• New World Medical, Inc. v. Microsurgical Technology, Inc.All claims unpatentable
  PTAB · Apr 20, 2022 · IPR2021-00017 · APJ James A Tartal · IPR · Final written decision

  Claims 1–3, 6, 9, and 10 are unpatentable as anticipated by Quintana; claims 4, 5, 7, 8, and 11 are unpatentable as obvious over Quintana.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have had either “a medical degree and at least two years’ experience with treating glaucoma and performing glaucoma surgery,” or “an undergraduate or graduate degree in biomedical or mechanical engineering and at least five years of work experience in the area of ophthalmology, including familiarity with ophthalmic anatomy and glaucoma surgery.” Pet. 26 (citing Ex. 1003 ¶ 24). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. Resp. 10 n.5. We adopt Petitioner’s definition as we find it is undisputed and consistent with the level of skill in the art at the time of the invention, as reflected by the prior art and the ’885 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 13

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

    “Neither Petitioner nor Patent Owner propose any express construction for a claim term. See Pet. 27; Resp. 10. We find that no express construction of any claim term is necessary for purposes of rendering this Decision. See 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.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 14

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

    “Quintana’s disclosure expressly states that “[o]nly the tip of the instrument is introduced into Schlemm’s canal, and the [trabecular meshwork] is stripped slowly, gently and easily from the canal’s lumen towards the anterior chamber as the needle progresses,” which informs one of ordinary skill in the art that the beveled edges of the needle cut and remove a strip of trabecular meshwork tissue. See Ex. 1004, 4; see also id. at 8 (“[f]urther studies are necessary to disclose the ‘in vivo’ behaviour of the sectioned trabecular meshwork”), caption to Figure 2 (“[t]he tip of the needle stripping the trabecular meshwork”); see also Ex. 1030 ¶¶ 7–10 (Dr. Netland discussing Quintana from the perspective of one of ordinary skill in the art).” slip op. at 34

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

    “Reasons Supporting Obviousness Over Quintana We find for the reasons provided below that Petitioner has shown by a preponderance of the evidence persuasive reasons the subject matter of the Challenged Claims, as a whole, was taught by Quintana, in light of the knowledge of a person of ordinary skill in the art. We further find that, to the extent a feature of Quintana relied upon by Petitioner would have required modification to correspond to a feature of a Challenged Claim, Petitioner has shown by a preponderance of the evidence a person of ordinary skill not only could have made the modification, but would have had reason to do so in light of the knowledge of a person of ordinary skill in the art. Patent Owner argues a lack of motivation to modify Quintana “to create first and second spaced-apart cutting edges.” Resp. 31–32. As explained above, we find Quintana discloses this feature without modification. See supra Section II.E.1. Patent Owner also broadly argues no motivation for any of the proposed modifications because Quintana “never describes creating and removing a strip of [trabecular meshwork],” and that Petitioner does not show how the asserted modification “would have been advantageous” and are “the product of speculation, conjecture and hindsight.” Resp 33–34. As explained above, we find Quintana discloses cutting a strip of trabecular meshwork and Patent Owner’s argument fails to address the reasons Petitioner identifies for each proposed modification. See supra Section II.E.1. We likewise find no persuasive evidence to support Patent Owner’s undeveloped arguments that any modification proposed by Petitioner of Quintana based on the knowledge in the art would have rendered Quintana’s device “unfit for its intended purpose” or that Quintana “would have taught away . . . for fear of reducing the effectiveness of the device.” Resp. 33–34. We find persuasive Petitioner’s argument in its Reply that Patent Owner “fails to explain how modifying Quintana’s needle as proposed by [Petitioner] would have increased the risk of injury to [Schlemm’s Canal], and no disclosure in Quintana that criticizes, discredits, or discourages “investigation into the modifications proposed by [Petitioner]. Reply 24 (citing Ex. 1004, 4). We further focus our discussion below on any additional determinative issues in dispute.” slip op. at 51

  Patent outcomesUS 9,820,885 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,820,885
• Boston Scientific Corp. And Boston Scientific Neuromodulation Corp. v. Nevro Corp.Some claims unpatentable
  PTAB · Mar 14, 2022 · IPR2020-01563 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1–7 and 9–21 are unpatentable as anticipated by Bradley857 and obvious over Bradley857, Bradley384, and Meadows; claim 8 was not shown unpatentable.

  RulingsFinal written decision

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

    “At the outset, we find that the plain language of clauses 1[i], 12[k], and 18[e], in isolation, requires only that the displayed image of one lead is aligned with the displayed image of the other lead without requiring any “repositioning” of previously displayed images. However, Patent Owner argues that other language recited in each independent claim requires first “establishing” the positions of the first and second leads, which necessarily means that “aligning” the images of the first and second leads refers to repositioning them on the display. Sur-reply 2–3. However, Patent Owner’s argument fails to recognize the distinction between establishing the physical “position” of the leads relative to a physical frame of reference and aligning computer-based images of those leads. For example, clauses 18[b] and 18[c] of independent claim 18 recite: “[b] establishing a first positional relationship between a location of a first signal delivery device and an anatomical feature of a patient” and “[c] establishing a second positional relationship between a location of a second signal delivery device and at least one of the location of the first signal delivery device or the anatomical feature of the patient.” Ex. 1001, 40:34–41. None of clauses 18[b] or 18[c] or the substantively identical clauses 1[d], 1[f], 12[h], 12[i]5 from the other independent claims mentions displaying an image of either lead on a computer screen. Rather, these clauses encompass establishing the spatial position of each of the first and second physical leads relative to a physical frame of reference (e.g., an anatomical feature of a patient or another lead). These limitations may be met without displaying leads on a computer screen at all. Accordingly, we reject Patent Owner’s argument that the claims first require positioning images of the leads on a display before aligning those images on the display. Rather, we find that a plain reading of “align” or” slip op. at 10

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “II. PATENT OWNER’S MOTION TO AMEND Patent Owner filed a contingent motion to amend claims. Paper 25. Patent Owner affirmatively withdrew its motion, Paper 36, after we issued Preliminary Guidance on the motion, Paper 32. Accordingly, Patent Owner’s motion to amend is moot, and we do not reach any issue presented in that motion.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not contest Petitioner’s definition of the ordinary level of skill. PO Resp. 17. For purposes of this Decision, we adopt Petitioner’s undisputed definition. We also find that Petitioner’s proposed definition is consistent with the level of skill demonstrated in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). E. CLAIMS 1–21: ANTICIPATION BY BRADLEY857” slip op. at 17

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner

    “which electrodes are selected for delivering therapy. Reply 10. Petitioner also responds that Bradley857’s reference to Meadows incorporates Meadows method for determining whether an electrode is “available” to the user for delivering therapy by first confirming that impedance of the electrode is within a pre-established range. Id. For example, Meadows indicates that the “number of implanted and available electrodes is typically automatically determined by impedance measurements during hardware interrogation,” Ex. 1006, 34:57–59, and that impedance of an electrode “is a general measure of the fitness of the system to perform its required function,” id. at 46:61–64. Dr. Stone, Patent Owner’s expert, agrees that Meadows’s system does not deliver therapy to an electrode if the measured impedance for that electrode is too high or too low, that is, outside a pre-established range. Ex. 1040, 82:8–87:8.” slip op. at 33

  Patent outcomesUS 10,076,665 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,076,665
• Boston Scientific Corp. / Boston Scientific Neuromodulation Corp. v. Nevro Corp.All claims unpatentable
  PTAB · Mar 14, 2022 · IPR2020-01562 · APJ Mitchell G Weatherly · IPR · Final written decision

  The Board held claims 1–24 unpatentable: claims 1–10 and 18–24 as obvious over Bradley and Zhu, and claims 11–17 as obvious over Bradley, Zhu, and Alataris.

  RulingsFinal written decision

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

    “supplemental briefing on claim construction for claim 1, and in particular, on the antecedent basis of “the positional relationship,” whether the limitations must follow a temporal sequence, and whether the “third input” clause is a required element of the claim even if there is no “requested change.” Id. at 4.” slip op. at 3

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

    “For these reasons, we determine that a person of ordinary skill would” slip op. at 62

  • PTAB / AIA Trials › Motions to amend / substitute claimsOther

    “III. PATENT OWNER’S MOTION TO AMEND Patent Owner filed a contingent motion to amend claims. Paper 25. Patent Owner affirmatively withdrew its motion, Paper 36, after we issued Preliminary Guidance on the motion, Paper 32. Accordingly, Patent Owner’s motion to amend is moot, and we do not reach any issue presented in that motion.” slip op. at 78

  Patent outcomesUS 9,002,460 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,002,460
• New World Medical, Inc. v. Microsurgical Technology, Inc.All claims unpatentable
  PTAB · Mar 11, 2022 · IPR2021-00065 · APJ Ryan H Flax · IPR · Final written decision

  Claims 1–7 are unpatentable as anticipated by and obvious over Quintana; the Board did not reach the Jacobi obviousness ground.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Dr. Garry P. Condon. Ex. 2019 (“Condon Declaration”). Dr. Condon’s testimony was the subject of a motion to exclude by Petitioner (Paper 41, “Pet. Mot.”) and, although that motion was denied (Paper 51, “Order”), it did highlight certain cross-examination testimony by the witness evidencing that his direct testimony is deficient or unreliable on several issues. In denying Petitioner’s motion, we “agree[d] with Petitioner’s characterizations of Dr. Condon’s testimony on cross-examination and also [found] Petitioner’s assertions regarding this testimony and its applicability to interpreting Dr. Condon’s direct testimony to be accurate.” Order 12. For example, our Order stated: Petitioner asserts that on cross-examination by deposition, Dr. Condon testified, inter alia, that he had not carefully read the challenged patent(s), he was unsure in some respects as to what the claims of the challenged patent(s) require, did not know the difference between device and method claims, did not understand anticipation or obviousness, had not seen at least some portions of the challenged patent’s prosecution history, did not understand what a patent file history is, did not understand or had not analyzed at least some claim language of the challenged patent(s), was not capable of interpreting the meaning of at least some claim language, and presented internally-conflicting testimony on the proper reading of Petitioner’s asserted prior art. Pet. Mot. 3–9 (see citations to Exs. 1041–1043 therein). Petitioner asserts that, under FRE 702 and 37 C.F.R. §§ 42.62, 42.65, Dr. Condon’s direct testimony is insufficient regarding his knowledge, basis in facts and data, and reliability because the witness does not understand the legal concepts of anticipation and obviousness to which he testifies, had not considered or analyzed evidence he had purported in his direct testimony to have considered and analyzed, and does not fully understand the challenged claims. Id. at 9–13. Id. at 10–11; see also Pet. Mot. 3–9 (and citations therein). We “conclude[d] that the better course is to have a complete record of the evidence,” and, therefore, denied Petitioner’s Motion, but also explained that “to the extent that Dr. Condon’s testimony and Patent Owner’s reliance thereon ventures into areas the witness has conceded he either does not understand or has inadequately analyzed,” we would accord it “little weight,” as distinguished “from that relating to Dr. Condon’s technical expertise in, for example, anatomy, eye surgery, and his own reading of evidence.” Order 13. Therefore, it is through this lens that we consider Dr. Condon’s testimony here.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A POSITA would have: (1) a medical degree and at least two years’ experience with treating glaucoma and performing glaucoma surgery; or (2) an undergraduate or graduate degree in biomedical or mechanical engineering and at least five years of work experience in the area of ophthalmology, including familiarity with ophthalmic anatomy and glaucoma surgery. Ex.1003, ¶24. Pet. 28 (citing Ex. 1003 ¶ 24).5 Patent Owner states that it “agrees with the Board’s preliminary acceptance in its institution decision of Petitioner’s proposed definition of a POSA for purposes of this IPR.” Resp. 9, n.3. We accept, as has Patent Owner, Petitioner’s proposed definition of the person of ordinary skill in the art, or ordinarily skilled artisan, which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’905 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). B.” slip op. at 18

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther

    “We decline to expressly adopt any proposed construction of the claim language, but instead, based on the information presented, assign the claim language its ordinary meaning as it would have been understood by a person of ordinary skill in the art. Vivid Techs., 200 F.3d at 803 (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). The claim language “knife blades” is readily understandable on its face; knife refers to a cutting instrument, and blades, in context, refers to plural cutting parts. The evidence of record does not indicate that this term has any special meaning different than what the plain language in context would suggest. The ’905 patent does not expressly assign a special meaning to the language “knife blades.” Ex. 1001. We find that the record supports that the person of ordinary skill in the art would have understood this term and that it needs no special interpretation.” slip op. at 20

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

    “Generally, the preamble does not limit the claims.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). Here, the preamble of claim 1 may be considered limiting because “[a] device that is insertable into the anterior chamber of an eye and useable to form an opening in the trabecular meshwork of that eye” recites or, at a minimum, implies, “essential structure or steps” required for the claimed device, including where anatomically the later claimed device is insertable and used. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). Regardless of whether the preamble is limiting here, Petitioner shows that Quintana discloses the subject matter of claim 1’s preamble. Dr. Netland’s testimony, as asserted by Petitioner, is credible and establishes that Quintana teaches, and even provides images of, a device (bent-tip needle) inserted into the anterior chamber of an eye, which then forms an opening in the trabecular meshwork, as claimed. Ex. 1003 ¶ 100 (discussing Quintana and its Figs. 1 and 2); see also Pet. 35–37 (citing and discussing Ex. 1003 ¶¶ 86, 88–90, which, in turn, discuss Quintana’s Fig. 2). slip op. at 25

  Patent outcomesUS 10,123,905 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,123,905
• New World Medical, Inc. v. The Regents Of The University Of CaliforniaAll claims unpatentable
  PTAB · Mar 11, 2022 · IPR2021-00066 · APJ Robert A Pollock · IPR · Final written decision

  Claims 1–11 are unpatentable: claims 1–11 are anticipated by Quintana and obvious over Quintana; the Board did not reach the Jacobi ground.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner filed a motion to exclude evidence (Paper 38); Petitioner opposed (Paper 41); and Patent Owner filed a reply in support of its motion (Paper 43). Petitioner also filed a motion to exclude evidence (Paper 39); Patent Owner opposed (Paper 40); and Petitioner filed a reply in support of its motion (Paper 42). We addressed (and denied) the parties’ motions to exclude in Paper 49.” slip op. at 3

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedOther

    “We “conclude[d] that the better course is to have a complete record of the evidence,” and, therefore, denied Petitioner’s Motion, but also explained that “to the extent that Dr. Condon’s testimony and Patent Owner’s reliance thereon ventures into areas the witness has conceded he either does not understand or has inadequately analyzed,” we would accord it little weight, as distinguished “from that relating to Dr. Condon’s technical expertise in, for example, anatomy, eye surgery, and his own reading of evidence.” Order 13. Therefore, it is through this lens that we consider and analyze Dr. Condon’s testimony here.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 22 (citing Ex. 1003 ¶ 24). On page 18 of our Institution Decision, we provisionally accepted Petitioner’s proposed definition, which was not opposed by Patent Owner, and is consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’544 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). As Patent Owner expressly agrees with our analysis, we apply Petitioner’s proposed definition here. See PO Resp. 11, n.4. C.” slip op. at 25

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

    “1. “A device useable to create an opening in the trabecular meshwork of the eye” Independent claim 1 is directed to “[a] device useable to create an opening in the trabecular meshwork of the eye” and having a “foot member . . . advanceable, tip first, through Schlemm’s Canal to facilitate performance of a surgical procedure using the surgical instrument.” Ex. 1001, 23:4–5, 23:18–20. As an initial matter, we consider the preamble of claim 1 limiting here because a device that “create[s] an opening in the trabecular meshwork” recites or, at a minimum, implies, “essential structure or steps” required for the insertion and advancement of the instrument through Schlemm’s Canal as set forth in [1.d]. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002).8” slip op. at 26

  Patent outcomesUS 9,999,544 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,999,544
• Netflix, Inc. v. Broadcom CorporationAll claims unpatentable
  PTAB · Mar 4, 2022 · IPR2020-01423 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–6, 9–15, and 17–19 are unpatentable as obvious over Baker alone, Baker with Ottesen, or Baker with Moeller.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “materially. Both require bachelor’s degrees in the same fields and roughly one to two years of experience in data compression and transmission. Patent Owner would also require experience in decoding. The arguments presented by Petitioner and Patent Owner do not indicate that the outcome of this case would change depending on the level of ordinary skill in the art. We, therefore, adopt Patent Owner’s more specific description, which we determine to be consistent with the level of skill reflected in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that we would reach the same conclusions under either proposed level of ordinary skill.” slip op. at 7

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

    “We are not persuaded that in the context of the ’375 patent, the construction of “drive server” requires a computer, as Patent Owner asserts. In describing the preferred embodiment of Figure 2, the patent itself refers to a “DVD drive server.” Ex. 1001, 3:26. Moreover, the claims call for the drive server to be “configured to present a plurality of compressed data streams in response to one or more first control signals.” Ex. 1001, 5:46–48. The claims do not call for a computer that provides data storage and “additional server functionality.” PO Resp. 26” slip op. at 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “For the reasons given by Petitioner, we find that the combination of Baker and Ottesen teaches the limitations recited in these claims. See Pet. 54–60. We also find that Petitioner presents reasoning with rational underpinning to support combining the references in the proposed manner. See id. at 49–54. Accordingly, Petitioner has demonstrated that claims 9, 12, and 18 would have been obvious over Baker and Ottesen.” slip op. at 36

  Patent outcomesUS 6,341,375 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 6,341,375
• Ice Castles, LLC v. James YoungstromInstitution denied
  PTAB · Jan 7, 2022 · IPR2021-01179 · APJ Alyssa A Finamore · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any remaining challenged claim unpatentable.

  RulingsInstitution decision

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

    “determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). We may not authorize an inter partes review to be instituted “unless . . . the information presented in the petition filed under section 311 and any response filed under section 313 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 arguments and evidence presented by both parties, we determine Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition. Accordingly, we do not institute an inter partes review of the challenged claims of the ’204 patent.” slip op. at 2

  • Adverse judgmentAdverse judgmentOther

    “D. Challenged Claims Petitioner challenges claims 1–20 of the ’204 patent. Pet. 4. Patent Owner has disclaimed claims 1, 2, 4–6, 8–12, 15, 16, and 18–20. Prelim. Resp. 3; Ex. 2009, 1. Consequently, only claims 3, 7, 13, 14, and 17 remain in this proceeding. See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.); Gunn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.”).” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “amplitude and experience with cold weather could be a considered a [person of ordinary skill in the art]” (id. at 7 (citing Ex. 1004, comments)). Patent Owner contends a person of ordinary skill in the art “would have been a person who had built structures out of snow or ice, including the building of snow forts, ice castles and the like.” Prelim. Resp. 18. Based on our review of the current record, Petitioner’s proposed level of ordinary skill in the art is consistent with level of skill reflected in the ’204 patent and the cited references. Furthermore, the parties’ proposals for the level of ordinary skill in the art are similar, and we do not discern a meaningful distinction between them. Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed level of ordinary art skill in the art.” slip op. at 10

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

    “would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Furthermore, we expressly construe the claims to the extent necessary to determine whether to institute inter partes review. 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))). The parties propose constructions of the claims terms “ice log” and “sleeve.” Pet. 9; Prelim. Resp. 18–20. Nonetheless, for the reasons set forth in our analysis of the asserted grounds of unpatentability in sections III.D–H, we determine that no claim term requires an express construction for the purpose of determining whether to institute an inter partes review.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,663,204
• Edwards Lifesciences Corporation / Edwards Lifesciences LLC v. Cardiovalve Ltd.Instituted
  PTAB · Dec 10, 2021 · IPR2021-01051 · APJ James A Worth · IPR · Institution

  The Board instituted IPR on claims 1–10 on every asserted ground, finding a reasonable likelihood that claim 1 is anticipated by Goldfarb ’267 (Embodiment B).

  RulingsInstitution decision

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

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 311 and any response filed under [35 U.S.C. §] 313 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 set forth below, we determine that Petitioner has demonstrated that there is a reasonable likelihood that at least one of claims 1–10 would have been unpatentable, and we institute an inter partes review of claims 1–10 based on the grounds set forth in the Petition. B.” slip op. at 2

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

    “Legal Standards A “prior art reference—in order to anticipate under 35 U.S.C. § 102— must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (Fed. Cir. 2014). “[A]nticipation by inherent disclosure is appropriate only when the [single prior art] reference discloses prior art that must necessarily include the unstated limitation.” Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002) (citation omitted). “Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (internal quotation marks and citations omitted). Rather, “[t]he inherent result must inevitably result from the disclosed steps.” In re Montgomery, 677 F.3d 1375, 1380 (Fed. Cir. 2012). A reference can anticipate a claim even if it “d[oes] not expressly spell out” all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would “at once envisage” the claimed arrangement or combination. Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (citing In re Petering, 301 F.2d 676, 681 (CCPA 1962)).” slip op. at 11

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

    “Claim Construction We construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Petitioner requests that we construe the term “clip” to mean “a device that grips or holds.” Pet. 16. Citing dictionary definitions, Petitioner argues that the ordinary meaning of “clip” is “a device, typically flexible or worked by a spring, for holding an object or objects together or in place.” Id. (citing Ex. 1009; Ex. 1010). Petitioner argues that the Specification is consistent with the ordinary meaning. Id. (citing Ex. 1001, 7:35–39, 9:9–17, 27:27–39). Given the lack of dispute on this record, and in view of the Specification and the proffered dictionary definitions, for the purposes of this Decision we construe “clip” to mean “a device that grips or holds.” Ex. 1001, 7:35–39, 9:9–17; Ex. 1009; Ex. 1010.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art (POSITA) at the relevant time would have been either: (1) a mechanical or biomedical engineer with at least three years of experience in designing or developing medical devices who would, where necessary or desired, work or consult with others including a physician to develop such a medical device; or (2) an interventional cardiologist or cardiac surgeon with at least three years of experience developing and/or using medical devices in the heart, and who would, where necessary, work or consult with others including an engineer to develop such a medical device. Pet. 15–16 (citing Ex. 1003 ¶ 32). On the record at this stage of the proceeding, we adopt Petitioner’s undisputed definition of the ordinarily skilled artisan. C.” slip op. at 12

  Claim construction§ 102 anticipationcites Phillips · Graham
  Patents in suitUS 10,702,385
• Lenovo Holding Company, Inc. / Lenovo (United States) Inc. et al. v. Dodots Licensing Solutions LLCNo claims unpatentable
  PTAB · Jan 5, 2021 · IPR2019-01279 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1, 8–13, and 20–24 were not shown unpatentable under any asserted §103 ground because the prior art did not teach a separate NIM template excluding executable code.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a bachelor’s degree in Electrical or Computer Engineering, Computer Science, or a related field and have three or more years of experience” in the field. Pet. 8 (citing Ex. 1003 (“Madisetti Decl.”) ¶ 44). Patent Owner does not provide an alternative description of the proper level of ordinary skill or comment on Petitioner’s proposal. Petitioner’s proposal appears to be consistent with the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required where the prior art itself reflects an appropriate level and a need for testimony is not shown). We adopt this proposal for this Final Written Decision.” slip op. at 8

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

    “1. “outside of and separate from any graphical user interface of any other application” In the Petition, Petitioner requests that we construe one term, found in element 1.F of claim 1: that presentation of the viewer graphical user interface (“GUI”) defined by the networked information monitor template be “outside of and separate from any graphical user interface of any other application.” Pet. 4–8. Petitioner argues that the correct construction should be “so that the viewer [graphical user interface] is distinct from and not presented within the frame of any other GUI generated by another application.” Id. Because our ultimate decision does not rest on the construction of this claim term, we do not construe it. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); 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 inter partes review).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “The definition of NIM provided in the Specification describes a frame “through which content is optionally presented.” Ex. 1001, 5:21–24. Claim 1 also describes the subject of the definition in a NIM template alternatively as (a) a NIM (in 1.C), (b) “a viewer graphical user interface having a frame within which time-varying content in a web browser-readable language may be presented on a display associated with the client computing device” (in 1.B), or (c) a “viewer graphical user interface” (in 1.D, 1.F, 1.G). Id. at consistent with the use in the claim. With respect to the word “optionally” in the Specification definition, we note that, in the claims, time-varying content is recited as being presented on the display within a frame (element 1.G and the last element of claim 13). Id.; see also id. at 43:61–44:31. For these reasons, we determine that the correct construction of a NIM is “a fully configurable frame, with one or more controls, through which content is presented to the user,” and this is the interpretation we apply here.” slip op. at 10

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

    “In one embodiment, the NIM definitions are defined using Extensible Markup Language (XML), so that the NIM as a whole–the frame and the content within the viewer––is advantageously as flexible as standard web content. NIMs are extremely flexible, because the definition of the NIM is content, rather than compiled code. The NIM definition defines the structure of the NIM, and everything that is visible in a NIM is based on standard Internet content, such as HTML, dHTML, or GIFs, and is referenced or pointed to by the NIM definition. An “application”–type NIM, such as a web calendar or web mail, may be changed by the user, by the content provider, or by other content, while advantageously avoiding the need to distribute and support a hard-coded compiled application. The definition of a NIM thus includes everything that is needed for the NIM to be rendered and filled with Internet content. Id. at 21:45–60 (emphases added). From this disclosure, we understand that the Specification prohibits the NIM template from using compiled code or an executable application. Our review of the Specification did not identify disclosure of use of compiled code or an executable application by the NIM template.” slip op. at 16

  Patent outcomesUS 8,510,407 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,510,407
• Askeladden LLC v. Leigh M. RothschildAll claims unpatentable
  PTAB · Nov 19, 2020 · IPR2019-00856 · APJ Mitchell G Weatherly · IPR · Final written decision

  Original claims 3–10, 12, 13, and 20 were canceled; the Board denied the motion to amend because the proposed substitute claims were unpatentable as obvious.

  RulingsFinal written decision

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

    “The claim language itself implies that the financial services provider decides which biometric information is required during the transaction stage because the Decision Limitation is added to element 1F, which is the first step in the transaction stage recited in elements 1F–H. “[I]n assessing definiteness, claims are to be read in light of the patent’s specification and prosecution history.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 908 (2014). Patent Owner identifies support for the Decision Limitation in the Specification that favors interpreting the Decision Limitation as occurring during the transaction stage (i.e., during elements 1E–H). Mot. 14–15 (citing Ex. 1001, 9:9–14). The cited portion of the Specification states: “In another embodiment, the financial service provider may have the system set up such that the server 114 queries through the point-of-sale terminal 102 and informs the merchant which biometric identification data is/are required for the desired transaction.” Ex. 1001, 9:9–14 (emphasis added). The plain language of the claim is consistent with our interpretation because it specifies that the biometric data uploaded in element 1E is used to validate and execute “a purchase transaction,” in element 1H (describing the operation of the claimed system during the transaction stage). Based on our review of the Specification and claim language, we conclude that the Decision Limitation is sufficiently definite under 35 U.S.C. § 112, ¶ 2. Based on that review, we also interpret the Decision Limitation to require that the financial services provider informs, through the server, which type(s) of user biometric identification data must be received at the terminal (e.g., a point-of-sale terminal) to validate the transaction. E. WHETHER THE MOTION MEETS THE REQUIREMENTS OF 35 U.S.C. § 316(d) AND 37 C.F.R. § 42.121” slip op. at 15

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

    “expressly discloses the Decision Limitation. Opp. 19–20. However, Petitioner contends that Ortiz discloses this concept by describing a system in which the user of a point-of-sale terminal is prompted to input at least one biometric attribute that is randomly selected from a database of previously provided (during enrollment) biometric data. Id. at 20 (citing Ex. 1026 ¶¶ 85–87, 90, 91, Figs. 5 (steps 106, 108) 6 (steps 140, 142); Ex. 1027 ¶¶ 38, 39). The security of Ortiz’s systems and methods is enhanced by enabling the system to randomly challenge the user of a point-of-sale terminal at the time of the transaction because an imposter could not know in advance which biometric attribute would be required by the financial service provider to authorize the transaction. Id. (citing Ex. 1026 ¶¶ 23, 87, 96, 97, 141, Figs. 5, 6; Ex. 1027 ¶¶ 40, 41). Petitioner relies on Dr. Alexander’s testimony to support its contention that an ordinarily skilled artisan “recognized the need to verify user authenticity, such as, e.g., at least in the first instance when enrolling initial biometric(s), to prevent imposters from accessing Karthik’s system and uploading his own fraudulent biometric data.” Pet. 26; see also id. at 27 (citing Ex. 1002 ¶¶ 139–141; Ex. 1004, 2:31–36, 3:33–38). Petitioner reasons that an ordinarily skilled artisan would have been motivated to utilize Robinson’s suggestion to use third party biometric data to verify a user with Karthik’s validation procedure because it “would provide additional security against identity theft.” Id. at 27 (citing Ex. 1002 ¶¶ 139–141). Dr. Alexander opines that an ordinarily skilled artisan would have reasonably expected to be able to incorporate Robinson’s use of third party biometric data into Karthik’s user enrollment protocol. Ex. 1002 ¶ 143. Based on Dr. Alexander’s testimony, Petitioner argues that an ordinarily skilled artisan would have found it obvious to modify the systems and methods suggested by the combined teachings of Karthik and Robinson to incorporate Ortiz’s ability for the financial services provider to decide the type of biometric information required for a transaction (i.e., the Decision Limitation). Doing so would “deter attempts to impersonate the legitimate user of a financial services card during the transaction stage.” Opp. 21 (citing Ex. 1027 ¶¶ 41, 42). Dr. Alexander also opines that an ordinarily skilled artisan would have expected to succeed in incorporating Ortiz’s system and method into the combined Karthik/Robinson system and method because doing so “would have only required a financial services provider to implement a program that allows a server to randomly select one or more of the plurality of biometrics enrolled in Karthik’s database, and communicate that selection to, e.g., a point-of-sale terminal for a user to input” and that the “combined methods, systems, and servers [would] work for their intended purpose.” Id. at 21–22 (citing Ex. 1026 ¶ 27; Ex. 1027 ¶ 43). Patent Owner has not provided any countervailing argument or evidence in response to Petitioner’s Opposition. Based on our review of Petitioner’s argument and evidence of record, which we adopt as our own (see In re NuVasive, 841 F.3d 966, 974 (Fed. Cir. 2016)), we determine that Petitioner has demonstrated by a preponderance of evidence that the combined teachings of Karthik, Robinson, and Ortiz render substitute independent claim 1 unpatentable as obvious.” slip op. at 24

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Based on testimony by Peter Alexander, Ph.D., Petitioner contends that an ordinarily skilled artisan as of June 11, 2008, would have either: “(i) a Bachelor-of-Science degree in electrical engineering, computer science, or computer engineering, or equivalent, and at least two years of additional experience in database and networking technology, computer security and/or authentication using biometric data, or (ii) a post-graduate degree in electrical engineering, computer science, or computer engineering, or equivalent.” Pet. 15 (citing Ex. 1002 ¶¶ 14–17). Patent Owner does not contest Petitioner’s position relating to the level of ordinary skill. See generally Mot. We find Petitioner’s description of the ordinary level of skill in the art at the time of the invention to be consistent with the level of skill reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt and apply the level of ordinary skill proffered by the Petitioner in this proceeding. D. WHETHER THE “DECISION LIMITATION” IS INDEFINITE” slip op. at 12

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “Petitioner argues that if Patent Owner were to argue that the Decision Limitation can be met by the financial services provider deciding which biometric information is required for a transaction during the enrollment or transaction stages, then the claims would be unpatentable for lack of written description support in the Specification. Opp. 8. Petitioner concedes that the portion of the Specification relied upon by Patent Owner for support describes making the decision about what biometric information is needed during the transaction stage. Id. at 9. As explained in Part II.D above, we have narrowly interpreted the Decision Limitation to encompass only such decisions. Accordingly, Petitioner does not persuade us that the Specification fails to provide the required written description for the Decision Limitation as we have interpreted it. Additionally, we conclude that Patent Owner has established that the Specification meets the written description requirement for the Decision Limitation. F. PROPOSED SUBSTITUTE CLAIMS 3–10, 12, AND 13: OBVIOUSNESS IN VIEW OF KARTHIK, ROBSINSON, ORTIZ, AND ONE OF LYON, CARTMELL, OR” slip op. at 18

  Patent outcomesUS 8,799,088 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,799,088

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.