- Hayward Industries, Inc. v. Pentair Water Pool And SpA, Inc.All claims unpatentablePTAB · Nov 19, 2014 · IPR2013-00285 · APJ James B Arpin · IPR · Final written decision
Claim 12 is unpatentable as obvious over Rasmuson and Møller ’042 because the combination teaches the claimed pumping system and a skilled artisan would have had reason to combine them.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“not makes clear by its language that the word “primed” should be understood to mean “initially primed” or primed after the pressing of a “Start” button. As Patent Owner acknowledged at Oral Hearing, the claim language does not mention the term “initial” or “start” (Tr. 38:23–40:6) and, despite Patent Owner’s argument regarding the appropriate interpretation of “primed” in view of the Specification, we are not persuaded that the Specification limits “primed” in the manner argued by Patent Owner. Consequently, we conclude that the Specification does not express a clear intent to deviate from the plain meaning of the word “primed.” See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (“It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must clearly express an intent to redefine the term” (citations omitted; internal quotation marks omitted)). We are persuaded by Petitioner that our construction of the terms “is primed” and “is not primed,” as set forth in our Decision on Institution represents “the broadest reasonable meaning of the words in their ordinary usage, as those words would be understood by one of ordinary skill in the art, taking into account any definitions supplied by [patentee’s] Specification” (In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)), and we confirm that construction here (Dec. on Inst. 11 (citing Ex. 3001)). Despite Patent Owner’s arguments, we are not persuaded that patentee has supplied here such a definition limiting “primed” to “become primed” or “initially primed” with sufficient clarity, deliberateness, and precision. Paulsen, 30 F.3d at 1480.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“persuaded that the reference to “at least one aquatic application” in the preamble of claim 12 is a limitation. “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)). “Conversely, a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’” Id. (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). Here, we determine that the body of the claim describes a structurally complete invention and that the preamble neither recites structure nor is necessary to give life meaning or vitality to claim 12. Therefore, we are not persuaded by Patent Owner’s arguments that Rasmuson is not analogous art based on the type of pumps described in Rasmuson or the aquatic applications for which the recited pumping systems are suitable.” slip op. at 29
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“’479 Patent. In particular, Patent Owner argues that Rasmuson is neither from the same field of endeavor as the claimed invention nor is it reasonably pertinent to the problem faced by the patentee. PO Resp. 40–43 (citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). For the following reasons, we conclude that Rasmuson is analogous art to the pumping system recited in the challenged claim.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“the relevant art would not have combined the teachings of Rasmuson and Møller ’042 to achieve the pumping system recited in claim 12. PO Resp. 30–59. After consideration of the parties’ remarks and supporting evidence, we are not persuaded by Patent Owner’s arguments and conclude that a person of ordinary skill in the relevant art would have had reason to combine the references in the manner proposed by Petitioner. Petitioner contends that the measurement of input power, as taught by Møller ’042, is a proxy for Rasmuson’s flow transducer’s measurement of actual flow rate and would represent an improvement on Rasmuson’s methods and systems for measuring flow.6 Pet. 33; see Ex. 1018 ¶ 61 (“The controller of the Møller ‘042 Patent correlates the input power to a delivery variable of the pump (flow rate or pressure).” (citing Ex. 1003, col. 3, ll. 33–42)); Ex. 1037 ¶ 38 (“In many cases, using power-sensing techniques is a better option than using a flow transducer . . .”).7 In particular, Petitioner contends that “providing a power 6 Patent Owner argues that Møller ’042 teaches away from Rasmuson because Rasmuson teaches direct flow measurement and Møller ’042 teaches indirect flow measurement. PO Resp. 58–59. We do not find a clear teaching away from the substitution of one flow measurement means for its functional equivalent. For the reasons set forth above, we are not persuaded by those arguments. 7 Dr. Schaaf testified that the use of power meters was less invasive than the installation of flow sensors at the pump and that, after utilizing a controller that measured electrical power to detect loss of prime, pump life was increased from measuring technique [eliminates] the need for a probe to be placed in the water, which may become contaminated, or require piping to be cut.” Pet. 33; see Ex. 1037 ¶¶ 29–40; see also KSR, 550 U.S. at 417 (arrangement of known elements according to their understood functions).” slip op. at 21
Patent outcomesUS 8,019,479 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,019,479 - Nuvasive, Inc. v. Warsaw Orthopedic, Inc.All claims unpatentablePTAB · Jul 10, 2014 · IPR2013-00208 · APJ Stephen C Siu · IPR · Final written decision
Claims 1–8 were held unpatentable under §103 over Jacobson, Leu, and Brantigan, with Frey for claims 2–7; the Michelson ’247 ground was not proven.
RulingsFinal written decision- BurdenOther
“For the reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that claims 1–8 of the ’997 patent are unpatentable.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Patent Owner argues that an “axis lying in a coronal plane” should be construed as an axis that is lying in “a plane at right angles to a sagittal plane.” PO Resp. 10–11. Petitioner does not contest Patent Owner’s assertion that one of ordinary skill in the art would understand that a “coronal plane” would be oriented “at right angles to a sagittal plane.” Pet. Reply 1. Thus, no further construction of this term is necessary.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“implant” should be construed such that “the composition of the implant does not include any bone” because “the prefix ‘non’ is commonly understood to exclude the thing specified after the word.” PO Resp. 12–13, citing Ex. 2038 ¶ 63. We agree that one of ordinary skill in the art would have understood that the prefix “non” indicates that the implant contains material that is not bone. Patent Owner does not show persuasively, however, that, under a broad but reasonable construction, one of ordinary skill in the art would have understood that it cannot contain any component derived from bone. Hence, we broadly, but reasonably, construe a “non-bone interbody instraspinal implant” as an implant that contains at least one component that does not contain bone.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“what it says (i.e., to mean “lateral”), at least because it would have been reasonable for one of ordinary skill in the art to have construed a term (i.e., “lateral”) with a plain and common definition. Patent Owner’s observation that a construction of the term “lateral” that was in use at the time of the invention included a “direct lateral” approach (as understood in this proceeding) further supports Dr. Jacobson’s testimony that one of ordinary skill in the art would have understood the term “lateral” to mean “direct lateral,” as that term is presently construed in the instant proceedings. Also, we note that claim 1 does not recite the term “direct lateral,” and Patent Owner does not assert that the ’997 patent specification discloses the term “direct lateral.” The absence of the term “direct lateral” in the ’997 patent further supports that one of ordinary skill in the art at the time of the invention would not have used (or understood) the term “direct lateral.” In addition to Jacobson’s explicit disclosure of, for example, “laterally inserting a cannula,” Jacobson discloses figures that illustrate what Patent Owner now refers to as a “direct lateral” approach (i.e., lateral insertion along a path having an axis lying in a coronal plane). Ex. 1004, 2:26–27, Figs. 3–8. We note that in each of the figures of Jacobson, the outer side periphery of the instrument(s) inserted “laterally” into the intervertebral space, as illustrated, are depicted by parallel lines that are oriented at 90 degrees from a horizontal surface. Based on the depiction of the outer side contours of the instrument(s) as being oriented 90 degrees from a horizontal surface, one of ordinary skill in the art would have understood that the instrument(s) are perpendicular to an underlying horizontal surface in the superior-inferior perspective (with respect to the orientation of the patient). More importantly, as the outer side contours of the instruments are parallel in these perspectives, one of ordinary skill in the art would have understood the instruments, as illustrated by Jacobson, to be perpendicular to an underlying horizontal surface in the medial-lateral perspective (with respect to the orientation of the patient – i.e., that the orientation of the instrument(s) is “direct lateral,” as Patent Owner uses that phrase, and not “posterolateral” or “anterolateral”). That is true because, assuming the instrument(s) illustrated in Jacobson are cylindrical, if the instrument(s) were angled away from the viewer, the outer side contours of the instrument(s) at the point of insertion into the intervertebral space would appear farther away from each other as compared to the outer side contours of the instrument(s) at the point farthest from the point of insertion into the intervertebral space (i.e., the proximal end of the instrument(s), which would be located farther away from the viewer). Likewise, if the instrument(s) were angled toward the viewer, the outer side contours of the instrument(s) at the point of insertion into the intervertebral space would appear closer to each other as compared to the outer side contours of the instrument(s) at the point farthest from the point of insertion into the intervertebral space (i.e., the proximal end of the instrument(s), which is located closer to the viewer). Moreover, as Petitioner’s declarant (Dr. Paul McAfee) points out, an anterior cross sectional view of the instrument(s) in-situ (i.e., Ex. 1004, Fig. 6) shows an even and symmetrical view of the instruments throughout the length of the instrument(s). See, e.g., Ex. 1029 ¶ 38. Dr. McAfee’s testimony further supports that Jacobson discloses that the instruments are inserted along a path having an axis lying in a coronal plane passing through a lateral aspect and a medial aspect of the two adjacent vertebrae, as recited in claim 1 (i.e., the “direct lateral” approach as presently understood in the instant proceedings).” slip op. at 8
Patent outcomesUS 8,251,997 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,251,997 - Bae Systems Information And Electronic Systems Integration, Inc. v. Cheetah Omni, LLCAll claims unpatentablePTAB · Jun 19, 2014 · IPR2013-00175 · APJ Rama G Elluru · IPR · Final written decision
Claims 1, 4, 13, 15, 17, and 19 were held anticipated by Sanders; claim 14 was held obvious over Sanders; Cheetah’s motion to amend was denied.
RulingsFinal written decision- BurdenUnpatentable
“B. Anticipation by Sanders (Ex. 1010) With respect to our review of BAE’s contention that claims 1, 4, 13, 15, 17, and 19 are anticipated by Sanders, we have reviewed BAE’s Petition, Cheetah’s Patent Owner Response, and BAE’s Reply, as well as the evidence discussed in each of those papers. We are persuaded by a preponderance of the evidence that claims 1, 4, 13, 15, 17, and 19 are anticipated by Sanders. See Pet. 15–27, 28–30, 32–44 (claim charts).” slip op. at 8
- 112 supportMotion to amend, deniedDenied
“In its motion, Cheetah contends that the subject matter of its proposed substitute claims have written description support in the specification of the ’673 patent. Mot. 7. Rules 42.121(b)(1) and (2), however, require that a motion to amend set forth the support in the original disclosure of the patent for each claim that is added and the support in an earlier-filed disclosure for each claim for which the benefit of the filing date of the earlier filed disclosure is sought. 37 C.F.R. § 42.121(b)(1), (2). For written description support for the proposed substitute claims, Cheetah refers to portions of the ’673 patent Specification only for the added limitations in its proposed substitute claims. Specifically, Cheetah refers to Figure 8D, and column 19, lines 20–39 of the ’673 patent Specification. Mot. 7. Such reference does not satisfy the requirements of Rule 42.121(b)(1) because the specification is not the original disclosure. Moreover, Cheetah cites alleged support in the specification for only the added Q-switcher limitations. Cheetah does not identify support in the original disclosure “for each claim” in its motion to amend, as a whole and including the Q-switcher limitations, as required by Rule 42.121(b)(1). Cheetah, therefore, has not made a sufficient showing that its proposed substitute claims, as a whole, have written description support in the original disclosure of the ’673 patent, and we deny the motion on that basis.” slip op. at 18
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Analysis We are persuaded by BAE’s arguments (Opp. 11) that it would have been obvious to a person of ordinary skill in the art to modify Sanders to couple a Q-switcher with fiber laser 82 shown in Figure 16 based on the teachings of Lees. See Ex. 1017 ¶¶ 8–11. As Cheetah acknowledges (Mot. 8), Q-switchers were known in the art and used to obtain high peak power laser pulses. Lees teaches a Q-switcher, the AOM, within the laser cavity of the Er:Yb fiber laser. Ex. 1018, Fig. 1; p. 1836 (right hand column, first full paragraph); Ex. 1017 ¶ 9. Sanders explains that high peak power laser pulses are advantageous for pumping a QPM OPO device, such as Sanders’s NFM device 84. Ex. 1010, 1:40–44, 3:21–27, 17:42–49. We, thus, are persuaded by Dr. Smith’s testimony that it would have been obvious to a person of ordinary skill to provide high peak power pulses to NFM device 84 by arranging Lees’s AOM (i.e., a Q-switcher) within Sanders’s fiber laser 82 in a manner described by Lees. Ex. 1017 ¶¶ 9–10. As BAE asserts, the reason to combine would have been to provide high peak power laser pulses from fiber laser 82 to NFM device 84. See id. ¶¶ 9–11. We further are persuaded that there would have been a reasonable expectation of success for modifying Sanders based on Lees, in view of the similarities between the fiber laser 82 of Sanders and the Q-switched fiber laser of Lees. See id. ¶¶ 10–11.” slip op. at 21
- ScopeMotion to amend, deniedDenied
“We agree with BAE that Cheetah has not demonstrated a need for proposing more than one substitute claim for each of claims 1 and 13. See Opp. 2–3. Substitute claim 22 is identical to substitute claim 21, except for the additional recital of “wherein the Q-switcher produces an output signal having a pulse width in the range of two (2) nanoseconds to one hundred (100) milliseconds.” Mot. 3–4. Cheetah proposes a similar scheme to replace original claim 13. Id. at 5–6. Cheetah, however, has not demonstrated the need for proposing narrower substitute claims than the ones we already have considered. In addition, in order to justify more than one substitute claim for each challenged claim, “a patent owner has to show a special need to justify more than one substitute claim for each challenged claim. In such situations, the patent owner needs to show patentable distinction of the additional substitute claim over all other substitute claims for the same challenged claim.” See Idle Free, Paper 26 at 5, 8–9. With respect to the new limitation of claims 22 and 25, Cheetah states that “[t]he prior art does not read on the Q-switcher output pulse width because it does not read on the Q-switcher itself.” Mot. 12. In its Reply, Cheetah states that “in the manner that the limitations would be read into the claims, the distinction is facially clear without explanation.” PO Reply 3. Cheetah’s conclusory statements have not persuaded us of a patentable distinction of substitute claims 22 and 25 over substitute claims 21 and 24, respectively. See Opp. 4. Cheetah also was required to discuss the “significance and usefulness” of the added features in a proposed substitute claim “from the perspective of one with ordinary skill in the art.” See Idle Free, Paper 26 at 7. This Cheetah failed to do with respect to claims 22 and 25. Therefore, we determine that Cheetah has not met its burden to demonstrate that claims 22 and 25 are patentable.” slip op. at 25
Patent outcomesUS 7,633,673 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,633,673 - Nichia Corporation v. Emcore CorporationAll claims unpatentablePTAB · Feb 11, 2014 · IPR2012-00005 · APJ Joni Y Chang · IPR · Final written decision
Claims 1–17 are unpatentable as obvious over Kidoguchi, Nakamura, Fujimoto, Shibata, and the Admitted Prior Art; Emcore’s motion to amend is denied.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“is a “highly fact-dependent question,” taking into account various factors such as whether the non-party “exercised or could have exercised control over a party’s participation in a proceeding” and the degree to which a non-party funds directs and controls the proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48759-60 (Aug. 14, 2012). Upon review of the parties’ arguments and evidence, we determine that Emcore did not demonstrate adequately that Nichia failed to identify all real parties-in-interest. The petition identifies Nichia Corporation as the real party-in-interest. Pet. 1. Nichia’s motion to stay (Ex. 2017) and the Notice Correcting Corporate Names (Ex. 1036) reveal that: (1) the motion to stay used the shorthand “Nichia” to refer to both Nichia Corporation and NAC; (2) the motion to stay inadvertently stated that “Nichia filed a Petition for inter partes review . . .”; and (3) the motion to stay should have used “Nichia Corporation” rather than “Nichia.” Ex. 2017, 1-2; Ex. 1036, 2. The evidence before us clearly shows that the motion to stay filed in the district court contains a clerical error, especially in light of the fact that in the instant proceeding, we use the term “Nichia” to refer only to Nichia Corporation (see, e.g., Decision on Institution, Paper 13 at 2). Therefore, the evidence does not establish that NAC is a real party-in-interest to this proceeding. Moreover, the mere fact that Nichia and NAC, as co-defendants, shared the same counsel and expert witness, and had similar litigation strategy is not sufficient to prove that NAC exercised, or could have exercised, control over Nichia’s action in the instant proceeding. Nor does being a subsidiary of Nichia establish that NAC has the ability to control Nichia’s conduct in this” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“semiconductor (claim 1); “pure nitride semiconductor” or “pure nitride compound semiconductor” (claim 12) In its petition, Nichia notes that the ’215 patent expressly defines these semiconductor claim terms in the specification. Pet. 10-11 (citing Ex. 1001, 5:5-8; 5:14-17; 5:5-12). Upon review of the cited portions of the specification, we observe that the definitions are set forth in the specification with reasonable clarity, deliberateness, and precision. Therefore, we adopt the definitions as the broadest reasonable constructions for the semiconductor claim terms set forth in the table below. Terms Definitions A semiconductor according to the stoichiometric III-V semiconductor formula Ala Inb Gac Nx Asy Pz where (a+b+c) is about 1 and (x+y+z) is also about 1. Ex. 1001, 5:5-8. A semiconductor having n-type conductivity, i.e., a” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We do not agree with Emcore that its proposed construction is the broadest reasonable interpretation of the claim term “annealing,” as it would import improperly a limitation—“sufficiently to form a contact with low resistance”—from the specification into the claims. Gemstar-TV Guide Int’l, Inc. v. ITC, 383 F.3d 1352, 1366 (Fed. Cir. 2004) (rejecting expressly the contention that claims must be construed as limited to an embodiment disclosed in the patent). We also are not persuaded by Emcore’s arguments. They fail to recognize that it is “a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (citations and quotation marks omitted); see also Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc) (“The written description part of the specification itself does not delimit the right to exclude. That is the function and purpose of claims.”). Emcore has not alleged that the inventors of the ’215 patent acted as their own lexicographer and provided a special definition in the specification for the claim term “annealing” that is different from its recognized meaning 10 to one with ordinary skill in the art. The claim language used by Emcore is broad. There is no requirement as to the resistivity of the contact or a specific and beneficial change, as urged by Emcore. One with ordinary skill in the art may use “annealing” to form a contact that does not have a low resistance contact or to form other semiconductor structures.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We are not persuaded by Emcore’s argument, as it narrowly focus on one sentence and fails to consider Kidoguchi’s disclosure as a whole. The alleged translation error also is of no moment. Even based on the English-language translation submitted by Emcore (Ex. 2011), Kidoguchi’s disclosure as a whole discloses an embodiment that includes an Al base layer. Ex. 2011 ¶¶ 32-33 (“As illustrated in Figure 14, Mo (molybdenum) is employed as a contact metal for n-GaN. . . . Other metals, however, can be employed instead. For instance, W, Ta, Ti and Al may be employed [as a contact metal for n-GaN].” Emphasis added.). Therefore, Kidoguchi describes an Al base layer formed on an n-type GaN semiconductor, as required by claims 1 and 11-14. Emcore also argues that Kidoguchi is “a fundamentally flawed lead reference for n-type contacts to GaN and other type III-V semiconductors,” because Kidoguchi’s primary teaching is a Mo base layer, “which was known not to form a low-resistance, ohmic contact,” and Kidoguchi does not explain how other examples of base layer metals could be used to form a low-resistance, ohmic contact. PO Resp. 7-8, 38-39, 41-42. We are not persuaded by that argument, as it is not commensurate with the scope of claims 1 and 11-14. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (It is well established that limitations not appearing in the claims cannot be relied upon for patentability.). As discussed above in the claim construction section, we decline to import the limitation— 23 “a low-resistance, ohmic contact to the semiconductor”—from the specification into the claim term “base layer.” Additionally, Emcore does not identify any limitation of claims 1 and 11-14, that expressly requires “a low-resistance, ohmic contact.” In fact, the preamble of the sole independent claim, claim 1, merely requires “forming a contact on an n-type III-V semiconductor” and not “forming a low-resistance, ohmic contact on an n-type III-V semiconductor,” as urged by Emcore.” slip op. at 23
Patent outcomesUS 6,653,215 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 6,653,215
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.