- Andersen CorporationOtherPTAB · Mar 20, 2019 · DER2017-00007 · APJ Justin T Arbes · DER · Final written decision
Andersen did not prove derivation of any invention in claims 1–22 because it did not show that Oquendo communicated the claimed stop spaced away from the corners.
RulingsFinal written decision- BurdenDecided for patent owner
“2. Burden of Proof To prevail in an instituted derivation proceeding, the petitioner must demonstrate that “an inventor named in the earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, the earlier application claiming such invention was filed.” 35 U.S.C. § 135(b). Unlike the statutory provisions governing inter partes review and post-grant review, which specify that a petitioner must prove unpatentability of a claim by a “preponderance of the evidence,” the statutory provision for derivation proceedings does not set forth an evidentiary standard for proving derivation. See 35 U.S.C. §§ 135, 316(e), 326(e). Our rules, however, provide that “[a] derivation proceeding is a trial subject to the procedures set forth in subpart A of this part [i.e., 37 C.F.R. §§ 42.1–42.80],” 37 C.F.R. § 42.400(a), and “[t]he default evidentiary standard [for trial proceedings] is a preponderance of the evidence,” 37 C.F.R. § 42.1(d).5 We apply that standard for purposes of this Decision.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“construed. Andersen argues in its Petition that the term “stop” in all of the claims should be interpreted to mean “[a] physical abutment that prohibits movement of the adjoining structure beyond a predetermined location.” Pet. 9. In the Decision on Institution, based on the record at the time, we preliminarily agreed with and adopted that interpretation, and concluded that no other terms required interpretation. Dec. on Inst. 17–18.” slip op. at 20
- Expert testimonyPetitioner expert discountedDecided for patent owner
- Adverse judgmentOther
“all of the evidence of alleged communication. Taking into account the parties’ arguments and the full record in this proceeding, we conclude that Andersen has not demonstrated that Mr. Oquendo communicated to a named inventor of the ’953 patent a conception of the complete invention recited in claim 1. Specifically, Andersen has not shown that Mr. Oquendo communicated, as part of his spacer frame design, a stop spaced away from the corners. Mr. Oquendo’s testimony regarding such an alleged communication is not corroborated by evidence in the record for all of the reasons explained above. Andersen has not proven derivation of the invention recited in claim 1 by a preponderance of the evidence. E. Alleged Derivation of the Inventions Recited in Claims 2–22 Andersen asserts that Mr. Oquendo conceived of the subject matter of” slip op. at 64
Claim constructionPatents in suitUS 9,428,953 - PTAB · Sep 25, 2017 · IPR2016-00788 · APJ Neil T Powell · IPR · Final written decision
The Board held that claims 15, 18, and 20 were not shown unpatentable over Johnson or Hitt because neither reference disclosed containment walls standing on the floor.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“broadest reasonable interpretation of the disputed claim language requires that the containment walls stand “on” the floor. In the recitation “containment walls standing upwardly from said floor,” the word “from” indicates that the containment walls are disposed “on” the floor. Consistent with this, all of the various embodiments of the invention disclosed by the ’611 patent consistently show sidewalls of a rail car that stand or rest on underlying floor of the car, as Patent Owner notes. See, e.g., PO Resp. 7–12; Ex. 1001, Figs. 1–10. Patent Owner also relies on the testimony of Mr. Long, in discussing the meaning of “standing upwardly from.” See, e.g., PO Resp. 17–21 (citing Ex. 2118 ¶¶ 101–102, 144–161). Specifically, Mr. Long testifies that a person of ordinary skill in the art would have recognized that in the ’611 patent, the term “standing” is used in “its positional sense,” citing, for instance, to a dictionary definition of “standing” as “to rest or remain upright on a base or lower end.” Ex. 2118 ¶ 145 (citing Ex. 2112, 7). Mr. Long’s testimony and the underlying support for that testimony shed favorable light on the meaning of “standing upwardly from” that is urged by Patent Owner.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“containment walls standing upwardly from said floor.” Pet. 24–28. The Petition notes that Johnson discloses floor 26 and side sheet 16. Id. at 24– 25. The Petition contends that “[b]ased on the vertical direction of the ‘side frame assembly,’ . . . , a [person of ordinary skill in the art] would have understood Johnson to teach that the containment walls stand ‘upwardly from said floor.’” Id. at 25. Showing the uncorrected versions of Figures 1 and 2 of Johnson, the Petition elaborates that “[t]his is further shown, e.g., in Fig. 2, where wall 16 is generally perpendicular with respect to the floor 26.” Id. at 25–26 (citing Ex. 1106, Fig. 2; Ex. 1103 ¶ 132). These statements do not indicate, much less prove, that Johnson discloses a containment wall that stands on a floor. Observing the vertical direction of side frame 12 and the perpendicular orientation of side sheet 16 to floor 26 does not establish that side frame 12 or side sheet 16 is disposed on floor 26. The cited testimony of Mr. Miller notes that Figure 2 shows “side sheet 16 is shown as standing normal to the floor.” Ex. 1103 ¶ 132. This too facially does not indicate, much less prove, that side sheet 16 is disposed on floor 26. slip op. at 13
- Strike new argumentNew argument disregardedDenied
“Petitioner’s citation of Johnson’s Figure 5 in the Reply is unavailing. When addressing the claim limitations “containment walls standing upwardly from said floor,” the Petition does not cite Figure 5 of Johnson. See Pet. 24–28. This section of the Petition cites paragraphs 54–56, 130– 132, 134, and 135 of Mr. Miller’s testimony (id.), and none of this testimony cites to or addresses Figure 5 of Johnson, either (see Ex. 1103 ¶¶ 54–56, 130–132, 134–135). Furthermore, it is not apparent that Figure 5 of Johnson shows the same embodiment as Figure 2; Johnson identifies Figure 5 as a cross-section of Figure 4, which Johnson introduces as “a partial side elevation view of a gondola railcar having a bolster.” Ex. 1106, 3:7–8. We determine that Petitioner’s citation of Johnson’s Figure 5 in the Reply is unavailing because it constitutes an improper new argument. In that respect, we do not regard Petitioner’s new reliance on Johnson’s Figure 5 in an attempt to address a deficiency raised by Patent Owner in its Patent Owner Response as constituting a proper response envisioned by our rules. See 37 C.F.R. § 42.23(b). Furthermore, even if Petitioner’s citation of Figure 5 were a proper response, it would not demonstrate, by a preponderance of the evidence, that Johnson discloses the claimed relationship. We are persuaded that, without any other supporting evidence, Figure 5 of Johnson does not show the relationship between containment walls and a floor clearly enough to support, by a preponderance of the evidence, Petitioner’s contention that Johnson discloses containment walls that stand on a floor.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“For the foregoing reasons, Petitioner has not persuaded us that Johnson discloses containment walls that stand on the floor, as required by independent claim 15. Additionally, Petitioner has not asserted that it would have been obvious to modify Johnson’s railcar to have such a configuration, much less provided evidence and reasoning persuading us that it would have been obvious to do so. See, e.g., Pet. 24–28. Accordingly, Petitioner has not demonstrated by a preponderance of the evidence that claims 15, 18, and 20 are unpatentable over Johnson.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,757,611 - PTAB · Apr 28, 2014 · IPR2013-00067 · APJ James B Arpin · IPR · Final written decision
The Board granted cancellation of claims 1–46 and denied entry of substitute claims 47–50 because Nike did not establish their patentability and they would have been obvious over Nishida and Schuessler I and II.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“a patent reexamination proceeding. The substitute claims proposed in a motion to amend are not entered automatically and then subjected to examination. Rather, the proposed substitute claims will be added directly to the patent, without examination, if the patent owner’s motion to amend claims is granted. In a motion to amend, the patent owner is not rebutting a rejection in an office action, as though this proceeding were a patent examination or a reexamination. Instead, the patent owner, as the movant, bears the burden of establishing the patentability of the proposed substitute claims over the prior art of record and also other prior art known to Patent Owner. We deny the motion to amend because (1) Patent Owner has not met this burden and (2) Petitioner has shown that the substitute claims would have been rendered obvious over the combination of the teachings of Nishida and Schuessler I and II.” slip op. at 34
- ExcludeOther
“The current situation does not require us to assess the merits of Petitioner’s motion to exclude. As discussed above, even without relying upon the aforementioned portions of the cross-examination testimony of Dr. Frederick, we have concluded that Patent Owner has demonstrated that the term “flat knit edges” of substitute claims 47-50 is supported by the disclosure of the ’289 Application. Accordingly, Petitioner’s motion to exclude evidence is dismissed as moot.” slip op. at 41
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In construing the term “flat knitting,” we apply the broadest reasonable interpretation of the words in their ordinary usage, as those words would be understood by one of ordinary skill in the art, taking into account any definitions supplied by the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). The Specification of the ’011 Patent expressly describes flat knitting as a sub-type of weft knitting. Ex. 1002, col. 7, ll. 5-8. Ultimately, “[t]he construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be . . . the correct construction.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). Further, Patent Owner presents evidence that a person of ordinary skill in the art would understand flat knitting to describe a sub-type of weft knitting. Paper 44, 1 (quoting a textile dictionary (Ex. 2011, 6) to state that “the trade uses the term flat knit fabric to refer to weft knit fabrics made on a flat machine, rather than warp-knit fabrics”); see also Ex 2017, 5; Ex. 2018, 6. Despite its argument, Petitioner identifies no portion of the Specification of the ’011 Patent that describes flat knitting with respect to warp knitting or any other type of knitting, beyond weft-knitting. See Paper 37, 2-3. In addition, before the filing date of the motion to amend, Dr. Frederick, Petitioner’s expert, testified that “[f]lat knitting would be another type of weft knitting that would involve an end result that was . . . on a curved 15 surface, but more or less flat.” Ex. 2009, 89, ll. 6-11. Therefore, we determine that the term “weft knitting” describes a type of knitting in which a continuous yarn is carried in crosswise rows, and we construe the term “flat knit” to recite a sub-type of weft knitting, in which the weft knit textile is produced as a sheet of more or less flat material.5” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“Petitioner contends that Nishida and Schuessler I are in similar fields and address the same problem, namely the formation of two-dimensional textile elements having edges that are joined to form three-dimensional, wearable items. Paper 37, 11; cf. Ex. 1005, figs. 1 (two-dimensional layout 2) and 3 (three-dimensional, shoe upper 3); Ex. 1020, figs. 1 (two-dimensional helmet swatch) and 2 (three-dimensional helmet). Further, Schuessler II teaches that the two-dimensional helmet swatch of Figure 1 of Schuessler I may be knit to shape on a flat knitting machine. Paper 37, 11 (citing Ex. 1023 ¶ 15). Petitioner contends, therefore, that a person of ordinary skill in the art would have reason to combine the teachings of these three references to achieve the invention recited in substitute claim 47. Id. Patent Owner does not argue Petitioner’s assessment of the teachings of these references. Patent Owner also does not dispute that all of the limitations of the claims are taught in the prior art. Instead, Patent Owner argues that Petitioner’s contention that a person of ordinary skill in the art would combine Nishida’s teaching regarding the reduction of waste by placing layouts in adjoining positions and Schuessler I’s teaching regarding knitting textile elements to shape is illogical. Paper 44, 5. Specifically, Patent Owner argues that Petitioner’s reason for combining these teachings is somehow flawed because “after they are combined the elements of each reference serve the same purpose.” Id. As the U.S. Supreme Court explained, however, “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 38 unless its actual application is beyond his or her skill.” KSR Int’l Co. v. Teleflex Inc., 555 U.S. 398, 417 (2007). In this case, that the elements of the prior art references would “serve the same purpose” when combined is a factor in favor of an obviousness determination, and not a suggestion of nonobviousness, as urged by Patent Owner. Because we are persuaded that Petitioner has demonstrated that the teachings of Nishida and Schuessler I and II teach or suggest all of the limitations of substitute claim 47 and that a person of ordinary skill in the art would have had reason to combine the teachings of these references to achieve the recited article of footwear, we determine that Patent Owner fails to meet its burden of showing that it is entitled to the relief requested in its motion to amend. Because we group substitute claims 48-50 with claim 47 for purposes of assessing patentability, we also determine that Patent Owner fails to meet its burden of showing that it is entitled to the relief requested in its motion to amend with respect to substitute claims 48-50. Consequently, the portion of Patent Owner’s motion to amend requesting entry of substitute claims 47-50 also is denied for failing to demonstrate that the substitute claims are patentable over Nishida and Schuessler I and II.” slip op. at 38
Claim construction§ 103 obviousnessPatents in suitUS 7,347,011
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.