• Amazon.Com, Inc. v. Lexos Media IP, LLCInstituted
  PTAB · Dec 12, 2023 · IPR2023-01001 · APJ Sharon Fenick · IPR · Institution

  The Board instituted IPR on claims 1, 38, and 53 on all asserted grounds, finding a reasonable likelihood of unpatentability over Malamud and Malamud with Nakagawa.

  RulingsInstitution decision

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

    “partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1, 38, and 53 of the ’449 patent on all grounds of unpatentability presented.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “The Fintiv Memorandum states that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Fintiv Memorandum, 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A) (“Sotera”)); see id. at 7–9. The Fintiv Memorandum explains that such a stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. at 7. Here, Petitioner provides a Sotera stipulation. Pet. 63. Specifically, Petitioner stipulates that if we institute review, “Petitioner will not pursue the grounds raised, or that reasonably could have been raised, in this IPR.” Id. (referencing Sotera).” slip op. at 11

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). We apply a two-part test when evaluating whether to exercise discretion under § 325(d). See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (Feb. 13, 2020) (precedential) (“Advanced Bionics”). Specifically, we consider: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art (“POSITA”) at the claimed priority date would have had experience in the fields of human factors engineering or human computer interaction. The POSITA would have at least a bachelor’s degree in computer science, computer engineering, human factors engineering, or a related field and would have had at least two years of relevant work experience in the fields of UI design, or equivalent experience. Pet. 7 (citing Ex. 1003 ¶¶ 31–35). At this time, Patent Owner does not contest Petitioner’s proposed definition for one of ordinary skill in the art. Prelim. Resp. 28; see Ex. 2001 ¶ 29. For the purposes of this Decision, we adopt Petitioner’s formulation for the level of skill of one of ordinary skill in the art, 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 ’449 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)” slip op. at 18

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 6,118,449
• Ralph Lauren Corporation v. Lexos Media IP, LLCSome claims unpatentable
  PTAB · Mar 25, 2020 · IPR2018-01755 · APJ Sharon Fenick · IPR · Final written decision

  Claims 27, 33, 40, 41, 72, 81, and 82 are unpatentable under § 103; the remaining challenged claims are not determined unpatentable.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “Decision issues under 35 U.S.C. § 318(a). Having considered the evidence of record, and for the reasons discussed below, Petitioner has demonstrated by a preponderance of the evidence that claims 27, 33, 40, 41, 72, 81 and 82 of the ’449 patent are unpatentable under 35 U.S.C. § 103(a), but has not demonstrated by a preponderance of the evidence that claims 1–3, 5–7, 12– 15, 28, 29, 31, 32, 38, 39, 53–56, 58–63, 73–75, and 77–80 of the ’449 patent are unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art would have had “at least a master’s degree in Computer Science, Computer Engineering, or a related field, or hold a bachelor’s degree in Computer 4 The record contains no evidence relating to secondary considerations. Science, Computer Engineering, or equivalent and have at least two years of relevant work experience in the fields of UI [(user interface)] design and OSs.” Pet. 10–11. In the Institution Decision, we preliminary adopted Petitioner’s proposed definition, noting that the prior art in this case demonstrated the level of ordinary skill in the art at the time of the invention. Inst. Dec. 10 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). Patent Owner does not comment on or dispute Petitioner’s proposal, and instead cites Okajima’s holding regarding the level of skill in the prior art without raising any issues regarding whether the prior art here reflects a level of ordinary skill different from that proposed by Petitioner. PO Resp. 10 (citing Okajima, 261 F.3d at 1355). We adopt Petitioner’s definition as consistent with the ’449 patent and the asserted prior art.” slip op. at 10

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

    “Only terms that are in controversy need to be construed, and then 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). The Petitioner proposed construction of several claim terms in the Petition. Pet. 12–18. However, none of these claim terms require construction to resolve the controversy. Petitioner also argued for a construction of an additional term (“wherein said specified content information further comprises information to be displayed on said display of said user’s terminal”) in its Reply. Pet. Reply 13. Patent Owner contends that this argument is a new argument raised improperly for the first time in the Reply. PO Sur-Reply 10–11. We agree. Pursuant to 37 C.F.R. § 42.23(b), a reply “may only respond to arguments raised in the corresponding ... patent owner response.” See also Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (concluding that the Board did not abuse its discretion in refusing to consider portions of a reply declaration “rais[ing] a new obviousness argument for [a claim] limitation that could have been made in the petition” but was not); Intelligent Bio-Sys., Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1369–1370 (Fed. Cir. 2016) (concluding that the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)). Therefore, we will not address the new construction proposed for this claim term.” slip op. at 11

  • Strike new argumentNew argument disregardedDecided for patent owner

    “A petitioner must choose which grounds of invalidity to assert in the petition and “the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” Intelligent Bio- Sys., 821 F.3d at 1369 (Fed. Cir. 2016); Wasica Fin. GmbH v. Cont'l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Circ. 2017) (a petitioner is foreclosed from “shifting” in post-petition arguments to a new theory of prima facie obviousness based on a different passage of a prior art reference than was used in the petition); see PTAB Consolidated Trial Practice Guide November 2019,5 73 (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie 5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated case of unpatentability.”); Trial Practice Guide Update August 2018,6 14 (same). Therefore, we evaluate Petitioner’s arguments with respect to limitation [c.i] relying upon Malamud’s message relating to a preview cursor in Malamud to teach the “specified content information.” Patent Owner does not make any arguments relating to whether Malamud’s message, in view of the teachings of Anthias, teaches limitation [c.i] of claim 1. See, e.g., PO Resp. 9–18.” slip op. at 19

  Patent outcomesUS 6,118,449 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,118,449
• Kranos Corporation v. Riddell, Inc.No claims unpatentable
  PTAB · Jul 11, 2019 · IPR2016-01646 · APJ James J Mayberry · IPR · Remand

  On remand, the Board found claims 1–7, 11, 13, 25–28, 30, 32–37 not shown unpatentable on the added grounds; it also denied Riddell’s motion to exclude as moot.

  RulingsRemand decision

  • RemandOther

    “motion to terminate the appeal in IPR2016-01646 and remand the proceeding, in light of SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), and the Director’s Guidance on the Impact of SAS on AIA Trial Proceedings, for us to address claims and grounds that we had not instituted.3 In response, we modified our Decision on Institution to institute trial for all challenged claims and all grounds. Paper 32, 3 (the “November 9, 2018, Order”). We ordered briefing on those claims and grounds added to the trial in the November 9, 2018, Order. See Paper 32, 3–7.” slip op. at 3

  • PTAB / AIA Trials › Motions to amend / substitute claimsAdverse judgmentGranted

    “certain claims and grounds added to the trial in our November 9, 2018, Order. Paper 33. In the motion, Kranos “requests adverse judgment as to . . . [c]laims 3, 4, 7, 13, and 36.” Id. at 2. The motion continues that claims 6 and 26 remain in this proceeding for the grounds of “[o]bviousness over each of Sears or Rappleyea in combination with Ispas.” Id. As to claims 3, 4, 7, 13, and 36, Kranos’s motion is granted. Accordingly, we will enter the following judgment as to those claims: (1) claim 13 is not proven unpatentable as anticipated by Sears; (2) claim 13 is not proven unpatentable as anticipated by Rappleyea; (3) claim 13 is not proven unpatentable as anticipated by Zeller; (4) claim 36 is not proven unpatentable as obvious over Sears, Rappleyea, or Monica and Halstead; and (5) claims 3, 4, and 7 are not proven unpatentable over Sears or Rappleyea and Ispas.” slip op. at 9

  • Skill levelSkill level board ownDecided for petitioner

    “record before us, and ultimately found that a person having ordinary skill in the art to which the ’118 patent pertains would have at least a Bachelor’s degree in engineering or physics and at least one year of experience in designing protective equipment, protective helmets, or plastic parts including the design of protective or structural plastic elements. Final Wrtn. Dec. 9–10. We also found that additional experience (at least three years) may be substituted for a formal engineering degree. Id. at 10. We found that the prior art of record reflects this level of ordinary skill in the art. Id. at 10–11. We noted that our patentability analysis presented below would reach the same findings and determinations under Kranos’s or Mr. Shewchenko’s definition of the level of ordinary skill in the art. Id. at 11. In the supplemental briefing, neither party argued for a different definition of the level of ordinary skill than the definition adopted in our Final Written Decision, nor do we discern any reason, based on the supplemental record, to change this definition.” slip op. at 12

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

    “The term “aligned along” does not appear in any claim addressed in this Supplemental Final Written Decision. See, e.g., Final Wrtn. Dec. 11 (indicating that the term “aligned along” appears in independent claim 34). In the Final Written Decision, we determined that we did not need to expressly construe the term “integrally formed” to resolve the parties’ dispute. See id. at 16. As will be apparent from our analysis below, we need not address this term further here.” slip op. at 13

  Patent outcomesUS 8,528,118 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,528,118
• Maxlinear, Inc. v. Cresta Technology Corp. And CF Crespe LLCSome claims unpatentable
  PTAB · Apr 17, 2019 · IPR2015-00592 · APJ Patrick M Boucher · IPR · Remand

  Claims 1–3, 5, and 10–20 are unpatentable by collateral estoppel; claims 4, 6–9, and 21 were not shown unpatentable because the combination rationale was insufficient.

  RulingsRemand decision

  • RemandOther

    “After this proceeding was remanded by the Federal Circuit, we invited the parties to address a proposed procedure that would include additional briefing regarding the impact of the prior holdings that claims 1–3, 5, and 10–20 are unpatentable, and the parties filed their respective proposals. Papers 78–80. In its proposal, Petitioner suggested that Patent Owner “has waived the right to address the patentability of claims 4, 8, and 9” because “Patent Owner never separately argued for the patentability of these claims.” Paper 79, 1; see MaxLinear, 880 F.3d at 1378 n.4 (“On remand, the Board may consider whether CRESPE has waived arguments concerning these claims.”). But those claims were not challenged in the earlier proceedings that held claims 1–3, 5, and 10–20 unpatentable. Rather, those claims were only challenged in this proceeding with respect to art that was not at issue in the earlier proceedings. In advancing its contention, Petitioner effectively makes the untenable argument that Patent Owner must provide separate reasons for the patentability of claims 4, 8, and 9, even when we determine that its own case-in-chief for those claims is insufficient. In addition, Petitioner’s proposal requests briefing on the issues of “whether claims 6, 7 and 20 materially alter the [unpatentability] analysis on which the prior [unpatentability] determinations rested.” Id. We have considered, and deny, that request. The Federal Circuit’s remand order noted that the fact that “MaxLinear was not a party to the other IPRs is . . . irrelevant since Cresta, the predecessor in interest to CRESPE, was party to the original determination.” MaxLinear, 880 F.3d at 1377. But the Federal Circuit’s order does not state or suggest that the fact that different prior art was considered in the earlier proceedings is similarly irrelevant. Indeed, we agree with Patent Owner that “[t]he Federal Circuit has not ordered the Board and the parties to start over from scratch, and certainly not with new prior art.” Paper 80, 3; see Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015) (“The Board may control its own proceedings, consistent with its governing statutes, regulations, and practice.”). Patent Owner is correct that “[a]llowing new prior art to be considered on remand after the Final Decision on the merits would essentially be starting a new IPR proceeding.” Paper 80, 9. As Patent Owner asserts, “[t]he parties and the Board would have to argue and consider new grounds, new expert testimony would have to be taken and presented, and a new Final Decision would have to be rendered.” Id. The Federal Circuit’s instruction is limited: “We remand this case to the Board so that it may consider the patentability of the surviving disputed dependent claims 4, 6-9, and 21.” MaxLinear, 880 F.3d at 1378. We have complied with this instruction in two ways: first, by applying the Federal Circuit’s instruction regarding the collateral-estoppel impact on challenged claims 1–3, 5, and 10–20; and, second, by clarifying that Petitioner’s argument regarding the combination of Van De Plassche and Ishikawa compels a conclusion that Petitioner’s showing is insufficient with respect to claims 4, 6–9, and 21, independent of any conclusion previously reached with respect to independent claims 1 and 17. While the Federal Circuit includes language in its remand order that might be construed as suggesting applying different prior art in the latter analysis, 880 F.3d at 1377, the scope of this proceeding is limited by the prior art and the arguments in the Petition here. SAS Institute, 138 S. Ct. at 1356 (“in an inter partes review the petitioner is master of its complaint”); see Paper 80, 8 (Patent Owner addressing potential ambiguity of Federal Circuit’s instruction).” slip op. at 35

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Experience is but one of several factors that may be considered when determining the level of ordinary skill in the art. See, e.g., In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995) (identifying factors as including the “type of problems encountered in the art,” “prior art solutions to those problems,” “rapidity with which innovations are made,” “sophistication of the technology,” and “educational level of active workers in the field”). “In a given case, every factor may not be present, and one or more factors may predominate.” Id. Patent Owner’s distinction relates to a portion of one factor (education) in a determination that involves several factors. The significance of the level of ordinary skill in the art is the role it plays in an obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry”). Patent Owner does not explain persuasively how the alleged omission by Petitioner impacts the obviousness analysis. We conclude that Petitioner’s proposed definition, which is consistent with the level of skill generally reflected by the prior art of record, reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 11

  • ExcludeMotion to exclude, deniedDenied

    “Importantly, we find that Patent Owner did not exhaust avenues available to it in attempting to secure answers to its questions from Dr. Hashemi. The line of questioning involving Exhibit 2008 occurred late in the day, “well after the close of business on the east coast,” and an attempt by the parties to telephone the Board during the deposition was unsuccessful. See Opp. 3; Ex. 2006, 154:24–155:4. The parties discussed contacting the Board the following day, and continuing the deposition the day after that, when Petitioner would make Dr. Hashemi available for further cross-examination after receiving guidance from the Board. Ex. 2006, 155:5–157:13. Rather than proceed in this fashion, Patent Owner decided to abandon the line of questioning and passed the witness for redirect: “I think after we talked about it a bit, I think we will withdraw our questions on this document and just move on to redirect.” Id. at 157: 22–25 (emphasis added). Dr. Hashemi could have answered the questions and sought a protective order that would insulate his answers from the public record, providing the Board with the information needed to perform a focused evaluation of the credibility and reliability of specific statements in his testimony. But a significant measure of responsibility for whether Dr. Hashemi’s testimony is tainted with bias lies with Patent Owner for declining to pursue the issue to a point of greater clarification. Indeed, we are limited in how strongly we can fault Petitioner for failing to submit a clarifying declaration from Dr. Hashemi, in light of Patent Owner’s decision to “withdraw” the questions at issue. Because the evidence is insufficiently developed, we are similarly limited in the degree to which we can draw adverse inferences from Dr. Hashemi’s refusal to answer questions, and unable to conclude, by a preponderance of the evidence, that Dr. Hashemi’s testimony is tainted by an undisclosed bias. Accordingly, we deny Patent Owner’s Motion to Exclude.” slip op. at 16

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Not reached

    “C. Petitioner’s Motion to File Supplemental Information Pursuant to our authorization, Petitioner filed a Motion for Leave to File Exhibits 1213–17 as Supplemental Information, which Patent Owner opposes. Papers 83, 86. The Motion asserts that such information is “relevant to the issues in the case, specifically the lack of nexus between any purported secondary consideration, including surprising or unexpected results.” Paper 83, 1. We do not reach Patent Owner’s arguments regarding secondary considerations because we conclude that Petitioner’s case-in-chief is insufficient. Accordingly, we dismiss the Motion as moot.” slip op. at 17

  Patent outcomesUS 7,075,585 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,075,585
• Valve Corporation v. Ironburg Inventions Ltd.Some claims unpatentable
  PTAB · Sep 22, 2017 · IPR2016-00948 · APJ Phillip J Kauffman · IPR · Final written decision

  Claims 1, 6, 13, 14, 16, 17, 19, and 20 are unpatentable: Tosaki anticipates them, and Enright with Tosaki also renders claim 20 obvious.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “In our Decision to Institute, we explained that a preliminary response cannot serve as an effective objection for two reasons.2 Dec. 4–5 (entered on September 27, 2016). First, objections must be made after institution of trial. See 37 C.F.R. § 42.64(b)(1) (objections are due ten days from institution of trial). Second, an objection and a preliminary response may not be combined into a single document. See 37 C.F.R. § 42.6(a)(3) (prohibiting combined documents).” slip op. at 5

  • Strike new argumentNew argument consideredDecided for petitioner

    “The Petition fails to address a claimed characteristic of the elongate members (flexibility). See PO Resp. 39–41 (arguing that Enright does not disclose elongate members that are flexible as claimed). This cannot be corrected in Petitioner’s Reply. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767 (Aug. 14, 2012) (a reply may not raise a new issue or belatedly present evidence); 35 U.S.C. § 312 (a)(3) (requiring petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”); 37 C.F.R. § 42.104(b)(4) (a petition for inter partes review must identify how the construed claim is unpatentable under the statutory grounds on which the petitioner challenges the claim and must specify where each element of the claim is found in the prior art patents or printed publications relied upon); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015); see also Paper 39, 2 (pointing out that Petitioner is making a new argument).20 Petitioner has not demonstrated by a preponderance of the evidence that claim 1 is unpatentable under 35 U.S.C. § 103 as obvious over Enright and Tosaki. The same is true of claims 2–11, 13, 16, and 17 by virtue of their dependence from claim 1. 20 Petitioner argues that Patent Owner’s contention could not have been addressed earlier because the Board did not explicitly construe this claim limitation. Petitioner’s burden is not alleviated by the lack of a claim construction by the Board.” slip op. at 38

  • Expert testimonyPetitioner expert discountedMixed

    “In our Institution Decision, we observed that the Petition does not explain persuasively how observations from a UK patent examiner, which presumably are based on UK law and not United States law, are of use in our proceeding. Dec. 4. Petitioner asserts that Mr. Donohoe must be a person of ordinary skill because the level of ordinary skill is low, and because the UK Intellectual Property Office employed Mr. Donohoe to examine the video game controller art. Pet. Reply 16–17. Petitioner chose not to address our concern regarding the distinctions between United States and UK law. Because of those distinctions, Petitioner’s assertions and evidence with regard to Mr. Donohoe are entitled to little or no weight. This shortcoming is not fatal to this ground of unpatentability because, as explained below, the prior art of record is reflective of the level of skill in the art.” slip op. at 39

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner contends that the level of skill in the art is relatively low and that “less than a year of experience or other training in controller assembly or tooling is required.” PO Resp. 34; Ex. 2002 ¶ 30 (Patent Owner’s expert opining that the level of skill is “no more than a year of experience or other training in controller assembly or tooling”). Patent Owner bases this level of skill on the education level of the inventor and the type of problems encountered in the art. PO Resp. 35. Regarding the education level of the inventors, Patent Owner provides evidence that the named inventors have degrees in unrelated fields. Id. (citing Ex. 2008, 3; Ex. 2009, 4). Patent Owner asserts the problem solved was that users of conventional game controllers were at risk of hand strain or injury from having to operate many different controls on the front of the controller with only a user’s thumbs. Id. at 35–36 (citing Ex. 2012 ¶ 10; Ex. 1001, 1:33–40, 3:56–61). Petitioner does not contest the education level of the inventors or the problem solved by the ’525 patent. Pet. Reply 15–16. Rather, Petitioner asserts that Patent Owner has taken the illogical position that the qualifications of a person of ordinary skill in the art are maximum levels of experience or training rather than minimums. Id. To the extent that Patent Owner’s assertion suggests that the level of skill may not exceed a year of experience or other training in controller assembly or tooling, we disagree. Patent Owner does not cite, nor are we aware, of any legal precedent supporting the assertion that education and experience levels are maximums that must not be exceeded. Regarding the problem solved by the ’525 patent, the portions cited by” slip op. at 40

  Patent outcomesUS 8,641,525 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,641,525
• Costco Wholesale Corporation v. Robert Bosch LLCSome claims unpatentable
  PTAB · Apr 12, 2017 · IPR2016-00041 · APJ William V Saindon · IPR · Final written decision

  Claims 1, 9, and 10 are unpatentable as obvious; claim 6 was not shown unpatentable because the petitioner did not establish a reason to use a binary spoiler material.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “included the ability to make predictable use of the materials and components described above according to their established functions.” Id. Patent Owner proposes that a person of ordinary skill in the art “would have had either an undergraduate degree in mechanical engineering or a similar discipline, or several years of experience in the field of wiper blade manufacture and design.” PO Resp. 1. Patent Owner then argues that Petitioner’s proposed level of skill confuses the “content of the prior art” Graham factor with the “level of skill in the art” Graham factor.8 PO Resp. 2. Patent Owner’s proposed level of skill would include anyone with an undergraduate degree in mechanical engineering or similar discipline, regardless of whether they had any actual knowledge or experience in the present field of endeavor, i.e. windshield wiper blades. See id. at 1 (proposing “mechanical engineering . . . or . . . experience in the field”). Patent Owner’s proposed level would include virtually anyone with a mechanical engineering degree. We cannot accept Patent Owner’s proposed level of skill because it reads out at least “in the art” in “a person of ordinary skill in the art.” Instead, we adopt Petitioner’s proposed level of skill. See also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself reflects an appropriate level [of skill]”).” slip op. at 10

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part

    “With respect to the testimony of Mr. Merkel, our analysis in IPR2016- 00039 is applicable here. For the reasons giving in that proceeding, Petitioner has demonstrated that Mr. Merkel’s testimony from the Pylon litigation is inadmissible hearsay, and with respect to this evidence, Petitioner’s Motion is granted. With respect to the testimony of Mr. Kashnowski, our analysis in IPR2016-00038 is applicable here. For the reasons given in that proceeding, Petitioner has not demonstrated effectively that the testimony at issue is inadmissible hearsay, and with respect to this evidence, the Motion to Exclude is denied.” slip op. at 7

  • Strike new argumentNew argument consideredDenied

    “Petitioner moves to strike the testimony of Mr. Merkel in Exhibit 2005. Paper 37. Patent Owner filed an opposition. Paper 40. Petitioner’s Motion to Strike and associated papers do not differ from the Motion to Strike in IPR2016-00038 in any meaningful way. We adopt that analysis here, and accordingly, that Motion is denied.” slip op. at 8

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

    “discussed was Patent Owner’s argument that Petitioner failed to meet the requirement of 37 C.F.R. § 42.104(b)(3) to construe means-plus-function claims. Dec. on Inst. 7–11. However, the construction of that term was not at issue in our Decision to Institute. Neither party raises a claim construction issue in its subsequent briefs, nor do we discern a term that requires construction for rendering our Decision. Therefore, we do not construe any terms.” slip op. at 8

  Patent outcomesUS 8,099,823 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,099,823
• Arctic Cat, Inc. v. Polaris Industries Inc.All claims unpatentable
  PTAB · Jan 30, 2017 · IPR2015-01781 · APJ Phillip J Kauffman · IPR · Final written decision

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

  RulingsFinal written decision

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

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

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

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

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

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

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

  Patent outcomesUS 8,827,028 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,827,028
• Telebrands Corp. v. Tinnus Enterprises, LLCAll claims unpatentable
  PTAB · Dec 30, 2016 · PGR2015-00018 · APJ Richard E Rice · PGR · Final written decision

  Claims 1–6, 8, and 10–14 are unpatentable as indefinite under § 112(b); the Board did not reach the § 103(a) grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “II. ANALYSIS A. Level of Skill in the Art Petitioner contends that a person of ordinary skill in the art (“POSA”) “would have been a person having a general knowledge about and experience with expandable containers, including without limitation balloons, and at least an associate’s degree in science or engineering.” Pet. 15–16 (citing Ex. 1015 ¶¶ 10–13; Ex. 1016 ¶¶ 10–13). Patent Owner responds that “the Board should limit Petitioner’s overly broad definition of a POSA from having an associate’s degree in any science or engineering to having an associate’s degree in mechanical engineering.” See, e.g., PO Resp. 12. According to Patent Owner, “Petitioner’s proposed definition should be limited because the inclusion of persons with an associate’s degree in any science or engineering fails to take into account the scope of the relevant art, which indisputably utilizes mechanical engineering principles.” Id. Upon consideration of the parties’ contentions, we determine that a POSA would have been a person having a general knowledge about and experience with expandable containers, including without limitation balloons, and at least an associate’s degree in mechanical engineering, or the equivalent.” slip op. at 7

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

    “1. “elastic fastener” In our Institution Decision, we preliminarily determined that the broadest reasonable interpretation consistent with the Specification of the claim term “elastic fastener” is an elastic element for attaching things together. Inst. Dec. 7–8. As neither party proposes any change to our interpretation, and our review of the evidence does not indicate that any change is necessary, we maintain that interpretation.” slip op. at 8

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable

    “We determine that the test for indefiniteness that is applied in patent examination and reexamination matters, approved in Packard, should be applied in this post-grant review AIA proceeding, rather than the Nautilus requirement. The different approaches to indefiniteness before the PTO and the courts stem from the distinct roles that the PTO and the courts play in the patent system.12 In AIA proceedings, as in patent examination and reexamination matters, applying the broadest reasonable interpretation standard, coupled with an opportunity to amend the claims, is an approach that is fair to the patent holder and protects the public. See Cuozzo, 136 S. Ct. at 2145–46; Packard, 751 F.3d at 1312–14. This approach serves to ensure precision in patent claims, thereby helping the public to understand the limits of the claims and keeping the rights afforded by patents within their legitimate scope. See Cuozzo, 136 S. Ct. at 2144–45; Packard, 751 F.3d at 1313. Accordingly, among the reasons supporting application of the Packard-approved indefiniteness test in this AIA proceeding are those recognized by the Supreme Court in Cuozzo as supporting use of the broadest reasonable interpretation standard in inter partes review AIA proceedings. See Cuozzo, 136 S. Ct. at 2143–2146. Of these, the most important is the opportunity to amend the claims to correct any ambiguity. See id. at 2145 (“The patent holder may, at least once in the process, make a motion to do just what he would do in the examination process, namely, necessary) that a person of ordinary skill in the art would not consider the claim language unclear.” 12 See Packard, 751 F.3d at 1325 (Plager, J., concurring) (stating that “unlike courts which have a full prosecution record to consider, the prosecution record before the USPTO is in development and not fixed during examination”). amend or narrow the claim.”) (citation omitted); 35 U.S.C. § 326(d); 37 C.F.R. § 42.221. An applicant’s ability to clarify claim language through amendment was a significant reason why the Federal Circuit in Packard approved of the indefiniteness test recited in the MPEP (i.e., a “claim is indefinite when it contains words or phrases whose meaning is unclear”). Packard, 751 F.3d at 1313–14.” slip op. at 18

  • ExcludeMotion to exclude, deniedDenied

    “III. MOTIONS TO EXCUDE In its Motion to Exclude (Paper 57), Patent Owner seeks to exclude Petitioner’s Exhibits 1031 and 1032. Paper 57, 1–3. We deny Patent Owner’s motion, as moot, because we did not consider the referenced exhibits in reaching our decision in this case. In its Motion to Exclude (Paper 59), Petitioner seeks to exclude Patent Owner’s Exhibits 2016–2018, 2020 (¶ 84), 2024, 2025 (¶ 39), 2026 (¶ 39), 2027–2070, 2073, 2074, 2078, and 2085. Paper 59, 1–8. We deny Petitioner’s motion, as moot, because we did not consider the referenced exhibits and paragraphs in reaching our decision in this case.” slip op. at 34

  Patent outcomesUS 9,051,066 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Nautilus
  Patents in suitUS 9,051,066
• Stellar Energy Americas, Inc. v. Tas Energy Inc.All claims unpatentable
  PTAB · Sep 15, 2016 · IPR2015-00882 · APJ Donna M Praiss · IPR · Final written decision

  Claims 8–33, 53–56, 66, and 71–75 are unpatentable as obvious under § 103(a) over the instituted combinations of prior art.

  RulingsFinal written decision

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

    “Under that standard, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art9 in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). In the Decision on Institution, we determined that it was not necessary to construe the terms “gas turbine plant,” “air cooler,” “chiller,” “duplex chiller,” “fluid communication,” and “a characteristic of the water” as proposed by Petitioner. 882 Dec. on Instit. 8; 886 Dec. on Instit. 7. In its Response, Patent Owner asserts that Petitioner’s proposed constructions “are immaterial to the issues before the Board.” PO Resp. 13. After consideration of the complete trial record, we maintain our determination that no express construction for these terms is required.” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Under that standard, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art9 in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). In the Decision on Institution, we determined that it was not necessary to construe the terms “gas turbine plant,” “air cooler,” “chiller,” “duplex chiller,” “fluid communication,” and “a characteristic of the water” as proposed by Petitioner. 882 Dec. on Instit. 8; 886 Dec. on Instit. 7. In its Response, Patent Owner asserts that Petitioner’s proposed constructions “are immaterial to the issues before the Board.” PO Resp. 13. After consideration of the complete trial record, we maintain our determination that no express construction for these terms is required. 9 It is undisputed that a person of ordinary skill in the art “would have had at least two years of practical experience relating to the design and operation of chilled water systems including thermal energy storage” in addition to having either (1) a Bachelor’s degree in mechanical engineering or a related discipline with 4–7 years of industry experience or (2) an Associate’s degree with HVAC&R or related training with 6–10 years of industry experience. Pet. 14 (citing Ex. 1012 ¶¶ 15–17); PO Resp. 15–16. Patent Owner applies Petitioner’s level of skill in the art in its Response, but asserts that the proposed level of skill is too low because it does not require experience with gas turbines. See PO Resp. 15 (citing Ex. 2002, 23:4–24:14) (noting that the field of “the invention ‘relates broadly to cooling inlet air to a gas turbine’” (quoting Ex. 1001, 1:27–28)). Patent Owner, however, does not adequately explain how experience with a gas turbine would impact designing a chilled water system to cool the inlet air to a gas turbine.” slip op. at 11

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

    “To the extent that Patent Owner’s cost/benefit arguments impose on Petitioner’s obviousness showing a teaching, suggestion, or motivation to combine (TSM) test, they are unpersuasive for two reasons. First, the TSM test is not the only test for determining obviousness. KSR, 550 U.S. 419. Instead, some articulated reasoning with some rational underpinning can support the legal conclusion of obviousness. Id. at 418. It is unnecessary for the cited prior art publications to explicitly direct the use in a power plant setting of known chillers and chiller arrangements for turbine inlet air cooling. Id. at 419 (“Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may in the case of patents combining previously known elements, deprive prior inventions of their value or utility.”). Second, the cost motivation that Patent Owner asserts is fatally missing from the 882 Petition is just one rationale to establish obviousness.10 In this case, Petitioner asserts two other rationales that are supported by the evidence of record: (1) “Mornhed explains that series chilling ‘will almost double the capacity of existing 10 Further, if a person of ordinary skill in the art would be familiar enough with a design option, such as using two chillers in series rather than a single chiller, to consider implementing it and to perform a cost/benefit analysis of it, we find it hard to believe that such an option is not obvious. In other words, if it is a serious enough option to consider, and is predictable enough to model costs, then that option would appear to be one of a “finite number of identified, predictable solutions” that are “within [a person of ordinary skill in the art’s] technical grasp. KSR, 550 U.S. at 421. distribution piping or, alternatively, reduce pumping power to a fraction . . . [t]he economic benefits of series chilling can be significantly enhanced by installation of low-temperature chilled-water storage’” and (2) “Andrepont describes ‘an inherent flexibility’ in the selection of chillers.” 882 Pet. 38– 39 (quoting Ex. 1016, 4; quoting Ex. 1014, 5). We agree with Petitioner that it would have been obvious to one of ordinary skill in the art to substitute the one chiller of Andrepont with the two chillers in series taught by Mornhed “in order to achieve the capacity, reduced pumping power, and/or economic benefits explained by Mornhed.” 886 Pet. 21–22. We also agree with Petitioner that it would have been obvious to one of ordinary skill in the art to substitute the one chiller of Andrepont with the two chillers in series taught by Mornhed because the combination requires substitution of one known chiller package for another to obtain the predictable result of chilling water. Id. at 40 (citing KSR, 550 U.S. at 417).” slip op. at 30

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

    “a database kept by the Turbine Inlet Cooling Association (TICA). Ex. 2004. In addition, both Mornhed and Andrepont describe the same objective of improving the performance of a combustion turbine during a peak period, also referred to as a derating problem. Mornhed describes “combustion air cooling” as an improvement in gas turbine technology generally, explaining that “[c]ombustion air cooling, which can be provided for through a chilledwater or refrigerant coil in the combustion air intake, will alleviate the problem of gas turbine derating at high ambient temperatures when the gas turbine electric power is most valuable.” Ex. 1016, 2. The derating problem is precisely the same problem that Andrepont addresses. Ex. 1014, Fig. 1, 4 (“[I]t is a characteristic of CTs that their rated power output decreases significantly with increasing ambient air temperature. . . . The result is that when peaking capacity is most in demand is precisely when CT capacity is most severely derated.”). It is also a stated objective of the ’815 patent. Ex. 1001, 2:2–7 (“[A] continuing need exists for a turbine inlet air cooling system which: would efficiently cool turbine inlet air; would take advantage of surplus power available during times of low consumer power demand; and would not drain the system of power during times of high consumer power demand.”). Given the above, we find that Andrepont and Mornhed are analogous art to the ’815 patent because Mornhed is reasonably pertinent to the particular problem with which the ’815 patent and Andrepont were concerned, namely, using thermal energy storage to “alleviate the problem of gas turbine derating at high ambient temperatures when the gas turbine electric power is most valuable” as stated by Mornhed. Ex. 1016, 1, 2; Ex. 1014, 4, Fig. 1; Ex. 1001, 2:2–7. See In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) (stating that the analogous-art test requires that a reference is either in the same field of endeavor or is reasonably pertinent to the problem with which the inventor was concerned).” slip op. at 25

  Patent outcomesUS RE44,815 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
• U.S. Endoscopy Group, Inc. v. CDX Diagnostics, Inc.All claims unpatentable
  PTAB · Oct 15, 2015 · IPR2014-00642 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1–17, 19–20, 23–28, 32, and 35–39 are unpatentable: claims 1–8, 11–17, 23–28, 32, and 35–39 as anticipated by Parasher, and claims 9, 10, 19, and 20 as obvious over Parasher and Markus.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “deposition, Dr. Kahaleh consistently referred to a sample taken using a brush as a “brushing,” and a sample taken using a biopsy forceps as a “biopsy.” See e.g., Ex. 2005, 15–17.12 This suggests that the definition of a biopsy specimen in paragraph 10 of Dr. Kahaleh’s Declaration was not referring to a specimen collected with a brush. Indeed, Dr. Kahaleh confirmed during his deposition that paragraph 10 of his Declaration was referring to a biopsy specimen obtained via a forceps biopsy procedure. PO Resp. 6; Ex. 2005, 16; see also Ex. 1011 ¶ 6 (Parasher not listed as a document reviewed in preparation for the Declaration). For these reasons, paragraph 10 of Dr. Kahaleh’s Declaration adds nothing to Petitioner’s contention that Parasher’s brush is capable of collecting a specimen that includes cells from tissue located below the surface of the epithelium.” slip op. at 10

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

    “We determined in our Decision to Institute that no claim terms needed construction and that neither the term “means to traverse” in claim 12, nor “sampling means” in claim 26, invoked 35 U.S.C. § 112, sixth paragraph. Inst. Dec. 5, 7–8. Neither party disputed this determination nor offered further constructions of any claim terms or words. See PO Resp. 1, Reply 1–2. We 8 For purposes of this Decision, we understand the term “transipithelial” as “transepithelial.” The error appears to have been introduced by the Office. Compare Ex. 1001, 11:50, with id. at 13:28. expressly interpret only those claim terms that require analysis to resolve arguments related to the patentability of the contested claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy). All claim terms not explicitly construed are given the plain and ordinary meaning that the term would have had to a person of ordinary skill in the art, without further elaboration. 37 C.F.R. § 42.100(b). Because no part of our Decision relies on any specific construction of any claim term, no claim construction is necessary and the claims are accorded their broadest reasonable interpretation consistent with the specification of the ’044 patent, reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).” slip op. at 6

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

    “Parasher need not explicitly state that the device picks up tissue from multiple layers of the epithelium. See generally In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (“These elements must be arranged as in the claim under review, but this is not an ipsissimis verbis test”) (citation omitted); In re Gleave, 530 F.3d 1331, 1334 (Fed. Cir. 2009) (although a reference must disclose each and every limitation in a claim to anticipate the claim, the reference need not satisfy an ipsissimis verbis test). 18 Our analysis does not address new arguments by Patent Owner meaning those arguments not in the record prior to oral hearing. See OFFICE PATENT TRIAL PRACTICE GUIDE, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012); Paper 23 (Petitioner’s objections to Patent Owner’s demonstratives). The proper inquiry is what a person of ordinary skill in the art would understand as the capability of Parasher’s brush. Further, contrary to Patent Owner’s characterization, Parasher is not silent regarding the capabilities of the brush. Instead, as detailed below, Petitioner identifies and explains numerous disclosures regarding the extent of the specimen that is collected by Parasher’s brush. As detailed above, Parasher’s device includes a brush having stiff or semi- rigid bristles with tips that facilitate the collection of cell and tissue. Further, Parasher’s device obtains a specimen by bearing against the tissue being examined. Regarding the composition or extent of the specimen collected, Parasher’s brush is capable both of collecting cells (cytology) and of collecting a larger (greater) sample of tissue (biopsy). Pet. 11; Pet. Reply 9; Ex. 1003, 1:8–11, 2:20–40, 3:26– 28; see also Ex. 1003, Title (“Catheter with Simultaneous Brush Cytology and Scrape Biopsy Capability); 3:60–67 (describing the sample collected as “more substantial” than that collected with conventional cytology). Parasher describes that the device enables collection of a “gross tissue sample” or biopsy. Pet. 11; Pet. Reply 7; Ex. 1003, 1:56–58; 2:20–25. Petitioner points out that Parasher also describes the brush as capable of collecting “a gross tissue sample that includes the mucous lining of the duct, the tissue of the duct, and even adjacent connective tissues (e.g., the submucosa).” Pet. 9 (citing Ex. 1003, 1:54–67); Pet. Reply 7–8. A person of ordinary skill in the art would have considered these disclosures” slip op. at 17

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

    “In the Preliminary Response, Patent Owner argued that Markus is not analogous to the claimed subject matter because it is not “a cell harvesting device.” Prelim. Resp. 11. In the Institution Decision we stated that “the evidence presently of record does not support Patent Owner’s contention that catheter brushes are non-analogous to cell harvesting devices.” Inst. Dec. 11. Patent Owner does not repeat these arguments in the Response, nor provide supporting evidence with respect to their analogous art contention for claims 9, 10, 19, and 20. See PO Resp. 17–18. Consequently our analysis has not changed. Petitioner’s reasoning that modifying Parasher’s device to utilize bristles having the characteristics of Markus’s brush is a simple substitution with predictable results is persuasive in view of the fact that both Parasher’s and Markus’s brushes are used for medical sample collection are similar in size and shape and because Markus recognizes cytology brushes as within the prior art of its catheter brush.20 See Pet. 21–22 (citing Ex. 1005, 4:40–55).” slip op. at 27

  Patent outcomesUS 6,258,044 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 6,258,044

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.