- PTAB · Aug 16, 2024 · IPR2023-00658 · APJ Scott A Daniels · IPR · Final written decision
The Board canceled original claim 1, denied the proposed substitute claim as indefinite under § 112, and did not reach the asserted obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We have, on the complete record now before us, mainly the testimony of Petitioner’s declarant, Mr. Hatch, who testifies that the designer of ordinary skill in the art would be a person who has a bachelor’s degree in furniture design or an equivalent field or alternatively two years of practical experience designing furniture . . . [which] is appropriate given the relatively simple nature of the design at issue, which involves little more than two boards forming a tabletop. Ex. 1002 ¶¶ 34–35. Based on the complete record, we adopt Petitioner’s articulation of a designer of ordinary skill as it is supported by the testimony of Mr. Hatch. Id. ¶¶ 33–38. We also note that, based on the complete trial record, our” slip op. at 18
- Expert testimonyPetitioner expert creditedDecided for petitioner
“In contrast, Patent Owner’s declarant, Mr. Williams, testifies based on his “experience[,] that tenons are generally included in the larger portion of two table top portions.” Ex. 2006 ¶ 55. However, Mr. Williams’ experience does not explain why an ordinary observer would understand such functional and ornamental characteristics of tenon and hole arrangements. Id. Nor does this testimony proclaim that tenons must be in the larger of two table top potions. Indeed, even considering an ordinary observer imbued with Mr. Williams’ level of expertise and experience, and understanding for instance that it may be more likely that the wider portion includes tenons, this does not resolve the glaring inconsistency that Figure 1 illustrates holes and Figure 8 illustrates tenons. In other words, Mr. Williams’ “experience” does not resolve the visible tension that, on one hand, Figure 1 illustrates holes as part of the claimed ornamental design in the wider portion of the table top, and on the other hand, Figure 8 illustrates tenons as part of the same wider portion of the table top. The problem here may be more eloquently explained as “Two roads diverged in a yellow wood[,] And sorry I could not travel both.” Robert Frost, The Road Not Taken, The Poetry of Robert Frost—The Collected Poems, 105, Henry Holt and Co. (1969). Considering the entire record before us in this case we credit Mr. Hatch’s testimony. The issue is not, as Patent Owner has framed it, whether “[o]ne of ordinary skill in the art would understand how the tenons and holes should be positioned on each of the table top portions.” Reply Opp. 7. The question is whether a person of ordinary skill in the art viewing the design for a table top in the proposed substitute claim as would an ordinary observer, understand whether or not the wider portion of the table top as Figures 1 and 6, holes. As Mr. Hatch persuasively explains, in the proposed substitute claim a majority of the drawings for the wider portion, i.e., Figures 1–6, omit the tenons added in Figure 8. Ex. 1011 ¶ 37 (Mr. Hatch testifying that “Figure 8 is the only amended figure that adds tenons/dowels.”) Indeed, Figures 1 and 6 not only fail to illustrate tenons, but actually are amended to include holes rather than tenons, as described in the Motion to Amend. See, e.g., Motion to Amend 6 (Patent Owner describing, “Figure 1: Removal of disclaimer of a total of four holes by amending the outline of the four holes from broken lines to solid lines.”). On the complete record in this proceeding, we determine that a” slip op. at 28
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“On the complete record in this proceeding, we determine that a designer of skill in the art considering the claim from either their own, or the perspective of an ordinary observer, would be uncertain whether the wider portion of the claimed table top depicted in Figures 1–8 includes tenons, or holes. It is reasonable that anyone observing two distinct ornamental designs for the same wider portion of the table top would be unclear as to the claimed ornamental design where holes are shown in one figure but tenons are shown in another figure illustrating the same wider portion of the table top. Observing as a whole, the figures illustrating the table top in the proposed substitute claim, the question remains, does the wider portion of the table top include tenons, or holes? See Maatita, 900 F.3d at 1376 (“Ultimately, a patent is indefinite for § 112 purposes whenever its claim, read in light of the visual disclosure (whether it be a single drawing or multiple drawings), ‘fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.’”) (quoting Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014)). proposed substitute claim fails to “inform those skilled in the art about the scope of the invention with reasonable certainty.” See Nautilus, 572 U.S. at 910. Thus, Petitioner has shown, by a preponderance of the evidence, that the proposed substitute claim is indefinite and we accordingly deny Patent Owner’s Noncontingent Motion to Amend.” slip op. at 29
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
“Federal Circuit recently explained that “a design patent is indefinite under § 112 if one skilled in the art, viewing the design as would an ordinary observer, would not understand the scope of the design with reasonable certainty based on the claim and visual disclosure.” In re Maatita, 900 F.3d 1369, 1377 (Fed. Cir. 2018). In Maatita, the Federal Circuit reversed the Board’s finding of indefiniteness of a design for a shoe bottom, i.e., a shoe sole, finding that Maatita’s two-dimensional drawing clearly demonstrates the perspective from which the shoe bottom should be viewed. A potential infringer is not left in doubt as to how to determine infringement. In this case, Maatita’s decision not to disclose all possible depth choices would not preclude an ordinary observer from understanding the claimed design, since the design is capable of being understood from the two-dimensional, plan- or planar-view perspective [] shown in the drawing. Id. at F.3d 1378–79. Different from Maatita, the issue in this proceeding is not whether an ordinary observer would sufficiently understand a three-dimensional ornamental design from a two-dimensional figure, but whether inconsistencies between figures of the proposed substitute claim render the scope of the claimed table top uncertain. See Maatita, 900 F.3d at 1376 (The Federal Circuit specifically distinguishing Maatita’s single two-dimensional drawing from indefiniteness issues raised by inconsistent drawings: “[h]ere, we are not dealing with inconsistencies in the drawings, or inconsistencies between the drawings and the verbal description, but” slip op. at 24
§ 103 obviousness§ 112 disclosurecites Nautilus - PTAB · Mar 30, 2023 · DER2017-00031 · APJ Jameson Lee · DER · Final written decision
Petitioner failed to prove that any of Respondent’s claims 24–36 was derived from Petitioner’s inventor because Respondent proved earlier conception of the disclosed subject matter.
RulingsFinal written decision- BurdenNot shown unpatentable
“Conclusion As explained above, Petitioner’s proven time of conception and communication of the subject matter of “the invention disclosed to the respondent” is “February 14, 2014 4:04:17 PM EST.” Respondent’s proven time of conception of the subject matter of “the invention disclosed to the respondent” is “Feb 14, 2014 12:55 pm.” If Respondent’s time is Eastern Standard Time, then Respondent’s conception precedes Petitioner’s conception and communication by 3 hours and 9 minutes. If Respondent’s time is Pacific Standard Time, it precedes Petitioner’s conception and communication by 9 minutes. Accordingly, Petitioner has not shown that Bradley Burnam conceived of “the invention disclosed to the respondent” prior to Marc Selner’s conception of that same subject matter, and Petitioner has not shown that Bradley Burnam communicated “the invention disclosed to the respondent” to Marc Selner prior to Marc Selner’s conception of the same subject matter. As a result, Petitioner has not proven, by a preponderance of the evidence, that any one of claims 24–36 of Respondent’s Application 15/549,111 is derived from Bradley Burnam. J.” slip op. at 51
- ExcludeNot reached
“We need not decide Respondent’s Motion to Exclude because, even considering all of the evidence Respondent seeks to exclude, Petitioner still does not prevail. Further, Respondent’s reasons for excluding Exhibit 1107 do not address admissibility, but rather implicate the proper weight to give to Marc Selner’s cross-examination testimony. See, e.g, Corning Inc. v. DSM IP Assets B.V., IPR2013-00053, Paper 66 at 19 (PTAB May 1, 2014) (Final Written Decision) (“[T]he Board, sitting as a non-jury tribunal . . . is well-positioned to determine and assign appropriate weight to the evidence presented.”). Accordingly, Respondent’s Motion to Exclude is dismissed as moot.” slip op. at 52
- Expert testimonyOther
“testimony. There also is no indication that Brad Meeuwsen possessed or considered all of the evidence that is now before us, in particular Exhibits 2067, 2067A, and 2041. Further, inventorship is a legal question. Univ. of Colorado Found. Inc. v. American Cyanamid Co., 342 F.3d 1298, 1304 (Fed. Cir. 2003). Although Brad Meeuwsen as a fact witness may testify to what he heard or received from Bradley Burnam or Marc Selner, and such testimony would be probative, any testimony from Brad Meeuwsen with regard to the ultimate conclusion of inventorship carries no weight.” slip op. at 44
None - Andersen CorporationOtherPTAB · Mar 20, 2019 · DER2017-00007 · APJ Justin T Arbes · DER · Final written decision
Andersen did not prove derivation of any invention in claims 1–22 because it did not show that Oquendo communicated the claimed stop spaced away from the corners.
RulingsFinal written decision- BurdenDecided for patent owner
“2. Burden of Proof To prevail in an instituted derivation proceeding, the petitioner must demonstrate that “an inventor named in the earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, the earlier application claiming such invention was filed.” 35 U.S.C. § 135(b). Unlike the statutory provisions governing inter partes review and post-grant review, which specify that a petitioner must prove unpatentability of a claim by a “preponderance of the evidence,” the statutory provision for derivation proceedings does not set forth an evidentiary standard for proving derivation. See 35 U.S.C. §§ 135, 316(e), 326(e). Our rules, however, provide that “[a] derivation proceeding is a trial subject to the procedures set forth in subpart A of this part [i.e., 37 C.F.R. §§ 42.1–42.80],” 37 C.F.R. § 42.400(a), and “[t]he default evidentiary standard [for trial proceedings] is a preponderance of the evidence,” 37 C.F.R. § 42.1(d).5 We apply that standard for purposes of this Decision.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“construed. Andersen argues in its Petition that the term “stop” in all of the claims should be interpreted to mean “[a] physical abutment that prohibits movement of the adjoining structure beyond a predetermined location.” Pet. 9. In the Decision on Institution, based on the record at the time, we preliminarily agreed with and adopted that interpretation, and concluded that no other terms required interpretation. Dec. on Inst. 17–18.” slip op. at 20
- Expert testimonyPetitioner expert discountedDecided for patent owner
- Adverse judgmentOther
“all of the evidence of alleged communication. Taking into account the parties’ arguments and the full record in this proceeding, we conclude that Andersen has not demonstrated that Mr. Oquendo communicated to a named inventor of the ’953 patent a conception of the complete invention recited in claim 1. Specifically, Andersen has not shown that Mr. Oquendo communicated, as part of his spacer frame design, a stop spaced away from the corners. Mr. Oquendo’s testimony regarding such an alleged communication is not corroborated by evidence in the record for all of the reasons explained above. Andersen has not proven derivation of the invention recited in claim 1 by a preponderance of the evidence. E. Alleged Derivation of the Inventions Recited in Claims 2–22 Andersen asserts that Mr. Oquendo conceived of the subject matter of” slip op. at 64
Claim constructionPatents in suitUS 9,428,953 - PTAB · Sep 25, 2017 · IPR2016-00788 · APJ Neil T Powell · IPR · Final written decision
The Board held that claims 15, 18, and 20 were not shown unpatentable over Johnson or Hitt because neither reference disclosed containment walls standing on the floor.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“broadest reasonable interpretation of the disputed claim language requires that the containment walls stand “on” the floor. In the recitation “containment walls standing upwardly from said floor,” the word “from” indicates that the containment walls are disposed “on” the floor. Consistent with this, all of the various embodiments of the invention disclosed by the ’611 patent consistently show sidewalls of a rail car that stand or rest on underlying floor of the car, as Patent Owner notes. See, e.g., PO Resp. 7–12; Ex. 1001, Figs. 1–10. Patent Owner also relies on the testimony of Mr. Long, in discussing the meaning of “standing upwardly from.” See, e.g., PO Resp. 17–21 (citing Ex. 2118 ¶¶ 101–102, 144–161). Specifically, Mr. Long testifies that a person of ordinary skill in the art would have recognized that in the ’611 patent, the term “standing” is used in “its positional sense,” citing, for instance, to a dictionary definition of “standing” as “to rest or remain upright on a base or lower end.” Ex. 2118 ¶ 145 (citing Ex. 2112, 7). Mr. Long’s testimony and the underlying support for that testimony shed favorable light on the meaning of “standing upwardly from” that is urged by Patent Owner.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“containment walls standing upwardly from said floor.” Pet. 24–28. The Petition notes that Johnson discloses floor 26 and side sheet 16. Id. at 24– 25. The Petition contends that “[b]ased on the vertical direction of the ‘side frame assembly,’ . . . , a [person of ordinary skill in the art] would have understood Johnson to teach that the containment walls stand ‘upwardly from said floor.’” Id. at 25. Showing the uncorrected versions of Figures 1 and 2 of Johnson, the Petition elaborates that “[t]his is further shown, e.g., in Fig. 2, where wall 16 is generally perpendicular with respect to the floor 26.” Id. at 25–26 (citing Ex. 1106, Fig. 2; Ex. 1103 ¶ 132). These statements do not indicate, much less prove, that Johnson discloses a containment wall that stands on a floor. Observing the vertical direction of side frame 12 and the perpendicular orientation of side sheet 16 to floor 26 does not establish that side frame 12 or side sheet 16 is disposed on floor 26. The cited testimony of Mr. Miller notes that Figure 2 shows “side sheet 16 is shown as standing normal to the floor.” Ex. 1103 ¶ 132. This too facially does not indicate, much less prove, that side sheet 16 is disposed on floor 26. slip op. at 13
- Strike new argumentNew argument disregardedDenied
“Petitioner’s citation of Johnson’s Figure 5 in the Reply is unavailing. When addressing the claim limitations “containment walls standing upwardly from said floor,” the Petition does not cite Figure 5 of Johnson. See Pet. 24–28. This section of the Petition cites paragraphs 54–56, 130– 132, 134, and 135 of Mr. Miller’s testimony (id.), and none of this testimony cites to or addresses Figure 5 of Johnson, either (see Ex. 1103 ¶¶ 54–56, 130–132, 134–135). Furthermore, it is not apparent that Figure 5 of Johnson shows the same embodiment as Figure 2; Johnson identifies Figure 5 as a cross-section of Figure 4, which Johnson introduces as “a partial side elevation view of a gondola railcar having a bolster.” Ex. 1106, 3:7–8. We determine that Petitioner’s citation of Johnson’s Figure 5 in the Reply is unavailing because it constitutes an improper new argument. In that respect, we do not regard Petitioner’s new reliance on Johnson’s Figure 5 in an attempt to address a deficiency raised by Patent Owner in its Patent Owner Response as constituting a proper response envisioned by our rules. See 37 C.F.R. § 42.23(b). Furthermore, even if Petitioner’s citation of Figure 5 were a proper response, it would not demonstrate, by a preponderance of the evidence, that Johnson discloses the claimed relationship. We are persuaded that, without any other supporting evidence, Figure 5 of Johnson does not show the relationship between containment walls and a floor clearly enough to support, by a preponderance of the evidence, Petitioner’s contention that Johnson discloses containment walls that stand on a floor.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“For the foregoing reasons, Petitioner has not persuaded us that Johnson discloses containment walls that stand on the floor, as required by independent claim 15. Additionally, Petitioner has not asserted that it would have been obvious to modify Johnson’s railcar to have such a configuration, much less provided evidence and reasoning persuading us that it would have been obvious to do so. See, e.g., Pet. 24–28. Accordingly, Petitioner has not demonstrated by a preponderance of the evidence that claims 15, 18, and 20 are unpatentable over Johnson.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,757,611 - PTAB · Dec 22, 2016 · DER2016-00022 · APJ Joni Y Chang · DER · Order
The Board denied institution because Shukh had no pending claim substantially the same as the Respondents’ claimed invention or the invention allegedly disclosed to them.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“is required to show that the petitioner has at least one claim that is: (1) the same or substantially the same as the respondent’s claimed invention; and (2) the same or substantially the same as the invention disclosed to the respondent. In the instant Petition, Petitioner asserts that claim 19 of Petitioner’s” slip op. at 3
NonePatents in suitUS 9,853,053 - PTAB · Dec 7, 2015 · IPR2015-01027 · APJ Josiah C Cocks · IPR · Order
The Board granted the joint motion to terminate the inter partes review as to both CB Distributors, Inc. and DR Distributors, LLC and Fontem Holdings 1 B.V., without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“settlement, and may identify independently any question of patentability. 37 C.F.R. § 42.74(a). Generally, however, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The” slip op. at 2
NonePatents in suitUS 8,689,805 - PTAB · Dec 3, 2014 · IPR2014-00541 · APJ Josiah C Cocks · IPR · Order
The Board granted the joint motion to terminate the review as to both parties without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The requirement for terminating review with respect to Wintek is met. Furthermore, under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” Wintek is the sole petitioner in this review. The Board has discretion to terminate this review with respect to TPK. Upon consideration of the circumstances of this case, the panel has determined to terminate this inter partes review as to both Wintek and TPK without rendering a final written decision. The oral argument scheduled for December 12, 2014 is cancelled.” slip op. at 3
- ExcludeOther
“TPK’s Motion to Seal (Paper 28) is pending. Because this proceeding is terminated without rendering a final written decision, the Motion to Seal is dismissed as moot. The subject paper (Ex. 2019) of the Motion to Seal is hereby expunged.” slip op. at 3
NonePatents in suitUS 8,217,902 - PTAB · Oct 31, 2014 · IPR2014-00323 · APJ Brian J Mcnamara · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding under their settlement without issuing a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Paper 10. Patent Owner has not yet filed a Patent Owner Response and the parties have not taken any discovery. Paper 20, 1. In a telephone conference on October 23, 2014, the parties confirmed that there are no other written or verbal agreements between them concerning the patent that is the subject of this proceeding. Under these circumstances, the Board determines that it is appropriate to enter judgment1 and terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72. It is, therefore, ORDERED that the joint motion to terminate the proceeding is GRANTED and the proceeding is hereby terminated; FURTHER ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information which shall be kept separate from the file of the involved patents under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.” slip op. at 2
NonePatents in suitUS 8,220,959 - PTAB · Oct 16, 2014 · CBM2013-00056 · APJ Michael W Kim · CBM · Order
The Board granted the parties’ joint motion and terminated the proceeding as to all parties without issuing a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 327(a), “[a] post-grant review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The requirement for terminating review with respect to Petitioner is met. Under 35 U.S.C. § 327(a), “[i]f no petitioner remains in the post-grant review, the Office may terminate the post-grant review or proceed to a final written decision under section 328(a).” Trulia is the sole petitioner in this review. The Board has discretion to terminate this review with respect to Zillow as Patent Owner.” slip op. at 2
NonePatents in suitUS 7,970,674 - PTAB · Oct 3, 2014 · IPR2014-00162 · APJ Josiah C Cocks · IPR · Order
The Board granted the parties’ joint motion to terminate IPR2014-00162 and terminated the proceeding without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“settlement, and may identify independently any question of patentability. 37 C.F.R. § 42.74(a). Generally, however, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). A decision by the Board to institute was entered on May 13, 2014. Paper 11. TAS filed a Patent Owner Response on August 13, 2014. Paper 16. GE has not yet filed any reply. Briefing, thus, has not been completed in this proceeding. As noted above, TAS also has agreed to dismiss the litigation associated with the ’686 patent. Under the circumstances, based on the record before us, the Board determines that it is appropriate to terminate this proceeding without rendering a final written decision. See 37 C.F.R. § 42.72.” slip op. at 3
NonePatents in suitUS 6,470,686
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.