- PTAB · Jun 11, 2025 · IPR2025-00262 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR of claims 1–20 on all grounds, finding a reasonable likelihood that Haley and Lai render the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on our review of the record,1 we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims.” slip op. at 2
- Other 314aDenied
“Patent Owner argues that we should discretionarily deny the Petition based on alleged deficiencies in the Petition. Specifically, Patent Owner argues that “even if arguments as to a few claims might have been properly presented in the Petition, a decision to institute here would require the Board to address—for the first time and with no Petitioner input—critical claim construction issues affecting nearly every claim” in contravention of the requirements of 37 C.F.R. § 42.104(b)(3). Prelim. Resp. 34–35. For the reasons discussed above, we are not persuaded on the current record that Petitioner has violated 37 C.F.R. § 42.104(b)(3), or that critical and unresolved claim interpretation issues justifying discretionarily denying the Petition exist. We, therefore, decline to deny institution on this basis.” slip op. at 10
- Skill levelSkill level board ownOther
“we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The parties’ briefs do not propose a specific definition of a level of ordinary skill in the art. See generally, Pet., Prelim. Resp. Dr. Vallee, however, testifies that one of ordinary skill in the art relevant to the ’954 patent: would have either (i) a Master’s degree in mechanical engineering with at least two years of experience in power nailer design; (ii) a Bachelor’s degree in mechanical engineering with at least five years of experience in powered nailer design; or (iii) ten (or more) years of experience in powered nailer design. This experience in powered nailer design would include mechanical design, tool design, manufacturing, mechanics of materials, stress analysis, ergonomics, and human factors. Ex. 1003, ¶ 49. For purposes of this Decision, we adopt and apply Dr. Vallee’s formulation regarding the level of ordinary skill in the art.” slip op. at 6
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesOther
“1. Lifter The Petition contends that the “lifter” limitation is a means-plus- function limitation, Pet. 7, which Patent Owner does not dispute, Prelim. Resp. 15–26. Patent Owner argues, however, that Petitioner has “fail[ed] to identify any structure in the ’007 [sic, ’954] Patent to perform the claimed function.” Prelim. Resp. 15. We disagree. Petitioner identifies the structures in the Specification corresponding to the “lifter” as follows: The “lifter member” of the ’954 patent includes a rotatable cam lifter 100 (yellow, below left), with pin 104, 106, and 108 (green) on its face surface that engage protrusions 92 (blue) on the driver member 90 (orange). ’954 patent, 9:25–41, 16:32–46, Fig. 12. The ’954 patent also discloses two-pin variants: lifter members 465 and 480 in Figs. 31, 33. ’954 patent, 32:12–27, 32:45–60. Pet. 15. This identification of corresponding structure is sufficient to satisfy 37 C.F.R. § 42.104(b)(3). We also note that at this stage of the proceeding, Patent Owner does not dispute that Petitioner has correctly identified the corresponding structure. The parties may further address the proper interpretation of “lifter” at trial.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,478,954 - PTAB · Jun 11, 2025 · IPR2025-00261 · APJ Mitchell G Weatherly · IPR · Institution
Instituted IPR of claims 1–20 on all grounds after finding a reasonable likelihood that Haley anticipates claims 1, 7, 8, 17, and 20 and Haley with Lai renders the remaining claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on our review of the record,1 we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims.” slip op. at 2
- Other 314aInstitution denied discretionary otherDenied
“Patent Owner argues that we should discretionarily deny the Petition based on alleged deficiencies in the Petition. Specifically, Patent Owner argues that “even if arguments as to a few claims might have been properly presented in the Petition, a decision to institute here would require the Board to address—for the first time and with no Petitioner input—critical claim construction issues affecting nearly every claim” in contravention of the requirements of 37 C.F.R. § 42.104(b)(3). Prelim. Resp. 33–35. For the reasons discussed above, we are not persuaded on the current record that Petitioner has violated 37 C.F.R. § 42.104(b)(3), or that critical and unresolved claim interpretation issues justifying discretionarily denying the Petition exist. We, therefore, decline to deny institution on this basis. E. Claims 1, 7, 8, 17, and 20: Anticipation by Haley” slip op. at 11
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“1. Lifter The Petition contends that the “lifter” limitation is a means-plus- function limitation, Pet. 7, which Patent Owner does not dispute, Prelim. Resp. 10–14. Patent Owner argues, however, that Petitioner has “fail[ed] to identify any structure in the ’007 Patent to perform the claimed function.” Prelim. Resp. 10. We disagree. Petitioner identifies the structures in the Specification corresponding to the “lifter” as follows: The “lifter” (“lifter member”) of the ’007 patent includes a rotatable cam lifter 100 (yellow below left), with pin 104, 106, and 108 (green) on its face surface that engage protrusions 92 (blue) on the driver member 90 (orange). ’007 patent, 9:36–52, 16:39–53, Fig. 12. The ’007 patent also discloses two-pin variants: lifter members 465 and 480 in Figs. 31, 33. ’007 patent, 32:23–38, 32:56–33:4. Pet. 17. This identification of corresponding structure is sufficient to satisfy 37 C.F.R. § 42.104(b)(3). We also note that at this stage of the proceeding, Patent Owner does not dispute that Petitioner has correctly identified the corresponding structure. The parties may further address the proper interpretation of “lifter” at trial.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“gas pressure system” recited in the preamble of independent claims 1 and 17. Prelim. Resp. 21–22. Patent Owner further argues that Petitioner, through its comparison of claims 1 and 17 to Haley, improperly implies that the “gas pressure system” can be “limited to a distinct portion of a power tool.” Id. at 23. Patent Owner contends that such an interpretation is improper because the “gas pressure system” must refer to “the entire system,” because the “structure of the claims themselves . . . include[s] . . . every component of the tool.” Id. We disagree. The “gas pressure system” recited in the preambles of claims 1 and 17 expressly refers to a system that is “for a power tool” and thus does not necessarily refer to “the entire” tool or “every component of the tool.” Ex. 1001, 39:6 (claim 1), 40:51 (claim 17). Neither claim 1 nor claim 17 recites, for example, the lifter or driver, which are required elements of an “entire” tool. Id. at 39:6–22 (claim 1), 40:51–67 (claim 17). The lifter and driver are introduced in dependent claims 2 and 18. Id. at 39:23–30 (claim 2), 41:1–9 (claim 18). Still other necessary components of a tool, e.g., a motor and power source, are introduced in dependent claims 5 and 19. Id. at 39:40–42 (claim 5), 41:10–13 (claim 19). By contrast to claims 1 and 17, independent claims 9 and 14 recite a “portable fastener driving tool” and expressly recite many necessary components of such a tool including the driver, lifter, prime mover, and power source. Id. at 39:54 (claim 9), 40:20 (claim 14). Accordingly, we find that the “gas pressure system” of claims 1 and 17 broadly refers to a portion of a power tool rather than the “entire system” or “every component of the tool.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,034,007 - PTAB · Jun 15, 2023 · IPR2023-00273 · APJ Scott C Moore · IPR · Institution
The Board instituted IPR on claims 5, 7, 8, 14–19, 24, and 25, finding a reasonable likelihood that at least one challenged claim would be unpatentable under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On this record, it is unclear the extent to which issues in the instant proceeding overlap with those in the parallel district court proceeding. Accordingly, this factor is neutral.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(4) Conclusion for Claim 5 Based on the current record, Petitioner’s contentions (see Pet. 40–42) and the supporting testimony of Dr. Lequesne (see Ex. 1002 ¶¶ 174–182) demonstrate, in a manner that is sufficiently persuasive for purposes of institution, that the subject matter of claim 5 would have been obvious over the combination of Poertzgen and Boucheret. Accordingly, Petitioner has shown a reasonable likelihood that it will prevail on its argument that claim 5 is unpatentable under 35 U.S.C. § 103(a). We, therefore, institute an inter partes review as to all grounds and all challenged claims. 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(a).” slip op. at 29
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededNot reached
“In this case, Petitioner asserts that “[n]o construction of any terms is necessary for the purposes of this proceeding.” Pet. 16. Patent Owner argues that, in the asserted grounds based on Weiler, Petitioner improperly construes the claim term “actuator housing” to encompass Weiler’s brake caliper. Prelim. Resp. 12. Patent Owner asserts that this “interpretation conflicts with how the two terms are used in Patent Owner’s specification and claims, and also conflicts with the way the prior art uses the two terms.” Id. at 12–13. This argument is not persuasive for reasons described below in our discussion of Ground 4. Patent Owner also states that it “does not agree with the manner in which Petitioner reads ‘sub-frame’ on the prior art,” but, “[f]or purposes of this Patent Owner Preliminary Response only, Patent Owner does not traverse Petitioners’ reading of ‘sub-frame.’” Prelim. Resp. 13. On this preliminary record, we decline to adopt specific constructions of any claim terms.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“On this record, Patent Owner’s arguments are unavailing. It is not necessary to find precise teachings in the prior art directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. See KSR, 550 U.S. at 418. Here, Petitioner has offered declaration evidence that Boucheret’s teaching of adding an isolator between an electric motor and a component to which it is mounted in order to reduce NVH would have led motor 42 and the sub-frame of unit 40. Pet. 36–38. Patent Owner does not argue that the proposed modification would have been beyond level of ordinary skill in the art. See KSR, 550 U.S. at 417 (noting that, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”). Patent Owner’s argument regarding the expectation of success in using Boucheret’s grooved radially-mounted dampers at the axial end of Poertzgen’s motor (see Prelim. Resp. 24, 26) suggests that obviousness could only be shown if Boucheret’s dampers could be bodily incorporated into Poertzgen to arrive at the claimed invention. An obviousness analysis is not so constrained. See, e.g., Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference[.]”); see also In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”). We are also unpersuaded by Patent Owner’s assertion that Boucheret would only teach one of ordinary skill in the art to mount Poertzgen’s motor using radial lugs and dampers. See Prelim. Resp. 20. See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Here, Petitioner has offered declaration testimony that one of ordinary skill in the art would have had reason to add vibration dampers at the location where Poertzgen’s motor is mounted to a frame (i.e., the” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,021,415 - Ford Motor Company v. Safe Driving Technologies LLCAll claims unpatentablePTAB · Feb 7, 2023 · IPR2021-01341 · APJ Ryan H Flax · IPR · Final written decision
Claims 1–4 and 7–10 are unpatentable as obvious over Tan, Boies, Tan with Shuman and Behr, or Hardouin; Petitioner’s motion to exclude is granted.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“example, the types of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). Petitioner asserts: An ordinary artisan would have been a person having, as of October 24, 2001, a Bachelor’s degree in Electrical Engineering, Mechanical Engineering, Computer Engineering, or Computer Science, or an equivalent degree with at least two years of experience in electronic user interface systems and vehicle sensor systems or related technologies. Additional education may substitute for lesser work experience and vice-versa. (Ex.1003, ¶40.) Pet. 3 (citing Andrews Declaration). Patent Owner does not address the definition of the person of ordinary skill in the art, either to contest Petitioner’s proposal or to offer a different definition. See generally Resp. We adopt Petitioner’s unopposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’994 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We find Patent Owner’s reliance on the ’994 patent’s FIELD OF THE INVENTION Section misplaced. To quote it in its entirety, it states: The present invention relates to the field of telematics, namely to the field of integrating information, communication, computing and entertainment technologies into vehicles for civilian or military use. The invention particularly relates to safety control systems for vehicles to reduce driver distraction, avoiding potentially dangerous conditions tending to produce accidents. Ex. 1001, 1:21–27 (emphasis added). Thus, even were we to consider this portion of the Specification informative of the meaning of “telematic device,” it does not limit such to “a central multifunction device,” as argued by Patent Owner, but states that the field of telematics relates to integrating information, communication, computing, and entertainment technologies into vehicles, generally. Id. Nothing about this statement requires all these features to be integrated into a single device, unless the vehicle is considered the single device (which neither party suggests). See Reply 4 (discussing this section of the ’994 patent). Further, we find nothing in the ’994 patent supporting Patent Owner’s contention that the claim term “telematic device” should be restricted to a central multifunction device that integrates together the features of information, communication, computing, and entertainment technologies. The ’994 patent never states this. See Ex. 1001. Moreover, we find the ’994 patent to be much more inclusive than exclusive when describing what a telematic device can be, i.e., the scope of the term. Upon reviewing the written description of the ’994 patent, we find it makes the following statements (all emphasis added):” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We agree with Petitioner that the disputed claim language is, indeed, somewhat confusing. It appears to us from reading the language of claim 2 as a whole that Patent Owner understood that the phrase “include at least one of” could have been used rather than the language “including at least” because Patent Owner used these different phrases at different portions of claim 2. Compare Ex. 1001, 23:2, with id. at 23:14–15. Had Patent Owner intended that the disputed claim language require only one of the listed devices, it appears that Patent Owner understood how to claim that. Further, the full disputed phrase of claim 2 recites a “communication device including at least a pager, a telephone, a global location sensor, a temporal sensor, an optical sensor, a heading sensor, a bearing sensor, and an altitude sensor.” Id. at 23:14–17. However, adding to the ambiguity of the claim, this list of communication device components is tacked onto the end of a clause listing software applications (e.g., a telephone application and a wireless communication application), not devices. And, moreover, the term “communication device” is not preceded by an associated “a” or “the,” and there is no other “communication device” recited earlier in claim 2 (or claim 1 from which it depends), which further adds to the claim’s ambiguity. Patent Owner asserts that “at least” means “at least one” and Petitioner, at least in an alternative argument, appears to potentially agree and presented a case for unpatentability based on such an interpretation. See Pet. 9 (compare Grounds 1 and 2 with Ground 3). Furthermore, following Patent Owner’s stated position on this claim language in its Response (at page 19), Petitioner does not argue the matter in its Reply, other than stating at one point (not at the claim construction section) that “at least” means “all.” See Reply 1–7; but see id. at 14 (stating that the plain language of claim 2 requires all of the devices). Thus, we could adopt Patent Owner’s interpretation of claim 2’s” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Petitioner asserts that it would have been obvious to the ordinarily skilled artisan to combine Shuman with Tan because Shuman’s teachings on its GPS would illuminate the capabilities of and data provided by Tan’s GPS; these are the same or similar devices and may have the same or similar capabilities. Id. at 63 (citing Ex. 1003 ¶ 261). Petitioner asserts that it would have been obvious to the ordinarily skilled artisan to also combine Behr with Tan because Behr’s disclosure of monitoring the time of day to ensure its GPS provides relevant, safe, and legal instructions would also similarly support Tan’s GPS functioning, and also because there would have been a benefit to including Behr’s pager’s functionality in Tan’s system because such was a relevant communication technology. Id. at 64–65 (citing Ex. 1003 ¶¶ 263, 265). We agree with Petitioner’s assertions and reasoning regarding combining these prior art references with a reasonable expectation of success, and Patent Owner does not argue otherwise. See generally Resp.” slip op. at 50
Patent outcomesUS 9,713,994 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,713,994 - Asetek Danmark A/S v. Coolit Systems, Inc.All claims unpatentablePTAB · Sep 30, 2021 · IPR2020-00747 · APJ Scott C Moore · IPR · Final written decision
Claims 1, 2, 3, 5, 7, and 25 are unpatentable as obvious over Lyon and Bezama; the Board did not reach anticipation by Bezama.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner asserts that a person of ordinary skill in the art at the time of the invention of the ’567 Patent (hereinafter, a “POSITA”) would have had the following education and experience: (i) “completed college level course work in thermodynamics, fluid mechanics, and heat transfer,” and (ii) “two or more years of experience in designing liquid cooling systems for computers, servers, or other electronic devices, or very similar technology, or one with a more advanced degree in the above fields may have had less practical experience.” Pet. 11. Patent Owner contends that a POSITA “would have earned at least a bachelor’s degree, such as a B.S. (bachelor of science), or equivalent thereof, in mechanical engineering or a closely related field and possessed at least three years of specialized experience in heat transfer devices for thermal management in electronics and computer systems, or in similar systems.” PO Resp. 4. Patent Owner represents, however, that none of its arguments or its declarant’s opinions turn on any differences between the parties’ alternative formulations concerning the level of ordinary skill in the art. Id. at 4 n.2. In its Reply, Petitioner does not respond to Patent Owner’s alternative formulation, or identify any issues in this case that might turn on differences between the parties’ alternative formulations. See generally Reply. On this record, we adopt Patent Owner’s proposed formulation” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Considering the intrinsic evidence summarized above, and the evidence and arguments presented by the parties, we determine that the claim limitation “a compliant member matingly engaged with the second side of the housing member” is satisfied when at least a portion of the recited compliant member is fitted within the recessed region defined by the second side of the housing member. This partial construction is sufficient to resolve the issues in dispute. On this record, we decline to address the issue of whether “matingly engaged” could also encompass other types of engagement, and we also decline to construe any other claim terms.9 See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). D.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“139); see also Pet. 62 (citing Ex. 1003 ¶ 110) (“Lyon teaches every limitation of the challenged claims, except a compliant material on top of the microchannel fins . . . and a recessed, transverse ‘groove’ on the microchannel fins.”). Petitioner relies on Bezama to supply both of these claim elements, and sets forth rationales for why one of ordinary skill in the art would have had reason to combine these teachings of Bezama with Lyon so as to arrive at the claimed invention. See Pet. 67–68 (citing Ex. 1003 ¶¶ 121–124) (contending that Bezama discloses a recessed transverse groove, and that a POSITA would have known that incorporating such a groove into Lyon’s microchannel walls would have improved fluid flow characteristics); 71–73 (citing Ex. 1003 ¶¶ 128–132) (contending that Bezama discloses that the separator sheet overlying the fins can be made of a compliant material, and that a POSITA would have known that incorporating such a material into Lyon’s Plate 240 would have minimized coolant bypass between the fins and the plate). Patent Owner makes a single patentability argument for claim 1—it contends that neither Lyon nor Bezama discloses a compliant member that is “matingly engaged” with the second side of the housing member. See Resp. 44–49. We find that Petitioner’s contentions regarding the undisputed limitations of claim 1, and the proffered rationales for combining the teachings of Lyon and Bezama, are persuasive and adequately supported. See Pet. 59–77; Ex. 1003 ¶¶ 107–139; see also Paper 11, 8 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”) We now turn to the single disputed limitation of claim 1.” slip op. at 25
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“For the foregoing reasons, we find that Lyon and Bezama teach or suggest all limitations of claim 1, and that Petitioner has set forth adequate rationales for combining the teachings of these references in a manner that would satisfy claim 1. Petitioner has demonstrated by a preponderance of the evidence that claim 1 is unpatentable under 35 U.S.C. § 103. b) Claims 2, 3, 5, 7, and 25 Petitioner also identifies portions of Lyon and Bezama that allegedly teach or suggest each limitation recited in claims 2, 3, 5, 7, and 25, and that these contentions are supported by testimony from Dr. Tilton. See Pet. 78– 84; Ex. 1003 ¶¶ 140–151. Petitioner additionally identifies rationales for why a person of ordinary skill in the art would have had reason to combine the teachings of Lyon and Bezama to arrive at the inventions recited in those claims. See id. Patent Owner does not dispute these contentions or set forth any separate arguments for the patentability of claims 2, 3, 5, 7, and 25, but instead relies solely on its arguments with respect to claim 1. See Resp. 49. Patent Owner’s arguments regarding claim 1 are not persuasive for the reasons set forth above. On this record, we find that Lyon and Bezama teach or suggest all” slip op. at 28
Patent outcomesUS 9,057,567 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,057,567 - Eis GmbH v. Novoluto GmbHNo claims unpatentablePTAB · Sep 23, 2021 · IPR2020-00007 · APJ Susan L C Mitchell · IPR · Final written decision
Claims 1–3, 5, 7, 8, 11, 14, 15, and 17–26 were not shown unpatentable under the Taylor anticipation or Taylor-based obviousness grounds.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedDenied
“disclosure of a suction cup “sealingly” receiving the vulva occurs when the vacuum is applied, not before. See Ex. 2034 ¶ 121. We disagree with Petitioner’s conclusion that “Taylor discloses that arm 26 ‘compresses . . . and then expands bellows 160’ after member 156 ‘sealingly’ engages the vulva.” Reply 9. The single statement in Taylor on which Petitioner relies states, with reference to Figure 3 set forth above in Section II.D.1, “[t]he first stimulator 154 includes a suction cup member 156 that conformingly and sealingly receives the upper portion of the vulva.” Ex. 1004, 5:29–31. We agree with Dr. Jensen that this does not support Petitioner’s conclusion that a seal is achieved before the vacuum is applied, and credit Dr. Jensen’s testimony that reads as follows as consistent with Taylor’s disclosure.” slip op. at 35
- ExcludeMotion to exclude, deniedDenied
“5. Conclusion For the reasons set forth above, we deny the portion of Petitioner’s” slip op. at 73
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“7 Petitioner presents argument that the term “pressure field generator” should be construed as a means-plus-function term limited to the following structure: at least one first chamber, at least one second chamber, and at least one connection element. Reply 25–26. As we find that it is not necessary to construe this term to resolve the issues before us, we do not address these arguments presented by Petitioner.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“disclosure of a suction cup “sealingly” receiving the vulva occurs when the vacuum is applied, not before. See Ex. 2034 ¶ 121. We disagree with Petitioner’s conclusion that “Taylor discloses that arm 26 ‘compresses . . . and then expands bellows 160’ after member 156 ‘sealingly’ engages the vulva.” Reply 9. The single statement in Taylor on which Petitioner relies states, with reference to Figure 3 set forth above in Section II.D.1, “[t]he first stimulator 154 includes a suction cup member 156 that conformingly and sealingly receives the upper portion of the vulva.” Ex. 1004, 5:29–31. We agree with Dr. Jensen that this does not support Petitioner’s conclusion that a seal is achieved before the vacuum is applied, and credit Dr. Jensen’s testimony that reads as follows as consistent with Taylor’s disclosure.” slip op. at 35
Patent outcomesUS 9,849,061 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,849,061 - Amazon.Com, Inc. / Amazon.Com LLC et al. v. VB Assets, LLCInstitution deniedPTAB · Feb 24, 2021 · IPR2020-01388 · APJ Sean P O’Hanlon · IPR · Institution
Institution was denied for claims 1–23 because the Petition did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“Institution of an inter partes review is authorized by statute only when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). For the reasons set forth below, upon considering the parties’ briefs and evidence of record, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Petitioner will prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) “would have at least a Bachelor-level degree in computer science, computer engineering, electrical engineering, or a related field in computing technology, and two years of experience with automatic speech recognition and natural language understanding, or equivalent education, research experience, or knowledge.” Pet. 4 (citing Ex. 1002 ¶¶ 26–29). Patent Owner does not contest Petitioner’s definition or proffer an alternate definition. See generally Prelim. Resp. The level of ordinary skill in the art often is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The level of ordinary skill proposed by Petitioner appears to be consistent with that of the references, and we apply Petitioner’s proposed level of ordinary skill for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Patent Owner also argues that the Petition does not set forth adequate rationale for modifying Cohen to include Yonebayashi’s alleged recognition of pronouns because Cohen’s system presents a “yes-no question” to the user and the “yes” answer is enough for Cohen’s system to reserve a rental car. Prelim. Resp. 18–19. We agree. Petitioner relies on Cohen’s disclosure of presenting to the user questions the answers to which are one word. Pet. 22 (citing Ex. 1012, 19:1–10, 19:24–31), 25 (citing Ex. 1012, 19:8–13, 19:24–34). In each of these examples cited by Petitioner, the user responds by saying “yes.” Ex. 1012, 19:11, 19:32. Petitioner does not explain persuasively why it would be obvious to change this one-word response to include additional words, including pronouns, or why this modification would be of any benefit. Furthermore, even if a user’s utterance were to include the other words as suggested by Petitioner, Petitioner does not explain persuasively why it would be obvious to modify Cohen’s system to look to those additional words instead of the uttered “yes” to which Cohen’s system already responds and which remains in Petitioner’s modified utterances. See Pet. 27 (suggesting that the user respond by saying “Yes, I need that” or “Yes, reserve it” (emphases omitted)).” slip op. at 20
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,269,097 - Eis GmbH v. Novoluto GmbHRehearing grantedPTAB · Sep 25, 2020 · IPR2020-00007 · APJ Susan L C Mitchell · IPR · Rehearing
Granted EIS GMBH’s rehearing request and instituted IPR of claims 1–3, 5, 7, 8, 11, 14, 15, 17–21, and 23–26 on all asserted grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We find that Dr. Prisco’s testimony is a reasonable interpretation of how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We conclude from a review of Fang and Taylor that they are not substantially the same art nor is Petitioner making substantially the same argument as was presented the Office during prosecution of the ’061 Patent based on Fang. We find that the way in which Fang and Taylor work appear to be materially different. Fang appears to apply only suction to the skin whereas Taylor, with the sealingly connected suction cup, appears to apply a cyclical vacuum that Dr. Prisco testifies meets the claim limitations requiring generation of a pattern of negative and positive pressures, modulated with respect to a reference pressure. Ex. 1002 ¶¶ 62–64, 75. Thus Taylor appears to teach the claim element Patent Owner argued during prosecution was missing from Fang. Also, in applying factors (b) and (d) of Becton, Dickinson, because of such differences noted above, we find that Taylor is not cumulative of Fang, which was considered and applied by the Office during prosecution of the ’061 Patent. 4. Conclusion Thus, we find that Taylor and Fang are not substantially the same art, nor were substantially the same arguments based on these references presented in the Petition and during prosecution of the ’061 Patent, respectively. As discussed above, because Petitioner primarily relies on Taylor in all four grounds for teaching the modulation of positive and negative pressures with respect to a reference pressure as required by all of the challenged claims, we also find that, overall, the same or substantially the same art was not previously presented to the Office nor were the same or substantially the same arguments previously presented to the Office. Therefore, we do not need to reach the application of the remaining Becton, Dickenson factors relating to whether the Petitioner has demonstrated a material error by the Office. Thus, we decline to exercise our discretion under § 325(d) to deny institution of an inter partes review here.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We find that Dr. Prisco’s testimony is a reasonable interpretation of how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,849,061 - Parrot S.A. / Parrot Drones S.A.S. et al. v. Qfo Labs, Inc.Rehearing deniedPTAB · Aug 11, 2020 · IPR2018-01690 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 13–17 unpatentable and the motion to amend granted for claims 1–10 but denied for substitute claims 21–23.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified as set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. See also Req. Reh’g. 4 (quoting, in part, 37 C.F.R. § 42.71(d)). With this in mind, we address Patent Owner’s arguments below.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Owner’s Motion to Amend in its Rehearing Request. Compare Mot. 11–12, with Req. Reh’g. 7. We considered these arguments in our Decision, and Patent Owner’s arguments express disagreement with our interpretation of “orientation control scheme” but do not show how an argument was overlooked or misapprehended. See Final Dec. 74, 84–86. Patent Owner supplements its prior arguments with contentions that we construed “position” as a verb, not a noun. See Req. Reh’g. 6. Patent Owner does not identify where these additional contentions were previously presented, as required under 37 C.F.R. § 42.71(d). Thus, Patent Owner has failed to show that we misapprehended or overlooked these arguments. See id. Even if the additional contentions had been previously presented, our Decision considered Patent Owner’s proposed interpretation of “orientation control scheme.” See Final Dec. 85 (“Even under Patent Owner’s proposed interpretation of ‘orientation control scheme’ (Mot. 11–12), Petitioner persuades us that Louvel and Nagamitsu teach the final recitation of proposed substitute claim 21.”). Patent Owner’s arguments do not show how an argument was overlooked or misapprehended. In any event, we remain convinced that “Patent Owner’s proposed interpretations are not the broadest reasonable interpretation in view of the Specification of the ’292 patent because the Specification does not use these terms or describe state vectors.” See Final Dec. 74.” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“We decline to consider Patent Owner’s constitutional challenge because the issue has been addressed by the Federal Circuit in Arthrex, 941 F.3d at 1328 (expressly limiting its holding “to those cases where final written decisions were issued (prior to Arthrex)”). See also Caterpillar Paving Prod. Inc. v. Wirtgen Am., Inc., 957 F.3d 1342, 1342–1343 (May 6, 2020) (“The court in Arthrex considered and rejected that argument, expressly limiting its holding ‘to those cases where final written decisions were issued.’”) (quoting 941 F.3d at 1340). Our Decision was entered February 20, 2020, after the Federal Circuit issued its October 2019 decision in Arthrex (see 941 F.3d at 1320).” slip op. at 10
Claim constructionPatents in suitUS 9,904,292 - PTAB · Jun 16, 2020 · IPR2019-01393 · APJ Ryan H Flax · IPR · Rehearing
Granted Sand Revolution II, LLC’s rehearing request and instituted IPR of claims 1, 2, 4, 6–14, and 16–20 on two obviousness grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“As noted in Fintiv, we consider six factors when taking “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. For the reasons discussed above, the Fintiv factors weigh against invoking our discretion to deny institution. Considering the Fintiv factors as part of a holistic analysis, we are not persuaded that the interests of the efficiency and integrity of the system would be best served by invoking our authority under 35 U.S.C. § 314(a) to deny institution of a potentially meritorious Petition. For the reasons discussed above, we modify our initial decision denying institution. On rehearing, after considering the factors outlined in the precedential order in Fintiv, we decline to deny institution under § 314(a). Accordingly, we grant Petitioner’s Request for Rehearing. We consider the merits of the Petition with respect to the threshold for institution below.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“demonstrating a reasonable likelihood that it would prevail in showing that claims of the ’740 patent are unpatentable. At this preliminary stage of the proceeding and on the record before us, Petitioner’s case is strong on most challenged claims. Fintiv, Paper 11 at 14–15 (“[I]f the merits of a ground raised in the petition seem particularly strong on the preliminary record, this fact has favored institution.”). Although we recognize the record can change during trial, as discussed in detail below, Petitioner has made a sufficiently persuasive showing, on the record presently before us, that the prior art references cited in the Petition teach or suggest all limitations of most challenged claims. We determine, on this preliminary record, that Petitioner has set forth a reasonably strong case for the obviousness of most challenged claims. Thus, this factor weighs in favor of not exercising discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“system” would have been readily understandable to the skilled artisan on its face, and the combination of these words into the recited phrase does not introduce any different meaning or ambiguity. The fact that the mobile storage module comprises the “integrated actuating system,” as well as the inclusion of the word “integrated” in this disputed term, each supports that such a system is a part of the module; in other words, it is built into the module as proposed by Petitioner. Because the fact that the actuating system is built into the mobile storage module is evident from the claim language itself, defining the claim term expressly to include this concept is unnecessary, as it would be redundant of the term’s plain meaning as understood by the skilled artisan. Nothing in the intrinsic record, or other evidence submitted by Petitioner, is inconsistent with this conclusion. Furthermore, regarding the proposed self-deployment concept, we also conclude it is unnecessary to add this concept to define the claim term in view of the plain meaning of “integrated actuating system.” Per the plain language of the claim term, the system that actuates the mobile storage module, i.e., moves it between a lowered and raised position, is integrated into the mobile storage module. The mobile storage module’s integrated components move, or actuate, the mobile storage module, per the plain meaning of the claim language. Thus, the system that is expressly recited as being a part of the module (integrated), actuates the module; the module actuates itself. Therefore, adding “self-deploying” to specially define the term “integrated actuating system” is unnecessary. Nothing in the intrinsic record is inconsistent with this conclusion. See Ex. 1002, 83–91 (arguing the characteristic of “self-deploying” invokes the inclusion of “an integrated actuating system,” but not the converse). Because Petitioner’s proposed construction of “integrated actuating system” would add unnecessary and undesirable redundancy to the claims, we determine that it is unnecessary to expressly construe this claim term at this stage of the proceedings.” slip op. at 32
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“V. CONCLUSION Petitioner demonstrates a reasonable likelihood of prevailing at trial in demonstrating that claims 1, 2, 4, 6–10, 12–14, and 16–20 of the ’740 patent would have been obvious over the prior art combinations set forth in Grounds 1 and 2. Our decision at this stage derives from our review of the preliminary record before us. This decision does not reflect a final determination on the patentability of the claims. ORDER Accordingly, it is hereby: ORDERED that, Petitioner’s Request for Reconsideration is granted; FURTHER ORDERED that, pursuant to 35 U.S.C. § 314, an inter partes review of claims 1, 2, 4, 6–14, and 16–20 of the ’740 patent, in accordance with Grounds 1 and 2 in the Petition, is hereby instituted; and” slip op. at 56
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 8,944,740
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.