reading in any language pertaining to parallax effects would be appropriate based on the language of the claims.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Neither party explains in detail why their proposed level of ordinary skill in the art should be adopted. After reviewing the evidence, including the cited prior art, however, we are persuaded that Petitioner’s definition is substantially correct. The ’724 patent describes “rearview vision systems which provide the vehicle operator with scenic information in the direction rearward of the vehicle” using “image capture devices, such as CMOS [(complementary metal-oxide semiconductor)] imaging arrays and the like.” Ex. 1001, col. 1, ll. 22–27. “Camera-based rearview vision systems” had been proposed at the time, but had not “obtained commercial acceptance” and suffered from various problems according to the ’724 patent. Id. at col. 1, l. 60–col. 2, l. 55. The ’724 patent further acknowledges that various aspects of the disclosed systems, such as, for example, CMOS and charge-coupled device (CCD) imaging arrays, optical correction systems, various types of image filtering, backlit liquid-crystal displays (LCDs), and systems for measuring the distance of an object behind the vehicle, were known at the time. See, e.g., id. at col. 11, ll. 60–64, col. 12, ll. 33–37, col. 13, ll. 26–41, col. 17, ll. 48–62, col. 20, ll. 42–53, col. 22, ll. 3–19, 44–55. Drs. Wolberg and Wilhelm further testify as to the development and state of the art by the time of the ’724 patent, which we find helpful in assessing what background knowledge would have been available to a person of ordinary skill in the art. See, e.g., Ex. 1020 ¶¶ 27–39; Ex. 1022 ¶¶ 20–27. As a whole, the evidence indicates a higher level of ordinary skill than what Patent Owner proposes, and suggests, for example, that an ordinarily skilled artisan would have had at least some understanding of ways in which images from multiple cameras could be combined. See, e.g., Ex. 1020 ¶¶ 28–38; Ex. 1003, 3, 6; Ex. 1005, 3–6. Accordingly, based on our review of the ’724 patent, the types of problems and solutions described in the ’724 patent and cited prior art, and the testimony of the parties’ declarants, we conclude that a person of ordinary skill in the art would have had a bachelor’s or master’s degree in engineering, computer science, or physics (or equivalent work experience), with some familiarity with how cameras may be used in vehicles and a working understanding of combining image data from multiple cameras and microprocessor-driven controls for displays, actuators, and elementary decision making. We apply this level of ordinary skill in the art for purposes of this Decision.” slip op. at 20

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “Patent Owner’s arguments are not persuasive for three reasons. First, as explained above, to establish an earlier constructive reduction to practice, Patent Owner must show that the ’527 application provides sufficient written description support for the challenged claims. Patent Owner states that “each limitation of [the set of claims listed above] is supported in the ’935 patent disclosure,” but includes no substantive arguments in its Response explaining why. See id. Rather, Patent Owner cites 46 paragraphs of Dr. Etienne-Cummings’s declaration and a “Constructive Reduction to Practice Chart” spanning 43 pages. Id. (citing Ex. 2001; Ex. 2004 ¶¶ 54–99). Any arguments contained in these materials cannot be incorporated by reference into the Response. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”).12 Consequently, we do not consider information presented in the declaration or claim chart but not discussed sufficiently in the Response. Second, even if Dr. Etienne-Cummings’s analysis and the claim chart are considered, they are not sufficient. The claim chart provides only block 12 See also Paper 8, 3 (“The patent owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.”); Apple, Inc. v. Ameranth, Inc., Case CBM2014-00013, 8 (PTAB Mar. 20, 2015) (Paper 37) (“Arguments that are not developed and presented in the Patent Owner Response, itself, are not entitled to consideration.”), reversed-in-part on other grounds, No. 2015-1703, -- F.3d --, 2016 WL 6958650 (Fed. Cir. Nov. 29, 2016); Cisco Sys., Inc. v. C-Cation Techs., LLC, Case IPR2014-00454, 7–10 (PTAB Aug. 29, 2014) (Paper 12) (informative) (noting that “[o]ne purpose of the prohibition against incorporation by reference is to eliminate abuses” of the page limits established for the parties’ substantive papers, and that citing “large portions of another document, without sufficient explanation of those portions, amounts to incorporation by reference”). quotes and figures from the ’935 patent,13 but does not explain in any detail why they provide support for the various limitations of the challenged claims. See Ex. 2001. Likewise, the majority of Dr. Etienne-Cummings’s declaration merely states that “the features of [the respective claim] are disclosed” at the block-quoted portions of the ’935 patent, without explanation. See, e.g., Ex. 2004 ¶¶ 56–61, 64, 65, 67–74, 76–99. Third, we agree with Petitioner that the ’935 patent does not provide sufficient written description support for the independent claims of the ’724 patent (claims 1, 49, 65, and 78), each of which recites that the “synthesized image is displayed by a single display screen of a reconfigurable display device that is viewable by a driver of the equipped vehicle when normally operating the equipped vehicle.” See Reply 13–15. As explained above, we interpret “reconfigurable display” to mean a display in which a portion of the display upon which the driver views the synthesized image is used as a high-information content display to selectively display various types of auxiliary information. See supra Section II.A.4. Patent Owner cites various excerpts from the ’935 patent describing display 20, but these portions do not call the display device “reconfigurable” or disclose that it is used to selectively display information. See, e.g., Ex. 2001, 5–6 (citing Ex. 2002, col. 3, l. 61–col. 4, l. 5, col. 5, ll. 48–50, col. 6, ll. 5–12, 22–39); Ex. 2004 ¶ 56. Indeed, the ’724 patent Specification 13 It is unclear why Patent Owner attempts to map the disclosure of the ’935 patent, rather than the ’527 application, to the challenged claims. The ’935 patent issued on September 23, 1997 (after Yamamoto published), from the ’527 application filed on May 22, 1995 (before Yamamoto published). Patent Owner does not provide a copy of the ’527 application in the record to show that the written description is the same as that of the issued ’935 patent.” slip op. at 26

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

    “many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (citation omitted). “A reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.’” Id. (citation omitted). We first summarize the evidence presented regarding Wang’s alleged public accessibility. Wang is a publication of the Institute of Electrical and Electronics Engineers (IEEE) and has a copyright notation of “TH0367-3/91/0000/0100$01.00 © 1991 IEEE” on the first page. See Ex. 1009, 1. Petitioner contends that the document was published “on May 27–31, 1991,” citing the testimony of Dr. Wolberg. Pet. 7. Dr. Wolberg testifies that “[a]s a person who regularly reviews scholarly articles, including IEEE publications such as the Wang article, and as someone who regularly attends conferences such as the IEEE conference in which the Wang paper was presented,” he believes that Wang was published in May 1991. Ex. 1020 ¶ 84. Dr. Wolberg also discusses two publications (Exhibits 1040 and 1042) that cite Wang prior to the effective filing date of the ’724 patent (May 22, 1996), “which further indicates to [Dr. Wolberg] that Wang was publicly accessible.” Id.; see Ex. 1040, 12 (cited reference 16); Ex. 1042, 3 (cited reference 4). Finally, he cites the University of Edinburgh website, which “states that the authors of the Wang article began work on CMOS imaging sensors as early as 1986, and began publishing articles reporting the results of their work that led to the incorporation of a CMOS chip in a video camera in 1989.” Ex. 1020 ¶ 84 (citing Ex. 1044). Petitioner presents additional evidence with its Reply that allegedly confirms Wang’s public accessibility prior to May 22, 1996. Reply 11–12. First, Petitioner submits a declaration from Gerard P. Grenier, the Senior Director of Publishing Technologies for the IEEE.17 Ex. 1055. Mr. Grenier states that Wang “was published and presented as part of [the] Euro [A]SIC ’91 [conference] which occurred May 27–31, 1991.” Id. ¶ 9. According to Mr. Grenier, “[t]he Article was published by IEEE as part of the conference proceedings on the date of the conference. Copies of the conference proceedings were made available to attendees of the conference.” Id. ¶ 6. Mr. Grenier also testifies that “IEEE maintains records of the dates on which articles were first made available for public download,” “[t]hese records are maintained as part of the ordinary course of business of the IEEE [and] are updated regularly as articles are published,” and he has “personal knowledge of the records.” Id. ¶ 7. Second, Petitioner submits a copy of Wang, with a “EURO ASIC ’91” cover page and table of contents, “[s]helved” at the Linda Hall Library in Kansas City, Missouri in 1991. Ex. 1046. Third, Petitioner submits a certified copy of Wang from the Library of Congress, with the same cover page and table of contents and a date stamp of June 5, 1992. Ex. 1060. Fourth, Petitioner notes that the U.S. Court of Appeals for the Federal Circuit affirmed a Board decision finding similar claims with a priority date of February 26, 1993, unpatentable based in part on Wang in 17 Petitioner submitted a substantially similar version of the declaration, dated approximately one month earlier, with its Petition, but did not discuss the declaration in the Petition. Compare Ex. 1039, with Ex. 1055. Our analysis applies equally to both versions of the declaration. In re Magna Elecs., Inc., 611 F. App’x 969, 973 (Fed. Cir. 2015) (unpublished) (Ex. 1045). Reply 11. Patent Owner disputes the sufficiency of Petitioner’s evidence of” slip op. at 43

  Patent outcomesUS 8,643,724 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,643,724
• The Boeing Company v. Seymour LevineAll claims unpatentable
  PTAB · Dec 20, 2016 · IPR2015-01341 · APJ Trenton A Ward · IPR · Final written decision

  Claims 4, 5, 8, 9, 10, 14, and 16 are unpatentable as obvious under § 103 over the combinations listed in the decision.

  RulingsFinal written decision

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

    “The definition of “advice” is “information or notice given.” Ex. 3001 (Webster’s Third New International Dictionary 32 (1971), 3.). Thus, the plain and ordinary meaning of “maintenance advice” is consistent with the aforementioned evidence, in that “maintenance advice” can include maintenance information, but does not require “recommended maintenance actions.” Patent Owner argues that this dictionary definition cited by the Board includes an alternative definition of “advice” as a “recommendation regarding a decision or course of conduct.” PO Resp. 33 (citing Ex. 3001, 3). Patent Owner further argues that this alternative definition of “advice” is most consistent with specification. PO Resp. 33. Patent Owner fails, however, to cite to any portions of the specification to support this argument (see id.) and fails to explain why we should not be guided by the more general statements in the specification, such as the description in the specification that a “preferred maintenance advisory” can be based “on an expert system for fault isolation,” which is in no way “recommended maintenance actions.” Ex. 1001, 3:36–37. We are not persuaded by Patent Owner’s argument that “maintenance advice” must include recommended maintenance actions. Accordingly, we adopt the portion of the proposed definitions on which the parties agree and determine that the term “maintenance advice” means “problem-specific maintenance information.” See also Dec. 7–8.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “skill in the art relevant to the ’618 patent would have a “B.S. degree in electrical, systems, or computer engineering, or an FAA Mechanic Certificate with an airframe rating in accordance with 14 CFR part 65.71 and 65.85.” Ex. 1002 ¶ 15. According to Patent Owner’s Declarant, Mr. Grabowsky, a person of ordinary skill in the art relevant to the ’618 patent would have “at least a B.S. degree in electrical, systems, or computer engineering, or an FAA Mechanic Certificate with an airframe rating in accordance with 14 CFR part 65.71 and 65.85; as well as either an M.S. or equivalent work experience, such as 3-5 years of experience in avionics.” Ex. 2011 ¶ 8. Thus, both declarants generally agree on the level of skill, although Mr. Grabowsky suggests experience is required in addition to the B.S. degree or the FAA Mechanic Certificate. See id. Based on our review of the ’618 patent, the types of problems and solutions described in the ’618 patent and cited prior art, and the testimony of Petitioner’s Declarant and Patent Owner’s Declarant, we adopt Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention. We are not persuaded that the additional experience of an M.S. or equivalent work experience, such as 3-5 years of experience in avionics, is required, as suggested by Mr. Grabowsky, as we are unclear as to why the claimed subject matter is beyond the abilities of someone who otherwise meets applicable federal regulatory standards. Based on the stated qualifications of Dr. Helfrick (Ex. 1002 ¶¶ 5–9) and the stated qualifications of Mr. Grabowsky (Ex. 2011 ¶¶ 6–7), Petitioner’s Declarant and Patent Owner’s Declarant both meet the requirements of this definition. We note that the applied prior art also reflects the appropriate level of skill at the time of the claimed invention. See Okajima, 261 F.3d at 1355.” slip op. at 12

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

    “and ARINC 624-1 because ARINC 624-1 is a standard directed to the very types of on-board systems discussed in Ward.”)). Additionally, Petitioner contends that ARINC publishes standards for the aviation industry, developed by committees that include aircraft manufacturers, avionics manufacturers, and airlines, and that the ACARS transmitter disclosed in Ward is based on, and, thus, would follow, an ARINC standard. Pet. 30 (citing Ex. 1002 ¶¶ 23, 75). Also, Petitioner contends that both Ward and ARINC 624-1 discuss utilizing (1) onboard maintenance systems including ACMS to collect aircraft performance data and (2) an ACARS transmitter to transmit such data to a ground station. Pet. 30. Petitioner adds that ARINC 624-1 provides an explicit motivation to utilize Ward’s ground based maintenance analysis software in implementing its maintenance system, because ARINC 624-1 states that “if known in advance of an airplane’s arrival at a terminal, selected information held in the OMS central maintenance computer’s memory could be useful to line maintenance personnel in planning timely corrective action.” Pet. 30–31 (quoting Ex. 1014 § 2.2.4). We agree, for the reasons stated by Petitioner, that, given the similarity and overlap in disclosures, and applicability of the ARINC standard to the ACARS transmitter of Ward, a person of skill in the art would have been motivated to improve the system in Ward with the teachings in ARINC 624-1. In view of the foregoing, we determine Petitioner has presented and sufficiently established an “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” with respect to claim 4 for this ground, and we adopt its contentions as our own. KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 21

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner

    “on an aircraft having a flight data recorder.” Pet. Reply 15.10 Furthermore, Petitioner identifies that claims 8–10 all require “aircraft position data directed to said flight data recorder.” Id. Petitioner argues that Mr. Levine’s October 9, 1996 Invention Disclosure is insufficient, because it does not reflect the conception of the invention that Patent Owner ultimately claimed, which requires two data recorders—one onboard the aircraft and a second, remote recorder on the ground. Id. We do not agree with Petitioner’s argument that claims 4 and 8–10 require a flight data recorder on the ground, as claim 4 merely recites a “central station” “configured to receive and analyze said digital aircraft performance.” We do agree, however, with Petitioner’s argument that the express language of independent claim 4 requires “an aircraft having a flight data recorder.” Furthermore, claim 4 requires that the “digital aircraft performance data,” which the “central station” is configured to receive and analyze, is “data directed to the flight data recorder.” Thus, the invention recited in independent claim 4, and its dependent claims, must include a flight data recorder onboard the aircraft and, separately, a central station configured to receive and analyze data directed to the onboard flight data recorder. 10 The recitation “[a]n aircraft maintenance system for use on an aircraft having a flight data recorder” appears in the preamble of claim 4. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Marketing Int’l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). Here, the body of claim 4 refers to “the flight data recorder” as an active limitation in the claim. Therefore, we determine that the preamble is limiting for claim 4.” slip op. at 31

  Patent outcomesUS RE39,618 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham

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.