- PTAB · Dec 6, 2017 · IPR2016-00320 · APJ Karl D Easthom · IPR · Final written decision
Claims 8–10 are unpatentable based on the instituted obviousness grounds after the Board reconsidered the record on rehearing.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“be heard regarding the allegedly new circuits set forth in specific paragraphs of the Baker Reply Declaration. No more was required. Accordingly, Patent Owner’s Motion is denied. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1081 (Fed. Cir. 2015) (“With no Board denial of concrete, focused requests before us, we are not prepared to find that [the appellant] was denied a meaningful opportunity to respond.”)24; Opp. 15 (“Patent” slip op. at 68
- RehearingOther
“Subsequently, Patent Owner filed a Request for Rehearing. Paper 41 (“Rehearing Request” or “Reh’g Req.”). Based on the Rehearing Request, the Board withdrew the First Final Written Decision as set forth in the Decision on Rehearing. Paper 42 (Withdrawal of Final Written Decision and Authorization of Sur-Reply) (“Rehearing Decision” or “Reh’g Dec.”). As set forth in the Rehearing Decision, we granted Patent Owner’s request for additional briefing in the form of a Sur-Reply (Paper 43). See Reh’g Dec. 5–6; Sur-Reply.” slip op. at 2
NonePatents in suitUS 6,169,503 - PTAB · Mar 8, 2016 · IPR2014-01441 · APJ James B Arpin · IPR · Final written decision
The Board canceled claims 48, 50–53, and 60–69, but denied entry of substitute claims 70–84 for inadequate written-description support.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“(1) cancellation of challenged claims 48, 50–53, and 60–69 of the ’681 patent and (2) entry of substitute claims 70–84. Mot. 1, 25; see supra Section I.D. As the moving party, Patent Owner bears the burden of proof to establish that it is entitled to the relief requested. See 37 C.F.R. § 42.20(c). Entry of proposed amendments is not automatic, but occurs only upon the patent owner having met the requirements of 37 C.F.R. § 42.121 and demonstrated, by a preponderance of the evidence, the patentability of the proposed substitute claims. Nike, 2016 WL 537609, at *3–*5 (“[T]he Board did not err by placing the burden on [Patent Owner] to establish patentability over the prior art of [Patent Owner]’s proposed substitute claims.”); see Idle Free, Case IPR2012-00027, slip op. at 7–8 (Paper 26).” slip op. at 31
- ScopeDecided for patent owner
“A patent owner may not seek to broaden a challenged claim in any respect, in the name of responding to an alleged ground of unpatentability. A proper substitute claim under 37 C.F.R. § 42.121(a)(2)(i) must only narrow the scope of the challenged claim it replaces. Similarly, under 37 C.F.R. § 42.121(a)(2)(ii), a substitute claim may not enlarge the scope of the challenged claim it replaces by eliminating any feature. Idle Free, Case IPR2012-00027, slip op. at 5 (Paper 26). As noted above, in its Motion to Amend, Patent Owner proposes independent claim 70 as a substitute for independent claim 48, independent claim 75 as a substitute for independent claim 60, and independent claim 80 as a substitute for claim 65. Mot. 2–7. Each substitute claim includes all of the limitations of the corresponding challenged claim, for which it is a substitute, and only adds additional limitations. No limitations are removed. In its Opposition, Petitioner does not dispute Patent Owner’s assertion that the proposed substitute claims do not enlarge the scope of the cancelled, challenged claims of the ’681 patent. Opp. 1, 11. The substitute dependent claims are similarly narrowed by the limitations added to the independent claims, from which they depend. Consequently, the proposed substitute claims do not enlarge the scope of the challenged claims.” slip op. at 33
- 112 supportDenied
“partes review must set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.” In Nichia, “[t]he Board also explained that merely indicating where each claim limitation individually described in the original disclosure may be insufficient to demonstrate support for the claimed subject matter as a whole.” Case IPR2012-00005, slip op. at 4 (Paper 27) (emphasis in original). Moreover, the Board recognized that the proposed substitute claims need not be described “in haec verba” in the original disclosure in order to satisfy the written description requirement. However, should the claim language does not appear in ipsis verbis in the original disclosure, a mere citation to the original disclosure without any explanation as to why a person of ordinary skill in the art would have recognized that the inventor possessed the claimed subject matter as a whole may be similarly inadequate. Id. (emphasis in original). Whether a patent claim is supported by an adequate written description is a question of fact. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1355 (Fed. Cir. 2010) (en banc).” slip op. at 34
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“strongest evidence for construing the term “optical gain” comes from the Specification itself, which clearly defines the term. [The claims] are part of a fully integrated written instrument, consisting principally of a specification that concludes with the claims. For that reason, claims must be read in view of the specification . . . . [T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term. Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (citations omitted) (internal quotation marks omitted; emphasis added); In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149 (Fed. Cir. 2012) (any broadest reasonable construction must be consistent with the specification, and claim language should be read in light of the specification). Given the plain language of the claims, in particular the emphasis on “optical”; the testimony of the parties’ declarants, and the clear definition of the Specification, we are not persuaded here by Patent Owner’s argument that all disclosed embodiments should be embraced by our construction. “It is not necessary that each claim read on every embodiment.” Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010); Broadcom Corp.” slip op. at 27
Claim constructioncites Phillips - PTAB · Mar 8, 2016 · IPR2014-01442 · APJ James B Arpin · IPR · Final written decision
The Board canceled claims 48, 50–53, and 60–69, and denied entry of substitute claims 70–84 for insufficient written-description support.
RulingsFinal written decision- 112 supportMotion to amend, deniedDenied
“partes review must set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.” In Nichia, “[t]he Board also explained that merely indicating where each claim limitation individually described in the original disclosure may be insufficient to demonstrate support for the claimed subject matter as a whole.” Case IPR2012-00005, slip op. at 4 (Paper 27) (emphasis in original). Moreover, the Board recognized that the proposed substitute claims need not be described “in haec verba” in the original disclosure in order to satisfy the written description requirement. However, should the claim language does not appear in ipsis verbis in the original disclosure, a mere citation to the original disclosure without any explanation as to why a person of ordinary skill in the art would have recognized that the inventor possessed the claimed subject matter as a whole may be similarly inadequate. Id. (emphasis in original). Whether a patent claim is supported by an adequate written description is a question of fact. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1355 (Fed. Cir. 2010) (en banc).” slip op. at 34
Nonecites Phillips - PTAB · Aug 20, 2014 · IPR2014-00959 · APJ James B Arpin · IPR · Order
The Board granted the joint motion to terminate and terminated the proceeding after the parties settled, before deciding whether to institute trial.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“On August 13, 2014, the parties filed a Joint Motion to Terminate (Paper 10) pursuant to 35 U.S.C. § 317(a). In addition, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Patent Owner filed a copy of a Settlement Agreement (Ex. 2001) along with a Joint Request That Settlement Agreement Be Treated As Business Confidential Information And Kept Separate Under 37 C.F.R. § 42.74(c) (Paper 11), to be kept separate from the patent file. This case is in the preliminary proceeding1 stage; no decision whether to institute a trial has been made. The co-pending district court litigation between the parties has been dismissed, with prejudice, effective August 11, 2014, and the parties have represented that they have settled their dispute regarding Patent No. US 6,700,551 B2.2 See Paper 10, 2-3. Under these circumstances, we determine that it is appropriate to terminate the case without rendering a final written decision. 37 C.F.R. § 42.74. Based on the facts of this case, it is appropriate to enter judgment.3 Therefore, the Joint Motion to Terminate is granted.” slip op. at 2
NonePatents in suitUS 6,700,551 - PTAB · Aug 20, 2014 · IPR2014-00964 · APJ James B Arpin · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding after settlement, without instituting a trial or issuing a final written decision.
RulingsOther- Adverse judgmentAdverse judgmentGranted
“This case is in the preliminary proceeding1 stage; no decision whether to institute a trial has been made. The co-pending district court litigation between the parties has been dismissed, with prejudice, effective August 11, 2014, and the parties have represented that they have settled their dispute regarding Patent No. US 7,665,664 B2.2 See Paper 8, 2-3. Under these circumstances, we determine that it is appropriate to terminate the case without rendering a final written decision. 37 C.F.R. § 42.74. Based on the facts of this case, it is appropriate to enter judgment.3 Therefore, the Joint Motion to Terminate is granted.” slip op. at 2
NonePatents in suitUS 7,665,664 - PTAB · Apr 28, 2014 · IPR2013-00067 · APJ James B Arpin · IPR · Final written decision
The Board granted cancellation of claims 1–46 and denied entry of substitute claims 47–50 because Nike did not establish their patentability and they would have been obvious over Nishida and Schuessler I and II.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“a patent reexamination proceeding. The substitute claims proposed in a motion to amend are not entered automatically and then subjected to examination. Rather, the proposed substitute claims will be added directly to the patent, without examination, if the patent owner’s motion to amend claims is granted. In a motion to amend, the patent owner is not rebutting a rejection in an office action, as though this proceeding were a patent examination or a reexamination. Instead, the patent owner, as the movant, bears the burden of establishing the patentability of the proposed substitute claims over the prior art of record and also other prior art known to Patent Owner. We deny the motion to amend because (1) Patent Owner has not met this burden and (2) Petitioner has shown that the substitute claims would have been rendered obvious over the combination of the teachings of Nishida and Schuessler I and II.” slip op. at 34
- ExcludeOther
“The current situation does not require us to assess the merits of Petitioner’s motion to exclude. As discussed above, even without relying upon the aforementioned portions of the cross-examination testimony of Dr. Frederick, we have concluded that Patent Owner has demonstrated that the term “flat knit edges” of substitute claims 47-50 is supported by the disclosure of the ’289 Application. Accordingly, Petitioner’s motion to exclude evidence is dismissed as moot.” slip op. at 41
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In construing the term “flat knitting,” we apply the broadest reasonable interpretation of the words in their ordinary usage, as those words would be understood by one of ordinary skill in the art, taking into account any definitions supplied by the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). The Specification of the ’011 Patent expressly describes flat knitting as a sub-type of weft knitting. Ex. 1002, col. 7, ll. 5-8. Ultimately, “[t]he construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be . . . the correct construction.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). Further, Patent Owner presents evidence that a person of ordinary skill in the art would understand flat knitting to describe a sub-type of weft knitting. Paper 44, 1 (quoting a textile dictionary (Ex. 2011, 6) to state that “the trade uses the term flat knit fabric to refer to weft knit fabrics made on a flat machine, rather than warp-knit fabrics”); see also Ex 2017, 5; Ex. 2018, 6. Despite its argument, Petitioner identifies no portion of the Specification of the ’011 Patent that describes flat knitting with respect to warp knitting or any other type of knitting, beyond weft-knitting. See Paper 37, 2-3. In addition, before the filing date of the motion to amend, Dr. Frederick, Petitioner’s expert, testified that “[f]lat knitting would be another type of weft knitting that would involve an end result that was . . . on a curved 15 surface, but more or less flat.” Ex. 2009, 89, ll. 6-11. Therefore, we determine that the term “weft knitting” describes a type of knitting in which a continuous yarn is carried in crosswise rows, and we construe the term “flat knit” to recite a sub-type of weft knitting, in which the weft knit textile is produced as a sheet of more or less flat material.5” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“Petitioner contends that Nishida and Schuessler I are in similar fields and address the same problem, namely the formation of two-dimensional textile elements having edges that are joined to form three-dimensional, wearable items. Paper 37, 11; cf. Ex. 1005, figs. 1 (two-dimensional layout 2) and 3 (three-dimensional, shoe upper 3); Ex. 1020, figs. 1 (two-dimensional helmet swatch) and 2 (three-dimensional helmet). Further, Schuessler II teaches that the two-dimensional helmet swatch of Figure 1 of Schuessler I may be knit to shape on a flat knitting machine. Paper 37, 11 (citing Ex. 1023 ¶ 15). Petitioner contends, therefore, that a person of ordinary skill in the art would have reason to combine the teachings of these three references to achieve the invention recited in substitute claim 47. Id. Patent Owner does not argue Petitioner’s assessment of the teachings of these references. Patent Owner also does not dispute that all of the limitations of the claims are taught in the prior art. Instead, Patent Owner argues that Petitioner’s contention that a person of ordinary skill in the art would combine Nishida’s teaching regarding the reduction of waste by placing layouts in adjoining positions and Schuessler I’s teaching regarding knitting textile elements to shape is illogical. Paper 44, 5. Specifically, Patent Owner argues that Petitioner’s reason for combining these teachings is somehow flawed because “after they are combined the elements of each reference serve the same purpose.” Id. As the U.S. Supreme Court explained, however, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious 38 unless its actual application is beyond his or her skill.” KSR Int’l Co. v. Teleflex Inc., 555 U.S. 398, 417 (2007). In this case, that the elements of the prior art references would “serve the same purpose” when combined is a factor in favor of an obviousness determination, and not a suggestion of nonobviousness, as urged by Patent Owner. Because we are persuaded that Petitioner has demonstrated that the teachings of Nishida and Schuessler I and II teach or suggest all of the limitations of substitute claim 47 and that a person of ordinary skill in the art would have had reason to combine the teachings of these references to achieve the recited article of footwear, we determine that Patent Owner fails to meet its burden of showing that it is entitled to the relief requested in its motion to amend. Because we group substitute claims 48-50 with claim 47 for purposes of assessing patentability, we also determine that Patent Owner fails to meet its burden of showing that it is entitled to the relief requested in its motion to amend with respect to substitute claims 48-50. Consequently, the portion of Patent Owner’s motion to amend requesting entry of substitute claims 47-50 also is denied for failing to demonstrate that the substitute claims are patentable over Nishida and Schuessler I and II.” slip op. at 38
Claim construction§ 103 obviousnessPatents in suitUS 7,347,011 - PTAB · Mar 31, 2014 · IPR2013-00241 · APJ Brian J Mcnamara · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding by settlement without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under these circumstances, we determine that it is appropriate to enter judgment1 and to terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72. It is, therefore, ORDERED that the joint motion to terminate the proceeding is GRANTED and the proceeding is hereby terminated; and FURTHER ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information which shall be kept separate from the file of the involved patents under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.” slip op. at 3
NonePatents in suitUS 6,370,954 - PTAB · Mar 31, 2014 · IPR2013-00254 · APJ Brian J Mcnamara · IPR · Order
The Board granted the parties’ joint motion to terminate the proceeding and their request to keep the settlement confidential, without issuing a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“It is, therefore, ORDERED that the joint motion to terminate the proceeding is GRANTED, and the proceeding is hereby terminated; and FURTHER ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information which shall be kept separate from the file of the involved patents under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.” slip op. at 3
NonePatents in suitUS 6,034,419
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.