• Cook Group Incorporated / Cook Medical LLC v. Boston Scientific Scimed, Inc.Some claims unpatentable
  PTAB · 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 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,271,731
• Cook Group Incorporated / Cook Medical LLC v. Boston Scientific Scimed, Inc.Some claims unpatentable
  PTAB · 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 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,974,371
• Amazon.Com, Inc. / Blizzard Entertainment, Inc. v. Ac Technologies S.A.Some claims unpatentable
  PTAB · Mar 6, 2017 · IPR2015-01802 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1, 3, 5, and 7–15 are unpatentable as anticipated by Rabinovich; Petitioner did not prove claims 1–15 obvious over Rabinovich.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner

    “Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience.” Ex. 1005 ¶ 17; Pet. 16. Patent Owner does not challenge this definition or present its own. Accordingly, we credit the testimony of Dr. Ratner regarding the level of ordinary skill in the art, and find that a person of ordinary skill in the art would have had an undergraduate degree in Computer Science or a related field, such as Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We agree with and adopt Petitioner’s reasoning and determine Rabinovich to be a printed publication. We credit the unrebutted testimony of Dr. Rabinovich regarding the consistency of his professional practice in 1998 for republication of his AT&T technical memoranda on a webpage that he managed on AT&T’s publicly accessible website. Furthermore, we find the December 1998 IEEE article corroborates the public availability of Rabinovich on that website, and would have been a roadmap, for one of ordinary skill in the art of data management and optimized access to data, to be guided to Rabinovich. See Reply 19–22. As Petitioner points out, Patent Owner’s own declarant states that Rabinovich and the December 1988 IEEE article “are ‘similar[]’ in that they both address ‘problems in network connectivity caused by multiple clients accessing servers.’ (Ex. 2006 at 12).” Id. at 21. Additionally, the passage in the December 1998 IEEE article that cites to Rabinovich refers to an algorithm in Rabinovich for optimizing access to data in order to increase performance. Id. Accordingly, we find that footnote 16 of the IEEE article, which contains the URL to Rabinovich, would have guided one of ordinary skill directly to Rabinovich. We are, therefore, persuaded, that Rabinovich is a printed publication under 35 U.S.C. § 102.” slip op. at 12

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

    “object xs. Rabinovich defines cnt(s,xs) as the “total access count for xs,” which is equal to cnt(xs). Ex. 1006, 11. According to Dr. Ratner, “[t]he metric cnt(s,xs) measures the total number of times in that window that replica xs has been served to a client computer.” Ex. 1005 ¶ 253. As Patent Owner points out, Rabinovich teaches replicating object xs if the ratio of cnt(s,xs) over aff(xs) is greater than m, i.e., a non-zero value. PO Resp. 34; Ex. 1006, 12, Fig. 4. In view of this, we agree with Patent Owner that if cnt(s,xs) has a value of zero, meaning that object x has not been served to any client computer, then the ratio of cnt(s,xs) to aff(xs) will be zero, i.e., less than m, and Rabinovich will not carry out its replication step. This means that Rabinovich will not replicate object xs until xs has been accessed by a client computer at least once, such that the access count for xs is greater than zero. In this regard, we agree with Patent Owner that Rabinovich object xs is not “sen[t], from the at least one data storage device to the another data storage device . . . independently of an access of the at least one client computer” because Rabinovich teaches explicitly that object xs is not sent unless there has been at least one access from the client computer. We are not persuaded by Petitioner’s argument that Rabinovich” slip op. at 18

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “pieces” Claim 1 recites “each file including a plurality of individual pieces, the pieces containing parts of the files.” Ex. 1002, 25:67–26:1. The other independent claims recite limitations commensurate in scope. Neither party proposes explicitly a construction of the term “piece.” Petitioner argues that “files are inherently composed of pieces in the form of bits that make up bytes, the bytes themselves being pieces of the file.” Pet. 32. Patent Owner argues that construing “piece” to cover “bits and bytes” of a file “would read out the ‘pieces’ limitation from the claim entirely” (PO Resp. at 29–30) and that “one of ordinary skill in the art would not read the ‘pieces’ limitation of the claim to include bits and bytes” (id. at 30). The claims themselves define “piece” by requiring that a “file” have a “plurality of individual pieces,” but do not establish a lower bound—i.e., a minimum number of bits or bytes—to qualify as a “piece.” Patent Owner identifies no support in the ’680 patent for its contention that “piece” or “pieces” excludes a byte or bytes of a file, relying instead solely on the testimony of Dr. Paul S. Jacobs. Id. (citing Ex. 2006 ¶¶ 38, 39). We are not persuaded by Dr. Jacobs’s conclusory testimony. Because “piece” and “pieces” are limited by the claims only to being a subset of a file and because a byte or collection of bytes of a file is a subset of that file, we are persuaded that the broadest reasonable interpretation of “piece” and “pieces” in light of the Specification of the ’680 patent encompasses a byte or bytes. slip op. at 7

  Patent outcomesUS 7,904,680 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,904,680
• Sandisk Corp. v. Netlist, Inc.Some claims unpatentable
  PTAB · Sep 28, 2016 · IPR2015-01020 · APJ Peter P Chen · IPR · Final written decision

  Claims 17, 22, 24, 26, and 33 are unpatentable as obvious over Takeda, JEDEC, and Connolly; claims 15, 16, 31, and 32 were not shown unpatentable over Takeda and JEDEC.

  RulingsFinal written decision

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

    “We are unpersuaded by Patent Owner’s position. First, the claim language does not recite any physical or structural connection, rather, only “electrically coupling.” Pet. Reply 3, 8–9. In addition, the specification of the ’150 patent does not define explicitly the term “selectively electrically coupling.” Therefore, as in IPR2014-00882 and IPR2014-01011, we refer to its ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. Translogic Tech., 504 F.3d at 1257. A technical dictionary, the IEEE Dictionary,4 defines “electrical coupling” as “[e]lectrical charges in conductors of a disturbed circuit formed by electrical induction.” Ex. 3001. The IEEE Dictionary explains that “[s]ince the ratio of a conductor’s electrostatic charge to the potential difference between conductors (required to maintain that charge) is the general definition of capacitance, electrical coupling is also called capacitive coupling.” Id. The IEEE Dictionary defines” slip op. at 9

  • Skill levelSkill level board ownOther

    “Based on our review of the ’150 patent and the types of problems and solutions described in the ’150 patent and cited prior art, we conclude a person of ordinary skill in the art at the time of the ’150 patent would have a Bachelor’s degree in electrical engineering, computer engineering, computer science, or related field, and at least one year of work experience, including familiarity with computer memory systems and related industry standards such as JEDEC standards for DRAM memories and memory modules. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). D. Declarant Testimony” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “To testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to provide testimony at trial because the expert “had sufficient relevant technical expertise” and the expert’s “knowledge, skill, experience, training [and] education . . . [wa]s likely to assist the trier of fact to understand the evidence”); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Jagannathan has designed and implemented hardware virtual memory caches, and researched theoretical performance measures of various cache coherency protocols, and has experience in the design of memory systems. We find that, although Dr. Jagannathan may be less experienced than Dr. Sechen in the area of memory module design, he is nonetheless qualified sufficiently to testify about memory systems and memory modules. E. Asserted Obviousness of Claims 15, 16, 31, and 32 in view of Takeda” slip op. at 14

  • ExcludeMotion to exclude, deniedDenied

    “We have reviewed the parties’ contentions on this issue, and exercise our discretion to determine that Petitioner’s Reply and the Jagannathan Supplemental Declaration will not be excluded. We find that, although they may be “inartfully” drafted, the first Jagannathan declaration and Petition sufficiently outlined Petitioner’s position on the function of the chip select signal, namely, that the chip select signal was not itself the logic signal enabling operation of bit-switches. We further find that Petitioner’s Reply and the Supplemental Jagannathan Declaration did not present an entirely new rationale of unpatentability based on Takeda, JEDEC, and Connolly. Cf. Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (affirming Board’s exclusion of reply brief and declaration that changed unpatentability theory to “an entirely new rationale”). Moreover, there is no dispute that Patent Owner was aware of Petitioner’s position by no later than the Jagannathan deposition, which preceded Patent Owner’s Response by ten days. Patent Owner could have addressed Petitioner’s chip select signal contention, procedurally or substantively, in its Response, but chose to raise the issue only after Petitioner filed its Reply and Supplemental Jagannathan Declaration. Accordingly, Patent Owner had notice of Petitioner’s position and an opportunity to refute that position in its Response.” slip op. at 24

  Patent outcomesUS 7,881,150 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,881,150
• Geosys-Intl, Inc. v. Farmers Edge Precision Consulting Inc.Some claims unpatentable
  PTAB · 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 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,171,912
• Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCSome claims unpatentable
  PTAB · 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 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,951,346
• Sandisk Corporation v. Netlist, Inc.Some claims unpatentable
  PTAB · Dec 14, 2015 · IPR2014-00970 · APJ Linda M Gaudette · IPR · Final written decision

  Claims 1, 14, 15, 19–25, and 27–34 are unpatentable; the Board found other challenged claims not shown unpatentable on the grounds decided.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The difference in the opinions of the two experts is that Dr. Sechen believes a person of ordinary skill in the art would have an additional four years of experience, education, or a combination of the two, beyond that proposed by Dr. Alpert. See Ex. 1009 ¶ 7. According to Dr. Alpert, the difference in the proposed levels of ordinary skill in the art is not material to any dispute over claim construction or patentability in this inter partes review. Id. We accord greater weight to Dr. Alpert’s opinion as to the level of ordinary skill in the art because he has experience in both teaching students and working with engineers in the industry, while Dr. Sechen’s experience is primarily in teaching. Compare Ex. 1007 ¶¶ 7, 21 with Ex. 2012 ¶¶ 3, 5. Moreover, based on our review of the ’434 patent and the types of problems and solutions described in the ’434 patent and cited prior art, we agree with Dr. Alpert’s opinion on the level of ordinary skill. Accordingly, we find that a person of ordinary skill in the art at the time of the ’434 patent would have a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” slip op. at 10

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

    “The above disclosure uses the term “operable independently” to describe the data handlers as being discrete and functioning without being physically or logically connected to each other. Based on our review of the ’434 patent, the specification and claim 27 both use the term “operable independently” in the same manner, i.e., to describe a feature of the data handler that is distinct from its data generation feature. We agree with Petitioner, therefore, that when interpreted in the context of the ’434 patent in its entirety, the claim term “operable independently” “merely means that each data handler can operate without influence or control by any of the other data handlers.” Reply 5. The ’434 patent specification uses the term “operable independently” in accordance with its plain and ordinary meaning, and we find no basis for applying the narrower construction advanced by Patent Owner to any of the challenged claims. Accordingly, we interpret “operable independently” as “operable without influence or control by another.” See Cuozzo, 793 F.3d at 1278–79.” slip op. at 19

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Based on the above description in Averbuj, we agree with Patent Owner that Averbuj describes memory interfaces (the alleged data handlers) that are configured to produce address and control signals, and that Averbuj describes producing address and control signals in certain circumstances, e.g., when Averbuj’s sequencer (the alleged control module) specifies writing data in a particular pattern that requires transformation to conform to a particular configuration of a memory module. See PO Resp. 33. We also agree with Petitioner, however, that Averbuj’s memory interfaces are further configured to apply to the memory modules the same address and control signals received from, and produced by, the sequencers for testing (see Reply 15), e.g., when the sequencer sends signals that can be applied, without modification or transformation (see Ex. 1003 ¶ 56), directly to a memory module irrespective of its physical configuration. Thus, Petitioner has shown, by a preponderance of the evidence, that Averbuj’s sequencer meets the limitation of “a control module configured to generate address and control signals for testing the memory devices” as recited in challenged independent claims 1, 20, and 29 of the ’434 patent.” slip op. at 41

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

    “As discussed in Section IV.B.2.e., a petition must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent” (37 C.F.R. § 42.22(a)(2)), and “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response” (37 C.F.R. § 42.23(b)). We agree with Patent Owner that the Reply does more than merely respond to or rebut arguments made in Patent Owner’s Response; rather, it sets forth a theory that was not presented clearly in the Petition. Patent Owner’s position is supported by the fact that Dr. Sechen, whose skill level is at least (and appears to exceed) that of the ordinary artisan, apparently was unable to envision how Huang and Averbuj could be combined. Further, Dr. Alpert’s second declaration includes, at a minimum, opinions as to the understanding of the ordinary artisan with respect to the teachings of Huang and Averbuj that were not presented in his first declaration. In our judgment, consideration by the Board of the above-noted arguments in the Reply and evidence presented in Dr. Alpert’s second declaration in support thereof would be improper under 37 CFR § 42.23 and unfair to Patent Owner. We have, however, reviewed and considered the arguments in the Petition and evidence therein, and are in agreement with Patent Owner that Petitioner has not provided adequate explanation or evidence to support its contention that one of ordinary skill in the art would have had a reasonable expectation of success in combining Huang and Averbuj. Accordingly, Petitioner has not met its burden to show, by a preponderance of the evidence, that claims 7–12, 17, 18, 20–25, 27, 28, and 30–35 would have been unpatentable over Huang and Averbuj.” slip op. at 59

  Patent outcomesUS 8,001,434 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,001,434

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.