• SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentable
  PTAB · Jul 5, 2018 · IPR2017-00561 · APJ Bryan F Moore · IPR · Final written decision

  Claims 2–7 were held unpatentable as obvious over Averbuj and Tsern; trial as to claim 1 was terminated based on collateral estoppel.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner

    “Patent Owner asserts that “collateral estoppel does not apply to the application of the claim 1 limitations in assessing dependent claims 2–7.” Id. at 2. Patent Owner further asserts “[a] party seeking to apply collateral estoppel based on a prior action must show that (1) the identical issue was actually litigated; (2) the issue was actually decided in a final decision on the merits; (3) the issue was necessary to the final decision; and (4) the party being estopped was adequately represented in the prior action [i.e. “the United Access test”].” Id. at 2 (citing United Access Techs., LLC v. CenturyTel Broadband Services LLC, 778 F.3d 1327, 1331 (Fed. Cir. 2015)). We agree that this is the proper test to use to assess the applicability of collateral estoppel. Nevertheless, we note United Access applies collateral estoppel in a different context and suggests that issue preclusion can be applied in an obvoisness challenge, even if the final decision on the original issue was considered under an anticipation challenge. In particular, in United Access it was noted that “[i]ssue preclusion [traditionally called “collateral estoppel”3] applies to issues litigated in prior disputes . . . [and, thus, i]t thus makes no difference that the earlier no-damages-due-to-competition ruling arose in a case under the Truth in Negotiation Act and that this dispute arises under the False Claims Act and the common law.” United Access, 778 F.3d. at 726. The “issue” of whether Averbuj teaches the limitations of claim 1 is identical to the issue in and has been litigated in the ‘970 IPR which found that Averbuj anticipates the limitations of claim 1.” slip op. at 10

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

    “1475, 1480 (Fed. Cir. 1994). Only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the ‘434 Patent would have been someone with “a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” Pet. 9 (citing Ex. 1003 ¶ 51). Patent Owner asserts through its declarant: [A Person of ordinary skill in the art at the time of the invention would have been] working on the design of memory devices, would have at least a Bachelor of Science degree in Electrical and/or Computer Engineering, and at least five years of industry experience designing memory devices and controllers. Alternatively, one of ordinary skill in the art would have a Master of Science degree in Electrical and/or Computer Engineering, and at least three years of industry experience designing memory devices and controllers. Also alternatively, one of ordinary skill in the art would have a Doctorate degree in Electrical and/or Computer Engineering, and have at least one year of industry experience designing memory devices and controllers. I agree with Petitioner’s expert that the memory industry requires a POSITA with industry experience. Ex. 2010 ¶¶ 32–33. 16 Neither party has argued that the difference between the parties’ articulated level of skill should change the analysis as to patentability. Therefore, we adopt Petitioner’s articulation of the level of skill, above, and acknowledge that, commensurate with that articulation of the level of skill, the level of ordinary skill in the art is also reflected by the prior art of record. 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).” slip op. at 16

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

    “Pet. 41. In other words, Petitioner asserts that because a BIST unit can be incorporated into a chip mounted on a PCB and because memory module 12 is part of the BIST unit, memory unit 12 is mounted on a PCB. We disagree. Unlike claim 1, which simply requires the memory unit is “on” the PCB, claim 2 requires that the memory module be a “physically separate component” and “mounted” on the PCB. Petitioner has not shown sufficient support for its broad reading that a module which is a circuit embedded in a larger circuit included in a chip may be considered a physically separate component mounted on a PCB. Claims 3–7 depend from claim 2, and the Petition fails to provide additional prior art disclosures that cure the deficiency with respect to claim 2; that is, disclosure of separate components 22 mounted on a printed circuit board in Averbuj. Pet. 41–48. Thus, Petitioner has failed to establish, by a preponderance of the evidence, its assertion that claims 2–7 are anticipated by Averbuj.” slip op. at 22

  Patent outcomesUS 8,001,434 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,001,434
• SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentable
  PTAB · Jul 5, 2018 · IPR2017-00562 · APJ Bryan F Moore · IPR · Final written decision

  Claim 4 was held unpatentable as obvious over Averbuj and Tsern; the trial was terminated as to claim 1 based on collateral estoppel.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedOther

    “Active Video Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012). The court noted that because the expert “failed to explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims,” the expert’s testimony was conclusory and bore no relation to any specific combination of prior art elements. Id. at 1327. Although the declarant’s testimony here goes further than in Active Video, it fills in gaps about how the combination would be made with only conclusory testimony that appears to be tainted with hindsight.” slip op. at 26

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Skill Analysis Petitioner asserts “[a] a person of ordinary skill in the art at the time of the ‘501 Patent would have been someone with “a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST” Pet. 6 (citing, inter alia, Ex. 1003 ¶ 51). Patent Owner asserts through its declarant: [A Person of ordinary skill in the art at the time of the invention would have been] working on the design of memory devices, would have at least a Bachelor of Science degree in Electrical and/or Computer Engineering, and at least five years of industry experience designing memory devices and controllers. Alternatively, one of ordinary skill in the art would have a Master of Science degree in Electrical and/or Computer Engineering, and at least three years of industry experience designing memory devices and controllers. Also alternatively, one of ordinary skill in the art would have a Doctorate degree in Electrical and/or Computer Engineering, and have at least one year of industry experience designing memory devices and controllers. I agree with Petitioner’s expert that the memory industry requires a POSITA with industry experience. Ex. 2010 ¶¶ 32–33. Neither party has argued that the difference between the parties’ articulated level of skill should change the analysis as to patentability. Therefore, we adopt Petitioner’s articulation of the level of skill, above, and acknowledge that, commensurate with that articulation of the level of skill, the level of ordinary skill in the art is also reflected by the prior art of record. 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).” slip op. at 15

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

    “a. Claim 1 Claim 1 is anticipated by Averbuj under the doctrine of collateral estoppel. See supra Section II. A. b. Claim 4 Claim 4 recites “[t]he memory system of claim 1, wherein the memory system comprises at least two physically separate integrated circuit packages, wherein each of the at least two physically separate integrated circuit packages comprises at least one data handler of the plurality of data handlers.” Petitioner asserts that Averbuj discloses that BIST units are “commonly incorporated into memory chips and other integrated circuits.” Ex. 1005 at ¶ [0003]. Because the memory interfaces are part of a BIST unit, Averbuj also discloses the memory interface (10, 41) is commonly incorporated into (memory or other) chips, or “integrated circuits.” Ex. 1012 at 98, 277; Ex. 1003 at ¶ 126. Averbuj further discloses that the device block (6) and the components contained therein, such as the sequencer (8) and the memory modules (12), are “distributed” and “located throughout an electronic device,” i.e., physically separated. See e.g., Ex. 1005 at ¶¶ [0013], [0015]; Ex. 1003 at ¶ 127. Since memory interfaces (10, 41) are also components of each device block (6), at a minimum, the different sets of memory interfaces (10, 41) belonging to different device blocks (6) must also be physically separated. Ex. 1003 at ¶ 127. Averbuj also discloses that the various integrated circuits or chips of an electronic device are “mounted on a circuit board,” indicating that the integrated circuits and chips comprising the electronic device are packaged integrated circuits or chips. Ex. 1005 at ¶ [0005]; Ex. 1016 at 1:15-27; Ex. 1003 at ¶ 128. Therefore, Averbuj discloses that the memory interfaces (each containing a “data handler”) of different device blocks (which comprise a “memory system”) must be distributed across “at least two physically separate integrated circuit packages.” Ex. 1003 at ¶ 129. Pet. 30–31. In other words, Petitioner asserts that because the sequencer can be” slip op. at 21

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

    “There must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008) (internal quotations omitted) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). For example, in ActiveVideo Networks, Inc. v. Verizon, our reviewing court 7 Patent Owner chose not to request additional briefing to address this ground and arguments in the Preliminary Response are generally waived (Paper 8, 2–3), however, we acknowledge these arguments due to the unusual circumstance created by the Supreme Court’s decision in SAS and to explain the background in the context of Patent Owners’ Motion to Strike. held that the following expert testimony on the motivation to combine was deficient as a matter of law: [Y]ou wanted to build something better. You wanted a system that was more efficient, cheaper, or you wanted a system that had more features, makes it more attractive to your customers, because by combining these two things you could do something new that hadn’t been able to do before. Active Video Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012). The court noted that because the expert “failed to explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims,” the expert’s testimony was conclusory and bore no relation to any specific combination of prior art elements. Id. at 1327. Although the declarant’s testimony here goes further than in Active Video, it fills in gaps about how the combination would be made with only conclusory testimony that appears to be tainted with hindsight. As to other of Petitioner’s arguments supported by its declarant, we find those to employ hindsight to piece together the device as claimed. The expert provides a host of rationales for separating the components of Averbuj into separate ICs including structures of Tsern (Ex. 1003 ¶ 143) and other secondary references. We acknowledge that Tsern contains structures that suggest the claimed configuration of the data handlers, but in this ground Petitioner does not assert Tsern as a reference, rather simply as evidence of the knowledge of one of skill in the art. Pet. 34–38. Relying on knowledge in the art does not obviate the need to prove a reference is prior art as of the critical date and show a motivation to combine existing slip op. at 25

  Patent outcomesUS 8,359,501 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,359,501
• Hamamatsu Corporation v. Sionyx, LLCSome claims unpatentable
  PTAB · Mar 28, 2018 · IPR2016-01910 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1, 2, 4–11, 13–18, 21, and 23–25 were held unpatentable; claims 12 and 26 were not, based on the stated anticipation and obviousness grounds.

  RulingsFinal written decision

  • BurdenMixed

    “In an [inter partes review], the petitioner has the burden from the 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”)). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Furthermore, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Thus, to prevail in an inter partes review, Petitioner must explain how the prior art anticipates the challenged claims and how the proposed combinations of prior art would have rendered the challenged claims unpatentable. We analyze the challenges presented in the Petition in accordance with the above-stated principles. slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s declarant, Dr. Souri, testifies that a person of ordinary skill in the art relevant to the ’591 patent “would hold a bachelor’s degree in physics, electrical engineering, or a related discipline, and have at least one year of experience working in the field of semiconductor processing or optoelectronic device design.” Ex. 1010 ¶ 32; Pet. 8. Patent Owner applies Petitioner’s proposed level of ordinary skill in the art for purposes of this proceeding. PO Resp. 7 n.2. Based on our review of the ’591 patent, the types of problems and solutions described in the ’591 patent and cited prior art, the testimony of Petitioner’s and Patent Owner’s declarants, and the arguments and evidence adduced at trial, we agree with and apply Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention. See Inst. Dec. 14–15.” slip op. at 17

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “that it would not affect incident light.7 We agree with Petitioner that Nakashiba’s “contact surface S1 is exposed to air, which has a refractive index of about 1, and is formed on a silicon substrate, which has an index of refraction between 3.5-6.5, depending on the wavelength of light,” and “[t]hus, there will be an interaction (reflection and/or refraction) with [incident] light at the contact surface S1.” Reply 6 (citing Ex. 1014 ¶¶ 30, 31); see id. at 7. We credit the testimony of Dr. Souri, who testifies as to differences in the refractive indices of air, silicon, and a finger, and that, when there is a change in refractive index between materials, there is an interaction with light. See Ex. 2012, 119:22–121:16. Dr. Souri further testifies that [W]hen light is incident upon a boundary between materials of different refractive index, both refraction and reflection occur, as is depicted in the diagram above. The fraction of incident light that is refracted, and the fraction which is reflected, may be calculated by Fresnel’s equations, using the angles of incidence and refraction given by Snell’s law. . . . [A] person of ordinary skill in the art would understand that these reflection and refraction effects constitute an interaction with electromagnetic radiation; and, consequently, said person would understand that the roughened surface S1 of Nakashiba satisfies the requirements of the term “interact” as used in the claims of the ’591 patent.” slip op. at 23

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

    “a textured region interacting with electromagnetic radiation in a manner that results in an enhanced response and/or filtering of the radiation, the embodiments do not require the textured region to provide this enhanced response and/or filtering and further, do not define the term “interaction” as an enhanced response or filtering. See Liebel-Flarsheim, 358 F.3d at 908 (“[T]he specification does not describe the invention as limited to embodiments having pressure jackets, and none of the other reasons that have been invoked for giving claims a narrow reading are present.”). The claim language “interact with” is plainly broader than Patent Owner’s proffered construction, and the “position” limitations can be read to encompass features not described in the written description. See Liebel-Flarsheim, 358 F.3d at 908 (“The fact that a patent asserts that an invention achieves several objectives does not require that each of the claims be construed as limited to structures that are capable of achieving all of the objectives.”)” slip op. at 9

  Patent outcomesUS 8,680,591 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,680,591
• Department Of Justice v. Discovery Patents, LLCSome claims unpatentable
  PTAB · Nov 9, 2017 · IPR2016-01041 · APJ Matthew R Clements · IPR · Final written decision

  Claims 11, 12, 14, 16–18, and 20–31 are unpatentable over Monroe ’183; claims 15 and 19 were not shown unpatentable over Monroe ’183.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “A petition for inter partes review may be considered only if, inter alia, “the petition identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). The Office Patent Trial Practice Guide provides guidance regarding factors to consider in determining whether a party is a real party in interest. 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Considerations may include whether a non-party “funds and directs and controls” an IPR petition or proceeding. Id. at 48,760. Additional relevant factors include: the non-party’s relationship with the petitioner; the non-party’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition. Id. Whether a party who is not a named participant in a given proceeding is a real party in interest to that proceeding “is a highly fact-dependent question.” Id. at 48,759. There is no “bright line test.” Id. Courts invoke the term real party in interest to describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion. Id. A non-party’s participation with a petitioner may be overt or covert, and the evidence may be direct or circumstantial, but the evidence as a whole must show that the non-party possessed effective control over the petitioner relating to the inter partes review. Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp., Case IPR2013-00609, slip op. at 10 (PTAB Mar. 20, 2014) (Paper 15). We have considered Patent Owner’s and Petitioner’s arguments and evidence, and we determine that Petitioner was not required to identify the Third Parties as real parties in interest because there is insufficient evidence that any of these companies exercised, or could exercise, control over Petitioner with respect to this proceeding. Patent Owner’s arguments regarding the motion practice before the Court of Federal Claims and notification of that action to the Third Parties does not reflect otherwise. Although we acknowledge that the existence of the above-identified indemnification clauses supports Patent Owner’s argument, we are unaware of any inter partes review decision in which a real party in interest finding was based solely on evidence of an indemnification clause, and we decline to do so here.” slip op. at 7

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “We decline to consider Patent Owner’s constitutional challenge as, generally, “administrative agencies do not have jurisdiction to decide the constitutionality of congressional enactments.” See Riggin v. Office of Senate Fair Employment Practices, 61 F.3d 1563, 1569 (Fed. Cir. 1995); see also Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1710 (TTAB 1999) (“[T]he Board has no authority . . . to declare provisions of the Trademark Act unconstitutional.”); Amanda Blackhorse v. Pro-Football, Inc., 111 USPQ2d 1080 (TTAB 2014), rev’d on other grounds, 284 F. Supp. 2d 96 (D.D.C. 2003); but see Am. Express Co. v. Lunenfeld, Case CBM2014- 00050, slip op. at 9–10 (PTAB May 22, 2015) (Paper 51) (“for the reasons articulated in Patlex [Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985)], we conclude that covered business method patent reviews, like reexamination proceedings, comply with the Seventh Amendment”).” slip op. at 8

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

    “We agree with Petitioner. The ’980 patent states that “the term ‘secured location’ may refer to residences, commercial properties, public venues, such as hospitals and sports arenas, government facilities, military installations and any other location, outside or inside, which is protected by a security alarm system.” Ex. 1003, 3:20–24. This definition is non-limiting and does not exclude a changeable area or region. Based on the record developed during this proceeding, we maintain that the broadest reasonable construction in light of the ’980 patent of “secured location” is “any location, outside or inside, which is protected by a security alarm system.”” slip op. at 10

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

    “We agree with Petitioner. Although the Specification of the ’980 patent gives examples of “response agency,” e.g., Ex. 1003, 1:41–43 (“an emergency response agency (e.g., the police department, the fire department or an emergency medical team)”), Patent Owner does not identify, and we do not find, a definition in the specification limiting “response agency” to 911, police, or fire departments. Patent Owner also does not identify, and we do not find, anything in the entire disclosure of the ’980 patent requiring a “response agency” to be distinct from the “surveillance system infrastructure.” Accordingly, we decline to limit “response agency” to 911, police, or fire departments, or construe it to be distinct from surveillance system infrastructure.” slip op. at 11

  Patent outcomesUS 7,323,980 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,323,980
• Qualcomm Incorporated v. Bandspeed, Inc.Some claims unpatentable
  PTAB · Aug 23, 2017 · IPR2016-00623 · APJ James B Arpin · IPR · Final written decision

  Claims 1–5, 8–12, 14–20, 23–27, and 29–31 are unpatentable under the asserted § 103 grounds; claims 13 and 28 were not shown unpatentable.

  RulingsFinal written decision

  • Expert testimonyOther

    “of a “clear” channel is “a channel that is not already in use by a non-frequency hopping communications system” and that the broadest reasonable interpretation of an “occupied” channel is “a channel that already is in use by a non-frequency hopping communications system.”” slip op. at 21

  • Skill levelSkill level petitioner adoptedOther

    “would have a B.S. degree in Electrical and/or Computer Engineering, or an equivalent field, as well as at least 3-5 years of academic or industry experience in the wireless communications field.” E.g., 620 Pet. 11 (citing 620 Ex. 1002 ¶¶ 10–13); see 620 Ex. 1002 ¶ 14. Patent Owner and Patent Owner’s declarant, Dr. Melendez,7 adopt this assessment for purposes of this proceeding. PO Resp. 5–6; Ex. 2001 ¶ 29. We note that both Petitioner’s declarant and Patent Owner’s declarant exceed this assessment (Ex. 1002 ¶¶ 3–8; Ex. 2001 ¶¶ 10–16) and are competent to testify regarding the lower assessment of a person of ordinary skill in the art, and, for purposes of this Final Written Decision and to the extent necessary, we adopt this assessment of a person of ordinary skill in the relevant art. slip op. at 14

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

    “Id. Thus, Petitioner argues that, because multiple tests must be applied to determine the continued presence of interference regardless of the source, limiting “occupied” to NFH communications systems is overly narrow. Nevertheless, the words chosen by the patentee to describe its invention have significance. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (“It is the applicants’ burden to precisely define the invention, not the PTO’s.”). As noted above, “occupied” is only used in the Specification with respect to NFH communications systems, and neither claims 4 and 19 nor their base claims nor the intervening claims specify a single or multiple tests. Therefore, we find Petitioner’s arguments, which attempt to incorporate the teachings of “bad” and “good” channels from elsewhere in the Specification into the interpretation of these claim limitations, unpersuasive. See Intervet America, Inc. v. Kee-Vet Laboratories, Inc., 887 F.2d 1050, 1053 (Fed. Cir. 1989) (“[I]nterpreting what is meant by a word in a claim ‘is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.’”); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).” slip op. at 17

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

    “4. Other Claim Terms For purposes of this Decision, we discern no other claim terms that require express interpretation. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (explaining that “claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (quoting to allow us to construe the terms “occupied” and “clear,” we relied less on Dr. Ding’s testimony regarding how a person of ordinary skill in the art would understand these terms. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’”). Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)); see PO Resp. 7.” slip op. at 21

  Patent outcomesUS 8,873,500 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,873,500
• Hamamatsu Corporation v. Sionyx, LLCRehearing granted
  PTAB · May 26, 2017 · IPR2016-01910 · APJ Monica S Ullagaddi · IPR · Rehearing

  Rehearing was granted for claims 9, 24, and 25 because Petitioner did not show their process limitations lacked patentable weight; it was denied for claims 1, 4, 5, 7, 8, and 13.

  RulingsRehearing decision

  • RehearingRehearing, grantedRehearing, deniedGranted in part

    “panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . 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.” slip op. at 2

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

    “The relevant inquiry is not whether the Specification has support for an “enhanced response,” but whether the Specification supports construing the claim term “interact with” to mean an “enhanced response and/or filtering.” Even assuming, without deciding, for the purposes of this decision, that diffusing, redirecting, and absorbing electromagnetic radiation results in an increased quantum efficiency that could be considered to provide an enhanced response to electromagnetic radiation, Patent Owner fails to demonstrate persuasively that one of ordinary skill in the art would understand from the description in the ’591 patent Specification that the claim term “interacting with” is defined as “providing an enhanced response and/or filtering.” Furthermore, we are unable to discern a portion of the Specification of the ’591 patent that discloses such an equivalency. Not only does the ’591 patent not define “interact with,” the Abstract of the ’591 patent discloses that “[i]n one aspect, the textured region is operable to facilitate generation of an electrical signal from the detection of infrared electromagnetic radiation” and “[i]n another aspect, interacting with electromagnetic radiation further includes increasing the semiconductor substrate’s effective absorption wavelength as compared to a semiconductor substrate lacking a textured region.” Ex. 1001, Abstract (emphasis added). This passage suggests that, at least in one aspect, “interact[ing] with” electromagnetic radiation includes merely generating electrons from photons, which is not an “enhanced response” and/or “filtering,” as required by Patent Owner’s proffered claim construction.” slip op. at 4

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

    “position with sufficient evidence that demonstrates that the processes recited in claims 9, 24, and 25 do not impart structural and functional differences to the product. Moreover, Petitioner does not point to citations in the ’591 patent, testimonial evidence, or any other record evidence to support its position that the structure or functionality of the textured region resulting from the chemical etching or lasing processes recited in claims 9, 24, and 25 would be the same as the structure or functionality of a roughened surface produced by a mechanical polishing process as disclosed in Nakashiba. Rather, Petitioner provides only conclusory statements regarding its position. Given that Petitioner has not demonstrated sufficiently that the limitations recited in claims 9, 24, and 25 are not entitled to patentable weight, and in light of Petitioner’s concession that “Nakashiba does not disclose that the roughened surface S1 is formed by either lasing (in particular using short duration laser pulses) or chemical etching, as recited in claims 9, 24, and 25 of the ‘591 Patent,” we determine Petitioner has not met its burden of demonstrating a reasonable likelihood of prevailing with respect to showing that claims 9, 24, and 25 are anticipated under 35 U.S.C. § 102 by Nakashiba.” slip op. at 6

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

    “Upon review of the record, we determine Petitioner did not support its position with sufficient evidence that demonstrates that the processes recited in claims 9, 24, and 25 do not impart structural and functional differences to the product. Moreover, Petitioner does not point to citations in the ’591 patent, testimonial evidence, or any other record evidence to support its position that the structure or functionality of the textured region resulting from the chemical etching or lasing processes recited in claims 9, 24, and 25 would be the same as the structure or functionality of a roughened surface produced by a mechanical polishing process as disclosed in Nakashiba. Rather, Petitioner provides only conclusory statements regarding its position. Given that Petitioner has not demonstrated sufficiently that the limitations recited in claims 9, 24, and 25 are not entitled to patentable weight, and in light of Petitioner’s concession that “Nakashiba does not disclose that the roughened surface S1 is formed by either lasing (in particular using short duration laser pulses) or chemical etching, as recited in claims 9, 24, and 25 of the ‘591 Patent,” we determine Petitioner has not met its burden of demonstrating a reasonable likelihood of prevailing with respect to showing that claims 9, 24, and 25 are anticipated under 35 U.S.C. § 102 by Nakashiba.” slip op. at 6

  Claim construction§ 102 anticipation
  Patents in suitUS 8,680,591
• Arista Networks, Inc. v. Cisco Systems, Inc.Some claims unpatentable
  PTAB · May 25, 2017 · IPR2016-00303 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 7–10, 12–16, 18–22, 25, and 28–31 are unpatentable as obvious over Huey and ATM UNI; claim 2 was not shown unpatentable.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedMixed

    “PO Mot. 13–14. A motion to exclude is the wrong vehicle to challenge public availability, which is a substantive issue that goes to the sufficiency of the evidence, not to admissibility at issue here. FLIR Sys., Inc. v. Leak Surveys, Inc., IPR2014-00411, slip. op., Paper 113 at 4 (PTAB September 3, 2015) (“A motion to exclude is not a vehicle for addressing the weight to be given evidence.”); see also 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“A motion to exclude . . . may not be used to challenge the sufficiency of the evidence to prove a particular fact.”). For the reasons above, we do not exclude Exhibit 1028.” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “35 U.S.C. § 102(b).” In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). To qualify as a prior art printed publication, the reference must have been disseminated or otherwise made accessible to persons interested and ordinarily skilled in the subject matter to which the document relates prior to the critical date. Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008).” slip op. at 17

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

    “References within the statutory terms of 35 U.S.C. § 102 qualify as prior art for an obviousness determination only when analogous to the claimed invention.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (finding both hair brush art and toothbrush art to be analogous to a claim to a hair brush) (citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992)). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id. (citations omitted). The scope of the field of endeavor is a factual determination based on the scope of the application's written description and claims. Bigio, 381 F.3d at 1326. slip op. at 27

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “There are two problems with Petitioner’s assertion. First, Petitioner has not shown a reason to combine Kogge with Huey and the ATM UNI Specification. Second, to the extent this reference is used to show the scope and content of the art at the time of the invention, Kogge makes it clear that parallelism and pipelining are different concepts that are “generally discernably different in their general approach.” Ex. 1033, 1. Petitioner has not explained how Kogge shows that putting packets through the pipeline without waiting for the previous packet to finish would be considered operating in parallel given that this reference distinguishes parallel operation from pipeline operation. Petitioner argued at the oral hearing that Patent Owner was advocating “a particular flavor of parallelism, as opposed to what’s understood by normal parallel pipelining.” Tr. 41:6–14. However, neither Petitioner nor its declarant has explained what “normal parallel pipelining” is or what the basis is for us to define “normal parallel pipelining.” Thus, we are not persuaded by Petitioner’s contention that one of ordinary skill in the art would modify Huey to meet the limitation of performing at least two of said steps “in parallel using a pipeline.”” slip op. at 33

  Patent outcomesUS 6,377,577 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,377,577
• Varian Medical Systems, Inc. v. William Beaumont HospitalNo claims unpatentable
  PTAB · May 4, 2017 · IPR2016-00162 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–14, 16–29, 33, and 35–38 were not held unpatentable because the strong evidence of industry praise and long-felt need, with other objective evidence, outweighed the obviousness showing.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2142 (2016) (affirming that USPTO has statutory authority to construe claims according to 37 C.F.R. § 42.100(b)). Under the broadest reasonable construction standard, claim terms are generally given their ordinary and customary meaning, as would have been understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). For the purposes of this Decision, we determine that only the following claim terms need express interpretation. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). 7 A.L. Boyer, Laser “cross-hair” sidelight, Med. Phys., 5:58-60 (1978) (Ex. 1108, “Boyer”).” slip op. at 6

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

    “dimensional information” appears facially to be co-extensive with any information relevant to three dimensions. We discern that “length, width, and depth” are just such information. We have considered Patent Owner’s above-cited portions of the ’502 Patent, but are unpersuaded that those portions narrow “three dimensional information” with sufficient “reasonable 8 In evaluating the assertions set forth in the Declaration of James Balter, Ph.D., in Support of Petitioner’s Reply (Ex. 1500), we considered Patent Owner’s Motion for Observations on the Cross-Examination of Dr. James Balter (Paper 48) and Petitioner’s Response to Patent Owner’s Motion for Observations on Cross-Examination (Paper 56). 9 In the Decision on Institution, we preliminarily agreed with Petitioner’s proposed construction of “three dimensional information.” Dec. 7–8. clarity, deliberateness, and precision” such that one of ordinary skill would have understood “three dimensional information” as co-extensive with Patent Owner’s proffered construction. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). For example, column 2, lines 42–48 and 51–55 certainly disclose that “volume” is desirable, but does not provide any equivalence between “three dimensional information” and “volume.” Indeed, column 2, lines 54–55 disclose “provide information regarding the location of soft-tissue target volumes,” indicating that “information” is a subset of “volume.” In another example, column 3, lines 40–43, mentions “three-dimensional (3- D) images,” which we agree would appear to require “volumetric” data; however, the claim limitation at issue is the broader term “three dimensional information.” In a further example, column 9, line 62, through column 10, line 5, clearly refers to “volumetric data,” but does not indicate its relation to “three dimensional information.” In yet another example, column 16, lines 43–45 and 58–62, do not recite “three dimensional information,” instead disclosing “3-D structure” and “3-D nature” in relation generally to “volumetric data,” but, again, not in a manner sufficient to indicate a particular relationship. Finally, in regard to assertions set forth in the Declaration of Dr. Hashemi, we discern some merit in his assertion that when reading the claim limitation “three dimensional information” in conjunction with another claim limitation “cone-beam computed tomography,” “a CBCT image is a volumetric image that provides the location, shape, and spatial orientation of the target volume in all directions, not just its length, width, and depth.” Ex. 2080 ¶ 85. The claim limitation at issue, however, reads “an image of said object, wherein said image contains at least three dimensional information of said object based on one rotation of said x-ray source around said object” (emphasis added). Accordingly, the claim limitation does not preclude an image having more information than “information concerning three dimensions of an object (such as length, width, and depth),” such as “a volumetric image of an object generated by reconstructing 2-D projection images.” Under Patent Owner’s construction, however, the image would be required to have such information. We are unpersuaded that such information is required under a proper construction of “three dimensional information” for the reasons set forth supra. We construe “three dimensional information” as “information concerning three dimensions of an object (such as length, width, and depth).”” slip op. at 7

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

    “In the Institution Decision, we preliminary determined that “we are not persuaded that the term ‘computer’ fails to recite sufficiently definite structure. As a result, we decline to construe this limitation as a means-plusfunction limitation in accordance with § 112 ¶ 6.” Dec. 10. In its Response, Patent Owner agreed with the Board’s preliminary determination. PO Resp. 11. Petitioner did not address this construction in its Reply. See generally Pet. Reply 1–4. After considering our preliminary determination anew, in light a complete trial record, we remain unpersuaded that the term “computer” fails to recite sufficiently definite structure. Accordingly, we decline to construe this limitation as a means-plus-function limitation in accordance with § 112 ¶ 6.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Dr. Balter, Petitioner’s expert, proffers that a hypothetical person of ordinary skill in the art, with respect to and at the time of the’502 patent, would have the following qualifications: “a medical physicist with a Ph.D. (or similar advanced degree) in physics, medical physics, or a related field, and two or more years of experience in radiation oncology physics and image processing/computer programming related to radiation oncology applications.” Ex. 1102 ¶ 13. Dr. Hashemi, Patent Owner’s expert, essentially agrees, with the only major differences to the above being that an M.S. is acceptable in lieu of a Ph.D, and that three years of experience is preferred. Ex. 2080 ¶ 17. Nominally, we accept Petitioner’s proffered level of ordinary skill in the art based on Dr. Balter’s more complete explanation. We note, however, that neither party has explained substantively any significance that the difference in the proffered levels of ordinary skill in the art would have in the obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). To that end, we note that the prior art itself often reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 10

  Patent outcomesUS 6,842,502 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,842,502
• Varian Medical Systems, Inc. v. William Beaumont HospitalNo claims unpatentable
  PTAB · May 4, 2017 · IPR2016-00170 · APJ Kalyan K Deshpande · IPR · Final written decision

  Claims 1–13 and 20–31 were not held unpatentable because the strong evidence of industry praise and long-felt need, with supporting evidence of commercial success and copying, outweighed the obviousness showing.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Dr. Balter, Petitioner’s expert, proffers that a hypothetical person of ordinary skill in the art, with respect to and at the time of the’765 Patent, would have the following qualifications: “a medical physicist with a Ph.D. (or similar advanced degree) in physics, medical physics, or a related field, and two or more years of experience in radiation oncology physics and image processing/computer programming related to radiation oncology applications.” Ex. 1102 ¶ 13. Dr. Hashemi, Patent Owner’s expert, essentially agrees, with the only major differences to the above being that an M.S. is acceptable in lieu of a Ph.D., and that three years of experience is preferred. Ex. 2080 ¶ 17. Nominally, we accept Petitioner’s proffered level of ordinary skill in the art based on Dr. Balter more complete explanation. We note, however, that neither party has explained substantively any significance that the difference in the proffered levels of ordinary skill in the art would have in the obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). To that end, we note that the prior art itself often reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyNot shown unpatentable

    “In our Decision on Institution, we were not persuaded that the terms “computer” (claim 1), “controller” (claim 7), “structure” (claim 20), and “support table” (claim 26) fail to recite sufficiently definite structure, and, therefore, we declined to construe these terms as means-plus-function limitations in accordance with 35 U.S.C. § 112 ¶ 6. Dec. 10‒12. Neither Patent Owner nor Petitioner provide any more argument or evidence to disturb our interpretation of these terms. See PO Resp. 12. Accordingly, we do not construe these terms as means-plus-function limitations under 35 U.S.C. § 112 ¶ 6. See SAS Institute, Inc. v. ComplementSoft, LLC., 825 F.3d 1341, 1351 (Fed. Cir. 2016) (The Board may not change a claim interpretation from the institution decision where neither party anticipated that “already-interpreted terms were actually moving targets.”).” slip op. at 6

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

    “We begin first with the claim language, and note that “three- dimensional information” appears facially to be co-extensive with any information relevant to three-dimensions. We discern that “length, width, 6 In evaluating the assertions set forth in the Declaration of James Balter Ph.D. in Support of Petitioner’ Reply (Ex. 1500), we considered Patent Owner’s Motion for Observations on the Cross-Examination of Dr. James Balter (Paper 48) and Petitioner’s Response to Patent Owner’s Motion for Observations on Cross-Examination (Paper 56). 7 In the Decision on Institution, we preliminarily agreed with Petitioner’s proposed construction of “three-dimensional information.” Dec. 9–10. and depth” are just such information. We have considered Patent Owner’s above-cited portions of the ’765 patent, but are unpersuaded that those portions narrow “three-dimensional information” with sufficient “reasonable clarity, deliberateness, and precision” such that one of ordinary skill would have understood “three-dimensional information” as co-extensive with Patent Owner’s proffered construction. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). For example, column 2, lines 44‒56 certainly disclose that “volume” is desirable, but does not provide any equivalence between “threedimensional information” and “volume.” Indeed, column 2, lines 55–56 disclose “provide information regarding the location of soft-tissue target volumes,” indicating that “information” is a subset of “volume.” In another example, column 3, lines 41–56, mentions “three-dimensional (3-D) images,” which we agree would appear to require “volumetric data;” however, the claim limitation at issue is the broader term “three-dimensional information.” In a further example, column 9, line 54‒64, clearly refers to “volumetric data,” but does not indicate its relation to “three-dimensional information.” In yet another example, column 16, lines 23–25 and 38–42, do not recite “three-dimensional information,” instead disclosing “3-D structure” and “3-D nature” in relation generally to “volumetric data,” but, again, not in a manner sufficient to indicate a particular relationship. Finally, in regards to assertions set forth in the Declaration of Dr. Hashemi, we discern some merit in his assertion that when reading the claim limitation “three-dimensional information” in conjunction with another claim limitation “cone-beam computed tomography,” “a CBCT image is a volumetric image that provides the location, shape, and spatial orientation of the target volume in all directions, not just its length, width, and depth.” Ex. 2080 ¶ 85. Furthermore, the claim limitation does not preclude an image having more information than “three-dimensional information concerning said object” (such as length, width, and depth), “based on a plurality of two-dimensional projection images.” Under Patent Owner’s construction, however, the image would be required to have such information. We are unpersuaded that such information is required under a proper construction of “three-dimensional information” for the reasons set forth supra. We construe “three-dimensional information” as “information” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We are unpersuaded for several reasons. Primarily, we are unpersuaded because a fundamental assumption made by Patent Owner is that the patient must remain unrestrained. Patent Owner makes this assumption based on the assertion that “the primary goal of the Adler/Depp systems is to permit a patient to be relatively unrestrained during the radiotherapy procedure.” PO Resp. 33. We have reviewed Patent Owner’s supporting evidence, and are unpersuaded that the evidence supports Patent Owner’s assertion that “the primary goal of the Adler/Depp systems is to permit a patient to be relatively unrestrained during the radiotherapy procedure.” For example, Patent Owner cites to certain paragraphs of Dr. Hashemi’s Declaration, which in turn cite to certain portions of Depp. Ex. 2080 ¶¶ 117, 133, 136 (citing Ex. 1104, 11:66–12:23, Fig. 9). We have reviewed those portions of Depp, and find that while they do disclose that target location and treatment periods are on the order of seconds, they do not mention anything about “the primary goal of the Adler/Depp systems is to permit a patient to be relatively unrestrained during the radiotherapy procedure.”11 Accordingly, absent such an evidentiary foundation, we do not find credible Dr. Hashemi’s assertions concerning this matter. Even without explicit analysis by Patent Owner, we logically understand the connection between longer image acquisition and processing times, and the higher likelihood of interim patient movement. Absent the aforementioned “primary goal,” however, we are unclear as to why the converse of that goal would not be correct, i.e., that one of ordinary skill would have resolved the timing consideration by restraining the patient. Indeed, in opposition, Petitioner asserts, and we agree, that “POSA would understand that in the majority of radiotherapy treatment settings, patients are in fact restrained to some degree.” Pet. Reply 7‒8 (citing Ex. 1500 ¶¶ 33–35; Ex. 2080 ¶¶ 54–55; Ex. 1502, 142:23–143:19). In particular, we are persuaded by the consistency of Dr. Balter’s and Dr. Hashemi’s testimony that molds were used in 2000 to minimize unwanted patient motion during treatment. Ex. 1500 ¶ 35; Ex. 2080 ¶ 55.” slip op. at 23

  Patent outcomesUS 7,471,765 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,471,765
• Kamstrup A/S v. Apator Miitors ApsAll claims unpatentable
  PTAB · Dec 20, 2016 · IPR2015-01403 · APJ John F Horvath · IPR · Final written decision

  Claims 1–13 are unpatentable: claims 1, 2, 6, and 7 are anticipated by Nielsen; the remaining claims are unpatentable on the listed obviousness grounds.

  RulingsFinal written decision

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

    “reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC, v. Lee, 136 S. Ct. 2131, 2142–46 (2016). Consistent with the rule of broadest reasonable interpretation, claim terms are generally given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms that are in controversy need to be construed and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). The only term Petitioner asks us to construe is the term “seal” recited in claim 8. Pet. 21. Petitioner argues the term means a “legal” or “tamper-evident” seal. Id. Patent Owner does not dispute this interpretation, and does not ask us to construe any claim terms. We decline to construe the term “seal” because it is not necessary to resolve any controversy. See Vivid Techs., 200 F.3d at 803. We need not expressly construe any other term, as the terms are deemed to have their plain and ordinary meaning.” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “In his Declaration, Mr. Skallebæk indicated his position as Senior Vice President for Petitioner. Ex. 1018 ¶ 1. He further declared that he had read the Petition and the Exhibits thereto, and swore that all statements in the Declaration were true and correct, and signed the Declaration. Id. ¶ 2. In his deposition, Mr. Skallebæk testified that although he receives an annual salary from Petitioner, his compensation is independent of the outcome of this proceeding. Ex. 2007, 16:10–17:20. The evidence does not show that Mr. Skallebæk has any other financial interest in the outcome of the case. We duly note the interest of Mr. Skallebæk as an Officer of Petitioner in our consideration and weighing of his testimony. See Ethicon Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1465 (Fed. Cir. 1998). We do not consider the fact that someone else first drafted Mr. Skallebæk’s Declaration, which he reviewed and signed, to diminish the credibility of his testimony in any way.” slip op. at 9

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner

    “In his Declaration, Mr. Drachmann declares a “mechanics6” file was attached to the first Tunheim email and a “UFM++venture” file was attached to both the Bjerngaard and second Tunheim emails. Ex. 2008 ¶¶ 5–10. Although the body of the first Tunheim email refers to a mechanical meter assembly and indicates a sample is attached, there are no indicia in either the body or header of the email indicating a file is attached, let alone a file entitled “mechanics6.” See Ex. 2009, 1, 3. Thus, the only evidence that the “mechanics6” file was attached to the first Tunheim email is the Drachmann Declaration. See Ex. 2008 ¶ 5. Moreover, the only evidence that the first Tunheim email was actually sent to Mr. Tunheim is the Drachmann Declaration. Id. ¶ 5. A similar analysis of the Bjerngaard and second Tunheim emails leads to a similar conclusion, i.e., that the only evidence that a “UFM++venture” file was attached to these emails, or that these emails were sent to their intended recipients is the Drachmann Declaration. Id. ¶¶ 6–7; Ex. 2010 1, 3; Ex. 2011 1, 3. Patent Owner has provided no evidence corroborating Mr. Drachmann’s testimony on these points, such as a reply email from Mr. Tunheim or Mr. Bjerngaard, or a declaration from Mr. Tunheim or Mr. Bjerngaard stating he had received the emails on the dates indicated. See Ex. 2008 ¶¶ 5–7. Moreover, even assuming the first and second Tunheim emails and the Bjerngaard email were sent on the dates indicated and included the “mechanics6” and “UFM++venture” files as attachments, this evidence by itself is insufficient to prove conception of the invention prior to March 22, 2010, because it does not show that the inventors were in possession of every element of the claims. For example, each of independent claims 1, 12, and 13 requires “a housing for the transducers and electronic circuit,” and neither the “mechanics6” file nor the “UFM++venture” file shows transducers located within a housing as required by the claims. See Ex. 2009, 4; Ex. 2010, 4–24; Ex. 2011, 54–74. As Petitioner correctly notes, although the devices are referred to as ultrasonic flowmeters in Exhibits 2010 and 2011, “the presence of ‘at least one ultrasonic transducer’ actually inside the device is not apparent in any of the Exhibits themselves, and could be located elsewhere in the fluid flow and still be fully consistent with the content of the Exhibits.” Pet. Reply 2–3. Patent Owner also relies on the “mechanics7” drawings to prove prior conception of independent claims 1, 12, and 13. See Ex. 2008 ¶¶ 14, 21, 22. Although these drawings show the transducers within the housing, Patent Owner presents no evidence indicating these drawings were shown to another person. See Coleman, 754 F.2d at 359 (“Conception must be proved by corroborating evidence which shows that the inventor disclosed to others his completed thought expressed in such clear terms as to enable those skilled in the art to make the invention”) (emphasis added) (internal quotations and citation omitted).” slip op. at 13

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

    “D. Unpatentability of Claims 1, 2, 6, and 7 over Nielsen Petitioner argues Nielsen teaches all the limitations of claims 1, 2, 6, and 7, and therefore, anticipates these claims. Pet. 49–53. Nielsen discloses an ultrasonic flow meter that can be used as either a water or gas meter. Ex. 1016 ¶ 28. The flow meter includes flow meter housing 120 with measuring tube 114, and an attached water tight casing that encloses printed circuit board 202 and transducers 206.5 Id. ¶ 35. Nielsen’s casing consists of top part 134 hermetically sealed to bottom membrane 132 via soldering, laser welding, or glue. Id. ¶¶ 35, 44. The bottom membrane 132 includes first and second recesses 236 for seating transducers 206, and flow meter housing 120 includes first and second holes for receiving the first and second recesses. Id. ¶ 38. Bracing 116 is provided to lock the casing to housing 120 via one or more screws. Id. ¶ 40. 5 Petitioner maps Nielsen’s flow meter housing 120 (which includes measuring tube 114) to the claimed “flow channel,” and Nielsen’s water-tight casing (which contains a circuit board and transducers) to the claimed “housing.” See Pet. 50; Ex. 1016 ¶ 35. Figure 2 of Nielsen is reproduced below. Figure 2 is an exploded view of an ultrasonic flow meter as taught by Nielsen. Petitioner demonstrates, by a preponderance of evidence, that Nielsen discloses each of the limitations required by claims 1, 2, 6, and 7. See Pet. 49–53. Based on Nielsen’s disclosure, discussed supra, we find Petitioner’s analysis persuasive and adopt it as our own. Patent Owner does not contest” slip op. at 10

  Patent outcomesUS 8,893,559 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,893,559

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.