- PTAB · Mar 25, 2026 · IPR2024-01380 · APJ Arthur M Peslak · IPR · Final written decision
The Board cancelled original claims 1–10 and granted substitute claims 11–19 because Petitioner did not prove claim 11 obvious over Torrence and Piepho.
RulingsFinal written decision- 112 supportGranted
“relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991)). “[T]he hallmark of written description is disclosure.” Id. “[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. “In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.” Yingbin-Nature (Guangdong) Wood Ind. Co., Ltd. v/ Int’l Trade Com’n, 535 F.3d 1322, 1334 (Fed. Cir. 2008). “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Ariad, 598 F.3d at 1351 (citing Capon v. Eshhar, 418 F.3d 1349, 1357–58 (Fed. Cir. 2005)). “This inquiry . . . is a question of fact.” Id. (citing Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985)). Further, inventions in the mechanical and electrical-based arts usually involve predictable factors and can be more predictable than other fields, such as chemistry and biology. See In re Fisher, 427 F.2d 833, 839 (CCPA 1970);” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Best Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007)).” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction We determine that no express construction of any claim term is necessary for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“[c]ombin[e] the tapered region of Piepho with the shaft of Torrence, the tapered region would extend from an uppermost extremity of the shaft.” RMTA Opp. 9. But, Petitioner concedes that neither reference discloses a tapered region extending from the uppermost extremity. Petitioner argues that Torrence’s shaft is straight (Amended RMTA Sur-reply 9) and that “[t]he tapered region of Piepho does not extend to the extreme end of the shaft.” RMTA Opp. 11 (emphasis added). Because neither Torrence nor Piepho discloses a shaft with a tapered region that “extends from an uppermost extremity of the shaft,” we find that the combination of Torrence and Piepho does not teach limitation 11[a]. We now analyze whether Petitioner provides reasoning with a rational underpinning why a person of ordinary skill in the art would have been motivated to modify Torrence with Piepho to extend Torrence’s taper from the upper extremity of its shaft. slip op. at 22
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,827,568 - PTAB · Oct 21, 2025 · IPR2025-00057 · APJ Hung H Bui · IPR · Remand
The Board denied institution on all challenged claims because the conjunctive construction required a hardware action, which the asserted grounds did not show.
RulingsRemand decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). A patent claim is unpatentable under 35 U.S.C. § 103(a) when the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when in evidence, objective evidence of nonobviousness, i.e., secondary considerations.4 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Additionally, the obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“(1) The Claim Language Supports a Conjunctive Construction There is a “heavy presumption” that the terms used in claims “mean what they say and have the ordinary meaning that would be attributed to those words by persons skilled in the relevant art.” SuperGuide, at 875 (citing Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed.Cir.2002)).” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. First, the construction of the phrase “at least one of [A] the display, [B] the audio and [C] the hardware (HW) action” is conjunctive in light of the language of the claims and the specification of the ’887 patent. As such, Petitioner has the burden, but fails to show all three (3) components to be reproduced at Yun’s mobile device, including: [A] the display, [B] the audio and [C] the hardware (HW) action by the HW component of the mobile device. Second, as Patent Owner observes, and we agree, “Petitioner ignores the requirement for ‘the hardware (HW) action’ entirely” and does not even mention any “hardware (HW) action.” Prelim. Resp. 14 (Paper 10).” slip op. at 34
- Strike new argumentNew argument disregardedDecided for patent owner
“6 In the Petitioner’s Reply to the Patent Owner’s Preliminary Response, Petitioner presents several arguments to address the Fintiv factors, Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) (“Fintiv”). In support of Factor 6, Petitioner argues for the first time that Overton (not Yun or Lu) is allegedly teaching “the hardware (HW) action” aspect of the claims. Prelim. Reply 5 (citing Ex. 1006, 11:13–24 “force feedback . . . to the input devices 142 [shown in Figure 1]”). However, we decline to consider this belated argument raised for the first time in the context of a Fintiv analysis instead of the Petition.” slip op. at 41
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,934,887 - PTAB · Jan 21, 2025 · IPR2023-01458 · APJ Meredith C Petravick · IPR · Remand
On remand, the Board denied institution because the petition failed to show a reasonable likelihood that any challenged claim was unpatentable, including over Hall and Borowski.
RulingsRemand decision- RemandOther
“We entered a first Decision Denying Institution of Inter Partes Review (Paper 8), and Petitioner filed a Request for Director Review (Paper 13). The former Director of the United States Patent and Trademark Office vacated our denial of institution and remanded for further proceedings consistent with the former Director’s decision. Paper 14. After considering the Petition, the Preliminary Response, the Director’s Review Decision, and the post Director’s Review Supplemental Briefing (Papers 16 and 17), and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’236 patent.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“After considering the Petition, the Preliminary Response, the Director’s Review Decision, and the post Director’s Review Supplemental Briefing (Papers 16 and 17), and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’236 patent. Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented 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.” Accordingly, we do not institute an inter partes review of the ’236 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts: “A [person of ordinary skill in the art (‘POSITA’)] as of August 24, 2016 would have had an undergraduate degree in mechanical engineering, electrical engineering, or physics, and two to three years of experience in LiDAR design.” Pet. 9 (citing Ex. 1003 ¶¶ 59–64). Patent Owner does not dispute Petitioner’s definition of a POSITA. Prelim. Resp. 9. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it is consistent with the ’236 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“37 C.F.R. § 42.100(b). In applying this standard, we generally give claim terms their ordinary and customary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). We do not need to construe any terms explicitly to reach our decision. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))); see also Pet. 10 (“[N]o formal constructions are necessary.”); Prelim. Resp. 10 (“[N]o formal constructions are necessary.”).” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,422,236 - PTAB · May 24, 2024 · IPR2023-00861 · APJ Christopher M Kaiser · IPR · Remand
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable under any asserted ground.
RulingsRemand decision- RemandOther
“Accordingly, the Director instructed us to “determine whether Petitioner has demonstrated that Figure 1 of Godefroy ‘is clear on its face’ or would have reasonably suggested the placement of Godefroy’s sacrificial anode ‘within 10 inches’ of the hot liquid inlet.” Id. at 9. “In making this determination,” the Director instructed us to “consider whether the expert testimony provides sufficient ‘technical detail, explanation, or statements supporting why the expert determines that the feature in question was required or would have been obvious based on the prior art disclosure.’” Id. In addition, although the Director’s decision “is limited to [our] application of Hockerson to the grounds in the Petition involving Godefroy,” the Director instructed us also to “consider what effect, if any, this decision has on the other asserted grounds.” Id. Finally, the Director instructed us to “set forth [our] interpretation” of “the limitation ‘within 10 inches of a hot liquid inlet to the radiator.’” Id. at 8 n.4.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“original decision, the Director’s decision, and the evidence currently of record, we determine that Petitioner has not shown a reasonable likelihood that it will prevail in showing that at least one of the challenged claims is unpatentable. Accordingly, we do not institute an inter partes review of any challenged claim based on any ground asserted in the Petition. IV. ORDER For the reasons given, it is: ORDERED that, pursuant to 35 U.S.C. § 314, the Petition is denied, and no inter partes review is instituted.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“evidence. The challenged claims require that a sacrificial anode be placed within a certain distance—10 inches—of the hot liquid inlet, and, because the inlet has some non-zero size, it might be possible for an anode to be within that distance from some parts, but not from all parts, of the inlet. Accordingly, specifying the center axis of the inlet as the point from which to measure the distance to the anode improves on the plain words of the claim in terms of achieving the claim’s objective of placing the anode within a specified distance of the inlet. Moreover, when discussing the distance from the inlet to the anode, the specification of the ’494 patent uses the language “within 10 inches in any direction of the center axis of the inlet connection.” Ex. 1001, 7:61–64. Thus, the intrinsic evidence supports adopting Petitioner’s claim construction. Petitioner’s declarant, Dr. Medlin, relies on Petitioner’s proposed construction. See, e.g., Ex. 1004 ¶¶ 20 (noting that the construction “within 10 inches of the center axis of [a] hot liquid inlet” “ha[s] been adopted by Petitioner”), 96 (“the sacrificial anodes contained in each of the turbulators 2 would be placed within 10 inches of a center axis of a hot liquid inlet to the radiator of Tomosada”), 144 (“A POSITA would understand from Figure 1 that the sacrificial anode 14 is within 10 inches of a center axis of a hot liquid inlet”), 267 (“These teachings would further motivate a POSITA to located the sacrificial anode 12 within 10 inches of a center axis of the hot liquid inlet.”). This support for Petitioner’s proposed construction provides further reason for us to adopt it. Because it is supported by the intrinsic evidence of record, because Patent Owner proposes no alternative construction, and because Petitioner’s expert supports it, we adopt the construction of “within 10 inches of a hot liquid inlet to the radiator” that Petitioner proposes. Thus, we construe this term as “within 10 inches of the center axis of a hot liquid inlet to the radiator.” In other words, when discussing the distance between a hot liquid inlet and a sacrificial anode, we interpret “hot liquid inlet” as “center axis of the hot liquid inlet.”” slip op. at 5
- BurdenNot shown unpatentable
“Inherency may be relied upon in arguing either anticipation or obviousness. Schering, 339 F.3d at 1377 (applying inherency in an anticipation context); Par Pharma. Inc. v. TWI Pharma., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014) (applying inherency in an obviousness context). In both cases, however, “[t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). Instead, “the limitation at issue necessarily must be present, or the natural result of the combination of elements expressly disclosed by the prior art.” Par Pharma., 773 F.3d at 1195–96. Here, Petitioner has not shown sufficiently that, in Godefroy, the sacrificial anode necessarily is placed within 10 inches of the center axis of the hot liquid inlet. Dr. Medlin testifies that Figure 1 of Godefroy shows that “an entirety . . . or at least a significant portion of the sacrificial anode 14, is within 10 inches of a center axis of the inlet.” Ex. 1004 ¶ 144. But we cannot say that Figure 1 of Godefroy is clear on its face, or reasonably suggests, that this is necessarily the case. There are no dimensions shown on Figure 1, so it is unclear from the figure what the diameter of pipe 12 is. If that diameter is larger than 20 inches, then it simply is untrue that “sacrificial anode 14 is . . . necessarily placed within 10 inches of a center axis of a hot liquid inlet to the radiator,” as Dr. Medlin testifies. Id. ¶ 361. As noted above, neither Petitioner nor Dr. Medlin relies on the hot liquid inlet of Godefroy having any particular diameter, and Godefroy is silent as to the diameter of its inlet. Pet. 69–70; Ex. 1004 ¶¶ 144, 359–361, 381–382, 406–408; Ex. 1008, 1–15. Moreover, as Patent Owner notes, there is a wide range of sizes of radiators, including automobile radiators, available. Prelim. Resp. 3–5; Exs. 2001–2003. In the absence of any testimony or other evidence that tends to show that radiator inlet pipes necessarily have diameters less than 20 inches, Petitioner has not shown sufficiently that the diameter of Godefroy’s inlet pipe is small enough to ensure that any portion of the anode necessarily is within 10 inches of the center axis of the inlet.” slip op. at 11
Claim constructioncites Phillips - PTAB · Dec 1, 2023 · PGR2021-00088 · APJ John G New · PGR · Remand
The Board instituted PGR on claims 1–25 on all five grounds, finding the threshold met based on likely anticipation, obviousness, and lack of written-description support.
RulingsRemand decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 324, the Board “may not authorize a post-grant review to be instituted unless … the information presented in the petition … if such information is not rebutted would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” In conformance with the Director’s Decision, and for the reasons we explain herein, we institute post-grant review of the ’908 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“The Specification expressly teaches that, with respect to the clinical phase 2 trial described in Example 4, “Patients will have overnight [pharmacokinetic/pharmacodynamics] PK/PD assessments performed at baseline, which include an [sic] pre-dose overnight assessment and a post-dose overnight assessment for PK/PD following administration of the first dose.” Ex. 1001, col.42, ll. 12–16. This is the same quotation and clinical trial relied upon by Dr. Barnes in his Declaration, and is the only definition of a “baseline” in the ’908 patent. See Ex. 1002, 36–37. We note that placebos were evidently not employed in the phase 2 clinical study of Example 4.3 Given the sole exemplary description of “baseline” in Example 4 of the Specification, we construe the claim term reciting “reduced by at least 10% from baseline” as meaning “a reduction of at least 10% in the level of ACTH (claim 1) or 17-OHP (claim 11) compared to measurements of ACTH or 17-OHP made prior to, and/or at the beginning of, administration of the drug.”” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would typically possess a medical degree or a Ph.D. in a field related to endocrinology, and would have knowledge of hormone regulation and disorders, as well as knowledge of the treatment regimens employed to treat such disorders. Pet. 60 (citing Ex. 1005 ¶ 34). Petitioner argues that such a person of ordinary skill would also have at least three years of experience conducting research concerning endocrine disorders, including CAH or other adrenal disorders. Id. Patent Owner does not expressly contest this definition of a person of ordinary skill in the art in its Preliminary Response. For the purposes of this Decision, because we find Petitioner’s definition to be consistent with the demonstrable level of skill in the art (see, e.g., Exs. 1009, 1025, 2003, 2004,” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundInstituted
“A claim is unpatentable as anticipated under 35 U.S.C. § 102 only when “every element and limitation of the claim was previously described in a single prior art reference, either expressly or inherently, so as to place a person of ordinary skill in possession of the invention.” Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1082 (Fed. Cir. 2008). A reference may inherently anticipate if a claim limitation that is not expressly disclosed “is necessarily present, or inherent, in the single anticipating reference.” Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010). Thus, the “very essence of inherency is that one of ordinary skill in the art would recognize that a reference unavoidably teaches the property in question.” Agilent Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed. Cir. 2009) (emphasis added).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,849,908 - PTAB · Dec 13, 2021 · IPR2020-01062 · APJ Ken B Barrett · IPR · Final written decision
The Board granted cancellation of claims 1–15, 19–20, and 22–24; allowed substitute claims 26–29, 31–38, and 40–44; and denied substitute claims 30 and 39 for lack of written-description support.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 1003 ¶¶ 78–79; see Pet. 10. In the Institution Decision, we adopted Mr. Fischer’s definition for purposes of that decision. Institution Decision (Paper 7) 9–10. Patent Owner states that it “accepts that definition for the purposes of this proceeding.” Rev’d MTA 24. Mr. Fischer’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Mr. Fischer’s definition of the person of ordinary skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for “code” and “Electronic Product Code (EPC).” Opp. to Rev’d MTA 6. Patent Owner asserts that “the limitations of the substitute claims do not require construction and should, instead, be construed in accordance with their ordinary meaning.” Rev’d MTA 24. According to Patent Owner, the addition of certain features of the proposed substitute claims renders moot Petitioner’s arguments concerning the meaning of the term “code.” Id. Additionally, Petitioner argues that the content of the recited codes— an EPC and a code different from the EPC—constitutes “printed matter” (non-functional descriptive material) and, therefore, are not entitled to patentable weight. Opp. to Rev’d MTA 7–10; Pet. Sur-reply 5–6. We need not reach this issue. Even if we construed the specifically recited codes as being non-functional descriptive material, Petitioner, for reasons discussed below, has not shown that the claimed subject matter is unpatentable. Also, the parties do not identify any other issue in this case that turns on whether the two recited codes are non-functional descriptive material. See, e.g., Opp. to Rev’d MTA 11–12 (Petitioner arguing that the relied-on prior art discloses codes in the form of an EPC and a TID (i.e. a code other than the EPC)). On this record, we determine that no claim terms require express construction.” slip op. at 14
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“A patent claim is indefinite when that claim, “viewed in light of the specification and prosecution history, [does not] inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. BioSig Instruments, Inc., 572 U.S. 898, 910 (2014).” slip op. at 12
- ScopeDecided for patent owner
“Motion to Amend, that “[c]onstruing ‘a first and second memory bank’ to mean, for example, two memories instead of ‘a memory’ also impermissibly broadens the claims.” Opp. to Rev’d MTA 4 n.1 (citing Ex. 1032 ¶¶ 3024– 3027); see also Pet. Sur-reply 1–2 (“the scope of the proposed claims is impermissibly broadened to encompass logical memory banks storing codes in more than one memory.”); Tr. 7:12–13 (“That’s improper because it enlarges the scope of claims to include two memories instead of just one.”). Petitioner’s argument appears to assume that the proposed substitute claims require two memories (as opposed to the recited “memory bank[s]”) and that, because two memories are quantitatively more than one memory, the claims have been broadened. We disagree with Petitioner’s arguments. The arguments are contingent upon a construction of two memory banks being the same scope as two memories. See Opp. to Rev’d MTA 4 n.1 (“Construing . . . impermissibly broadens the claims.”). Petitioner has not offered any persuasive argument or evidence that the two different terms—“memory” and “memory bank” are coextensive or that the more general term “memory” can encompass two of the more specific “memory bank[s].” Further, even if the proposed substitute claims required two memories rather than two memory banks, adding the requirement of a second memory (or, as written in the proposed claims, two memory banks rather than “a memory” as in the issued claim) is further limiting the claims and, therefore, is not broadening the scope. See Hockerson-Halberstadt, Inc., 183 F.3d at 1374. We agree with Patent Owner that the amended language regarding two memory banks does not impermissibly broaden the scope relative to the original claims.” slip op. at 18
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 8,134,451 - PTAB · Oct 15, 2020 · IPR2019-00995 · APJ Timothy J Goodson · IPR · Final written decision
The Board granted the non-contingent motion to amend, canceling claims 2, 8, 10, 18, 19, 28–30, 32–34, 37, 38, 40–42, 45, and 47 and substituting claims 48–62, which were not shown obvious.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“minimal probative value because Patent Owner has not adequately demonstrated a nexus between the asserted objective indicia and the merits of the claimed invention. Mot. to Exclude 3–4; Reply Mot. to Exclude 1–2. This argument attacks the merits of Patent Owner’s substantive arguments on objective indicia and does not establish an evidentiary basis for excluding Mr. Van Vliet’s testimony. We agree with Patent Owner that Mr. Van Vliet’s testimony is relevant to the issue of objective indicia of nonobviousness. See Opp. Mot. to Exclude 1–2. Petitioner also argues that Mr. Van Vliet’s declaration should be excluded because it contains hearsay. Mot. to Exclude 4–6; Reply Mot. to Exclude 2. Petitioner states that it “is not moving to exclude based on the fact that the Declaration itself [is] hearsay, but rather that it contains a multitude of statements therein that are themselves hearsay, made by persons other than Van Vliet . . . .” Mot. to Exclude 5. However, as Patent Owner points out, Petitioner does not identify any specific statements in the declaration that constitute hearsay. Opp. Mot. to Exclude 4. Even after Patent Owner pointed out this lack of specificity, Petitioner’s Reply still does not clarify which specific statements in the declaration are alleged to be hearsay and instead simply repeats the assertion there are “a multitude of statements therein that are themselves hearsay.” Reply Mot. to Exclude 2.” slip op. at 11
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“however, we first consider whether Patent Owner’s Revised Motion to Amend meets the statutory and regulatory requirements of 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. Lectrosonics, Paper 15 at 4. To satisfy those requirements, Patent Owner must demonstrate that: (1) the amendment proposes a reasonable number of substitute claims; (2) the amendment responds to a ground of unpatentability involved in the trial; (3) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter; and (4) the proposed claims are supported in the original disclosure (and any earlier filed disclosure for which the benefit of filing date is sought). See 35 U.S.C. § 316(d) (2018); 37 C.F.R. § 42.121 (2018).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“We determine that the plain language of the claim, which requires that the fuel delivery connections “compris[e]” the fuel level sensor, shows that the fuel level sensor is structurally connected to the fuel level sensor. As Petitioner agrees, this claim language requires that the fuel delivery connection includes the fuel level sensor. Tr. 34:17–20. Both the fuel delivery connections and the fuel level sensor are structures, so for one to include the other, they must be physically connected. Petitioner’s argument give effect to the word “comprising.” Because a fuel delivery connection and a fuel level sensor would be operationally connected in any system that has both items, Petitioner’s interpretation essentially reads out the word “comprising” and treats the claim phrase as if it recited “fuel delivery connections and a fuel level sensor.” Our interpretation that the fuel delivery connections must be physically connected to the fuel level sensor is more faithful to the claim’s recitation that the fuel delivery connections “compris[e]” the fuel level sensor. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”) (quoting Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005)).” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“a low and high fuel level in the tanks to which the fuel delivery connection is connected.” RMTA A1. Patent Owner proposes that “low” fuel level means “empty or nearly empty” and “high” means “full or nearly full.” Id. at 5 nn.16–17 (citing Ex. 1001, 4:1–4, 6:7–12; Ex. 2002, 10). Petitioner does not contest Patent Owner’s proposed constructions or offer competing constructions for these terms. See generally Opp. RMTA; Tr. 13:17–15:14. Although Patent Owner’s argument in support of these constructions is truncated, we determine that Patent Owner’s proposals are supported by the evidence of record. The ’906 patent describes that operators can be provided with “visual representations or displays showing the fuel level in each of the tanks 12. Any visual representation or display may be used that shows at least a high level condition (tank full) and a low level condition (tank empty or nearly empty) and preferably also shows actual fuel level.” Ex. 1001, 3:66–4:4; see also id. at 6:7–10 (explaining that “[t]he control station 56 may be provided with a full readout or display for each fuel tank 12 being filled that shows the level of fuel in the fuel tank 12 including when the fuel tank 12 is near empty and near full. An alternative is to provide only fuel empty (low sensor dry) or fuel full (high sensor wet) signals.”). These descriptions equate a high fuel level with the tank being full or nearly full and a low fuel level with the tank being empty or nearly empty. Patent” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,029,906 - PTAB · Sep 21, 2020 · IPR2019-00846 · APJ Jennifer Meyer Chagnon · IPR · Final written decision
Claims 3 and 4 are cancelled, and substitute claims 12 and 13 are added; Petitioner did not prove the substitute claims obvious over the asserted combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Dr. Ducharme testifies that a person of ordinary skill in the art “would have had at least an undergraduate degree in mechanical engineering, or equivalent education, training, or experience, with at least two years of experience with [Unmanned Aeriel Vehicles (UAV)].” Ex. 1003 ¶ 72. Dr. Reinholtz testifies that a person of ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering and at least two years of experience designing mechanisms and mechanical structures of the type used in releasable couplings and locking devices. Additional education could substitute for professional experience and significant work experience could substitute for formal education.” Ex. 2001 ¶ 28. Dr. Reinholtz acknowledges that he does not view “Dr. Ducharme’s proposed definition as substantially different from [his own].” Ex. 2001 ¶ 30. We agree and note that our consideration of the issues presented does not turn on which proposed definition is applied. Dr. Ducharme and Dr. Reinholtz also acknowledge that their respective testimony would remain the same regardless of which of these definitions of a person of ordinary skill in the art is applied. See Ex. 1028 ¶ 23; Ex. 2001 ¶ 30. In any event, for purposes of this Final Written Decision, we adopt Petitioner’s description of a person of ordinary skill in the art, while maintaining our prior determination (Inst. Dec. 10) that the prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. “lugs” and “notches” Claim 1 recites, inter alia, “the shaft lock portion defining notches configured to engage corresponding lugs on the blade lock portion.” Ex. 1001, 6:7–9 (emphasis Petitioner’s (Pet. 23)). In the Institution Decision, we construed “lugs” and “notches,” in accordance with Petitioner’s proposal, as “projections” and “indentations,” respectively. See Inst. Dec. 12; Pet. 24; Ex. 1003 ¶ 86. The parties do not dispute this construction in their subsequent briefing, and we discern no reason to change this construction based on the complete record of this proceeding. Therefore, we maintain our prior construction for purposes of this Final Written Decision.” slip op. at 15
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“claims.” 35 U.S.C. § 316(d)(1)(B); see 37 C.F.R. § 42.121(a)(3) (“A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims.”). Patent Owner proposes two substitute claims in place of two challenged claims. Revised Mot. Amend 1, 27. “There is a rebuttable presumption that a reasonable number of substitute claims per challenged claim is one (1) substitute claim.” Lectrosonics, Paper 15 at 4; see 37 C.F.R. § 42.121(a)(3). Petitioner does not argue otherwise. See generally Opp. Therefore, we determine that the amendments propose a reasonable number of substitute claims.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable
“screwed onto the wrong driveshaft, when using a conventional threaded attachment mechanism (such as that described in Sasaki) is actually “mistake-proof.” Based on the evidence of record, we determine that it is not. Or, in other words, we determine that the conventional threaded attachment mechanism taught by Sasaki does not teach the Engagement Limitation (i.e., it does not prevent the clockwise lock mechanism from “be[ing] engaged in” the counterclockwise lock mechanism). According to Patent Owner, “the conventional screw-on type blade attachment mechanism does not prevent the attachment of a blade to the wrong drive.” Revised Mot. Amend 15 (citing Ex. 2001 ¶¶ 52–54, 59). Patent Owner contends that “it is relatively easy to attach a blade on the wrong drive on a UAV that utilizes the conventional screw-on type connection mechanism.” Id. (citing Ex. 2001 ¶¶ 52–54); see also Ex. 2006 (video created by Dr. Reinholtz demonstrating that a blade can be attached to the wrong drive using a screw-on type attachment mechanism). In its Reply, Patent Owner argues, again relying on the testimony of Dr. Reinholtz, that “[w]ith a conventional threaded attachment mechanism, when a blade is screwed onto the wrong driveshaft, the blade becomes engaged in the lock mechanism.” Reply 2 (citing Ex. 2016 ¶¶ 20–24). Petitioner, on the other hand, relying on the testimony of Dr. Ducharme, contends that “[w]hen a blade is forced onto the driveshaft and the threads are ‘stripped’, the blade is not, and cannot be, ‘engaged’ with the lock mechanism”; “[r]ather, the metal threads on the shaft lock portion are likely carving out new notches in the blade lock portion.” Opp. 12 (citing Ex. 1028 ¶ 49). According to Patent Owner, however, the “[i]ntent of the UAV designer is not a part of the Engagement Limitation.” Reply 2; see id. (noting that “Petitioner’s position appears to be premised on the incorrect notion that the Engagement Limitation requires the engagement of lock mechanism components in the precise way that is intended by the designer of the UAV”). Patent Owner contends that to “be engaged in,” as properly construed, “include[s] the type of connection between threads when a blade is screwed onto the wrong driveshaft.” Id. at 3. As we have construed it, to “be engaged in” merely requires “being interlocked.” See supra Section II.C.2. Relying on testimony of Dr. Reinholtz, Patent Owner further contends that “when a blade is screwed onto the wrong driveshaft, the threads on the blade mate or interlock with the threads on the driveshaft.” Reply 3 (citing Ex. 2016 ¶¶ 20, 23–24); see also Tr. 31:8–12 (“[A]s Dr. Reinholtz explains [at Ex. 2016 ¶ 23], that when a blade is misthreaded, a mechanical connection is created by engagement between the threads either because threads on the blade are deformed around threads on the shaft or threads on the shaft carved through threads on the blade.”). As shown in Dr. Reinholtz’s video, when the blades are screwed onto the wrong driveshaft, the blade and shaft are locked together (i.e., “interlocked” or “engaged”). Ex. 2006; see also Ex. 2001 ¶ 54 (describing the video, and indicating that the incorrectly installed blades “do not fall off” and are “securely attached”).” slip op. at 32
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,260,184 - PTAB · Jun 28, 2018 · IPR2017-00414 · APJ James T Moore · IPR · Final written decision
Claims 1–7 were not shown unpatentable under § 103 over either Cohen and Martin or Holmes and Martin because the combinations did not establish the claimed separate shaping before mixing.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“As used herein, the term “hearing aid profile” refers to a collection of acoustic configuration settings for hearing aid 102, which are used by a processor 110 to shape electrical signals related to sounds to compensate for the user's hearing loss. Ex. 1001, 3:11–15. Petitioner states that Patent Owner defined this term in the ’538 patent as “a collection of acoustic configuration settings for hearing aid 102, which are used by processor 110 to shape electrical signals related to sounds to compensate for the user’s hearing loss.” Pet. 15. According to Petitioner, this construction is consistent with the plain and ordinary meaning of the term, relying upon the testimony of its witness Dr. Les Atlas. Pet. 15 (citing Ex. 1003 ¶ 38).10 Patent Owner does not dispute Petitioner’s proposed construction. Resp. 10–11. 10 Dr. Les Atlas is the Petitioner’s witness in this matter. We find him qualified to testify as to the subject matter of this proceeding, by virtue of his education and experience. See Ex. 1003 ¶ 4, and Appendix A thereto. We are cognizant of Patent Owner’s suggestion that we give his testimony “little, if any, weight” because of the similarity of the testimony with Petitioner’s arguments and discrepancies between it and his deposition testimony. Resp. 31–34. We give Dr. Atlas’ testimony appropriate contextual weight herein based upon the content of the testimony itself, and any contrary testimony in Exhibit 2005. We decline to assign generally no weight to his testimony, however. supports, and is consistent with, Petitioner’s proposal. Ex. 1001, 3:12–16. Accordingly, we determine that the broadest reasonable construction, in light of the specification of the ’538 patent, of the term “hearing aid profile” is a “collection of acoustic configuration settings for hearing aid, which are used by a processor to shape electrical signals related to sounds to compensate for a user’s hearing loss.”” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“For the purposes of our decision, we determine that no other claim terms need explicit construction. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (citation omitted).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“11 Petitioner defines the level of ordinary skill in the art as someone with a Bachelor’s degree in electrical engineering and at least two years of experience in the field of audio engineering. Pet. 14 (citing Ex. 1003 ¶ 25). Patent Owner does not challenge Petitioner’s definition. Resp. passim. The references in the record support a finding that this is the appropriate level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of skill in the art). 12 The record contains no allegations or evidence of secondary considerations.” slip op. at 10
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“We find the testimony of Dr. Atlas on the key point of obviousness of pre-mixing processing to be less persuasive than that of Mr. Brown. We also find Dr. Atlas’ testimony falls short of adequately explaining how the combination of Cohen and Martin teaches a nexus (i.e., the “based on both the first [shaped] output signal and the second [shaped] output signal” (emphasis added) (hereinafter, “based on both limitation”) limitation recited in claim 1) between the claim 1 requirements of: (1) a condition precedent of shaping both a first output signal and a second output signal; and (2) a subsequent result of using both the first shaped output signal and the second shaped output signal if the hearing aid is in a third mode. Dr. Atlas assumes that one of ordinary skill in the art would process separately each signal and then mix them. Ex. 1003 ¶ 66. We find Dr. Atlas’ assumption is flawed. Specifically, in making this assumption, Dr. Atlas does not address adequately how the combination of Cohen and Martin opines “it would have been obvious to a person of ordinary skill in the art” (emphasis added), his later sentences appears to base his opinion principally on the reason one of ordinary skill in the art could do it. Id. In particular, he testifies: Because Cohen’s hearing aid applies different hearing aid profiles to different input sources, it would have been obvious to a person of ordinary skill in the relevant art to add the functionality of the combination mode as taught by Martin to Cohen’s hearing aid such that the speaker would produce an audible sound based on the output signals of the processor. Combining two signals such that both signals are sent to a speaker to an audible combination of sounds, that is where each signal is sufficiently perceived, was well within the technical ability of a person of ordinary skill in the art. To accomplish this would require that each one of the two signals is passed through an appropriate hearing aid profile. For example, it would have been obvious to a person of ordinary skill in the art that a different hearing aid profiles could be used for an audio coil inputs and that of a neighboring conversation and environmental sounds through a microphone. Namely, it is commonly known that the different frequency sensitivity of an audio telecoil versus a microphone can be beneficially compensated for. (Rodriquez, Ex. 1011, Abstract)” slip op. at 24
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,649,538 - PTAB · Jan 10, 2018 · IPR2016-01404 · APJ Kamran Jivani · IPR · Final written decision
The Board found claims 1, 2, 13, 14, 33, 34, 39, 46, and 48 not shown unpatentable: Bensimon did not disclose the claimed restricted-access mode, and Takahashi did not cure that deficiency.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner states––and Patent Owner does not dispute––that “a person having ordinary skill in the art of secure computer data storage devices (i.e. in the art for the ’459 patent) would have had (i) a B.S. degree in electrical engineering, computer engineering, computer science, or equivalent training, and (ii) approximately two years of experience in the design or research of secure computer data storage devices.” Pet. 4 (citing Ex. 1002 ¶ 32). We agree with Petitioner’s statement of the level skill of an ordinary artisan at the time and adopt it as our own. Although Patent Owner does not directly address an ordinary artisan’s level of skill, Petitioner’s description of the level of skill accords with that of Patent Owner’s witness Dr. Goldschlag. Compare id., with Ex. 2004 ¶ 21 (opining that “one of ordinary skill in the art would have had a Bachelor’s degree in Computer Science, Computer Engineering, Electrical Engineering, or equivalent training, as well as two to three years of technical experience in the field of computer security and storage devices.”). We further find the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau,” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“within an electronic circuit embedded within the storage device.” Ex. 1001, 9:58–59, 10:34–35. Although these claims are not at issue in this case, they evince the patentee’s desire to employ each of the terms “unique” and “specific” where each is intended. It is well established that ordinarily different claim terms are presumed to have different meanings. Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (“[T]he use of two terms in a claim requires that they connote different meanings. . . .”); CAE Screenplates Inc. v. Heinrich Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”). Further, the Specification describes that, depending on the selected security level, a cryptographic key can be generated using in part “device-specific security information derived from the unique format information of the removable storage device.” Ex. 1001, 3:66–4:1. The Specification thus describes the format information of the removable storage device as “unique” but describes the security information of the device merely as “specific,” not “unique.” Finally, the Specification discloses “for exemplary purposes only” an embodiment wherein “a unique, device-specific security information can be generated from the unique characteristics of the underlying storage medium.” Id. at 7:43–47 (emphasis added). The Specification thus describes device-specific security information as unique in a particular, non-limiting example and explicitly indicates that the device-specific security information derived in that example is “unique.” See id. In light of the foregoing description, we disagree with Patent Owner’s arguments that “specific” in the context of the claim term “device-specific security information” means unique. Construing “specific” to mean “unique” as Patent Owner urges would render meaningless the subsequent use of “unique” in claims 9 and 17, without a clear indication in the Specification of such an intent. See In re Paulsen, 30 F.3d at 1480. Instead, we accord the word “specific” its ordinary and customary meaning and construe “device-specific security information” as meaning “information particular to, but not necessarily unique to, a storage device and used to secure access to the storage device.” Although we construe the disputed term “device-specific security information,” our determination that Petitioner has failed to show by a preponderance of the evidence that any of the Instituted Claims are unpatentable is not dependent upon our construction, as detailed below.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner has not identified in Bensimon explicit or inherent disclosure of the claimed restricted-access mode. Claim 1 requires operating in restrictedaccess mode “when the storage device does not have the device-specific security information.” Ex. 1001, 9:24–26. Petitioner identifies Bensimon’s read/write password, either alone or in combination with the password-enabling flag, as meeting the claimed device-specific security information. Reply 13; Pet. 22. Thus, in order to meet the requirements of claim 1, Petitioner is required to show that Bensimon discloses operating in restricted-access mode when the storage device does not have the read/write password, or alternatively does not have the combination of the read/write password and password-enabling flag. See, e.g., In re Bond, 910 F.2d at 832 (Fed. Cir. 1990) (holding that in order to show anticipation, claimed elements must be arranged as required by the claim). Petitioner does not make the required showing. As Petitioner argues: “these claims recite operating in one mode if ‘the device-specific security information’ (i.e., that instance of device-specific security information) is present, and operating in another mode if ‘the device-specific security information’ (i.e., that instance of device-specific security information) is not present.” Reply 16. Petitioner identifies Bensimon’s read/write password, alone or in combination with the password-enabling flag, as the device-specific security information, yet Petitioner does not identify in Bensimon an explicit disclosure that Bensimon’s storage device operates in the claimed restricted-access mode when the read/write password is absent from the device. See id. at 16–22. Rather, Bensimon describes two different possible modes of operation when the read/write password is absent from the storage device, namely either no protection or write protection. Ex. 1004, 5:33–39, 6:3–4, 6:13–29. Contrary to the claim language, operation in Bensimon’s write protection mode depends upon the presence of the write protection password, not upon the absence of the read/write password and password-enabling flag (i.e. the claimed device-specific security information). Ex. 1004, 6:13–23; see also Reply 16 (citing Ex. 1012 ¶ 18) (asserting the claimed restricted-access mode is met “when Bensimon’s storage device 100 only has the write-protection (read-only) password”). This disclosure is insufficient to establish anticipation because claim 1 requires operating in restricted access mode when the storage device does not have the device-specific storage information, which Petitioner asserts is the read/write password and password-enabling flag. “A claim is anticipated only if each and every element as set forth in the claims is found.” Verdegaal Bros., Inc. v. Union Oil. Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). We similarly are not persuaded that Bensimon inherently anticipates claim 1. “Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted). Here, the cited disclosure identifies two possible modes of operation when the read/write password and password-enabling flag are absent from Bensimon’s storage device, neither of which necessarily must occur.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“E. Obviousness of Claims 2 and 34 based on Bensimon in combination with Takahashi Petitioner asserts dependent claims 2 and 34 would have been obvious in light of Bensimon and Takahashi. Pet. 36–40 (analysis of claim 2) and 42–43 (analysis of claim 34). Petitioner’s analysis of these claims does not repair the deficiencies described above with regard to the claimed restrictedaccess mode. See id.; see also Reply 25. Accordingly, for the reasons discussed above in the context of claim 1 and based on the full trial record, we determine that Petitioner has failed to show by a preponderance of the evidence that claims 2 and 34 would have been obvious in light of Bensimon and Takahashi. See supra Section III.D.2.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 6,968,459
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.