- Flowco Production Solutions, LLC v. Well Master CorporationInstitution deniedPTAB · Jan 20, 2023 · IPR2022-01385 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution because Flowco did not show a reasonable likelihood of proving claims 3–17 obvious over Victor and Yerian, with or without Davis.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus deny institution of inter partes review. See 37 C.F.R. § 42.108(b) (“At any time prior to a decision on institution of inter partes review, the Board may deny all grounds for unpatentability for all of the challenged claims. Denial of all grounds is a Board decision not to institute inter partes review.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including 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.” Id. (internal quotation marks and citation omitted).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we 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))).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“may address the same or similar problems is not adequate to demonstrate motivation to combine, even at this stage of the proceeding. See PO Resp. 22–24; see also Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (concluding that prior art padlocks were analogous art because they “were clearly directed toward the same problem the inventor was trying to solve in the” patent at issue); Johns Manville Corp. v. Knauf Insulation, Inc., IPR2018-00827, Paper 9 at 10–11 (PTAB Oct. 16, 2018) (Decision Denying Institution) (informative) (“Demonstrating that a reference is analogous art or relevant to the field of endeavor of the challenged patent is not sufficient to establish that one of ordinary skill would have had reason to combine its teachings with other prior art in the manner set forth in the claim.”). Even so, Patent Owner provides persuasive argument and evidence through its expert, Mr. Cosby, that Victor and Yerian address very different problems and solve these problems in very different ways. See Prelim. Resp. 23–27 (citing Ex. 2002 ¶¶ 56–100). Petitioner’s conclusory attorney arguments do not address these differences and how they would impact the motivation to combine the teachings of Victor and Yerian, despite these differences.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,395,865 - Flowco Production Solutions, LLC v. Well Master CorporationInstitution deniedPTAB · Jan 20, 2023 · IPR2022-01384 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution on claims 1–16 because the Petition did not show a reasonable likelihood of proving obviousness over Victor and Yerian, with or without Davis.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus deny institution of inter partes review. See 37 C.F.R. § 42.108(b) (“At any time prior to a decision on institution of inter partes review, the Board may deny all grounds for unpatentability for all of the challenged claims. Denial of all grounds is a Board decision not to institute inter partes review.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the alleged invention “would have [had] at least a bachelor’s degree in physics or an appropriate engineering discipline, as well as at least three years of experience in designing well plungers.” Pet. 7. Patent Owner “does not dispute” Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the current record, including the prior art. See Prelim. Resp. 11; GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “proposes that all claim terms be given their ordinary and customary meanings and that no explicit constructions are necessary.” Pet. 8. Patent Owner does not dispute that position. See Prelim. Resp. 11. We need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we 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))).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“As noted by Patent Owner, however, the mere fact that two references may address the same or similar problems is not adequate to demonstrate motivation to combine, even at this stage of the proceeding. See PO Resp. 21–23; see also Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (concluding that prior art padlocks were analogous art because they “were clearly directed toward the same problem the inventor was trying to solve in the” patent at issue); Johns Manville Corp. v. Knauf Insulation, Inc., IPR2018-00827, Paper 9 at 10–11 (PTAB Oct. 16, 2018) (Decision Denying Institution) (informative) (“Demonstrating that a reference is analogous art or relevant to the field of endeavor of the challenged patent is not sufficient to establish that one of ordinary skill would have had reason to combine its teachings with other prior art in the manner set forth in the claim.”). Even so, Patent Owner provides persuasive argument and evidence through its expert, Mr. Cosby, that Victor and Yerian address very different problems and solve these problems in very different ways. See Prelim. Resp. 23–27 (citing Ex. 2002 ¶¶ 56–100). Petitioner’s conclusory attorney arguments do not address these differences and how they would impact the motivation to combine the teachings of Victor and Yerian, despite these differences.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,793,728 - Flowco Production Solutions LLC v. Well Master CorporationInstitution deniedPTAB · Jan 6, 2023 · IPR2022-01386 · APJ James P Calve · IPR · Institution
Institution was denied because the petition did not show a reasonable likelihood of proving claims 1–11, 13, 15, 16, 18–21, 23, and 24 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore deny institution of inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. DISCUSSION A. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have at least a bachelor’s degree in physics or an appropriate engineering discipline, as well as at least three years of experience in designing well plungers.” Pet. 5–6. Patent Owner does not dispute Petitioner’s contention. Prelim. Resp. 2; Ex. 2001 ¶ 38. We adopt Petitioner’s proposed level of skill in the art for purposes of this Decision.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“The ’892 patent prosecution history evidences that an unimpeded fluid path does not include valves. During prosecution, Patent Owner amended the independent claims to claim “an unimpeded fluid path” in claims 1 and 23 and “an unimpeded narrow passageway within the fluid path” in claim 18. Ex. 1002, 61–64 (emphasis in original). Patent Owner argued that, The Applicant has amended independent claims 1, 18, and 23 to clarify that the fluid path is unimpeded. The alleged fluid path through the body of the plunger disclosed by Brown identified at page 4 of the Office Action is not unimpeded due to the presence of valves 76 and 102/104. Thus, Brown cannot anticipate claims 1, 2, 4–8, 12, 18, 19 or 23 of the present application. Id. at 66. In response, the Examiner issued a Notice of Allowability but did not provide a Statement of Reasons for Allowance. Id. at 43. “Prosecution disclaimer can arise from both claim amendments and arguments.” Tech. Props. Ltd. v. Huawei Techs. Co., 849 F.3d 1349, 1357 (Fed. Cir. 2017). Here, Patent Owner’s amendments to claim an unimpeded fluid path/passageway and arguments distinguishing Brown’s fluid path as being impeded by valves 76, 102/104 (versus unimpeded as claimed) clearly and unmistakably disclaimed coverage of plungers having bypass valves in the fluid path and narrow passageway through the plunger body.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“b. Motivation to Combine Further, we are persuaded by Patent Owner’s argument that a skilled artisan would not have modified Gray’s bypass valve with Victor’s stopper because their different principles of operation would render Gray’s plunger unsuitable for its intended purpose of providing lift in early stage wells. See Prelim Resp. 35–38 (citing Ex. 2001 ¶¶ 66–75, 103–107, 111). Mr. Cosby testifies that Gray and Victor operate differently so adding a narrow passage of Victor to Gray’s plunger would reduce the ability of Gray’s plunger to work in high pressure wells. Ex. 2001 ¶¶ 103–07; see Ex. 1005 ¶¶ 57, 91, 98, 111–12. The record supports Mr. Cosby’s testimony, and Petitioner’s attorney arguments do not address the arguments and evidence. Pet. 14–15. For this additional reason, Petitioner has failed to show a reasonable likelihood of demonstrating the unpatentability of any of claims 1–11, 13, 15, 16, 18–21, 23, and 24 under Ground 1.” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,627,892 - PTAB · Sep 30, 2016 · IPR2015-00842 · APJ James P Calve · IPR · Rehearing
The Board denied Wonderland’s rehearing request, leaving in place the finding that claims 1–5 and 8–29 are unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party challenging a final written decision in a request for rehearing must identify all matters the party believes that the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). The challenging party bears the burden of showing that the decision should be modified. Id.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“It is well-settled that “a” and “an” mean “one or more” unless a clear intent is evinced to limit those terms to just “one.” Dec. 17. In contrast to Patent Owner’s arguments in this proceeding (Req. 9–11), Patent Owner, in related district court action, repeatedly asserted that the term “an” in claim 8 can mean “one or more.” Ex. 1032, 6–7 (“it is generally accepted in patent parlance that ‘a’ or ‘an’ can mean ‘one or more.’”), 9 (“it is black-letter patent law that ‘an’ means ‘one or more’ in a patent claim.”).” slip op. at 5
Claim constructioncites Phillips - PTAB · Sep 30, 2016 · IPR2015-00841 · APJ James P Calve · IPR · Rehearing
The Board denied Wonderland’s rehearing request and declined to modify the final written decision finding claims 15–29 unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party challenging a final written decision in a request for rehearing must identify all matters the party believes that the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). The challenging party bears the burden of showing that the decision should be modified. Id.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“It is well-settled that “a” and “an” mean “one or more” unless a clear intent is evinced to limit those terms to just “one.” Dec. 17. In contrast to Patent Owner’s arguments in this proceeding (Req. 8–9), Patent Owner, in related district court action, repeatedly asserted that the term “an” in claim 8 can mean “one or more.” Ex. 1032, 6–7 (“it is generally accepted in patent parlance that ‘a’ or ‘an’ can mean ‘one or more.’”), 9 (“it is black-letter patent law that ‘an’ means ‘one or more’ in a patent claim.”).” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“baby crib, wherein each of the upright tubes has an outer wall that defines an outer contour shape of the upright tube” in claim 15 consistent with the plain language of the claims in light of the ’919 Specification. Claim 15 recites “upright tubes defining corners of the baby crib, wherein each of the upright tubes has an outer wall that defines an outer contour shape of the upright tube.” Ex. 1001, 5:7–9. We found that Bidwell discloses retaining members 22 that satisfy these claimed features. Dec. 42.” slip op. at 27
Claim constructioncites Phillips - Baby Trend, Inc. / Denny Tsai et al. v. Wonderland Nurserygoods Co., Ltd.All claims unpatentablePTAB · Jun 27, 2016 · IPR2015-00842 · APJ James P Calve · IPR · Final written decision
Claims 1–5 and 8–29 are unpatentable as obvious over Vaiano and Pasin, alone or with Stoeckler; the contingent motion to amend is denied.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Grounds I and II: Claims 1–5 and 8–29 as obvious over Vaiano and Pasin, alone or further in combination with Stoeckler The parties dispute whether Vaiano (Ex. 1021) discloses a unitary enclosure. Patent Owner argues that it is unclear from Vaiano whether netting 32 is a continuous member. See PO Resp. 22. At the oral hearing, Patent Owner argued that Vaiano’s netting is not continuous, noting that the cross-hatch lines in the Figures from Vaiano do not match up. Tr. 73:17–20. In any event, inherency cannot be established by possibilities or probabilities. PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014). Pasin (Ex. 1015) and Stoeckler (Ex. 1017) also lack a unitary enclosure member. Similarly, it is, at best, unclear how the ends of fabric 32 in Vaiano emerge from the corner posts 10. See Pet. 22 (averring that Vaiano “does not show the connection mechanisms that create the ‘exposed’ tube look”). Thus, Vaiano does not disclose two ends of fabric emerging out of a single slit, as I understand the “substantially out of contact” limitation to require. This understanding of the “substantially out of contact limitation” hinges on the above claim construction—i.e., the understanding that the transmogrification of the single “slit” limitation into the “substantially out of contact” limitation in reissue, through omission of one and introduction of the other (with concomitant clarification of Figure 5 required by the Examiner), does not permit a broadening of the claims beyond the original disclosure. Pasin and Stoeckler also fail to disclosure this limitation as they” slip op. at 102
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Grounds I and II: Claims 1–5 and 8–29 as obvious over Vaiano and Pasin, alone or further in combination with Stoeckler The parties dispute whether Vaiano (Ex. 1021) discloses a unitary enclosure. Patent Owner argues that it is unclear from Vaiano whether netting 32 is a continuous member. See PO Resp. 22. At the oral hearing, Patent Owner argued that Vaiano’s netting is not continuous, noting that the cross-hatch lines in the Figures from Vaiano do not match up. Tr. 73:17–20. In any event, inherency cannot be established by possibilities or probabilities. PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014). Pasin (Ex. 1015) and Stoeckler (Ex. 1017) also lack a unitary enclosure member. Similarly, it is, at best, unclear how the ends of fabric 32 in Vaiano emerge from the corner posts 10. See Pet. 22 (averring that Vaiano “does not show the connection mechanisms that create the ‘exposed’ tube look”). Thus, Vaiano does not disclose two ends of fabric emerging out of a single slit, as I understand the “substantially out of contact” limitation to require. This understanding of the “substantially out of contact limitation” hinges on the above claim construction—i.e., the understanding that the transmogrification of the single “slit” limitation into the “substantially out of contact” limitation in reissue, through omission of one and introduction of the other (with concomitant clarification of Figure 5 required by the Examiner), does not permit a broadening of the claims beyond the original disclosure. Pasin and Stoeckler also fail to disclosure this limitation as they” slip op. at 102
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“have infringed a European patent does not lead inexorably to the conclusion that those products copied a patented design of EP 1,550,387 B1 or the ’919 patent rather than being developed independently based on industry trends and other factors. This is particularly true where the claimed features use prior art elements such as an enclosure member, frame structure, and upright tubes well known in the prior art for baby cribs as illustrated by the prior art baby crib illustrated in Figures 1 and 2 of the ’919 patent itself. The choice of having upright tubes exposed or unexposed is a binary one. Pasin and Stoeckler disclose keder connections in tents and similar play structures with exposed tubes while Vaiano, Miller, Oliphant show baby cribs with exposed tubes. These features are well-known in the art such that the selection of one feature over another involves relatively finite options that could lead to the development of an exposed tube design without copying the Wave Series or the ’919 patent. Nor does development of products with such well-known features provide a strong case for the non-obviousness of the ’919 patent. 3. Conclusion Weighing all of the evidence anew, we determine that Petitioner has” slip op. at 68
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“4. Conclusion For the foregoing reasons, Patent Owner has not, in its Motion to Amend, set forth a prima facie case for the relief requested or satisfied its burden of proof. Consequently, the current situation does not require us to consider Petitioner’s Opposition and Patent Owner’s Reply. Patent Owner’s Contingent Motion to Amend is denied.” slip op. at 88
Patent outcomesUS RE43,919 unpatentable§ 103 obviousnesscites KSR - Baby Trend, Inc. / Denny Tsai et al. v. Wonderland Nurserygoods Co., Ltd.All claims unpatentablePTAB · Jun 27, 2016 · IPR2015-00841 · APJ James P Calve · IPR · Final written decision
Claims 15–29 are unpatentable; the majority found them anticipated or obvious over the asserted prior art, and denied the contingent motion to amend.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“4. Conclusion For the foregoing reasons, Patent Owner has not, in its Motion to Amend, set forth a prima facie case for the relief requested or satisfied its burden of proof. Consequently, the current situation does not require us to consider Petitioner’s Opposition and Patent Owner’s Reply. Patent Owner’s Contingent Motion to Amend is denied.” slip op. at 86
- ExcludeMotion to exclude, deniedDenied
“E. Petitioner’s Motion to Exclude Petitioner moves to exclude testimony of Mr. Drobinski, Ms. Wang,” slip op. at 87
- Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia no nexusDecided for petitioner
“1. Evidence of Commercial Success Patent Owner argues that its Wave Series products are coextensive” slip op. at 48
- Obviousness (§103) › Objective indicia / secondary considerations › CopyingObjective indicia no nexusDecided for petitioner
“have infringed a European patent does not lead inexorably to the conclusion that those products copied a patented design of EP 1,550,387 B1 or the ’919 patent rather than being developed independently based on industry trends and other factors. This is particularly true where the claimed features use prior art elements such as an enclosure member, frame structure, and upright tubes well known in the prior art for baby cribs as illustrated by the prior art baby crib illustrated in Figures 1 and 2 of the ’919 patent itself. The choice of having upright tubes exposed or unexposed is a binary one. Pasin and Stoeckler disclose keder connections in tents and similar play structures with exposed tubes while Vaiano, Miller, Oliphant show baby cribs with exposed tubes. These features are well-known in the art such that the selection of one feature over another involves relatively finite options that could lead to the development of an exposed tube design without copying the Wave Series or the ’919 patent. Nor does development of products with such well-known features provide a strong case for the non-obviousness of the ’919 patent. 3. Conclusion Weighing all of the evidence anew, Petitioner has established the” slip op. at 66
Patent outcomesUS RE43,919 unpatentable§ 103 obviousnesscites KSR - Tre Milano, LLC v. Tf3 LimitedAll claims unpatentablePTAB · May 2, 2016 · IPR2015-00649 · APJ Timothy J Goodson · IPR · Final written decision
Claims 1–5 and 11 are unpatentable as anticipated by both Gnaga and Hoshino.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“their broadest reasonable construction in light of the specification of the patent in which they appear. In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–1279 (Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA,” and “the standard was properly adopted by PTO regulation”), cert. granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890 (mem.) (2016); 37 C.F.R. § 42.100(b). Under that standard, we give claim terms their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). 1. “Chamber” In the Decision to Institute, we construed “chamber” in claim 1 to mean “a partially enclosed space.” Dec. to Inst. 6–7. Neither party disputes this construction. See PO Resp. 9–12; Reply 14–15. Therefore, for the reasons set forth in the Decision to Institute, we maintain our construction of that term.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“limitations into the claim from a preferred embodiment in the specification. PO Resp. 11. We disagree with this characterization of our construction because it does not narrow the claim’s scope by inserting features from a preferred embodiment into the claim language. Rather, we declined to adopt Patent Owner’s overly narrow construction that would exclude the preferred embodiment, and instead adopted a construction that is at least broad enough to include the preferred embodiment. Patent Owner has not presented any persuasive reason why we should depart from the construction of “free end” that we adopted in the Decision to Institute. For its part, Petitioner states that it is “willing to accept the Board’s construction” and is “not challenging the construction for the purposes of this hearing.” Tr. 18:24–25, 27:7–12. This rather tepid endorsement suggests that Petitioner does not embrace our construction with open arms, but Petitioner’s qualms do not convince us of any error in the construction. Specifically, Petitioner asserts that even in the open position, as shown in Figure 2, the abutment appears to remain in contact with the free end of the elongate member. Id. at 18:10–18. Petitioner refers to column 6, lines 9–10 as showing that this figure depicts the device in the open position. Id. at 19:7–19. However, this portion of the Specification is discussing the open and closed positions of the handle, not the movable abutment. Ex. 1001, col. 6, ll. 5–15; Tr. 19:20–20:7. The Specification later indicates that Figures 2 and 3 both show abutment 52 in the closed position. Ex. 1001, col. 6, ll. 32–33. Further, we are not convinced that the open position of the handle necessarily signifies that the abutment is also in an open position. We note that dependent claim 8 requires that “the movable abutment is driven to its closed position as the second handle part is moved towards the first handle part.” The recitation of this feature in a dependent claim suggests that this feature is not necessarily present in all contemplated embodiments. See 35 U.S.C. § 112, ¶ 4 (requiring that a dependent claim shall “specify a further limitation of the subject matter claimed”). Because Petitioner does not convince us that the Specification indicates that the abutment may remain in contact with the elongate member when the abutment is in the open position, Petitioner’s comments do not apprise us of error in our construction. For the foregoing reasons, in addition to the reasons stated in our Decision to Institute, we maintain our construction of “free end” to mean “an end of the elongate member that is unsupported when the movable abutment is in the open position.”” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Even assuming that the preamble constitutes a limitation on claim 1, a point that Petitioner disputes (see Tr. 62:5–7), we disagree with Patent Owner’s contention that the claim requires a device that is “unitary.” Rather, we agree with Petitioner that this is another instance in which Patent Owner attempts to import limitations from the preferred embodiment into the claim. See Reply 19–20. Patent Owner does not identify any aspect of the language of claim 1 that precludes removal of parts during operation. With respect to the portions of the Specification on which Patent Owner relies, we are not persuaded that these or any other portions of the Specification serve to disclaim non-unitary devices or limit the scope of a device to only unitary devices. Cf. Bigio, 381 F.3d at 1325 (holding that, despite discussion in the “Objects of the Invention” of a hairbrush for brushing scalp hair, “in examining the term ‘hair brush,’ the Board correctly declined to import from the specification a limitation that would apply the term only to hairbrushes for the scalp”).” slip op. at 17
- Expert testimonyOther
“expert should be given little or no weight. See PO Resp. 7–8; Reply 7–10. As is reflected in our discussion below, this is not a case where the analysis hinges on the credibility or persuasiveness of one expert’s testimony over the other’s. The technology of the ’118 patent and the cited references is relatively simple and easy to understand. Cf. Wyers v. Master Lock Co., 616 F.3d 1231, 1242 (Fed. Cir. 2010) (“[E]xpert testimony is not required when the references and the invention are easily understandable.”); see also Belden v. Berk-Tek LLC, 805 F.3d 1064, 1079 (Fed. Cir. 2015) (“No rule requires a Petition to be accompanied by any declaration, let alone one from an expert guiding the Board as to how it should read prior art.”). Moreover, much of the content in the experts’ declarations appears to be repetition of arguments presented in the parties’ briefing. Compare Pet. 7–13, with Ex. 1002 ¶¶ 30(a)–(s); compare Pet. 17–24, with Ex. 1002 ¶ 31(a)–(r); compare PO Resp. 17–19, with Ex. 2001 ¶¶ 21–22; compare PO Resp. 24–27, with Ex. 2001 ¶¶ 24–26; compare PO Resp. 30, with Ex. 2001 ¶ 28. Expert declarations that merely repeat what has already been presented in a brief add little to the Board’s analysis. Nevertheless, we have considered the parties’ criticisms of the arguments and given the testimony of Dr. Nosenchuck and Mr. Prehodka the appropriate weight in making our determination in this case.” slip op. at 19
Patent outcomesUS 8,651,118 unpatentableClaim construction§ 102 anticipationcites PhillipsPatents in suitUS 8,651,118 - HM Electronics, Inc. v. 3M Innovative Properties CompanyAll claims unpatentablePTAB · Apr 18, 2016 · IPR2015-00491 · APJ James P Calve · IPR · Final written decision
Claims 1–13, 15–28, and 30–32 are unpatentable as obvious over the instituted combinations of Gosieski with HME Wireless 6000, Gosieski with 3M Wireless, or Gosieski, 3M Wireless, and Telex RadioCom.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“patent in the 2006 time frame would have had a bachelor of science in either electrical engineering or computer science and between five and ten years’ experience in designing intercom systems. Pet. 8 (citing Ex. 1005 ¶ 10).” slip op. at 22
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“skill in the art. We find persuasive Mr. Hoeptner’s testimony that at least five years of experience was desirable based on his actual experience in designing and developing professional audio and quick service restaurant intercom systems. Ex. 1005 ¶¶ 1, 5, 8–10. In contrast, Mr. Gafford lacks experience designing intercom systems and relies on his experience as a litigation consultant and patron of quick service restaurants. See Ex. 1016, APP3217:17–APP3220:25; Ex. 2003 ¶¶ 4–10, 12.” slip op. at 23
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We interpret “remote” to mean “not at the site of.” This interpretation is consistent with an ordinary meaning of “remote,” which includes “[n]ot in the immediate vicinity, as a computer or other device located in another place (room, building, or city) and accessible through some type of cable or communications link.” See Pet. 9–10 (quoting MICROSOFT COMPUTER DICTIONARY (5th ed. 2002) (Ex. 1006 at APP2787)). Our interpretation also is consistent with the ’040 patent specification, which discloses that the present invention “allow[s] the intercom system of an establishment to be remotely adjusted by a technician or other user without the need for such technician or other user to be dispatched to the establishment itself, saving both a considerable amount of both time and money.” Ex. 1001, 2:33–37; 6:15–20. A service technician can access the intercom system remotely via a wide area network 20 such as the Internet “from great distances” (id. at 2:38–41), but the main advantage of the remote accessibility is that a technician may resolve an issue with intercom system 12 quickly, without traveling to the site of establishment 10 (id. at 6:26–38).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“HME proposes to enhance the capabilities of the Wireless 6000 with the remote review and adjustment of audio parameters based on the express teachings of Gosieski. Gosieski teaches to use Gosieski’s system and its features in many other environments that are very similar to a quick service restaurant environment such as a hands-free mode for the office, walkie-talkie modes, and a hands-free VoIP telephone that interfaces with business LANs/WANs. Pet. 19; Pet. Reply 7. Adding this capability to the Wireless 6000 would allow persons remote from a quick service restaurant to review and adjust volume level parameters of headsets via a WAN. Pet. Reply 7. Notably, 3M and Mr. Gafford do not argue that this modification of the Wireless 6000 would have been beyond the level of ordinary skill in the art, or that it would involve unpredictable results. Rather, they argue that the Gosieski system is too expensive and complex to use for the Wireless 6000. We reject this argument because HME is not relying on the modification to be cost effective. See Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983) (“[T]hat the two disclosed apparatus would not be combined by businessmen for economic reasons is not the same as saying that it could not be done because skilled persons in the art felt that there was some technological incompatibility that prevented their combination.”). Even so, 3M’s attorney argument does not convince us that adapting technologies of advanced audio intercoms would not be cost effective. HME relies on teachings of Gosieski to use features of professional audio systems in less-expensive, lower margin intercom systems. Pet. Reply 13– 14; Pet. 19–20; Ex. 1008 ¶ 79. Once the advanced technologies have been developed and vetted in demanding environments, they can be used in other intercom systems as they become less expensive to use. Pet. Reply 14.” slip op. at 34
Patent outcomesUS 8,694,040 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,694,040 - HM Electronics, Inc. v. 3M Innovative Properties CompanyAll claims unpatentablePTAB · Apr 18, 2016 · IPR2015-00482 · APJ James P Calve · IPR · Final written decision
Claims 1–32 are unpatentable as obvious over the three combinations of prior art references considered by the Board.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Our interpretation also is consistent with the ’040 patent specification, which discloses that the present invention “allow[s] the intercom system of an establishment to be remotely adjusted by a technician or other user without the need for such technician or other user to be dispatched to the establishment itself, saving both a considerable amount of both time and money.” Ex. 1001, 2:33–37; 6:15–20. A service technician can access the intercom system remotely via a wide area network 20 such as the internet “from great distances” (id. at 2:38–41), but the main advantage of the remote accessibility is that a technician may resolve an issue with intercom system 12 quickly, without traveling to the site of establishment 10 (id. at 6:26–38).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with HME’s contention and adopt it as the level of ordinary skill. We find persuasive Mr. Hoeptner’s testimony that at least five years of experience was desirable based on his experience designing and developing professional audio and quick service restaurant intercoms. Ex. 1005 ¶¶ 1, 5, 8–10. In contrast, Mr. Gafford lacks experience designing intercom systems and relies on experience as a litigation consultant and patron of quick service restaurants. See Ex. 1016, APP3217:17–APP3220:25; Ex. 2003 ¶¶ 4–10, 12.” slip op. at 27
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We find that the HME Pro850 manual was publicly accessible to persons interested and ordinarily skilled in the art. The principal basis for this finding is Mr. Hoeptner’s testimony that approximately 140 copies of the Pro850 manual (Exhibit 1009), were disseminated to the customers who purchased a Pro850 system, beginning in September 2003 and extending to February 10, 2005. Ex. 1005 ¶¶ 6–7. These copies of the Pro850 Manual (Exhibit 1009) were disseminated sufficiently at the time of its publication and more than one year before the February 10, 2006 critical date of the ’040 patent (id.) to constitute a printed publication under 35 U.S.C. § 102(b).” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“We agree with HME that a skilled artisan would have been motivated to modify the HME Wireless 6000 quick service restaurant intercom system to include this more “advanced” networking feature of the HME Pro850 to permit review and adjustment of intercom parameters on a computer that provides a better user interface. The improved computer interface allows a technician or other user to access all system parameters from a single screen, as shown above in the top first diagram reproduced above. See Pet. 18. The HME Pro850 itself teaches that “[a] particularly useful feature of the PC850 is the ability to display (and alter) the audio connection matrix. This window shows all possible and active audio connections.” Ex. 1009, APP2850; see Pet. 18, 27–28. The HME Pro850 teaches that a user can make all Pro850 base station and beltpac settings, i.e., parameter settings, on the networked PC and “save the settings to files.” Ex. 1009, APP2849; Pet. 18. A person using the networked PC can “view input and output audio levels” and “edit base and beltpac settings.” Ex. 1009, APP2850; Pet. 28. We also agree with HME that a skilled artisan would have appreciated that adding this feature to the Wireless 6000 would have allowed intercom audio parameters to be set and adjusted more easily and saved in groups/files as a template(s) of parameters as taught by the Pro850. See Pet. 17–19, 23–25. We agree with HME that this modification uses known technology” slip op. at 41
Patent outcomesUS 8,694,040 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 8,694,040
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.