- Ford Motor Company v. Safe Driving Technologies LLCAll claims unpatentablePTAB · May 15, 2023 · IPR2022-00086 · APJ Paul J Korniczky · IPR · Final written decision
Claims 1, 2, 6, 11–14, 18–20, 23, 24, 43, 44, 47, 63, 79, 97, 99, and 113 are unpatentable over the asserted prior art.
RulingsFinal written decision- Strike new argumentGranted
“Petitioner also filed a Motion to Strike Portions Patent Owner’s Sur- Reply. Paper 19 (“Motion” or “Mot.”). For reasons discussed herein, the Motion is granted.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“4. Summary of Ground 4 For the reasons above, Petitioner has persuasively accounted for all” slip op. at 69
Patent outcomesUS 8,301,108 unpatentable§ 103 obviousnessPatents in suitUS 8,301,108 - Ford Motor Company v. Safe Driving Technologies LLCAll claims unpatentablePTAB · Feb 7, 2023 · IPR2021-01341 · APJ Ryan H Flax · IPR · Final written decision
Claims 1–4 and 7–10 are unpatentable as obvious over Tan, Boies, Tan with Shuman and Behr, or Hardouin; Petitioner’s motion to exclude is granted.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“example, the types of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). Petitioner asserts: An ordinary artisan would have been a person having, as of October 24, 2001, a Bachelor’s degree in Electrical Engineering, Mechanical Engineering, Computer Engineering, or Computer Science, or an equivalent degree with at least two years of experience in electronic user interface systems and vehicle sensor systems or related technologies. Additional education may substitute for lesser work experience and vice-versa. (Ex.1003, ¶40.) Pet. 3 (citing Andrews Declaration). Patent Owner does not address the definition of the person of ordinary skill in the art, either to contest Petitioner’s proposal or to offer a different definition. See generally Resp. We adopt Petitioner’s unopposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’994 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We find Patent Owner’s reliance on the ’994 patent’s FIELD OF THE INVENTION Section misplaced. To quote it in its entirety, it states: The present invention relates to the field of telematics, namely to the field of integrating information, communication, computing and entertainment technologies into vehicles for civilian or military use. The invention particularly relates to safety control systems for vehicles to reduce driver distraction, avoiding potentially dangerous conditions tending to produce accidents. Ex. 1001, 1:21–27 (emphasis added). Thus, even were we to consider this portion of the Specification informative of the meaning of “telematic device,” it does not limit such to “a central multifunction device,” as argued by Patent Owner, but states that the field of telematics relates to integrating information, communication, computing, and entertainment technologies into vehicles, generally. Id. Nothing about this statement requires all these features to be integrated into a single device, unless the vehicle is considered the single device (which neither party suggests). See Reply 4 (discussing this section of the ’994 patent). Further, we find nothing in the ’994 patent supporting Patent Owner’s contention that the claim term “telematic device” should be restricted to a central multifunction device that integrates together the features of information, communication, computing, and entertainment technologies. The ’994 patent never states this. See Ex. 1001. Moreover, we find the ’994 patent to be much more inclusive than exclusive when describing what a telematic device can be, i.e., the scope of the term. Upon reviewing the written description of the ’994 patent, we find it makes the following statements (all emphasis added):” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We agree with Petitioner that the disputed claim language is, indeed, somewhat confusing. It appears to us from reading the language of claim 2 as a whole that Patent Owner understood that the phrase “include at least one of” could have been used rather than the language “including at least” because Patent Owner used these different phrases at different portions of claim 2. Compare Ex. 1001, 23:2, with id. at 23:14–15. Had Patent Owner intended that the disputed claim language require only one of the listed devices, it appears that Patent Owner understood how to claim that. Further, the full disputed phrase of claim 2 recites a “communication device including at least a pager, a telephone, a global location sensor, a temporal sensor, an optical sensor, a heading sensor, a bearing sensor, and an altitude sensor.” Id. at 23:14–17. However, adding to the ambiguity of the claim, this list of communication device components is tacked onto the end of a clause listing software applications (e.g., a telephone application and a wireless communication application), not devices. And, moreover, the term “communication device” is not preceded by an associated “a” or “the,” and there is no other “communication device” recited earlier in claim 2 (or claim 1 from which it depends), which further adds to the claim’s ambiguity. Patent Owner asserts that “at least” means “at least one” and Petitioner, at least in an alternative argument, appears to potentially agree and presented a case for unpatentability based on such an interpretation. See Pet. 9 (compare Grounds 1 and 2 with Ground 3). Furthermore, following Patent Owner’s stated position on this claim language in its Response (at page 19), Petitioner does not argue the matter in its Reply, other than stating at one point (not at the claim construction section) that “at least” means “all.” See Reply 1–7; but see id. at 14 (stating that the plain language of claim 2 requires all of the devices). Thus, we could adopt Patent Owner’s interpretation of claim 2’s” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Petitioner asserts that it would have been obvious to the ordinarily skilled artisan to combine Shuman with Tan because Shuman’s teachings on its GPS would illuminate the capabilities of and data provided by Tan’s GPS; these are the same or similar devices and may have the same or similar capabilities. Id. at 63 (citing Ex. 1003 ¶ 261). Petitioner asserts that it would have been obvious to the ordinarily skilled artisan to also combine Behr with Tan because Behr’s disclosure of monitoring the time of day to ensure its GPS provides relevant, safe, and legal instructions would also similarly support Tan’s GPS functioning, and also because there would have been a benefit to including Behr’s pager’s functionality in Tan’s system because such was a relevant communication technology. Id. at 64–65 (citing Ex. 1003 ¶¶ 263, 265). We agree with Petitioner’s assertions and reasoning regarding combining these prior art references with a reasonable expectation of success, and Patent Owner does not argue otherwise. See generally Resp.” slip op. at 50
Patent outcomesUS 9,713,994 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,713,994 - Siemens Industry Software Inc. v. Synopsys, Inc.Some claims unpatentablePTAB · Jan 11, 2023 · IPR2021-01215 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–5, 7, 8, 11–15, 17, 18, and 21–24 are unpatentable over Yoshimura-based grounds; claims 6, 9, 10, 16, 19, and 20 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownOther
“B. Level of Skill in the Art Petitioner offers an assessment as to the level of skill in the art as of the time the ’655 patent was filed. Pet. 9. For purposes of this proceeding, Petitioner and Petitioner’s declarant “adopt the [following] definition for the person of ordinary skill in the art”: “a Bachelor of Science degree in Electrical Engineering or Computer Engineering, and has either received academic credits for an ASIC design course or completed at least one year of work experience in the VLSI design, electronic design automation for VLSI, or ASIC design fields.” Id. at 9–10; Ex. 1003 ¶ 78 (Robins Declaration). Patent Owner applies the same definition. Resp. 5. To the extent necessary, we accept this definition because it is supported by the Robins Declaration and consistent with the ’655 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Although the phrase “separate from,” is not found in the claims, we look to the language of the claims, the description in the patent disclosure, and the prosecution history to determine what type of separateness is required by the claims. We start with the relied-upon Figure 4 of the ’655 patent, which illustrates a box labeled “Multi-Scenario ECO Database 426” that is near, but not overlapping with or surrounding, boxes labeled “Image 424” through “Image 422” and “Image 420.” Ex. 1001, Fig. 4. The ’655 patent also describes a storage device 408 as “storing scenario images 420– 424 that correspond to different scenarios,” and “can additionally store multi-scenario ECO database 426,” which “can include circuit information for multiple scenarios that can be used to estimate the impact of ECOs in multiple scenarios.” Ex. 1001, 5:9–11, 5:18–21.” slip op. at 9
- Prior constructionPrior construction adoptedDecided for patent owner
“determin[e/ing . . . ] an ECO to fix one or more design requirement violations, wherein said determining includes identifying an ECO to fix a design requirement violation in the scenario and checking that ECO against at least some of the multiple scenarios by estimating parameter values based on parameter values stored in the scenario image and the multi-scenario ECO database. Resp. 10 (citing Ex. 2001, 21-24). In reviewing the term, the District Court explained that the multi- scenario ECO database “stores parameters and allows for a quick estimation of an ECO’s impact across multiple scenarios.” Ex. 2001, 19. The District Court further summarized the ’655 patent as describing that a scenario image is “[f]irst” loaded, and if there is a design requirement violation, an ECO is determined for that scenario, and then subsequent scenarios are loaded to check whether the ECO from the first scenario will create new, or exacerbate existing, design violations. Id. (citing Ex. 1001, 4:21–33). However, as recognized by the Court, the process at the cited section is described in the ’655 patent as an “approach [that] may take an impracticably long time to fix design requirement violations in multiple scenarios” due to the long time that is required to load a scenario image. Id. at 24; Ex. 1001, 4:43–47. The Court reasoned that in order to determine an ECO to fix a violation, “determine” must involve “identifying” a possible fix and “checking” whether that fix is suitable. Id. at 23. Thus, the District Court’s construction requires both identifying and checking as part of the claimed determining step. Id. at 23–24. We agree with the District Court’s reasoning, and apply their construction in this proceeding.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Petitioner assertion that Yoshimura’s estimation in step S5 is performed to check an identified ECO is supported by the record. In determining the change to be made (the ECO), Yoshimura uses estimated parameters for the third and fourth corner conditions, calculated in step S5 through the “Hold Margin” equation. Ex. 1007, 6:63–67. Those third and fourth corner conditions are then used to check potential layouts identified in step S6. Id. at 7:18–20 (“In step S6, the automatic EC device 16 searches for a layout that does not cause a timing error under any one of the first to fourth comer conditions from the analysis results of step S4 and step S5.”). In this manner, step S5 sets an initial third corner condition having estimated parameter values that is included, as the initial step, in checking an identified ECO at steps S6–S8. Thus, Yoshimura’s determination of a change to satisfy the corner conditions is, to use Dr. Edward’s phrase, “based on” its third and fourth corner conditions having parameters estimated in step S5. For this reason, we determine that Petitioner has sufficiently shown that Yoshimura discloses the claimed limitation.” slip op. at 20
Patent outcomesUS 8,407,655 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,407,655 - Siemens Industry Software Inc. v. Synopsys, Inc.No claims unpatentablePTAB · Jan 11, 2023 · IPR2021-01213 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–4, 12, 13, and 16–19 were not shown unpatentable because neither asserted combination taught routing each net in a subset in isolation of the other nets.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“the time the ’614 patent was filed. Pet. 11. For purposes of this proceeding, Petitioner and Petitioner’s expert “adopt the [following] definition for the person of ordinary skill in the art”: a person with “a bachelor’s degree in electrical engineering, computer engineering or electrical and computer engineering or equivalent and two or more years of experience with CMOS VLSI (very large-scale integration) circuit design, electronic design 2 Patent Owner does not identify any secondary considerations to be considered. Accordingly, we do not consider this aspect of the obviousness analysis at this stage of the proceeding. automation for VLSI, or ASIC (application-specific integrated circuit) design fields.” Id. at 11; Ex. 1003 ¶ 70 (Robins Declaration). Petitioner notes that this assessment was presented to the district court by Patent Owner, but that Petitioner has also argued for a higher level of skill in the art. Id. Patent Owner and its declarant, Dr. Friedman, adopt this assessment. Resp. 8 (citing Ex. 2020 ¶¶ 25–26). We accept the assessment offered by the parties as it is supported by both declarants and is consistent with the ’614 patent and the asserted prior art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The term “global nets” is construed as “nets not contained wholly within any single tile on the chip.” Pet. 4 (citing Ex. 1009, 2); Resp. 8; Ex. 2015, 3. The phrase “[e]ach of said global nets within said second subset routed by one of said threads in isolation of said second subset’s other global nets but in respect of the routes of said subset of global nets” is construed as “[e]ach global net of the second subset is independently routed by a respective thread, without reference to the routing of any other net within the second subset, and the resulting routing does not conflict with routings of the first subset of global nets.” Resp. 7; Ex. 2001, 13; Ex. 2020 ¶ 26; Reply 3–4. We apply the same standard that is used to construe a patent claim in a civil action under 35 U.S.C. § 282(b), and construe each claim in accordance with the ordinary and customary meaning of such claim, as understood by one of ordinary skill in the art in the context of the patent, and the prosecution history pertaining to the patent, as articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019)). “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We do not expressly construe any claim terms beyond the extent necessary in our discussion of the parties’ arguments below.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree with Patent Owner that Petitioner’s citations to Mehrotra illustrate that the nets in a first area are processed in isolation from a second area that is processed in parallel with the first area, but do not teach that each net within a given area is processed in isolation of others within that same area. Petitioner’s reasoning is based on the parallel processing of distinct areas. Petitioner attributes the lack of any need for communication between processors as resulting from the “separation distance” between “areas 92 and 96.” Thus, the benefits flowing from Mehrotra’s parallel processing; i.e., improving the speed of routing, are limited to processing areas in parallel, and are not taught to apply to nets within a single processing area. Furthermore, Dr. Robins’ testimony illustrates that the nets within a given area are processed sequentially, not in parallel. Dr. Robins states that the global nets are assigned to the processor for that area when that processor is available, i.e., sequential processing of global nets within an area. Ex. 1003 ¶ 154 (“Mehrotra therefore discloses issuing each global net of a subset to [a] thread (i.e., a processor) because the thread is available”); Ex. 1019 ¶ 26 (“Area 92 contains two traces [that are] assigned to a single processor[, which] would perform routing for a first one of the nets and would then become available to route the second trace”). Dr. Robins clearly states that the second trace is processed “after routing the preceding trace.” Id. Thus, Dr. Robins’ testimony concerning how traces (nets) within a subset are processed in Mehrotra (sequentially) contradicts Petitioner’s reasoning why Mehrotra’s traces would be routed in isolation (to gain the advantages of parallel processing). We further note that Petitioner characterizes Mehrotra’s subset as “those traces and subtraces contained in 92 and 96.” Pet. 35–36. Each of areas 92 and 96 are shown to have multiple traces or subtraces therein. Ex. 1004, Fig. 9. Thus, Petitioner’s subset requires plural traces (nets) within each area, and it is not sufficient that those traces in 92 are routed in isolation from those in 96 if the traces within each area are not routed in isolation from those in the same area (nor does Petitioner argue otherwise). In view of the foregoing, Petitioner’s argument based on Mehrotra’s” slip op. at 18
Patent outcomesUS 8,234,614 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,234,614 - Beable Education, Inc. v. Achieve3000, Inc.All claims unpatentablePTAB · Jan 3, 2023 · IPR2021-01169 · APJ Eric C Jeschke · IPR · Final written decision
Claims 1–14 are unpatentable as obvious over Cappellucci_949, Cappellucci_934, Cupp, and Tudor.
RulingsFinal written decision- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“nonobviousness. Objective evidence of nonobviousness, when present, must be considered as part of an obviousness inquiry. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012). Notwithstanding what the teachings of the prior art would have suggested to one of ordinary skill in the art, the totality of the evidence submitted, including objective evidence of nonobviousness, may lead to a conclusion that one or more of the challenged claims would not have been” slip op. at 70
- ExcludeMotion to exclude, deniedMixed
“and 1022 are inadmissible in that any copyright dates on these exhibits are hearsay not falling into any exception. MTE 3–4. We are not persuaded by this argument. As an initial matter, for the same reasons discussed as to the first argument, the copyright date goes to public availability, which, under Yeda Research, is not a basis to exclude these two exhibits. See MTE Opp. 7 (relying on the prior discussion as to this argument). Thus, Petitioner need not rely on the date in the copyright marks for the truth of the matter asserted—i.e., the years.17 See id. (arguing that “the dates listed on the disputed evidence are not hearsay because Petitioner is not relying on them ‘to prove the truth of the matter asserted’” (quoting Fed. R. Evid. 801(c)(2)). Accordingly, the copyright marks in Exhibits 1017 and 1022 are not hearsay in the context of how they are relied on by Petitioner in this proceeding.” slip op. at 90
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentable
Patent outcomesUS 9,652,993 unpatentable§ 103 obviousnesscites PhillipsPatents in suitUS 9,652,993 - Delta T, LLC v. Macroair Technologies, Inc.All claims unpatentablePTAB · Dec 12, 2022 · IPR2021-01214 · APJ Tina E Hulse · IPR · Final written decision
The Board held claim 15 unpatentable as obvious over Madsen, finding the mounting shaft could be detachably secured in the hub openings and have a constant cross section.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not discern a substantive difference between the parties’ respective definitions of the level of ordinary skill in the art, nor do the parties assert that there exists any such difference. Although Petitioner’s definition includes specific knowledge of fans or other rotary machines, we understand Patent Owner’s broader definition to include such knowledge. We, therefore, adopt Petitioner’s definition of the level of ordinary skill in the art as reasonable and consistent with the level of skill reflected in the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining the prior art itself may reflect an appropriate level of skill in the art). We also find Drs. Sheard and Paulus are qualified to opine on the perspective and understanding of a person of ordinary skill in the art, as they have at least ordinary skill in the art. See Ex. 1002 ¶¶ 3–11; Ex. 1003; Ex. 2001 ¶¶ 4–11; Ex. 2002; see also Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F. 4th 1369, 1376–77 (Fed. Cir. 2022) (“To offer expert testimony from the perspective of a skilled artisan in a patent case— like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art.”).” slip op. at 7
- Prior constructionPrior construction adoptedDecided for petitioner
“2. District Court Constructions In the related district court proceeding, the district court construed certain claim terms of the ’588 patent. Ex. 1014. Petitioner proposes claim constructions that are consistent with the district court’s constructions. Pet. 10–17. Patent Owner states that it “adopts the district court’s claim constructions for the purposes of this Response.” PO Resp. 10 (citing Ex. 1014). The district court has construed the following ’588 patent claim terms: Term Construction “hub assembly” “a hub with multiple parts that are assembled together” (Ex. 1014, 13– 14) “openings” “one or more locations where the arm members may be detachably secured” (Ex. 1014, 12–13) “detachably secured”” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Rather than rely on the definitions of “secure” from a general dictionary, we focus on the Specification as the “single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (internal citation omitted). The Specification describes the use of nuts and bolts that can be used to fix or attach the arms into the slots of the hub. Ex. 1001, 4:47–51 (stating “nuts 212 can then be used to secure the arms 144 in the slots 202”) (emphasis added). But that is not the only use of “secure” in the Specification. As Petitioner notes, the Specification also describes a “securing assembly 152 that inhibits the hub from falling when the motor shaft breaks or the hub otherwise disengages from the shaft.” Id. at 3:42–45 (emphasis added). We also credit Dr. Sheard’s explanation of the operation of the ’588 patent’s securing assembly as allowing for rotational movement while preventing loss: [T]he hub 110 of the ‘588 Patent is “secured” to the motor mount 106 by way of the “securing assembly 152.” This securing assembly prevents the hub from “falling away from the motor mount” (i.e., prevents the hub from becoming lost or coming loose), but the relative engagement between the first member 154 and the second member 170 of the securing assembly continues to allow for relative rotation between the hub 110 and the motor mount 106. This relative rotation between the hub 110 and the motor mount 106 of the ‘588 Patent is not only allowed, but is absolutely necessary if the hub is going to rotate so that the fan blades may turn. Ex. 1024 ¶ 67. Patent Owner argues that the securing assembly is irrelevant to the construction of “secured” because it does not refer specifically to the arm members being detachably secured in the openings. PO Sur-reply 13. We disagree. Claim terms must be read in light of the specification and must not import limitations from the specification into the claims. Phillips, 415 F.3d at 1323. Moreover, we presume the specification uses a word consistently throughout the patent, even if describing a different embodiment. See Energy Transp. Grp., Inc. v. William Demant Holding A/S, 697 F.3d 1342, 1349–50 (Fed. Cir. 2012) (relying on the specification’s use of the word “programmable” to describe a different embodiment to construe the same term in the claim, as “there is no reason to construe the term ‘programmable’ differently when used to describe [the embodiment of the claimed invention]”); see also Phillips, 415 F.3d at 1314 (noting “claim terms are normally used consistently throughout the patent”). Thus, we decline to limit the construction of “secured” to the preferred embodiment, as proposed by Patent Owner, and consider the Specification’s description of the “securing assembly” to inform the meaning of “secured” as encompassing rotational movement and preventing loss. Accordingly, we construe the term “secured” to mean the arm members are “fixed or attached (while allowing for rotational movement) so that the arm members cannot be lost.”” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“presented at trial, we find Petitioner has the better position. We are persuaded that a person of ordinary skill in the art, seeing the unlabeled fasteners identified by Petitioner, would have found it obvious to use removable fasteners such as screws or bolts to detachably secure the mounting shafts in the openings formed by the bearing housings. See Ex. 1006, Figs. 3 and 5 (reproduced and annotated at Pet. 41). We credit the testimony of Dr. Sheard that a person of ordinary skill in the art would have been motivated to make the fan blade mounting shaft of Madsen detachably secured in the openings of the hub to “allow for the replacement of worn or broken parts, or for replacement of parts according to an ordinary course of maintenance.” Ex. 1002 ¶ 119. Dr. Sheard explains that the bearings of Madsen facilitate the rotation of the fan blade mounting arms within the bearing housing and are subject to wear and tear by the nature of the friction to which they are exposed during normal use. Id. ¶ 120. Thus, we are persuaded that a person of ordinary skill in the art would understand that the bearings of Madsen may need to be repaired, replaced, or maintained over time, which would require a user to access the inside of the bearing housing. Id. According to Dr. Sheard, “the [person of ordinary skill in the art’s] general knowledge of the need to repair, replace, or maintain fan parts such as bearings would motivate the [ordinary artisan] to combine this knowledge with Madsen in order to make the bearing housing 54 detachable from the hub.” Id. Moreover, as Dr. Sheard further explains, we find that the ordinary artisan “would be motivated to make the unlabeled fasteners illustrated in Figure 3 of Madsen . . . to be removable fasteners (e.g. screws, bolts, or other threaded fasteners). This use of removable fasteners provides a well known and easy manner for the user to access these parts in need of replacement.” Id. Dr. Sheard opines that because fans of different sizes may require blades of different lengths and fan blade mounting shafts of different designs, a person of ordinary skill in the art would have been motivated to make a single hub that accommodates different mounting shafts and blade lengths using a detachably secured mounting shaft. Id. ¶ 123. In doing so, manufacturers could avoid the cost of making multiple different hubs for different sized mounting shafts and would allow the end user the advantage of choosing different blades lengths and types for a given hub. Id. Thus, we are persuaded that these known problems in the art would have motivated a person of ordinary skill to modify Madsen to use a detachably secured mounting shaft. See ABT Sys., LLC v. Emerson Elec. Co., 797 F.3d 1350, 1360 (Fed. Cir. 2015) (“It is well settled that, even where references do not explicitly convey a motivation to combine, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”) (internal quotations and citation omitted). Finally, we find a preponderance of the evidence supports Petitioner’s assertion that because detachably secured connections between an intermediate arm member and hub were well known to a person of ordinary skill in the art, it would have been obvious to combine those known connections with the design of Madsen “as an art equivalent type of connection, yielding the predictable result of restraining movement of the intermediate arm member with respect to the hub.” Id. ¶ 124; see also KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).” slip op. at 25
Patent outcomesUS 8,579,588 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,579,588 - Nichia Corporation v. Document Security Systems, Inc.Adverse judgmentPTAB · Nov 18, 2022 · IPR2018-01165 · APJ Barbara A Benoit · IPR · Adverse judgment
The Board granted adverse judgment against Patent Owner as to claims 16–19 after their statutory disclaimer and terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Moreover, under 37 § C.F.R. 42.73(b), a “party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include . . . disclaimer of a claim such that the party has no remaining claim in the trial.” The only claims before us on remand have been disclaimed. Accordingly, we construe Patent Owner’s disclaimer to be a request for adverse judgment as to those claims which remain before us, which we now grant.” slip op. at 3
- RemandOther
“Written Decision to the United States Court of Appeals for the Federal Circuit. Papers 31, 32. The court issued its decision affirming our findings as to all claims except claims 15–19. Nichia Corp. v. Document Sec. Sys., Inc., Nos. 2020-2261, 2020-2287, 2022 WL 1218036, at *1 (Fed. Cir. Apr. 26, 2022). Specifically, the court reversed our determination that Petitioner had not shown independent claim 15 to be unpatentable and remanded for further proceedings regarding dependent claims 16–19. Id. On June 14, 2022, the court issued the formal mandate. Paper 33. On June 23, 2022, Patent Owner statutorily disclaimed claims 16–19 of the ’087 patent. Thus, claims 16–19 are no longer part of this proceeding and no issues remain for us to consider on remand. See Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Labs., Inc., 933 F.3d 1367, 1373 (Fed. Cir. 2019) (noting that disclaiming claims effectively eliminates those claims from the patent as though the disclaimed claims had never existed (internal quotations and citations omitted)); see also Asetek Danmark A/S v. CoolIT Sys., Inc., IPR2020-00747, Paper 42 at 6 (PTAB Sept. 30, 2021) (determining that a proceeding); cf. 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”).” slip op. at 2
NonePatents in suitUS 7,524,087 - Ford Motor Company v. Safe Driving Technologies LLCAdverse judgmentPTAB · Nov 14, 2022 · IPR2021-01353 · APJ Ryan H Flax · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner after it disclaimed claims 1–7 and 14–16, the only claims at issue, and terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Actions constituting a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. Patent Owner has disclaimed, under 37 C.F.R. § 1.321(a), claims 1–7 and 14–16 of the ’709 patent, and has requested that the Board enter adverse judgment against it with respect to these claims, the only claims at issue in this proceeding. Ex. 3002; Paper 14. Having reviewed Patent Owner’s disclaimer and request, we determine that entry of judgment against Patent Owner with respect to claims 1–7 and 14–16 of the ’709 patent is appropriate.” slip op. at 2
NonePatents in suitUS 10,532,709 - Exactech, Inc. v. Zimmer, Inc.Institution deniedPTAB · Nov 9, 2022 · IPR2022-00840 · APJ Sean P O’Hanlon · IPR · Institution
Institution was denied for claims 18–21 because Petitioner did not show a reasonable likelihood that DeOrio and Stulberg rendered the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“press-fit or screwed to the tibia. Pet. 33. Petitioner and its declarant, Mr. Drewry, rely on column six, lines 28–33 and Figure 4 to support the contention that “DeOrio discloses an intramedullary rod 28 that is secured to the tibia by being press-fit or screwed into a bore drilled into the intramedullary canal of the tibia.” Id. (emphasis added) (citing Ex. 1004, 6:28–33, Fig. 4; Ex. 1003 ¶¶ 50, 73); Ex. 1003 ¶ 73 (citing Ex. 1004, 6:28–33, Fig. 4). However, DeOrio makes no such disclosure of a press-fit or screwed connection between the intermedullary rod and the tibia. The relevant portion of column six discloses only that “a bore is drilled into the intramedullary canal of a patient’s tibia.” Ex. 1004, 6:30–31. Figure 4 illustrates shaft 30 of intermedullary rod 28 extending into the tibia, presumably in the bore drilled therein. DeOrio does not provide details regarding how the intermedullary rod is positioned within the bore, and certainly makes no disclosure of a press-fit or screwed connection as asserted by Petitioner. Thus, DeOrio does not support Petitioner’s contentions.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“For at least the foregoing reasons, Petitioner has not shown sufficiently that DeOrio discloses or teaches a fastener as recited in claim 18. Petitioner’s reliance on Stulberg to teach a computer-assisted tracking system does not correct this deficiency. See Pet. 38–41. Therefore, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that claim 18 or its dependent claims 19–21 would have been obvious in view of DeOrio and Stulberg.” slip op. at 16
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,029,477 - PTAB · Sep 21, 2022 · IPR2022-00707 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted review of claims 1, 2, 4–10, 12–17, 19, and 20 on all asserted grounds, finding a reasonable likelihood that Smith renders at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“from Mr. Crevelt. Based largely on this testimony, Petitioner demonstrates a reasonable likelihood that Smith discloses a “method of electronic fund transfer between a stored value account and a gaming account” as recited in limitation [1.0].” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“based on Sommer. Pet. 49–84. Because, as discussed above, Petitioner meets the threshold for institution by demonstrating a reasonable likelihood that at least claim 1 is unpatentable as obvious over Smith, we need not decide whether Petitioner’s other challenges demonstrate the same. The challenges based on Sommer, in our view, are best left for trial after full development of the record. Because “[e]qual treatment of claims and grounds for institution purposes has pervasive support in SAS,” we institute review of all the challenges as raised in the Petition. See PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018).” slip op. at 20
§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,785,926
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.