• Askeladden, L.L.C. v. Ohva, Inc.Rehearing granted
  PTAB · Mar 15, 2024 · IPR2023-00921 · APJ Amee A Shah · IPR · Rehearing

  Granted petitioner’s rehearing request and instituted IPR of claims 1–4 on all asserted grounds, finding a reasonable likelihood of prevailing based on the preliminary construction of “transaction data.”

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “institute has the burden of showing the decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c).” slip op. at 5

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

    “Although the ’286 patent distinguishes “account data” from “transaction data” in the embodiment of Figure 11, the “transaction data” is submitted by the user to perform a series of banking transactions after manually entering a PIN code, whereas the “account data” is stored on the server, and the token information is accepted from the smart card’s embedded token, i.e., the output interface of the transaction card. See Ex. 1001, 10:12–18, 10:30–35, 10:40–42, 11:21–22, 11:65–12:4, 12:22–36. Thus, the claimed “transaction data” that is “accepted . . . from an output interface of a transaction card” and “accepted . . . from a transaction card at an input interface of the card reader,” as recited in independent claims 1 and 3, comprises data stored on and read from a card, such as an ID number, password, authentication information, or session information, that can be used to facilitate a transaction. Such claimed “transaction data” is distinct from the “transaction data” described in connection with the Figure 11 embodiment. We therefore do not limit the claimed “transaction data” and instead preliminarily construe that term as encompassing any data involved in a transaction, including account data. As described above, the claimed transaction data must come from the output interface of a transaction card. Should either party believe that a different construction should apply in the instituted trial, it should explain the proposed construction, how the construction is supported by the record, and how the construction affects our unpatentability analysis.” slip op. at 8

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateInstituted

    “The dispute relates to whether the ’030 application describes the claimed “smart telephone” accepting transaction data and executing coded instructions to convert the analog signal to digital data representing transaction data as digital data. See Pet. 14–15, 19–27. In Petitioner’s view, that term is supported only by language added to the “Brief Summary of the Invention” during prosecution of the application resulting in the ’286 patent. Id. at 17. In contrast, argues Petitioner, the corresponding section of the ’030 application instead describes transmitting sound to a PC, not a smart telephone. Id. at 19–26. Patent Owner submits that the ’030 application describes generating sounds from a smart phone and using a “key jack sound pass generator” to communicate sounds. Prelim. Resp. 16. Patent Owner contends that the claim language is supported by disclosure of receiving the audio signal at a microphone port and converting the signal to transaction data. Id. at 16–18. Patent Owner points also to description of direct communication between a “client device” and server. Id. at 19. On the present record, we find that Petitioner, at this stage in the proceeding, has shown sufficiently how it contends that the earliest possible effective filing date for claims 1–4 of the ’286 patent is March, 3, 2015, such that the Cho, Aaron, Carpenter, and de Geer references qualify as prior art. Patent Owner has identified a factual dispute regarding the significance of the ’030 application’s disclosures, and we view that dispute as best resolved through trial.” slip op. at 9

  • PTAB / AIA Trials › Real party in interest / privityDecided for petitioner

    “35 U.S.C. § 312(a)(2) provides that one of the “Requirements of Petition” is that “the petition identifies all real parties in interest.” “Whether a non-party is a RPI is a ‘highly fact-dependent question’ and must be considered on a case-by-case basis.” SharkNinja Operating LLC. v. IROBOT Corp., No. IPR2020-00735, 2020 WL 6050687, at *4 (PTAB Oct. 13, 2020) (precedential) (citing Ventex Co. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 148 at 6 (PTAB Jan. 24, 2019) (Paper 148) (precedential) (citing Office Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012))). Here, addressing whether TCH is an unnamed RPI would not create a time bar or estoppel under 35 U.S.C. § 315. There is no allegation or evidence that TCH is “barred or estopped from this proceeding or that Petitioner purposefully omitted [TCH] to gain some advantage.” SharkNinja at *4. Rather, Patent Owner argues that for “once again willfully fail[ing] to identify TCH as a real party in interest, . . . the Petition should be denied on that basis.” Prelim. Resp. 7. In other words, Patent Owner contends only that we deny institution because of “the alleged failure of a procedural requirement that can be corrected under our precedent.” SharkNinja at *4. We understand that” slip op. at 11

  Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denial
  Patents in suitUS 9,679,286
• Draftkings Inc., A Delaware Corporation v. AG 18, LLCSome claims unpatentable
  PTAB · Mar 12, 2024 · IPR2022-01446 · APJ George R Hoskins · IPR · Final written decision

  Claims 1–17 and 19–30 are unpatentable based on the listed anticipation and obviousness grounds; claim 18 was not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner

    “Module Terms each recite a “module” that is configured to perform or to oversee certain recited functionality, without reciting sufficient structure for performing that functionality. See Pet. 32. Further, as in Williamson, the word “module” in the context of the ’205 patent claims and specification is a “nonce” word, used “in a manner that is tantamount to using the word ‘means.’” Williamson, 792 F.3d at 1350–51. We therefore agree with Petitioner’s position that the rebuttable presumption against application of § 112 ¶ 6 is overcome in this case, because the Module Terms are not understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. See Williamson, 792 F.2d at 1349 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”). Patent Owner’s and Dr. Lane’s apparent disagreement with this conclusion in the context of the ’205 patent is unaccompanied by any argument seeking to establish that the Module Terms might be understood to recite a sufficiently definite meaning as the name for structure. See PO Resp. 6; Ex. 2005 ¶ 28.” slip op. at 55

  • ExcludeMotion to exclude, deniedDenied

    “Petitioner filed a Motion to Exclude Evidence proffered by Patent Owner (Paper 31). Patent Owner filed an Opposition (Paper 32), and Petitioner filed a Reply (Paper 33). We deny Petitioner’s Motion to Exclude Evidence, for reasons provided below.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “k) Conclusion Regarding Claim 12 Thus, based on the record presented, we conclude Petitioner has” slip op. at 32

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “Petitioner relies on Bryson as disclosing the subject matter recited in claim 1, except for limitations 1[g] and 1[h], in substantially similar fashion as discussed above in Ground One in relation to other claims. See Pet. 68–73. Patent Owner’s sole opposition in this regard is whether Bryson discloses the betting range limitation 1[j]. See PO Resp. 49–53 (Patent Owner’s opposition to Ground Four as to claim 1). We conclude a preponderance of the evidence establishes Bryson supports Petitioner’s unopposed contentions in this regard, for the reasons set forth in the Petition which we adopt as our own in this Decision. We accordingly find Bryson discloses the preamble 1[pre] and limitations 1[a]–1[f], 1[i], and 1[k]–1[m].” slip op. at 74

  Patent outcomesUS 9,978,205 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,978,205
• Draftkings Inc. v. AG 18, LLCSome claims unpatentable
  PTAB · Mar 12, 2024 · IPR2022-01448 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 1–10 and 12–29 are unpatentable over the asserted anticipation and obviousness grounds; claim 11 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art In determining the level of skill in the art, we consider the type of” slip op. at 10

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

    “C. Claim Construction In an inter partes review, 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). Accordingly, our claim construction standard is the same as that of a district court. See id. Under the standard applied by district courts, 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). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).” slip op. at 11

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner

    “generally takes issue with whether Petitioner has sufficiently explained its construction of means-plus-function limitations. See PO Resp. 24–35. Nonetheless, based on the complete record, we find that the Petition “identif[ies] the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function” of this means-plus-function limitation in claim 26. 37 C.F.R. § 42.104(b)(3); see Pet. 22 (citing Ex. 1001, 3:60–66). Moreover, we apply Petitioner’s construction for our prior-art analysis because it is consistent with and supported by the complete record.” slip op. at 38

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “9–11, 20 102(e) Bryson 9, 10 11” slip op. at 110

  Patent outcomesUS 10,614,657 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,614,657
• C.R. Bard, Inc. v. Medline Industries, Inc.Some claims unpatentable
  PTAB · Nov 23, 2022 · IPR2019-00035 · APJ Mitchell G Weatherly · IPR · Remand

  Claims 1, 2, 6, 8–10, 16, 25–27, 29–37, and 39–44 are unpatentable as obvious; claims 7, 17–19, 28, and 38 were not shown unpatentable.

  RulingsRemand decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “IPR2019-00208 and this proceeding do not involve an “identical issue” despite Patent Owner relying on essentially the same body of objective evidence of nonobviousness in both proceedings. The challenged claims in this proceeding materially differ from those at issue in IPR2019- 00208. Compare Ex. 1001, 27:47–30:57, with IPR2019-00208, Ex. 1001, 11:47–12:28; see also PO Remand Br. 23. The material differences in the claims, alone, and thus the issues previously decided, precludes a finding of collateral estoppel. Therefore, we conclude that Patent Owner is not collaterally estopped from relying upon its objective evidence of nonobviousness. Rather, we consider and weigh that evidence as it applies to the claims at issue in this proceeding below.” slip op. at 54

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

    “However, we disagree with Patent Owner’s interpretation of limitation 1a as requiring that the compartment for receiving the medical assembly be “distinct” from the first compartment or that the medical assembly be disposed within the “compartment” of limitation 1a. Limitation 1f requires “at least two compartments,” but expressly recites a functional limitation for only “a first compartment” among the “at least two compartments.” Ex. 1001, 27:60–62. Claim 1 does not further limit the unspecified compartment among the “at least two compartments” or specify what items, if any, are placed within it. See id. at 27:47–67. Two unchallenged dependent claims, claims 4 and 11, further recite that “the at least two compartments” further comprise “a second compartment.” Claim 4 depends directly from claim 1 and further recites, in pertinent part: “the at least two compartments further comprising a second compartment separated from the first compartment by a wall with an opening, further comprising a catheter assembly disposed within the second compartment, the catheter assembly comprising a fluid bag.” Id. at 28:21–25 (emphasis added). Claim 11 depends from claim 10, which depends from claim 1, and similarly recites: “the at least two compartments further comprising a second compartment separated from the first compartment by a wall with an opening, further comprising a catheter assembly disposed within the second compartment.” Id. at 28:47–51 (emphasis added).” slip op. at 18

  • Skill levelSkill level board ownDecided for petitioner

    “skill in the relevant art would have a bachelor’s degree in packaging engineering, mechanical engineering, or industrial design. Pet. 18 (citing Ex. 1002 ¶¶ 14–16); PO Resp. 15 (citing Ex. 2026 ¶ 38). Alternatively, such a person could have an engineering degree in another technical field along with about two years of experience designing medical packaging. Pet. 18 (citing Ex. 1002 ¶¶ 14–16); PO Resp. 15 (citing Ex. 2026 ¶ 38). Neither party contends that a person of ordinary skill needs to be a medical practitioner, but both parties agree that the person of ordinary skill would consult with medical practitioners familiar with catheterization procedures. Pet. 18; PO Resp. 15 (citing Ex. 2027 ¶ 78). Slight differences exist in the formulation of the level of ordinary skill between the parties. We, however, discern no meaningful difference because none of those differences would affect the outcome of our analysis. Accordingly, we apply the level of skill set forth in the preceding paragraph.” slip op. at 10

  • Expert testimonyPatent owner expert creditedPetitioner expert creditedMixed

    “Petitioner argues that shallow area 11B “facilitates easy lubrication of the catheter” simply because it is shallow and “it was well-known to ‘(a) apply lubricant directly on the catheter; and (b) use the same compartment where lubricant is stored to lubricate the catheter.’” Pet. Remand Br. 28–29 (citing Pet. 32, 34; Ex. 1002 ¶ 231). Patent Owner persuasively responds, however, that a practitioner would not use the same compartment to collect urine and lubricate the catheter because the lubricant would contaminate the urine specimen collected in the compartment. PO Remand Br. 3–4 (citing PO Resp. 36; Op. *8); see also Ex. 2027 ¶ 175 (Ms. Chiappetta testifying that “lubrication in the portion of the tray that collects urine will contaminate the urine,” which would invalidate any testing of the patient’s urine). Although it may be easier to lubricate a catheter in shallow area 11B than in deep area 11A, we find that Solazzo’s shallow area 11B is not well-suited, configured, or intended for lubricating a catheter; rather, Solazzo recommends using lubricating wells 31 and 33 for that purpose. We credit Ms. Chiappetta’s supporting testimony to that effect. See Ex. 2027 ¶ 175. Accordingly, we conclude that Petitioner has failed to prove by a preponderance of evidence that the combined teachings of Solazzo and Serany render claim 7 unpatentable as obvious.” slip op. at 31

  Patent outcomesUS 9,745,088 mixed
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 9,745,088
• Hamilton Technologies LLC v. Fleur TehraniAll claims unpatentable
  PTAB · Dec 28, 2021 · IPR2020-01199 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1–6, 9–12, 29–33, and 41 are unpatentable as obvious over the Carmichael-Anderson and Taube-based combinations; the Carmichael anticipation ground was not proven.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We do not agree with Patent Owner that Dr. Imbruce’s testimony should be disregarded. With respect to Patent Owner’s contentions about “technically erroneous disclosures” and the construction of “for a next breath,” those are really about Patent Owner’s disagreements about those matters, not whether Dr. Imbruce was attempting to mislead the Board. Disagreement between the experts is not a basis for disregarding testimony. We have also reviewed the entirety of Dr. Imbruce’s deposition, and, in particular, the various parts identified by Patent Owner. PO Resp. 76–77. And, contrary to Patent Owner’s assertions, we found Dr. Imbruce gave detailed answers in response to Patent Owner’s questions. We found Dr. Imbruce’s testimony to be adequate. See, e.g., Ex. 2016, 107:11–115:8 (discussion of Anderson references, explaining the similarities of the references, but declining to vouch for data he has not seen or collected); 115:9–116:6 (FDA permission, offering to confirm what reference said about FDA approval, but attorney moving on to other questions). Thus, we do not find Dr. Imbruce’s behavior during cross examination as a reason to give no weight to the entirety of his testimony.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(i) a medically trained physician or clinician specializing in treating respiratory failure issues with at least five years of practical clinical ventilator experience treating such conditions; or (ii) a Master’s degree in Electrical Engineering or a related field and about five years of practical experience with developing ventilators for clinical patient treatment; or (iii) a Bachelor’s degree in Electrical Engineering or a related field and about 10 years of practical experience with developing ventilators for clinical patient treatment. Pet. 20‒21 (referencing Ex. 1002 ¶¶ 71‒72). Petitioner proposes that “[a] higher level of education or specific skill might compensate less experience, and vice versa.” Id. at 21. Patent Owner does not present an opposing view of the level of skill of the hypothetical person having ordinary skill in the art of the ’571 patent. See PO Resp. passim. For the purposes of this Decision, we apply Petitioner’s definition of the level of ordinary skill in the art. We determine that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’571 patent, based on our review of the record.” slip op. at 13

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

    “In our Institution Decision, we determined that only the claim terms “first means” and “second means” required construction. Inst. Dec. 25–27. Neither party disputes those constructions and we maintain and adopt them for the purposes of this Decision. We determine that, for purposes of this decision, no other terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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))).” slip op. at 17

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

    “We agree with Patent Owner that Carmichael lacks adequate disclosure to anticipate the apparatus of claim 1. Specifically, because Carmichael focuses on the result of physician surveys, and not on the description of a ventilation system per se, Carmichael lacks details as to the specific manner in which the assist control mode was being used to control PEEP and FIO2 levels. Specifically, we cannot discern that Carmichael’s discussion of an assist control mode for mechanical ventilation necessarily entails adjustments to FIO2 and PEEP “for a next breath of the patient” as recited in claim 1. As explained by Patent Owner, it is possible that the parameters of PEEP and FIO2 could have been set manually by the physician and/or could have been updated only periodically during treatment. See, e.g., PO Resp. 25‒26. Thus, Petitioner has not shown by a preponderance of evidence that Carmichael anticipates claim 1, or claims 2, 5, 6, and 11 that depend from claim 1.” slip op. at 20

  Patent outcomesUS 7,802,571 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,802,571
• Sotera Wireless, Inc. v. Masimo CorporationAll claims unpatentable
  PTAB · Nov 19, 2021 · IPR2020-01019 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 1–25 are unpatentable as obvious over Saidara and Malangi, with claims 3–5, 10–12, 14, 16–17, and 24 also obvious over Saidara, Malangi, and Hickle; Baker-1 grounds were not reached.

  RulingsFinal written decision

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

    “embodiment of the claimed invention includes suspension of an activated alarm and no disclosed embodiment includes parameter-specific pre-alarm delays. Based on the overwhelming and clear disclosure in the Specification of the RE353 patent, we agree with Petitioner that “the correct construction—the construction that most accurately delineates the scope of the claimed invention” requires suspension of an activated alarm, and precludes delays or suspensions that occur before activation of an alarm, i.e., pre-alarm delays. See PPC Broadband, Inc. v. Corning Optical Comm’ns RF, LLC, 815 F.3d 734, 740–42 (Fed. Cir. 2016). We recognize that we do not import limitations from the Specification into the claims. Thorner, 669 F.3d at 1366–67 (“We do not read limitations from the specification into claims.”). It is indisputable, however, that claims must be interpreted in light of the Specification of which they are a part. Phillips, 415 F.3d at 1315–1316. This is because the claims “do not stand alone. Rather, they are part of ‘a fully integrated written instrument,’ consisting principally of a specification that concludes with the claims. For that reason, claims ‘must be read in view of the specification, of which they are a part.’” Id. As the Court of Appeals for the Federal Circuit has stated, “the specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Vitrionics Corp. v. Conceptronic, Inc., 90 F.3d 1576,” slip op. at 25

  • 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. Petitioner contends that a person having ordinary skill in the art “would have been a person with at least a B.S. degree in electrical or biomedical engineering or a related field with at least two years’ experience designing patient monitoring systems,” wherein “[l]ess work experience may be compensated by a higher level of education, and vice versa.” Pet. 13 (citing Ex. 1003 ¶¶ 33–41); see Ex. 1040 ¶ 28. Patent Owner applies the level of ordinary skill in the art identified by Petitioner. PO Resp. 8 n.5 (citing Ex. 2011 ¶¶ 18–19). We adopt Petitioner’s assessment, which appears consistent with the level of skill reflected in the Specification and prior art.” slip op. at 12

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “Sur-reply 4–5. We recognize Mr. Goldberg’s testimony that, “in reading the patent as a whole, I believe that pre-alarm delays are, in fact, disclosed.” Ex. 1042, 118:2–13. When pressed to show support in the Specification, however, Mr. Goldberg pointed, first, to the disclosed “other suspend initiator” and, second, to the disclosed alarm suspend firmware that, he contends, “implies . . . a[n] ability to suspend the alarm other than by the alarm silence [button].” See id. at 118:20–123:4 (pointing to Ex. 1001, 4:60–63, 5:37, Figs. 2, 4). We do not find this testimony or Patent Owner’s argument persuasive. First, that the claimed system could suspend the alarm in a manner other than the described silence button (i.e., with the “other suspend initiator”), does not alter the fact that the Specification only discloses suspending an alarm after it has been activated. Second, the firmware upon which Mr. Goldberg relies is disclosed as “respond[ing] to an alarm silence button press 288.” Ex. 1001, 5:38–41. Accordingly, we give little weight to Mr. Goldberg’s conclusory testimony that pre-alarm delays are disclosed, because this testimony is unsupported by any persuasive cited evidence. See 37 C.F.R. § 42.65(a).” slip op. at 28

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundNot shown unpatentableMixed

    “The Petition provides limited guidance in this regard. Petitioner contends that it would have been obvious to also monitor blood pressure with Saidara’s device, as taught by Malangi, and provides reasons why such a modification would have been desirable. Pet. 68. Even accepting these reasons, for the sake of argument, the Petition is silent as to how a skilled artisan would have implemented Malangi’s teachings in Saidara. Id. at 67– 69. In its Reply, Petitioner cites testimony that is insufficient to support its contentions. For example, Petitioner relies upon the testimony of its expert, Dr. Bergeron, that a person of ordinary skill in the art “understood how [to] measure blood pressure.” Ex. 1040 ¶ 109; Pet. Reply 23. Petitioner also relies on the testimony of Patent Owner’s expert, Mr. Goldberg, that blood pressure cuffs were prevalent. Ex. 1042, 45:18–46:7; Pet. Reply 23. Both points may well be true. However, neither Petitioner, nor the cited expert testimony, explains persuasively how a skilled artisan would have known how to integrate Malangi’s teaching of monitoring and alarming for blood pressure (whether using a prevalent and well-known blood pressure cuff or any other device) with Saidara’s particular system, nor do they discuss the detriments or benefits of such a modification, e.g., the increased size and complexity of incorporating a blood pressure cuff into Saidara’s device. It is Petitioner’s burden to do so. It is insufficient to merely establish that it was known to use blood pressure cuffs to monitor that parameter.14 For the foregoing reasons, we agree with Patent Owner that Petitioner fails to explain sufficiently how a person of ordinary skill in the art would have modified Saidara to also monitor, alarm, and delay alarms for blood pressure, and leaves it to the Board to piece together the proposed modification. PO Resp. 61–62; but see Pet. Reply 25, and Ex. 1040 ¶¶ 109– 111 (explaining how, apart from blood pressure monitoring, SpO2 monitoring and alarming would have been achieved in the combination).” slip op. at 44

  Patent outcomesUS RE47,353 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
• Sotera Wireless, Inc. v. Masimo CorporationAll claims unpatentable
  PTAB · Nov 19, 2021 · IPR2020-01033 · APJ Amanda F Wieker · IPR · Final written decision

  Claims 1–24 are unpatentable; claims 1–24 are shown unpatentable over Saidara and Malangi, with specified dependent claims also obvious over combinations including Hickle.

  RulingsFinal written decision

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

    “Analysis Contrary to Patent Owner’s assertions, we find that every disclosed embodiment of the claimed invention includes suspension of an activated alarm and no disclosed embodiment includes parameter-specific pre-alarm delays. Based on the overwhelming and clear disclosure in the Specification of the ’249 patent, we agree with Petitioner that “the correct construction— the construction that most accurately delineates the scope of the claimed invention,” requires suspending or holding an activated alarm, and precludes holds or suspensions that occur before activation of an alarm, i.e., pre-alarm delays. See PPC Broadband, Inc. v. Corning Optical Comm’ns RF, LLC, 815 F.3d 734, 740–42 (Fed. Cir. 2016).” slip op. at 21

  • 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. Petitioner contends that a person of ordinary skill in the art “would have been a person with at least a B.S. degree in electrical or biomedical engineering or a related field with at least two years’ experience designing patient monitoring systems,” wherein “[l]ess work experience may be compensated by a higher level of education, and vice versa.” Pet. 13 (citing Ex. 1003 ¶¶ 33–41). Patent Owner applies the level of ordinary skill in the art identified by Petitioner. PO Resp. 9 n.5 (citing Ex. 2011 ¶¶ 18–19). We adopt Petitioner’s assessment, which appears consistent with the level of skill reflected in the Specification and prior art.” slip op. at 28

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed

    “As an initial matter, we agree with Patent Owner’s arguments about the proposed modification of Saidara to include blood pressure monitoring and alarming. Primarily, we agree that Petitioner fails to meet its burden of explaining how a person of ordinary skill in the art would have incorporated Malangi’s teaching of blood pressure monitoring and alarming with Saidara’s device. PO Resp. 55–56, 62–63. The Petition provides limited guidance in this regard. Petitioner contends that it would have been obvious to also monitor blood pressure with Saidara’s device, as taught by Malangi, and provides reasons why such a modification would have been desirable. Pet. 68. Even accepting these reasons, for the sake of argument, the Petition is silent as to how a skilled artisan would have implemented Malangi’s teachings in Saidara. Id. at 67– 69. In its Reply, Petitioner cites testimony that is insufficient to support its contentions. For example, Petitioner relies upon the testimony of its expert, Dr. Bergeron, that a person of ordinary skill in the art “understood how [to] measure blood pressure.” Ex. 1040 ¶ 113; Pet. Reply 23. Petitioner also relies on the testimony of Patent Owner’s expert, Mr. Goldberg, that blood pressure cuffs were prevalent. Ex. 1042, 45:18–46:7; Pet. Reply 23. Both points may well be true. However, neither Petitioner, nor the cited expert testimony, explains persuasively how a skilled artisan would have known how to integrate Malangi’s teaching of monitoring and alarming for blood pressure (whether using a prevalent and well-known blood pressure cuff or any other device) with Saidara’s particular system, nor do they discuss the detriments or benefits of such a modification, e.g., the increased size and complexity of incorporating a blood pressure cuff into Saidara’s device. It is Petitioner’s burden to do so. It is insufficient to merely establish that it was known to use blood pressure cuffs to monitor that parameter.13 For the foregoing reasons, we agree with Patent Owner that Petitioner” slip op. at 43

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

  Patent outcomesUS RE47,249 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
• Sotera Wireless, Inc. v. Masimo CorporationAll claims unpatentable
  PTAB · Nov 19, 2021 · IPR2020-00967 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 1–26 are unpatentable, principally as obvious over Saidara and Malangi; the Board did not reach the alternative Baker-1 grounds.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “3. Discussion Contrary to Patent Owner’s assertions, we find that every disclosed embodiment of the claimed invention includes suspension of an activated alarm and no disclosed embodiment includes parameter-specific pre-alarm delays. Based on the overwhelming and clear disclosure in the Specification of the RE244 patent, we agree with Petitioner that “the correct construction—the construction that most accurately delineates the scope of the claimed invention” requires delay or suspension of an activated alarm, and precludes delays or suspensions that occur before activation of an alarm, i.e., pre-alarm delays. See PPC Broadband, Inc. v. Corning Optical Comm’ns RF, LLC, 815 F.3d 734, 740–42 (Fed. Cir. 2016).” slip op. at 24

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner

    “Petition does not provide a means-plus-function construction as required by 37 C.F.R. § 42.104(b)(3). Id. Petitioner replies that “the limitation recites sufficient structure” to perform the specified function (i.e., “outputting a signal responsive to a physiological condition of a patient” (Ex. 1001, 10:39–42)). Pet. Reply 27 (citing Ex. 1040 ¶ 117). In the Sur-reply, Patent Owner contends that Petitioner has the burden on this issue. PO Sur-reply 26–27. We credit Dr. Bergeron’s testimony that a person of ordinary skill in the art “would understand that a ‘physiological sensor means’ is just a physiological sensor that provides signals to a processor for measuring physiological parameters.” Ex. 1040 ¶ 117 (cited at Pet. Reply 27). We find that the limitation includes sufficient structure to perform the claimed function, and thus, is not a means-plus-function limitation. See TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259–1260 (Fed. Cir. 2008) (the presumption that § 112 ¶ 6 applies is overcome if “the claim recites sufficient structure for performing the described functions in their entirety”)).” slip op. at 58

  • 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. Petitioner contends that a person having ordinary skill in the art “would have been a person with at least a B.S. degree in electrical or biomedical engineering or a related field with at least two years’ experience designing patient monitoring systems,” wherein “[l]ess work experience may be compensated by a higher level of education, and vice versa.” Pet. 13 (citing Ex. 1003 ¶¶ 33–41); see Ex. 1040 ¶ 28. Patent Owner applies the level of ordinary skill in the art identified by Petitioner. PO Resp. 8 n.5 (citing Ex. 2011 ¶¶ 18–19). We adopt Petitioner’s assessment, which appears consistent with the level of skill reflected in the Specification and prior art.” slip op. at 12

  • ExcludeMotion to exclude, deniedDenied

    “G. Motion to Exclude Petitioner moves to exclude portions of Exhibits 2017 and 2022. MTE 1, 3, 5. We do not rely upon the identified portions of the exhibits and, as such, dismiss the Motion to Exclude as moot. III. CONCLUSION” slip op. at 62

  Patent outcomesUS RE47,244 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
• Intuitive Surgical, Inc. v. Ethicon LLCSome claims unpatentable
  PTAB · Jan 13, 2020 · IPR2018-01254 · APJ Matthew S Meyers · IPR · Final written decision

  Claims 1–10 are unpatentable under § 103; claims 11 and 24 were not shown unpatentable because the proposed combinations did not adequately establish the articulation limitations.

  RulingsFinal written decision

  • BurdenOther

    “of proving unpatentability of the challenged claims, and the burden of persuasion never shifts to Patent Owner. To prevail, Petitioner must prove 1 Our decision does not rely on any information deemed confidential by the parties. unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d) (2017). This decision is a Final Written Decision under 35 U.S.C. § 318(a) as to the patentability of claims 1–11 and 24 of the ’969 patent. For the reasons discussed below, we hold that Petitioner has demonstrated by a preponderance of the evidence that claims 1–10 of the ’969 patent are unpatentable under § 103(a). We also hold that Petitioner has not demonstrated by a preponderance of the evidence that claims 11 and 24 of the ’969 patent are unpatentable under § 103(a).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not appear to dispute Petitioner’s definition of one of ordinary skill in the art. See generally PO Resp. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. In light of the record now before us, we adopt Petitioner’s definition of one of ordinary skill in the art. The level of ordinary skill in the art is also reflected by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record).” slip op. at 12

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

    “(Fed. Cir. 1993). Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). Here, neither Petitioner nor Patent Owner identifies terms for construction or provides any proposed constructions. Pet. 12; PO Resp. 10; see generally Pet. Reply; Prelim. Resp. 11. Instead, the parties agree that claims of the ’969 patent should be construed according to their broadest reasonable interpretation. Pet. 12; PO Resp. 10. We determine that no claim term needs express interpretation. See 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.”).” slip op. at 12

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Patent Owner asserts that Petitioner’s expert, Dr. Knodel, “admitted that the tool base shown in Wallace’s figures is not designed to drive an endocutter that clamps and fires.” PO Resp. 36–37 (citing Ex. 2011, 24:20– 23). This admission deserves little weight, however, given that Wallace expressly discloses that “any suitable end effector 66 may be used” in its robotic surgery system depending on the surgical need, including clamps and staplers. Ex. 1008, 7:50–56; see also id. at 2:18–21 (“As used herein, the term ‘end effector’ means the actual working part of the surgical instrument and can include clamps, graspers, scissors, staplers, and needle holders, for example.”); Pet. Reply 18–20; see Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007) (Obviousness “cannot be avoided simply by a showing of some degree of unpredictability in the art so long as there was a reasonable probability of success.”).” slip op. at 33

  Patent outcomesUS 8,479,969 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,479,969
• Skechers USA, Inc. v. Adidas AGNo claims unpatentable
  PTAB · Apr 25, 2018 · IPR2017-00127 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–30 were not shown unpatentable under §103 because the proposed prior-art modifications lacked adequate support and rational underpinning.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The basis of disagreement boils down to an evaluation of a skilled artisan’s experience. In that respect, Petitioner urges that the artisan generally has “substantial experience in the structural design of flexible elements and plastic polymers,” whereas Patent Owner characterizes the experience as directed to “biomechanical systems.” The ’079 patent is clearly directed to matters of shoe construction, and takes note, for instance, of the desirability of “cushioning and biomechanically supporting the foot.” Ex. 1001, 1:27–29. It is also apparent that an overarching focus of the ’079 patent is concern with “balance” and “support” of a “foot against misorientations such as pronation and supination (i.e. a tilting movement of the forefoot part to the medial and the lateral side, respectively).” Id. at 2:34–39. Such concerns, in our view, go beyond general experience in the design of flexible elements and plastic polymers. In that regard, we credit the testimony of Patent Owner’s declarant, Dr. Hinrichs, that a person of ordinary skill in the art would have experience with biomechanical systems, such as shoes. See Ex. 2001 ¶¶ 14–15. We have considered the respective opinions of the parties when it comes to the level of ordinary skill in the art. In reaching our decision as to the merits of this proceeding, for the reasons discussed above, we are persuaded by Patent Owner’s evidence as to the ordinary skill of an artisan.” slip op. at 12

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “substantial dissection and modification of Luthi ’202’s Figure 17. That dissection is premised on Mr. Ganaja’s assessment of what a person of ordinary skill in the art would take from the record at hand. Yet, in our view, neither Mr. Ganaja nor Petitioner explains adequately how the teachings of the prior art would have led one down the path that they advocate. For instance, it is decidedly unclear from the record that any “longitudinal groove” as advanced in Petitioner’s annotated illustrations of Luthi ’202’s Figure 17 reproduced herein exists in the configuration proposed by Petitioner. Although Petitioner and Mr. Ganaja postulate that it does exist, Luthi ’202’s teachings are less than determinative in that respect. We credit the testimony of Dr. Hinrichs and Dr. Luthi, that no such groove or “gap” exists as proposed by Petitioner. PO Resp. 21–25 (citing Ex. 2001 ¶¶ 32–35, 42–43; Ex. 2005 ¶¶ 6, 8–13).” slip op. at 22

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

    “We observe that Patent Owner relies on content of the ’079 patent at column 11, lines 31–34 to support the meaning of “leaf spring[s]” and “leaf spring element[s]” that it advances. That portion of the ’079 patent describes embodiments of the invention appearing in Figures 19 to 25. Referencing particular leaf spring elements 22 and 23 of those embodiments, the ’079 patent states that “[t]ypically the restoring force exerts a force that has a component orthogonal to the sole plate (e.g., for cushioning) and a component parallel to the sole in the rearward direction (e.g., for acceleration).” Ex. 1001, 11:31–34. While that language mirrors the meaning of “leaf spring[s]” and “leaf spring element[s]” proposed by Patent Owner, we discern that the noted clause also begins with the term “[t]ypically.” That leaf spring elements may “typically” include a component parallel to the sole in the rearward direction does not lend itself to the conclusion that a “leaf spring” necessarily includes such a component. Rather, it conveys the opposite. In that respect, the plain understanding of the pertinent content of the ’079 patent is that, while, perhaps, not typical, the ’079 patent contemplates other component arrangements, logically including those in which the parallel component is not in the rearward direction.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable

    “substantial dissection and modification of Luthi ’202’s Figure 17. That dissection is premised on Mr. Ganaja’s assessment of what a person of ordinary skill in the art would take from the record at hand. Yet, in our view, neither Mr. Ganaja nor Petitioner explains adequately how the teachings of the prior art would have led one down the path that they advocate. For instance, it is decidedly unclear from the record that any “longitudinal groove” as advanced in Petitioner’s annotated illustrations of Luthi ’202’s Figure 17 reproduced herein exists in the configuration proposed by Petitioner. Although Petitioner and Mr. Ganaja postulate that it does exist, Luthi ’202’s teachings are less than determinative in that respect. We credit the testimony of Dr. Hinrichs and Dr. Luthi, that no such groove or “gap” exists as proposed by Petitioner. PO Resp. 21–25 (citing Ex. 2001 ¶¶ 32–35, 42–43; Ex. 2005 ¶¶ 6, 8–13). Moreover, even if such groove does exist, neither Petitioner nor Mr. Ganaja adequately explains why the presence of such groove would create at least two leaf springs or leaf spring elements that are “integrally joined to form a single end not directly connected to the sole plate,” as required by all the claims involved in this proceeding. We agree with, and credit, the testimony of Dr. Hinrichs that “Luthi ’202 consistently discloses that the strut elements run the entire width of the shoe.” Ex. 2001 ¶ 32 (citing Ex. 1005, 3:47–50 (“the strut elements 22 extend substantially from the medial edge of the lateral edge of lower plate 26 . . .”)). In extending the entire width of the shoe, strut elements 22 (and 222) are more appropriately viewed as a single element (e.g., a spring element) rather than multiple spring elements that come together integrally. Petitioner and Mr. Ganaja also inadequately explain why combination of Luthi ’202’s teachings with those of either Luthi ’800 or Chan would result in the above-noted “central cavity” as a part of the directional element of Luthi ’202’s Figure 17. Although Luthi ’800 and Chan may show spaces or cavities in components of their shoes, there appear substantial differences in the designs of those shoes, and in particular the cushioning aspects, as compared with Luthi ’202’s Figure 17. We credit Dr. Hinrichs’s and Dr. Luthi’s testimony that the presence of such a cavity as shown in Luthi ’800 and Chan would prove detrimental to the medial-lateral stability of Luthi ’202’s shoe, and specifically the directional element of such a shoe that is depicted in Luthi ’202’s Figure 17. See Ex. 2001 ¶ 42; Ex. 2005 ¶¶ 11–13. To that end, we also find inadequate Petitioner’s general position that combining the teachings of Luthi ’202, Luthi ’800, and Chan would result simply in a “combination of familiar elements according to known methods that would yield predictable results,” and “well within the knowledge and skill of persons of ordinary skill in the art . . .” Pet. 35. We are not persuaded that any such combination would yield the “predictable results” advanced by Petitioner, or that “well within the knowledge and skill” of an artisan cited by Petitioner constitutes rational underpinning to support an obviousness conclusion. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (An assertion of unpatentability based on “obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)” slip op. at 22

  Patent outcomesUS 9,339,079 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,339,079

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