- L’Oréal USA, Inc. v. Liqwd, Inc.Some claims unpatentablePTAB · Jul 30, 2019 · PGR2018-00025 · APJ Timothy G Majors · PGR · Final written decision
Claims 1–13, 19–23, 29, and 30 are unpatentable as obvious; claims 14–16, 18, and 24–28 were not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“combination of Pratt and Tanabe teaches or suggests all of claim 1’s limitations, and that the skilled artisan had a sufficient reason to combine the art as proposed with a reasonable expectation of success in arriving at the bleaching method that is claimed. Before reaching a conclusion of obviousness, however, we consider the parties’ argument and evidence related to alleged objective indicia of nonobviousness. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016).” slip op. at 35
- ExcludeMotion to exclude, deniedMixed
“those exhibits) as discussed above in the context for which they were offered (objective indicia of nonobviousness as to alleged unexpected results and industry skepticism). We gave the exhibits little weight on those issues for the reasons explained, and ultimately found in Petitioner’s favor—that objective indicia of nonobviousness did not outweigh the evidence of obviousness on this record. Thus, excluding this evidence would not change the result. Accordingly, we dismiss Petitioner’s motion to exclude Exhibits 2038 and 2041 as moot.” slip op. at 85
Patent outcomesUS 9,668,954 mixed§ 103 obviousnesscites KSRPatents in suitUS 9,668,954 - Cook Group Incorporated / Cook Medical LLC v. Boston Scientific Scimed, Inc.Some claims unpatentablePTAB · Dec 28, 2018 · IPR2017-00440 · APJ Robert L Kinder · IPR · Final written decision
Claims 1–4, 6–7, 10–16, 18, and 20 are unpatentable; claims 5 and 8 are not shown unpatentable. Substitute claims 21, 30, and 38 are unpatentable as obvious over Sackier and Kirsch.
RulingsFinal written decision- Expert testimonyOther
“3. Dr. Nicosia’s Declaration in support of its Opposition to Patent” slip op. at 7
- Skill levelOther
“B. Person of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art as of the” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“B. “clip” The Parties now agree that “clip,” as the term is generally understood,” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableUnpatentableMixed
“as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). We conclude that Petitioner has not met its burden of showing this element to be present in Sackier because Petitioner combines features from distinct embodiments in Sackier without establishing persuasively that those embodiments are so directly related to each other such that one of ordinary skill in the art, looking at the reference as a whole, would recognize a disclosure of the invention as claimed. Accordingly, although a very close call, we conclude that Petitioner has failed to demonstrate anticipation of claims 1, 12, and 20 by Sackier for this reason.” slip op. at 21
Patent outcomesUS 9,271,731 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,271,731 - Cook Group Incorporated / Cook Medical LLC v. Boston Scientific Scimed, Inc.Some claims unpatentablePTAB · Nov 15, 2018 · IPR2017-00135 · APJ Robert L Kinder · IPR · Final written decision
Claims 1, 3–5, and 10 are unpatentable as obvious over Kimura (claims 1, 3–5) and Kimura with Sackier (claim 10); claims 7, 11–15, and 17 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Person of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art as of the time of the filing of the application that became the ’371 patent would have possessed the knowledge and skill of an engineer or similar professional with at least an undergraduate degree in engineering, or a physician having experience with designing medical devices. Pet. 8 (citing Ex. 1029 ¶ 11). Patent Owner does not dispute Petitioner’s proposal, and we adopt it for purposes of this Decision.” slip op. at 15
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“The issue we have with Patent Owner’s contentions, as pointed out by Petitioner, is that Patent Owner does not establish persuasively how its claims require the “reversible open/close” feature and the “tactile feel features.” See Pet. Reply 27–29. Even presuming that these features did indeed drive tremendous commercial success and industry praise for the commercial products, Patent Owner does not adequately explain in its analysis how the claims of the challenged patent require these particular features that drive commercial success. Patent Owner seems to suggest that a break section in the control wire will fracture and that this feature in the commercial product relates to the tactile feel. PO Resp. 57 (citing Ex. 2029 ¶¶ 91–93) (“After the yoke has disengaged, if the handle spool is moved further proximally, a break section in the control wire will fracture, leaving the ball within the yoke and uncoupling the control wire from the distal components of the device.”). This “break section in the control wire” is not, however, claimed or covered in claim 1, the claim that purportedly embodies the commercial product. The claims alleged to cover the product do not specifically require any “tactile feel feature.”3 Likewise, while the claims may allow for an opening and closing of the clip assembly, there is no requirement in these claims that the clip assembly, as “demanded” by physicians, repeatedly open and close. Thus, both of the drivers of commercial success and industry praise are not commensurate in scope with the claims of the patented invention. See Ex. 1046 ¶¶ 23–29 (explaining how features are not claimed).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“district court proceeding, Petitioner contends that “coupled to the sheath” means “slideable inside the sheath” and “the sheath confines the bushing.” Pet. 9. Petitioner provides no additional support. The district court tentatively rejected this broad interpretation. See Ex. 2003, 27–28 (“[T]he Court recommends that ‘coupled to the sheath’ be construed as ‘linked together, connected, or joined, but not slidable inside the sheath.’”). Patent Owner contends that Petitioner’s proposed construction of “coupled to the sheath” is “unreasonably broad,” but provides little citation to the intrinsic record before us. Prelim. Resp. 13–14. Instead, Patent Owner notes that the plain and ordinary meaning of coupled is “linked together, connected, or joined,” citing to an unrelated Federal Circuit decision as well as the related district court determination. Id. at 14; Ex. 2003, 28. In our proceeding, Petitioner has not provided persuasive evidence or argument to support its claim interpretation by merely pointing to what Patent Owner purportedly argued in district court. Based on the final record before us, “coupled to the sheath” means “linked together, connected, or joined” to the sheath. Our construction is consistent with the district court’s analysis and reflects the common understanding of the term “coupled” in the mechanical arts to require more than simply abutting or contacting. See generally Ex Parte Paul Robert Homrich, Appeal 2014-005786, 2016 WL 3541285, at *3 (PTAB, June 27, 2016) (“When used in mechanical systems, the plain and ordinary meaning of ‘coupled’ means to link together or connect,” and coupled requires more than contact or abut.).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We are not persuaded that Petitioner has demonstrated sufficiently that Adams discloses “a bushing extending between a proximal end coupled to the sheath,” (Ex. 1027, 17:4–5) as required by claim 1 of the ’371 patent. Based on the final record, Petitioner’s contention that retainer 110 [bushing] is slidable inside the sheath, or confined by the sheath, does not establish persuasively that the proximal end of the bushing is coupled to the sheath as required by claim 1. The claimed coupling must be “proximal coupling” and Petitioner can only point to distal coupling via distal tabs 118, 119 (Pet. Supp. Reply 6) – this is not “proximal” coupling. Further, for the bushing and the sheath to be coupled requires them to be “linked together, connected, or joined” in some manner and Petitioner has not established any such connection for proximal coupling. Petitioner also has failed to establish a persuasive reason for linking or connecting retainer 110 and sheath 112 – indeed, doing so would negatively impact the ability of retainer 110 to freely slide out of sheath 112. See Prelim. Resp. 27. Adams suggest that when control wire 108 is actuated and the clip is locked into the lock sleeve, retainer release 109 pulls retainer 110 back, disengaging retainer tabs 118, 119 from the two retainer holes as depicted in Figure 4.” Ex. 1023, 7:26–44 Finally, we note that our decision would not change if we adopted the district court’s claim interpretation. The district court adopted a claim construction of “a bushing extending between a proximal end coupled to the sheath” as “linked together, connected, or joined, but not slidable inside the sheath.” Ex. 2003, 28 (emphasis added). Should the district court’s interpretation be the correct one, Patent Owner’s position is much stronger whereas Petitioner’s theory is based on slidable movement. See Pet. 9 (arguing for “slideable inside the sheath” and “the sheath confines the bushing”); Pet. Supp. Reply 6. Having now considered the evidence in the complete record established during trial, we are not persuaded that Petitioner has demonstrated by a preponderance of the evidence that claim 1 would have been anticipated by Adams. Petitioner has not established persuasively that Adams discloses “a bushing extending between a proximal end coupled to the sheath.” For this reason, Petitioner has failed to prove by a preponderance of the evidence that Adams anticipates claim 1.” slip op. at 22
Patent outcomesUS 8,974,371 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,974,371 - Pharmacosmos A/S v. Luitpold Pharmaceuticals, Inc.Some claims unpatentablePTAB · Jan 4, 2017 · IPR2015-01490 · APJ Lora M Green · IPR · Final written decision
Claims 1–3, 10–15, 23, 25, 27, 30, and 41–43 are unpatentable; claims 17 and 47 were not shown unpatentable; claims 28 and 29 were cancelled.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“based on the complex as a whole, rather than just the carbohydrate component, as Fishbane related to iron dextran complexes. Reply 10. We agree with Petitioner that the language of the term “substantially non-immunogenic carbohydrate component” itself only requires an assessment of the immunogenicity of the carbohydrate component, and disagree with Patent Owner that the claims require an assessment of the immunogenicity of the iron carbohydrate complex as a whole. In that regard, we note that the Specification of the ’702 patent supports our construction that the “substantially non-immunogenic carbohydrate component” is limited to the carbohydrate component as opposed to the iron carbohydrate complex as a whole. Specifically, the Specification teaches in the background section that previously available iron dextran products suffered from a “high incidence of anaphylactoid reactions . . . believed to be caused by the formation of antibodies to the dextran moiety,” while “[o]ther parenteral iron products (e.g., iron sucrose and iron gluconate) do not contain the dextran moiety, and the incidence of anaphylaxis with these products is markedly lower.” Ex. 1001, 1:53–57; see also id. at 11:3‒4 (“non-immunogenic carbohydrate component; no cross reactivity with anti-dextran antibodies”). Moreover, the language of independent claim 1 itself does not require a non-immunogenic complex, but only specifies that the “iron carbohydrate complex has a substantially non-immunogenic carbohydrate component.” Moreover, we decline to limit the term “substantially non- immunogenic carbohydrate complex” to require an incidence level of lower than 0.6%. Rather, what is supported by the claim language and the Specification is a low risk such that the incidence of adverse events of the carbohydrate complex is lower than dextran. See, e.g., Tr. 53‒54 (counsel for Patent Owner acknowledging that Fishbane was not incorporated by reference, and that it was only cited as a “see generally”).” slip op. at 10
- Skill levelOther
“We do not find a significant different between the requirements for the ordinary artisan proposed by Petitioner and Patent Owner. We agree with Petitioner (Pet. 14) that the best evidence of the level of skill in the art are the references themselves, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001), and, thus, we need not explicitly adopt either Petitioner’s or Patent Owner’s characterization of the level of skill in the art. Moreover, we note that the result of the analysis regarding the patentability of the claims would be the same under the requirements for the ordinary artisan proposed by either Petitioner or Patent Owner.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableInherency foundUnpatentable
“Petition (Pet. 22–27), we find that Petitioner has demonstrated by a preponderance of the evidence that Geisser teaches all the limitations of claim 1, either inherently or explicitly. That is, we agree with Petitioner that Geisser teaches a method of treating a disease characterized by an iron deficiency, specifically iron deficiency anemia (Pet. 23; Ex. 1003, Abstract, 1:4‒7, 2:4‒7, 9:30‒31). We further agree that Geisser teaches a method of administering an iron carbohydrate complex, that is, iron carboxymaltose, in a single dosage form of at least 0.6 grams of elemental iron, as Geisser teaches administering iron carbohydrate complexes as a single dose of 500‒ 1000 mg of iron. Pet. 23 (citing Ex. 1003, 1:26‒4:1, 8:7-10, 10:14‒17). In that regard, we credit the testimony of Dr. Linhardt that Geiser discloses iron carboxymaltose, and that Geisser describes a general synthetic method that is nearly identical to the method described in the ʼ702 patent. Ex. 1005 ¶¶ 8‒10, 13. In addition, as Geisser teaches one of the iron carbohydrate complexes explicitly recited by claim 1, that is, iron carboxymaltose, it would inherently meet the limitation that the carbohydrate component is substantially non-immunogenic and would have substantially no cross-reactivity with anti-dextran antibodies. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“Products of identical chemical composition can not have mutually exclusive properties.”). The teachings of Geisser support that finding, as Geisser specifically teaches that the complexes have low toxicity and a reduced danger of anaphylactic shock. Pet. 23 (citing Ex. 1003, 1:26‒ 2:1, 8:7‒10); see also Ex. 1001, 12:12‒14 (noting that as “[t]he iron carboxymaltose complex (e.g., VIT-45) generally does not contain dextran and [it] does not react with dextran antibodies.”).” slip op. at 18
Patent outcomesUS 7,754,702 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,754,702 - Geosys-Intl, Inc. v. Farmers Edge Precision Consulting Inc.Some claims unpatentablePTAB · Aug 17, 2016 · IPR2015-00709 · APJ Timothy J Goodson · IPR · Final written decision
Claims 1–24 are unpatentable as obvious; Petitioner did not show claim 25 would have been obvious.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner’s declarant, Dr. Johannsen, testifies that a person of ordinary skill in the field of this invention “would have had at least a Bachelor of Science degree in Agricultural Systems Management, Agriculture, Agronomy, or a related degree and would have had several years of experience with precision farming.” Ex. 1009 ¶ 16. Patent Owner’s declarant, Dr. Heiniger, testifies that a person of ordinary skill in this field would have “at least a Bachelor of Science degree in agronomy or a related field, and at least a Masters Degree in a discipline that involves engineering systems using remote sensing data or comparable work experience. Such a person would have had some practical experience integrating these remote sensing systems.” Ex. 2033 ¶ 18; see also PO Resp. 26 (same). Although Dr. Heiniger’s position is not exactly the same as Dr. Johannsen’s, Dr. Heiniger adds that the “[d]ifferences between who Dr. Johannsen and I view as a person of ordinary skill in the art are not material to my opinions . . . .” Ex. 2033 ¶ 19. The differences between Dr. Johannsen’s and Dr. Heiniger’s articulations of the level of ordinary skill in the art are fairly minor. Our analysis below, including the conclusions we reach, would be substantially the same under either proposal. Nevertheless, after considering the evidence of record, we adopt Dr. Heiniger’s definition of the level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“In the Decision to Institute, we construed the phrase “calculating a map”5 in claims 1, 6, 8, 13, 15, 17–19, and 24 to mean “performing calculations to produce a map.” Dec. to Inst. 7. With respect to the phrase “maximum possible crop yield” in claims 1, 8, and 15, we declined to adopt Petitioner’s proposed construction of “yield goal” and instead applied the ordinary and customary meaning of the claim language. Id. at 8–9. We further determined that no other claim term required express construction. Id. at 9. Following institution, neither party challenged those constructions or proposed other terms for construction. Therefore, for the reasons explained in the Decision to Institute, we maintain the constructions set forth therein. 5 We understand the phrase “calculating a map” to have the same construction, regardless of whether it appears as “calculating . . . a map,” “calculate . . . a map,” or “calculating a map.”” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“calculating nitrogen needs for a field.” Ex. 1001, 1:39–40. Hauwiller’s system is open to a variety of recommendation equations, as Patent Owner’s declarant agrees. See Ex. 1006, 8:36–48, 9:18–21, 9:34–38, 13:30–35, 13:39–45; Ex. 1020, 8:11–16. This openness supports the obviousness of employing within Hauwiller’s system a conventional equation (or certain aspects of a conventional equation) such as the one set forth in the Background of the ’912 patent. Further, while the conventional equation includes several variables, a basic teaching of the equation is that in calculating the fertilizer recommendation, the amount of nitrogen already present should be subtracted from the nitrogen needed to realize the yield goal. See Ex. 1001, 1:39–50. Dr. Johannsen’s testimony that “subtraction of existing nutrients from the nutrient amount was a conventional thing to do particularly because it helps reduce leaching due to over fertilization” is consistent with this understanding of the conventional equation. See Ex. 1009 ¶ 71. We also recognize that the ’912 patent describes the equation as being a conventional approach for calculating nitrogen needs “for a field” rather than for a specific site within the field. Ex. 1001, 1:39–40. But Hauwiller recognizes that “[d]esired yield potential varies depending upon the soil characteristics by location” and, for that reason, describes the desirability of constructing “a yield goal map for creating an application map based upon site specific yield goals.” Ex. 1006, 9:32–41 (emphasis added). Thus, Hauwiller teaches the advantages and desirability of a site specific approach. We agree with Petitioner that the “subtracting” step would have been obvious by applying the teachings of the equation in the Background of the ’912 patent to the site-specific approach of Hauwiller. The evidence supports Petitioner’s contentions summarized above, and we agree with Petitioner that claim 15 would have been obvious based on Hauwiller and the prior art described in the Background of the ’912 patent, even taking into account the secondary considerations discussed in Section II.E. below. We have considered Patent Owner’s arguments to the contrary, but we do not find them persuasive for the reasons discussed below.” slip op. at 12
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“We agree with Petitioner that Patent Owner has not shown the required nexus between the alleged objective indicia of nonobviousness and the merits of the claimed invention. Although the agreements between Petitioner and the former owner of the ’912 patent convey rights under the ’912 patent, they involve significantly more than the pertinent licenses. The 2008 and 2011 agreements convey licenses to a broader portfolio of U.S. and Canadian patents as well as copyrights, trademarks, and a domain name. Ex. 2022, 4–6; Ex. 2023, 4–6. Moreover, the licenses to intellectual property are just one facet of these agreements, the primary purpose of which is “to set forth the terms upon which Geosys shall provide sales, marketing and support for Field InSite as part of the Geosys FarmSat Platform.” Ex. 2022, 2; Ex. 2023, 2. Similarly, the 2012 agreement conveys rights beyond the ’912 patent. Ex. 2024, 2–3. Patent Owner does not point to, and we do not find, any portion of these agreements assigning a particular royalty rate or value for the ’912 patent. Given the breadth of the agreements and the absence of evidence or explanation from Patent Owner concerning nexus, any determination of how much of the value of the agreements is attributable to the ’912 patent would be speculative. See In re Cree, 818 F.3d 694, 703 (Fed. Cir. 2016). Further, the 2012 agreement calls for a lump sum payment for all of the rights conveyed, the amount of which is less than a reasonable estimate of potential litigation costs. Ex. 2024, 2–3. This detracts further from Patent Owner’s argument that the agreements support the nonobviousness of the ’912 patent. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907– 08 (Fed. Cir. 1985) (noting that licensing programs “are not infallible guides to patentability. They sometimes succeed because they are mutually beneficial to the licensed group or because of business judgments that it is cheaper to take licenses than to defend infringement suits, or for other reasons unrelated to the unobviousness of the licensed subject matter.”). Patent Owner’s argument based on its acquisition of the ’912 patent is also unpersuasive. The evidence that Patent Owner cites in support of that argument shows only that The Mosaic Company filed and subsequently dismissed a Canadian patent infringement suit against Patent Owner. See Exs. 2025, 2026.8 Patent Owner does not cite to the agreement by which ownership of the ’912 patent was transferred, nor does Patent Owner provide the details of that agreement. The evidence Patent Owner relies on does not support Patent Owner’s argument that its decision to acquire the ’912 patent constitutes objective evidence of nonobviousness of the ’912 patent. Finally, the commercial success argument Patent Owner presents in a” slip op. at 36
Patent outcomesUS 7,171,912 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,171,912 - Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCSome claims unpatentablePTAB · Jan 22, 2016 · IPR2014-01557 · APJ Fred E Mckelvey · IPR · Final written decision
Claims 1, 5, 6, 9, 10, 12, 16, and 39 are unpatentable under § 103; claims 41, 45, 46, and 49 were not shown unpatentable because the combinations did not disclose an indicator reporting the …
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Farrauto noted that MECA describes testing using a 90 mm Pallflex filter. Ex. 2009, page 29:4–page 30:20. His uncontradicted cross-examination supports a finding that one skilled in the art (1) knows the nature of the Pallflex filter and (2) would have been able to use the Pallflex filter in the diesel engine Otake environment. Opposing Dr. Farrauto’s testimony, all we have is an argument by counsel for Patent Owner. Paper 21, pages 8–9. As MECA shows, use of a DPF-A filter with a catalyst coated directly on the filter” slip op. at 24
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“1. Claim 1 Claim 1 is not as narrow as Patent Owner would have us believe. It covers reducing “particulate matter” (i.e., “small particles of solid or liquid suspended in a gas”). These are precisely the “particulate matters” described by MECA. See Ex. 1008A, Figure 6, renumbered page 15—discussed in more detail above.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Dr. Farrauto noted that MECA describes testing using a 90 mm Pallflex filter. Ex. 2009, page 29:4–page 30:20. His uncontradicted cross-examination supports a finding that one skilled in the art (1) knows the nature of the Pallflex filter and (2) would have been able to use the Pallflex filter in the diesel engine Otake environment. Opposing Dr. Farrauto’s testimony, all we have is an argument by counsel for Patent Owner. Paper 21, pages 8–9. As MECA shows, use of a DPF-A filter with a catalyst coated directly on the filter reduced particulate matter to very low levels. Ex. 1008A, renumbered page 15, Figure 6. Patent Owner is using a known filter for its intended purpose to obtain an expected result—reduction in particular matter.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“3. Conclusion We hold that Petitioner has established by a preponderance of the evidence that the subject matter of claim 1 would have been obvious to a person having ordinary skill in the art. Patent Owner has not argued the separate patentability of dependent claims 5, 9, and 39. Accordingly, those claims fall with claim 1. We hold that Petitioner has not established by a preponderance of the evidence that the subject matter of claim 41 would have been obvious.” slip op. at 30
Patent outcomesUS 7,951,346 mixedClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,951,346 - Norman International, Inc v. Andrew J. Testamentary Trust, Russell L. Hinkley, Sr. (Co-Trustee), And Robert F. Miller (Co-Trustee)Some claims unpatentablePTAB · Jun 18, 2015 · IPR2014-00283 · APJ Toni R Scheiner · IPR · Final written decision
Claim 17 is unpatentable as anticipated by Tachikawa; Petitioner did not prove claim 26 obvious over Tachikawa and Todd because it did not explain how to combine the references.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“In each instance, the specification of the ’192 patent uses the term “inertia” in the context of a window cover system that maintains the window cover at a desired position. We determine that the construction of “inertia” offered by Petitioner is consistent with the use of the word in the specification, and would be understood by one of ordinary skill in the art to mean: “a property of matter whereby it remains at rest or continues in uniform motion unless acted upon by some outside force.” Pet. 15. Moreover, as inertia is itself an attribute, or property, of matter, we determine that the word “inherent” does not contribute any additional meaning to the term, or change the way it would be understood by one of ordinary skill in the art.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“of Tachikawa’s spring drive for maintaining the position of the cover at different roll-up or roll-down positions.” Pet. Reply 3. In other words, Tachikawa’s spring drive, operating as a constituent element of the window covering system, functions to maintain the window cover at a desired position unless the system is acted on by some outside force. This finding is supported by substantial evidence. Specifically, as noted in the Petition, Tachikawa’s spring 17 constantly generates a torque in the opposite direction and identical to the torque on an operating shaft due to the load of the blinds acting upon the operating shaft, “which has the effect that the force for manipulating the operating shaft in order to perform roll-up and roll-down of the blinds can be a small constant force regardless of the position of the blinds” (Pet. 29; Ex. 1002, 209). Tachikawa teaches that this also has the effect that “the blinds do not fall spontaneously due to the weight of the blinds if roll-up is stopped mid-way, but are rather stopped at that position by the spring torque.” Ex. 1002, 209. We credit the testimony of Petitioner’s witness, Mr. Carlson, that “there are three factors that cause the blinds to ‘stop at the midway position’ (i.e. maintain the position of the cover): 1) the spring torque described above, 2) the inherent inertia necessarily present in all mechanical systems, and 3) the friction that is also inherently present in mechanical systems.” Ex. 1017 ¶ 35.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“conclude that Petitioner has failed to prove by a preponderance of the evidence that the window cover system of claim 26 would have been obvious over Tachikawa and Todd. Petitioner points to elements of both references, maps them to elements of claim 26, and argues that it would have been obvious to modify Tachikawa’s window cover system with a plurality of spring drives “depending on the weight and size of a window cover.” Pet. 31–36. Even if we consider this latter argument to be an adequate reason for combining the elements of the references, Petitioner does not explain how one of ordinary skill in the art would go about combining the elements, or what modifications one of ordinary skill in the art necessarily would have made in order to combine the elements. Nor does Petitioner—in the Petition—point to evidence establishing that modifying Tachikawa to have a plurality of spring drives would have been routine for one of ordinary skill in the art. What is missing from the Petition is explicit, “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d at 988; KSR, 550 U.S. at 418.” slip op. at 24
- ExcludeMotion to exclude, deniedMixed
“Patent Owner submitted during prosecution of a related application. Tr. 7:4– 17, 24:6–11. Nevertheless, we agree with Patent Owner that § 42.61(b) “does not obviate the requirement of an affidavit attesting to the accuracy of a foreign document under § 42.63(b).” Paper 45 (Reply to Petitioner’s Opposition to the Motion to Exclude Evidence), 2. Considering the totality of the circumstances, we concluded, as discussed during the oral hearing, that it would be appropriate, in this instance, to waive our rules to the extent we would allow Petitioner, within five days from the date of the oral argument, “to submit an affidavit attesting to the accuracy of the translation that was previously submitted” (Tr. 8:2–3), with the proviso that the affidavit “meet the requirement[s] of our rules,” specifically “[42 C.F.R. §§] 42.63, 42.2, and also 1.68” (id. at 8:2–5). Petitioner complied in a timely manner (Paper 50; Ex. 1021). Accordingly, Patent Owner’s Motion to Exclude is denied with respect to Exhibit 1002, and we shall admit and rely on the exhibit.” slip op. at 13
Patent outcomesUS 6,283,192 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,283,192
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.