• Hanshow America Inc. / Hanshow Technology Co., Ltd. v. Ses-Imagotag Inc.No claims unpatentable
  PTAB · Mar 28, 2025 · IPR2024-00208 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because Wu and the asserted combinations did not teach or suggest the claimed acquisition and transmission of a sequence of shelf label identifiers.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “identifying information and the label location information[,]’ by extrapolating from the ESL that is already installed as required by steps S104 and S106.” Pet. 16 (citing Ex. 1003, 4:26-28; Ex. 1009 ¶ 81) (third and fourth alterations in original). There is no explanation or reasoning provided in the Petition to support this assertion. See id. We can find no support for this assertion that the method described in Wu requires this undisclosed step or that it could not otherwise possibly work14 to create the relationship between the label identifying information and the label location information of the added shelf label by extrapolation from the ESL that is already installed. The only evidence cited in support of this assertion is a short passage in Wu (Ex. 1003, 4:26–28) and paragraph 81 of the Declaration of Dr. Tentzeris (Ex. 1009). This short passage in Wu provides that, “[i]n step S106, the deploying device 130 or the controlling device 120 creates the relationship between the label identifying information and the label location information.” Ex. 1003, 4:26–28. This passage does not support Petitioner’s assertion. The cited paragraph in the Declaration of Dr. Tentzeris provides: 81. In my opinion, a POSITA would understand that, without acquiring this second identifier in the sequence (which 14 Prior art patents enjoy a presumption of enablement. Apple Inc. v. Corephotonics, Ltd., 861 Fed. Appx. 443, 450 (Fed. Cir. 2021). Wu is presumed to enable what it discloses. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003) (“a presumption arises that both the claimed and unclaimed disclosures in a prior art patent are enabled”). However, even without applying this presumption, Wu provides a disclosure that establishes how to create the relationship between the label identifying information and the label location information of the added shelf label by extrapolation or interpolation without the reading device acquiring the label identifying information of the adjacent shelf label which is already installed. See Ex. 1003, 3:59–4:28. is explicitly shown in FIG. 3B of Wu), the reading device could not possibly “create[] the relationship between the label identifying information and the label location information[,]” by extrapolating from the ESL that is already installed as required by steps S104 and S106. Ex. 1003, [4:26-28]. Ex. 1009 ¶ 81. Dr. Tentzeris does not support his opinion with any explanation, reasoning, facts or data, here or elsewhere. This unsupported, conclusory testimony is entitled to little or no weight. See cxLoyalty, Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1378 (Fed. Cir. 2021) (“We do not accord weight to conclusory expert testimony.”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). There is no evidence that supports Petitioner’s assertion that a skilled artisan would understand from Wu that the reading device acquires the label identifying information of a second shelf label that is already installed and adjacent to the added shelf label.” slip op. at 27

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person having ordinary skill in the art relating to the subject matter of the ’709 Patent as of the Critical Date (“POSITA”) would have had at least a Master of Science Degree in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field (or a similar technical Master’s degree, or higher degree). Pet. 6 (citing Ex. 1009 ¶ 31). Petitioner further contends, in the alternative, that “a POSITA would have had a Bachelor’s Degree (or higher degree)” in one of the fields noted above, with “two or more cannot demonstrate unpatentability of any claim of the ’709 Patent because Petitioners fail to identify a ‘reading device’ that acquires and transmits the ‘sequence of label identifiers’ recited by the claims.”). Our decision is based on our determination that Petitioner has failed to establish that the cited art teaches or suggests acquiring and transmitting a sequence of label identifiers as recited in the independent claims of the ’709 patent. years of work experience” in one of those fields. Id. According to Petitioner, “[a]dditional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” Id. Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art. PO Resp. 16. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner, as it is not disputed by the Patent Owner and is consistent with the ’709 patent and the asserted prior art.” slip op. at 10

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

    “necessary to resolve the controversy involved in this IPR, and the terms of the ’709 Patent should be given their ordinary and customary meaning.” Pet. 4. In the claim construction section of its Response, Patent Owner discusses the claim terms “location(s)” and “planogram.” See PO Resp. 16– 29. As discussed in our analysis below, we determine that Petitioner has failed to show that the prior art teaches or suggests certain limitations of the claims that do not include either the term “location(s)” or “planogram.” Accordingly, no need exists to expressly construe any claim terms to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Our decision relies on the plain and ordinary meaning of the limitations on which our decision is based and no need exists to expressly construe any claim term to make our decision.8” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Based on the entire record of this proceeding, we find that Wu does not teach or suggest: (1) “acquiring, by a reading device, a sequence of label identifiers . . . comprising a label identifier of an adjacent shelf label which is adjacent to the added shelf label” as recited in independent claim 1: (2) “transmitting, by the reading device, the sequence of label identifiers to the computer system” as recited in independent claim 1: (3) “acquiring, by a reading device, a sequence of label identifiers . . . comprising a label identifier of an adjacent shelf label which is adjacent to the added shelf label” as recited in independent claim 10; (4) “transmitting, by the reading device, the sequence of label identifiers to the computer system” as recited in independent claim 10: (5) “the computer system being configured to receive, from the reading” slip op. at 37

  Patent outcomesUS 11,010,709 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,010,709
• Netflix, Inc. v. Gotv Streaming, LLCNo claims unpatentable
  PTAB · Oct 29, 2024 · IPR2023-00759 · APJ Richard M Lebovitz · IPR · Final written decision

  Claims 1–20, 31, and 34 were not proven unpatentable under either obviousness ground based on Hariki, Harris, and Dees.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “obviousness”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “1. Independent Claim 1 The first ground of unpatentability is based on Hariki and Harris. We” slip op. at 27

  • ExcludeMotion to exclude, grantedGranted in part

    “customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips, 415 F.3d at 1312–13. Patent Owner did not provide evidence that Exs. 2007, 2008, 2009, 2011, and 2012 were available before the invention was made (i.e., Aug. 1, 2007). As shown in the table above, these exhibits have dates identifying information that suggests publication after the effective filing date. Thus, we agree with Petitioner that Exhibits 2007, 2008, 2009, 2011, and 2012 should be excluded as not credible evidence of how one of ordinary skill would have understand the terms recited in the issued claims of the ’865 patent because Petitioner did not establish these definitions were available at the time the invention was made. Consequently, Patent Owner’s Motion to Exclude Exhibits 2007, 2008, 2009, 2011, and 2012 is granted.” slip op. at 77

  Patent outcomesUS 8,103,865 not shown unpatentable
  § 103 obviousnesscites Phillips · Markman · KSR · Graham
  Patents in suitUS 8,103,865
• Apple Inc. v. Scramoge Technology Ltd.No claims unpatentable
  PTAB · May 5, 2023 · IPR2022-00118 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 6, 7, 16, 17, 19, and 20 were not shown unpatentable over Hasegawa under § 103 because Hasegawa did not disclose the separately claimed connection terminals.

  RulingsFinal written decision

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

    “We turn first to the language of the claim. Claim 6 recites a coil, a first connection terminal connected to an outer end of the coil and a second connection terminal connected to an inner end of the coil (claim limitations 6.1, 6.2, and 6.3). Claim 6 further recites a connecting unit (claim limitation 6.5) comprising a third connection terminal connected to the first connection terminal, a fourth connection terminal connected to the first connection terminal, and a wiring layer connected to the third connection terminal (claim limitations 6.6, 6.7, and 6.8). Claim 6 does not explicitly recite a connection between the coil and the connecting unit, except through the first and second terminals, i.e., the first and second connection terminals are connected to the outer and inner ends of the coil and the third and fourth connection terminals of the connecting unit, respectively. The Specification informs us that “the coil unit 200 (subject matter not recited in the claim) may include first connection terminal 210, a second connection terminal 220 and a coil 230” and that “first connection terminal 210 is located at one end of the coil 230 and the second connection terminal is provided at the other end of the coil 230.” Ex. 1001, 4:57–63. The Specification further states “[t]he first and second connection terminals 210 and 220 are necessary for connection with the connecting unit 300.” Id. at 4:66–67. The claim recites the first and second connection terminals are connected to the coil; and the Specification describes the first and second connection terminals 210, 220 as being part of coil unit 200, a structure different from coil 230. The Specification does not describe an embodiment in which the first and second connection terminals are not part of a coil unit that is separate from the connecting unit. Therefore, we do not read claim 6 to encompass an embodiment in which the first and second connection terminals are part of the coil itself or are part of a connecting unit that is directly connected to the coil without a separate coil unit in between them.. A reading of the claim that is consistent with the claim language and the Specification also requires we read claim 6 to require that the coil and the connecting unit are separate.” slip op. at 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “The fundamental premise of Petitioner’s argument is inconsistent with our claim construction. Section V supra. Petitioner acknowledges that in Hasegawa the entire line 34, 35 (not just the ends) is a part of the connecting unit. Pet. 31; Reply 2; Hr’g. Tr. 10:1–14:15. In Hasegawa, then, all the connection terminals (the first, second, third and fourth terminals) are on the connecting unit. Thus, we agree with Patent Owner that Hasegawa does not disclose the claimed first and second connection terminals connected to the coil as separate and distinct from the claimed “connecting unit” that overlaps the receiving space. Petitioner has thus failed to establish by a preponderance of the evidence that claim 6 is unpatentable. 3. Independent Claim 16 Independent claim 16 is similar to claim 6, except that instead of limiting the location of the connecting unit to “overlapping the receiving space in a vertical direction perpendicular to the adhesive layer,” as recited in claim 6, claim 16 recites only that the connecting unit is “disposed corresponding to the receiving space.” The difference between claims 6 and 16 does not bear on the parties’ arguments or on the substance of our analysis concerning the disclosures in Hasegawa. See Pet. 38–42. Therefore, we determine that Petitioner has failed to establish by a preponderance of the evidence that challenged claim 16 is unpatentable over Hasegawa.” slip op. at 19

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “Having reviewed the arguments of the parties and the supporting evidence, we conclude that Petitioner has not demonstrated by a preponderance of the evidence that the challenged claims are unpatentable. Having determined that no challenged claims are unpatentable, we dismiss Patent Owner’s Revised Motion to Amend as moot.” slip op. at 2

  Patent outcomesUS 10,804,740 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,804,740
• ZTE Corporation / ZTE (USA), Inc. et al. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentNo claims unpatentable
  PTAB · Oct 14, 2022 · IPR2021-00698 · APJ John A Hudalla · IPR · Final written decision

  Claims 1–45 were not shown unpatentable because the cited references did not establish the claimed limitations arranged as required or cure that deficiency.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill in the art (or “POSITA”) “would at least have [had] a bachelor’s degree in electrical engineering, computer engineering, or a related engineering discipline and two or more years of industry experience in the field of telecommunications, or equivalent experience, education, or both” and “knowledge or familiarity with telecommunication.” Pet. 13 (citing, inter alia, Ex. 1003 ¶ 41). Patent Owner does not propose an alternative definition. See PO Resp. 4. We adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifiers “at least” and “or more,” which introduce ambiguity. Based on the full trial record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’505 patent and the asserted prior art.” slip op. at 8

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

    “In our Decision on Institution, we determined that 35 U.S.C. § 112 ¶ 6 did not apply to the limitation in claim 14 that recites “a formatter to format the received data into at least one SMS (Short Message Service) message.” Dec. on Inst. 11 (citing Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291, 1298 (Fed. Cir. 2018); Ex. 1001, 1:66–2:1, 4:26–27, 4:46–51). Neither party addressed this determination after institution. We maintain our determination that § 112 ¶ 6 does not apply to this limitation, and we instead apply the plain and ordinary meaning. Thus, we determine that no terms require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

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

    “Thus, we determine that no terms require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

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

    “c. Analysis At the outset, we note that Petitioner relies solely on an express anticipation theory for this ground. Petitioner did not put forth any contentions based on inherent anticipation, and Petitioner did not put forth any arguments or evidence like those in Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015), to show that “a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Thus, we must decide whether Haller discloses “all elements of [the] claimed invention arranged as in the claim.” Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008).” slip op. at 19

  Patent outcomesUS 7,203,505 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,203,505
• 3shape A/S / 3shape Inc. v. Align Technology, Inc.No claims unpatentable
  PTAB · Jul 16, 2020 · IPR2019-00151 · APJ Neil T Powell · IPR · Final written decision

  Claims 15–30 were not shown unpatentable because Petitioner failed to establish the required motivation to combine Picard with Ishihara or a reasonable expectation of success combining Gmitro with Tiziani.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “After considering the evidence and arguments of the parties, we determine that Petitioner has not proven by a preponderance of the evidence that claims 15–30 of the ’448 patent are unpatentable. See 35 U.S.C. § 316(e). We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a).” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “We agree that the law does not require Petitioner to show a person of ordinary skill in the art would have viewed the proposed modification as the most preferred or desirable approach. The law does, however, require Petitioner to show not only that a person of ordinary skill in the art could have combined the references in the proposed manner, but that a person of ordinary skill in the art would have had a reason to combine the references’ teachings in the proposed manner. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis added) (citation omitted) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”). Here, Petitioner does not do so.” slip op. at 25

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Patent Owner persuades us that, in Picard, the axial chromatism of lens 15 constitutes a key feature of its system, not a problem. PO Resp. 27– 31. We credit the unrebutted testimony of Mr. Aikens that Picard’s “basic principle of operation, and purported point of novelty, requires focusing light at different planes via axial chromatic aberration,” provided by lens 15. Ex. 2019 ¶ 107. Mr. Aikens explains that Picard leverages the axial chromatism of lens 15 to ascertain the position of an object along the z-axis. Id. ¶¶ 68–70, 107–116. Consistent with this, Dr. Sergienko testifies that “[t]he axial chromatism in Picard is the main feature to achieve this section,” elaborating that “[t]hey’re arranging the device to provide the longitudinal dynamics, because longitudinal dynamics, it’s information about position of the focal planes along the axis longitudinally.” Ex. 2012, 85:21–86:10.” slip op. at 24

  • Strike new argumentNew argument disregardedDecided for patent owner

    “have foreseen Patent Owner’s argument does not justify its insufficient explanation and lack of evidence in the Petition. As Patent Owner argues, its ITC brief, filed approximately a month before the Petition was filed, provided effective notice of Patent Owner’s position that there would have been issues using Gmitro’s fiber-optic bundle to carry the plurality of light beams used in Tiziani. Id. Moreover, even without such express notice, Petitioner should have recognized the requirement that its Petition must “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). The Petition was also required to include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). The Petition fails to meet these requirements with respect to its assertion that a person of ordinary skill in the art would have had a reasonable expectation of success in combining Gmitro’s fiber-optic bundle with Tiziani’s confocal imaging system and microlens array. It is “improper for a reply to present new evidence (including new expert testimony) that could have been presented in a prior filing.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 74– 75 (citing Genzyme Therapeutic Prods. Ltd. v. Biomarin Pharm. Inc., 825 F.3d 1360, 1365–69 (Fed. Cir. 2016)). Petitioner does not provide any persuasive reason that the evidence it presented with its Reply to bolster its assertion of a reasonable expectation of success could not have been provided with the Petition. Accordingly, we find that Petitioner exceeded the proper scope of a reply with its newly presented arguments on pages 24– 27 of the Reply and with the its new citations of portions of the ’448 Patent (Ex. 1001, 7:53–8:3, 5:62–65, 5:39–41, 5:45–51, Fig. 1A), Picard (Ex. 1003, 25–26), Gmitro’s title (Ex. 1005, title), Dr. Sergienko’s new testimony (Ex. 1037 ¶¶ 22–28), and Exhibits 1038 and 1039.” slip op. at 44

  Patent outcomesUS 8,638,448 not shown unpatentable
  § 103 obviousnesscites Phillips
  Patents in suitUS 8,638,448
• R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V.No claims unpatentable
  PTAB · Dec 19, 2017 · IPR2016-01268 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claims 2 and 3 were not shown unpatentable as obvious over Hon ’043 and Whittemore because the petitioner did not establish a sufficient motivation to combine them.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “ordinary skill in the art. Pet. 11; PO Resp. 7–8. In light of the evidence before us, we find that the references themselves represent the level of ordinary skill in the art, and that we need not explicate it further. See Okajima v. Bourdeau, 261 F.3d 12350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art usually is evidenced by the references themselves); In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). C.” slip op. at 7

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Ex. 2016, 61:8–19. Petitioner, however, does not provide adequate explanation as to why a person having ordinary skill in the art would think that to be the case. In reaching that determination, we credit Mr. Meyst’s testimony over that of Dr. Sturges.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Ex. 2015 ¶ 98 (internal citations omitted). Dr. Sturges, however, stated at his deposition that he did not do any calculations to determine how factors such as the speed and pressure of the airstream, and the rate of change of the pressure of the airstream as it travels through the ejection holes and into the atomization chamber, would affect the dispersion of the droplets ejected from the ejection holes towards the heating wire in Hon ’043. Ex. 2016, 64:5–66:4. In light of the variables that can affect how the droplets could disperse upon ejection from the ejection holes, Petitioner has not explained adequately why a person having ordinary skill in the art would understand that only a small amount of droplets would contact Hon ’043’s heating wire and that the atomization described in Hon ’043 is inefficient.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner

    “art through the prism of hindsight. Instead, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented with only the references, and who is normally guided by then-accepted wisdom in the art.” W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983); see also Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012) (quoting Innogenetics, 512 F.3d at 1374 n.3 (“We must still be careful not to allow hindsight reconstruction of the references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.”)). Here, Petitioner attempts to imbue one of ordinary skill in the art with knowledge of the claimed invention, when no prior art reference, references of record, or other evidence conveys or suggests that knowledge. Petitioner’s proposed rationale relies upon general and conclusory statements from Dr. Sturges regarding thermal dynamics that are not sufficiently supported in the record, and instead appear to be based on impermissible use of hindsight after review of the ’742 patent, rather than on a supported reason to modify the heating configuration in Hon ’043’s atomizer. See KSR, 550 U.S. at 421 (stating that the fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”). In order to establish a motivation to combine the references, Petitioner needed to explain sufficiently what would have led a person of ordinary skill in the art at the time of the invention to consider modifying the Hon ’043 atomizer to include a “heating wire wound on a part of the porous component” as recited in claims 2 and 3. Petitioner failed to provide such an explanation.” slip op. at 16

  Patent outcomesUS 8,365,742 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 8,365,742
• Whatsapp Inc. v. Triplay, Inc.No claims unpatentable
  PTAB · Aug 28, 2017 · IPR2016-00718 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 6, 7, and 15 were not shown unpatentable under § 103 over Coulombe, Bellordre, and Friedman because the petitioner did not adequately explain its motivation to combine.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not perceive any meaningful difference between the parties’ definitions of the technical field of the required experience. For example, both experts testify that the level of ordinary skill entails a bachelor’s degree in electrical engineering or computer science, and at least two years of experience in designing and implementing messaging systems. Ex. 1102 ¶ 16; Ex. 2102 ¶ 31. Based on the complete record, including our review of the ’677 patent and the types of problems and solutions described in the ’677 patent and cited prior art, we agree with both parties’ assessments of the level of ordinary skill in the art and our analysis would be the same using either definition. As noted, we have also considered the cited references as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be evidenced by the cited references themselves).” slip op. at 8

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “While Mr. Klausner makes broad statements that it would be “self- evident” to a skilled artisan or layperson to add Bellordre’s video messaging to Coulombe’s message adaptation system, we, nonetheless, observe that Mr. Klausner’s conclusion does not rest upon any reasoning or explanation in his declaration to support this position. Thus, we weigh Mr. Klausner’s testimony accordingly. See In re Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Moreover, we disagree with Mr. Klausner’s testimony that requiring additional explanation would “ignore common sense.” See Ex. 1102 ¶ 34. Although “common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not,” Leapfrog Enters., Inc. v. Fisher–Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007), the determination is made not after observing what the inventor actually did, but in light of the state of the art before the invention was made, see Outside the Box Innovations, LLC v. Travel Caddy, Inc., 695 F.3d 1285, 1298 (Fed. Cir. 2012). Here, on this record, Mr. Klausner does not address why it would have been “self-evident,” or, more importantly, common sense for a skilled artisan to modify Coulombe’s message adaptation system with Bellordre’s video content. Further, Mr. Klausner’s appeal to the “layperson” is also unavailing as Mr. Klausner does not direct us to any support in the record that a layperson would have this understanding of messaging systems. See Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360–61 (Fed.Cir.2011) (providing that the inquiry under § 103 is not whether the claimed invention is “sufficiently simple to appear obvious to judges after the discovery is finally made”). We recognize that the Board has subject matter expertise, but the Board cannot accept general conclusions about what is “self-evident” or “common sense” as a replacement for documentary evidence for core factual findings in a determination of patentability. See K/S Himpp v. Hear- Wear Technologies, LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014); In re Zurko, 258 F.3d 1379, 1385–86 (Fed. Cir. 2001).” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “Court criticized a rigid approach to determining obviousness based on the disclosures of individual prior art references that were already on the record, with little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications. KSR, at 415–22. However, in relying upon common sense, our reviewing court has cautioned “that references to ‘common sense’—whether to supply a motivation to combine or a missing limitation—cannot be used as a wholesale substitute for reasoned analysis and evidentiary support.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (2016) (emphasis added). Based on the complete record before us, we determine that Petitioner has not provided the necessary reasoned analysis and evidentiary support for the assertion that the incorporation of a video object for adaptation and delivery by Coulombe’s system would have been “common sense.” Neither the Petition nor Mr. Klausner’s declaration testimony explains how the asserted combination of Bellordre and Coulombe would be “self-evident,” either to a person of ordinary skill in the art or, alternatively, to a “lay person” as Mr. Klausner asserts. Further, Petitioner has not explained with reasoning or supporting evidence why a person of ordinary skill in the art, or a layperson, would consider video to be “more powerful” than text or still photos. Rather, Petitioner (and Mr. Klausner) concludes this to be true without providing any explanation as to why video is “more powerful,” or at a minimum, what “more powerful” means in the context of the field of technology and art at issue.” slip op. at 17

  Patent outcomesUS 8,874,677 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,874,677
• Whatsapp Inc. v. Triplay, Inc.No claims unpatentable
  PTAB · Aug 28, 2017 · IPR2016-00717 · APJ Frances L Ippolito · IPR · Final written decision

  Petitioner did not prove claims 1, 2, 11, 13, 14, 16, 17, 20, and 21 unpatentable as obvious over Coulombe, Bellordre, and Friedman.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “We do not perceive any meaningful difference between the parties’ definitions of the technical field of the required experience. For example, both experts testify that the level of ordinary skill entails a bachelor’s degree in electrical engineering or computer science, and at least two years of experience in designing and implementing messaging systems. Ex. 1002 ¶ 16; Ex. 2002 ¶ 32. Based on the complete record, including our review of the ’677 patent and the types of problems and solutions described in the ’677 patent and cited prior art, we agree with both parties’ assessments of the level of ordinary skill in the art and our analysis would be the same using either definition. As noted, we have also considered the cited references as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be evidenced by the cited references themselves).” slip op. at 8

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “While Mr. Klausner makes broad statements that it would be “self- evident” to a skilled artisan or layperson to add Bellordre’s video messaging to Coulombe’s message adaptation system, we, nonetheless, observe that Mr. Klausner’s conclusion does not rest upon any reasoning or explanation in his declaration to support this position. Thus, we weigh Mr. Klausner’s testimony accordingly. See In re Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Moreover, we disagree with Mr. Klausner’s testimony that requiring additional explanation would “ignore common sense.” Although “common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not,” Leapfrog Enters., Inc. v. Fisher–Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007), the determination is made not after observing what the inventor actually did, but in light of the state of the art before the invention was made, see Outside the Box Innovations, LLC v. Travel Caddy, Inc., 695 F.3d 1285, 1298 (Fed. Cir. 2012). Here, on this record, Mr. Klausner does not address why it would have been “self-evident,” or, more importantly, common sense for a skilled artisan to modify Coulombe’s message adaptation system with Bellordre’s video content. Further, Mr. Klausner’s appeal to the “layperson” is also unavailing as Mr. Klausner does not direct us to any support in the record that a layperson would have this understanding of messaging systems. See Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360–61 (Fed.Cir.2011) (providing that the inquiry under § 103 is not whether the claimed invention is “sufficiently simple to appear obvious to judges after the discovery is finally made”). We recognize that the Board has subject matter expertise, but the Board cannot accept general conclusions about what is “self-evident” or “common sense” as a replacement for documentary evidence for core factual findings in a determination of patentability. See K/S Himpp v. Hear- Wear Techs., LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014); In re Zurko, 258 F.3d 1379, 1385–86 (Fed. Cir. 2001).” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “Court criticized a rigid approach to determining obviousness based on the disclosures of individual prior art references that were already on the record, with little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications. KSR, at 415–22. However, in relying upon common sense, our reviewing court has cautioned “that references to ‘common sense’—whether to supply a motivation to combine or a missing limitation—cannot be used as a wholesale substitute for reasoned analysis and evidentiary support.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (2016) (emphasis added). Based on the complete record before us, we determine that Petitioner has not provided the necessary reasoned analysis and evidentiary support for the assertion that the incorporation of a video object for adaptation and delivery by Coulombe’s system would have been “common sense.” Neither the Petition nor Mr. Klausner declaration testimony explains how the asserted combination of Bellordre and Coulombe would be “self-evident,” either to a person of ordinary skill in the art or, alternatively, to a “lay person” as Mr. Klausner asserts. Further, Petitioner has not explained with reasoning or supporting evidence why a person of ordinary skill in the art, or a layperson, would consider video to be “more powerful” than text or still photos. Rather, Petitioner (and Mr. Klausner) concludes this to be true without providing any explanation as to why video is “more powerful,” or at a minimum, what “more powerful” means in the context of the field of technology and art at issue. Additionally, even assuming Petitioner’s general proposition to be true—that it is “self-evident” television is more powerful than text or photos, it bears mentioning that Petitioner has not explained how this sentiment demonstrates the “common sense” or “common knowledge” that a skilled artisan would have considered because Petitioner’s assertions are too general and fail to take into consideration the specific references, field of technology, and art at issue, which are directed to the design and implementation of systems for sending and receiving messages over a communications network, such as the Internet. In this context, Petitioner provides no reasoning beyond the bare statement that the asserted combination is “self-evident.” Moreover, Petitioner presumes that which is “self-evident” need not be explained. However, this is not the standard by which obviousness is shown. Indeed, “assumptions about common sense cannot substitute for evidence thereof.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006).” slip op. at 17

  • Strike new argumentOther

    “We first observe that Petitioner does not rely on the MIME or SIMPLE standards for its obviousness challenge in the Petition. As a general matter, a reply is not an opportunity to supplement reasoning or evidence that is absent from the Petition. Nevertheless, even considering Petitioner’s arguments in its Reply, we are not persuaded these arguments are sufficient to demonstrate by a preponderance of the evidence that the challenged claims are unpatentable. Based on the complete record here, Petitioner’s arguments that the references are analogous and the asserted combination is technically trivial, essentially “say no more than that a skilled artisan, once presented with the two references, would have understood that they could be combined. And that is not enough: it does not imply a motivation to pick out those two references and combine them to arrive at the claimed invention.” Pers. Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993–94 (Fed. Cir. 2017). While the references need not explicitly provide a reason for the asserted substitution, Petitioner must, nevertheless, explain why a person of ordinary skill in the art would have made the combination. See Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 23

  Patent outcomesUS 8,874,677 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,874,677
• Elekta, Inc. v. Varian Medical Systems, Inc.No claims unpatentable
  PTAB · Jun 5, 2017 · IPR2016-00380 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1, 2, and 4–9 were not shown unpatentable under either § 103 ground; claims 13 and 18 were canceled after Patent Owner’s motion to amend was granted.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “Although a claim term that does not include the word “means” is presumed not to invoke a means-plus-function analysis, that presumption may be overcome if the limitation does not “recite sufficiently definite structure” or recites a “function without reciting sufficient structure for performing that function.” Williamson v. Citrix Online, LLC, 792 F.3d 2 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”) redesignated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Pub. L. No. 112- 29, 125 Stat. 284, 296 (2011). Because the ’703 patent has a filing date before September 16, 2012 (effective date of § 4(c)), we refer to the pre-AIA version of § 112. 1339, 1349 (Fed. Cir. 2015). Petitioner’s expert, Russell J. Hamilton, Ph.D., testifies that “the term ‘logic’ would not be recognized by one of ordinary skill in the art as providing sufficiently definite structure for performing the claimed functions,” and that “[l]ogic can be implemented in software, in hardware, and in combinations of hardware and software.” Ex. 1021 ¶ 122. The parties provide sufficient reasoning to overcome the presumption against a means-plus-function construction, and we accordingly construe “first logic” and “second logic” in accordance with 35 U.S.C. § 112 ¶ 6.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner

    “untenable because its broad identification only of “computer software and/or computer hardware” as structure for performing the recited function is too generic. The law regarding construction of means-plus-function limitations as applied to computer-implemented elements is well-established: For computer-implemented means-plus-function claims where the disclosed structure is a computer programmed to implement an algorithm, “the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.” . . . This court permits a patentee to express that algorithm in any understandable terms including as a mathematical formula, in prose, . . . , or as a flow chart, or in any other manner that provides sufficient structure. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (citations omitted). Patent Owner’s proposed construction is superior because it identifies the algorithm through explicit reference to the flow chart of Figure 4 and related disclosure in the Specification. Patent Owner’s position is supported by testimony of its expert, Sasa Mutic, Ph.D., who refers to those disclosures in opining that “the [’703] patent describes a process of steps for obtaining the result of properly positioning a patient to begin a treatment” and that “Fig. 4 of the [’703] patent provides a flowchart of a process for use of an embodiment of the invention.” Ex. 2012 ¶ 69. Petitioner takes the position that the ultimate scope of the corresponding algorithm “does not matter” because Petitioner contends that the challenged claims are unpatentable even under Patent Owner’s proposed construction. Pet. Reply 315, 3. Nevertheless, Petitioner attacks Patent Owner’s proposed construction as “implicitly adopt[ing]” two “additional but unreasonable limitations.” Id. First, Petitioner contends that “the claims do not require the performance of the function of the second logic to be fully automated and instead permit human interaction with the second logic.” Id. Second, Petitioner contends that blocks 520 (“Position Patient”), 525 (“Register Treatment Image Data with Simulator/Reference Image Data and Reposition Patient”), and 530 (“Position Clinical Treatment Machine”) of Figure 4 “need not be performed in their entirety by logic so long as the second logic is used for some step in each block.” Id. at 4. We find no inconsistency in these positions with Patent Owner’s proposed construction. In light of the foregoing considerations, we adopt Patent Owner’s proposed construction.” slip op. at 14

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “Petitioner contends that the claims canceled in IPR2016-00341 “were directed to methods that recited the function performed by the second logic,” and that “Patent Owner is now estopped from arguing the subject matter of the same scope is patentable.” Pet. Reply 315, 1. Petitioner cites no authority to support this position, which improperly focuses on only one limitation of the claims, divorced from the claims’ other limitations. We reject Petitioner’s contention because the method claims canceled in IPR2016-00341 do not constitute “subject matter of the same scope” as the apparatus claims challenged in these proceedings.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “skill in the art relevant to the ’703 patent “would be a person with a graduate degree (MS or PhD) in medical physics or a related field (e.g. Physics, Engineering) and three years of experience in radiation oncology beyond the completion date of their degree.” Ex. 1021 ¶ 17. Patent Owner’s expert, Dr. Mutic, expresses a level of ordinary skill that is generally similar to Petitioner’s expert, but accounts for the possibility of a medical education instead of a medical-physics education: [A] person of ordinary skill in the art . . . would be 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. Alternatively, one of ordinary skill in the art might have an M.D. degree in the same relevant fields and two or more years of practical experience with image processing and the use of computer systems that is related to medical applications. Ex. 2012 ¶ 36. The similarity in the experts’ opinions is reinforced by Dr. Mutic’s assertion that he has “considered Dr. Hamilton’s definition of the level of ordinary skill in the art and determined that it does not differ from [his] own expressions of this concept in any way that is relevant to the opinions” he expresses in his Declaration. Id. ¶ 38. Based on the expert testimony in the record, we agree with and adopt the level of skill expressed by Dr. Hamilton.” slip op. at 17

  Patent outcomesUS 8,867,703 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,867,703
• Elekta, Inc. v. Varian Medical Systems, Inc.No claims unpatentable
  PTAB · Jun 5, 2017 · IPR2016-00315 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1, 2, and 4–9 were not shown unpatentable under either §103 ground because the references did not disclose the claimed second logic; claims 13 and 18 were canceled by motion.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “Although a claim term that does not include the word “means” is presumed not to invoke a means-plus-function analysis, that presumption may be overcome if the limitation does not “recite sufficiently definite structure” or recites a “function without reciting sufficient structure for performing that function.” Williamson v. Citrix Online, LLC, 792 F.3d 2 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”) redesignated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Pub. L. No. 112- 29, 125 Stat. 284, 296 (2011). Because the ’703 patent has a filing date before September 16, 2012 (effective date of § 4(c)), we refer to the pre-AIA version of § 112. 1339, 1349 (Fed. Cir. 2015). Petitioner’s expert, Russell J. Hamilton, Ph.D., testifies that “the term ‘logic’ would not be recognized by one of ordinary skill in the art as providing sufficiently definite structure for performing the claimed functions,” and that “[l]ogic can be implemented in software, in hardware, and in combinations of hardware and software.” Ex. 1021 ¶ 122. The parties provide sufficient reasoning to overcome the presumption against a means-plus-function construction, and we accordingly construe “first logic” and “second logic” in accordance with 35 U.S.C. § 112 ¶ 6.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner

    “untenable because its broad identification only of “computer software and/or computer hardware” as structure for performing the recited function is too generic. The law regarding construction of means-plus-function limitations as applied to computer-implemented elements is well-established: For computer-implemented means-plus-function claims where the disclosed structure is a computer programmed to implement an algorithm, “the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.” . . . This court permits a patentee to express that algorithm in any understandable terms including as a mathematical formula, in prose, . . . , or as a flow chart, or in any other manner that provides sufficient structure. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (citations omitted). Patent Owner’s proposed construction is superior because it identifies the algorithm through explicit reference to the flow chart of Figure 4 and related disclosure in the Specification. Patent Owner’s position is supported by testimony of its expert, Sasa Mutic, Ph.D., who refers to those disclosures in opining that “the [’703] patent describes a process of steps for obtaining the result of properly positioning a patient to begin a treatment” and that “Fig. 4 of the [’703] patent provides a flowchart of a process for use of an embodiment of the invention.” Ex. 2012 ¶ 69.” slip op. at 14

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “Petitioner contends that the claims canceled in IPR2016-00341 “were directed to methods that recited the function performed by the second logic,” and that “Patent Owner is now estopped from arguing the subject matter of the same scope is patentable.” Pet. Reply 315, 1. Petitioner cites no authority to support this position, which improperly focuses on only one limitation of the claims, divorced from the claims’ other limitations. We reject Petitioner’s contention because the method claims canceled in IPR2016-00341 do not constitute “subject matter of the same scope” as the apparatus claims challenged in these proceedings.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “skill in the art relevant to the ’703 patent “would be a person with a graduate degree (MS or PhD) in medical physics or a related field (e.g. Physics, Engineering) and three years of experience in radiation oncology beyond the completion date of their degree.” Ex. 1021 ¶ 17. Patent Owner’s expert, Dr. Mutic, expresses a level of ordinary skill that is generally similar to Petitioner’s expert, but accounts for the possibility of a medical education instead of a medical-physics education: [A] person of ordinary skill in the art . . . would be 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. Alternatively, one of ordinary skill in the art might have an M.D. degree in the same relevant fields and two or more years of practical experience with image processing and the use of computer systems that is related to medical applications. Ex. 2012 ¶ 36. The similarity in the experts’ opinions is reinforced by Dr. Mutic’s assertion that he has “considered Dr. Hamilton’s definition of the level of ordinary skill in the art and determined that it does not differ from [his] own expressions of this concept in any way that is relevant to the opinions” he expresses in his Declaration. Id. ¶ 38. Based on the expert testimony in the record, we agree with and adopt the level of skill expressed by Dr. Hamilton.” slip op. at 17

  Patent outcomesUS 8,867,703 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,867,703

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.