• Arctic Cat, Inc. v. Polaris Industries, Inc.All claims unpatentable
  PTAB · Feb 1, 2017 · IPR2015-01788 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–6 are unpatentable as obvious over Enokimoto and Dangauthier; claims 7–16 are unpatentable as obvious over Enokimoto, Dangauthier, and Bennett.

  RulingsFinal written decision

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

    “Specification discloses indirect coupling through a bearing carrier for the control arms and radius arms, but Patent Owner contends that coupling precludes indirect coupling through a bearing carrier for the claimed dampening member. As Petitioner persuasively argues, however, the Specification does not create a sufficiently clear disclaimer or distinction that limits “coupling” for dampening members to a bearing or other indirect coupling, while, at the same time, not limiting the same term “coupling” for the radius arms and control arms. See Pet. Reply 2; Ex. 1001 ¶ 67; Ex. 1028 ¶¶ 4–5 (testifying that “coupling” should not be differently construed for different components). And as noted above, Patent Owner concedes that coupling, even for the dampening member, includes indirect coupling via “a bearing or a bushing.” See PO Resp. 15. The Specification simply does not describe or differentiate coupling via a bearing and a bushing versus a bearing carrier, or coupling for a dampening member versus a control arm, radius arm, or other component, in a sufficient manner that allows, let alone requires, a narrowing of coupling for one suspension element (dampening member) versus another (control and radius arms).” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Given the similar location of Enokimoto’s engine and radius arm relative to a vehicle frame, Petitioner proposes modifying Enokimoto to include a sway bar, i.e., modifying Enokimoto’s radius arm 45 in a fashion similar to Dangauthier’s radius arm 3 and sway bar 13. See Pet. 32–36. As noted above, Patent Owner acknowledges that skilled artisans would have been motivated to add a sway bar to Enokimoto, but contends that they would not use Dangauthier’s system. See PO Resp. 44–45; Ex. 2044 ¶ 107. Patent Owner’s central thrust urges nonobviousness because skilled artisans allegedly would have ignored Dangauthier’s teachings and instead, modified Dangauthier to implement another sway bar mounting location. As Dr. Davis testifies, however, “nothing in Dangauthier or Enokimoto suggests to one of ordinary skill that Dangauthier’s sway bar should be re-engineered if applied to different vehicles.” See Ex. 1028 ¶ 8 (emphasis added). Dr. Moskwa also contends that “Dangauthier’s compact suspension does not allow space for an engine between the rear drive unit and the sway bar,” and “[t]hat is why Dangauthier places his suspension system rearward of his engine.” See Ex. 2044 ¶ 107. Patent Owner makes a related argument that Dangauthier’s teaching of a “compact” rear suspension system “does not allow space for an engine.” PO Resp. 44–45. This testimony and these arguments focus too narrowly on Dangauthier’s engine location and rear differential space. Contrary to the testimony, no persuasive evidence exists on this record showing that Dangauthier’s system uses a forward engine due to a lack of rear space; rather, the system simply employs a forward engine with a rear drive train with differential D that takes up similar space that a small engine would. See Ex. 1004, Fig. 2 (differential D). In addition, the proposed combination relies primarily on Enokimoto’s engine location and size and Dangauthier’s suggestion of a sway bar located near the pivot point of a radius arm for any type of engine location. See Ex. 1004, Figs. 1–3; 1:11–17. Petitioner does not rely on using any alleged specific size related to Dangauthier’s suspension system or on bodily incorporating all aspects of that suspension system.” slip op. at 26

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “Similar to the situation in ClassCo, we afford the evidence of commercial vehicle sales and praise little weight, because we determine that the broadly recited claims capture features well-known in the art, and they do not recite or require several features that Patent Owner’s cited literature touts as important and describes as part of an “entire [vehicle] package.” See Ex. 2027, 26 (describing the “ultimate thrill ride this entire package creates”) (emphasis added). In making these findings as outlined below with more particularity, we stress that we do not require Patent Owner to show success for each commercial or disclosed embodiment that falls in the scope of the challenged claims. See infra notes 11 (nexus presumed), 14 (summarizing some cited precedent).” slip op. at 55

  Patent outcomesUS 8,746,719 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,746,719
• Arctic Cat, Inc. v. Polaris Industries Inc.All claims unpatentable
  PTAB · Jan 30, 2017 · IPR2015-01783 · APJ Phillip J Kauffman · IPR · Final written decision

  Claims 60–62, 65–69, and 78–86 are unpatentable as obvious over the grounds listed in the Order.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedOther

    “would not have positioned the seats lower in the frame, because it would have necessitated overhauling Nechushtan’s frame structure. PO Resp. 37; Ex. 2030 ¶ 80. This contention is unpersuasive. Patent Owner’s expert presents a single sentence opining that the modification would have required overhauling Nechushtan’s frame structure. Ex. 2030 ¶ 80 (last sentence). This opinion is not accompanied by underlying facts or data, and does not explain persuasively why that is the case. We are persuaded by Petitioner’s argument and evidence that such alterations of the vehicle frame were predictable and within the ability of a person of ordinary skill to accomplish. Pet. Reply. 12; see also Pet. 24–26; Ex. 1008, Fig. 2; Ex. 1001 ¶ 139.” slip op. at 32

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “LEVEL OF SKILL IN THE ART The analysis of Petitioner’s expert, Dr. Davis, is predicated on the level of skill in the art being either: (1) a bachelor’s degree in mechanical engineering or a related field, and at least one year of experience working in automotive engineering or a related field, or (2) experience working in the field of automotive engineering for 2–3 years. See Ex. 1001 ¶ 27. Patent Owner does not contest Petitioner’s assertion. The prior art of record 9 U.S. Patent No. 5,954,364, issued Sept. 21, 1999 (Ex. 1008). 10 U.S. Patent No. 3,407,893, issued Oct. 29, 1968 (Ex. 1010). 11 U.S. Patent No. 5,327,989, issued July 12, 1994 (Ex. 1009). 12 U.S. Patent No. 4,693,134, issued Sept. 15, 1987 (Ex. 1012). 13 U.S. Patent No. 5,251,713, issued Oct. 12, 1993 (Ex. 1015). 14 Hart’s Hunter, Dirt Wheels Magazine, Dec. 1998 (Ex.1004). 15 U.S. Patent No. 7,270,336, issued Sept. 18, 2007 (Ex. 1013). 16 Exhibit 2032 is a redacted public version of Exhibit 2031. reflects a level of skill consistent with that asserted by Petitioner. We apply this level of skill to our analysis below.” slip op. at 14

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

    “Each of the grounds of unpatentability relies on Nechushtan, and Nechushtan discloses a space frame for “all-terrain vehicles.” Ex. 1008, 1:17–20, Figs. 1, 2; Pet. 8 (Nechushtan is an all-terrain vehicle). We need not determine if the preamble of claim 60 is limiting, because each of Petitioner’s proposed combinations is for an all-terrain vehicle. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that only those terms which are in controversy need to be expressly construed, and only to the extent necessary to resolve the controversy).” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “1. Previous Determinations In the Institution Decision, we determined that a front, mid, and rear frame portion as recited in claim 60 should be given their plain and ordinary meaning, with no further construction being necessary. Dec. 6–7. In the Institution Decision, we adopted Petitioner’s interpretation that broadest reasonable construction the claim term “vertical member” recited in claim 67, was “a member generally perpendicular to the horizontal axis of the vehicle.” Dec. 7. In the Institution Decision, we also determined that claim 60 does not required that the floorboard and base portions of the passenger compartment be distinct. Dec. 8–9. Neither party challenges these determinations, and, accordingly, we adopt them here. See SAS Institute, Inc. v. ComplementSoft, LLC., 825 F.3d 1341, 1351 (Fed. Cir. 2016) (The Board may not change claim interpretation from the institution decision where neither party anticipated that “already-interpreted terms were actually moving targets.”).” slip op. at 11

  Patent outcomesUS 8,827,028 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,827,028
• Arctic Cat, Inc. v. Polaris Industries Inc.All claims unpatentable
  PTAB · Jan 30, 2017 · IPR2015-01781 · APJ Phillip J Kauffman · IPR · Final written decision

  Claims 88, 90–101 are unpatentable as obvious over Nechushtan combined with Hill and the respective additional references.

  RulingsFinal written decision

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

    “Each of the grounds of unpatentability relies on Nechushtan, and Nechushtan discloses a space frame for “all-terrain vehicles.” Ex. 1008, 1:17–20, Figs. 1, 2; Pet. 7, 10 (Nechushtan is an all-terrain vehicle). We need not determine if the preamble of claim 88 is limiting, because each of Petitioner’s proposed combinations is for an all-terrain vehicle. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that only those terms which are in controversy need to be expressly construed, and only to the extent necessary to resolve the controversy).” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached

    “not “give life, meaning, and vitality” to the claims. Pet. Reply 2 (quoting Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)). Petitioner goes on to assert that if the Board interprets the preamble as limiting, the broadest reasonable interpretation is a “vehicle capable of driving on a variety of terrains.” Id. (citing Ex. 1002, 1:13-14). Each of the grounds of unpatentability relies on Nechushtan, and Nechushtan discloses a space frame for “all-terrain vehicles.” Ex. 1008, 1:17–20, Figs. 1, 2; Pet. 7, 10 (Nechushtan is an all-terrain vehicle). We need not determine if the preamble of claim 88 is limiting, because each of Petitioner’s proposed combinations is for an all-terrain vehicle. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that only those terms which are in controversy need to be expressly construed, and only to the extent necessary to resolve the controversy).” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “1. Previous Determinations In the Institution Decision, we determined that front, mid, and rear frame portions as recited in claim 88 should be given their plain and ordinary meaning, with no further construction being necessary. Dec. 8–9. In the Institution Decision we also determined that claim 88 does not require that the floorboard and base portions of the passenger compartment be distinct. Dec. 9–10. Neither party challenges these determinations, and, accordingly, we adopt them here. See SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016) (The Board may not change a claim interpretation from the institution decision where neither party anticipated that “already-interpreted terms were actually moving targets.”).” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “LEVEL OF SKILL IN THE ART The analysis of Petitioner’s expert, Dr. Davis, is predicated on the level of skill in the art being either: (1) a bachelor’s degree in mechanical engineering or a related field, and at least one year of experience working in automotive engineering or a related field, or (2) experience working in the field of automotive engineering for 2–3 years. See Ex. 1001 ¶ 27. Patent Owner does not contest Petitioner’s assertion. The prior art of record reflects a level of skill consistent with that asserted by Petitioner. We apply this level of skill to our analysis below.” slip op. at 14

  Patent outcomesUS 8,827,028 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,827,028
• Great West Casualty Company / Bitco General Insurance Corporation et al. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Jan 17, 2017 · IPR2015-01707 · APJ Michael W Kim · IPR · Final written decision

  Claims 11–13 and 15–20 are unpatentable: claims 11, 12, and 16–20 as obvious over Payne, and claims 13 and 15 as obvious over Payne and Ackley.

  RulingsFinal written decision

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

    “guidance in resolving this disagreement. To that end, the relevant portion of independent claim 11 recites “at least one server operative to store one or more of: a) content, b) links to content.” As an initial matter, controlling precedent from our reviewing court instructs us that different claim terms are presumed to have different meanings. Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (“[T]he use of two terms in a claim requires that they connote different meanings.”); CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of . . . evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”). Accordingly, on a high level, each of the following express claim terms are presumed to have different meanings: “content”; and, “links to content.”” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “We disagree with Patent Owner because Patent Owner’s assertions are misplaced. Most prominently, were O’Neil the only factual support for Patent Owner’s position, it may be persuasive. Petitioner’s proposed modification, however, relies not only on O’Neil, but also on Payne and the Declaration of Dr. Greenspun. Pet. 48–49 (citing Ex. 1003 ¶¶ 240, 241; Ex. 1006, 6:9–42, 8:38–53, 9:64–10:1, 5:16–25, and Fig. 5); see also Ex. 1003 ¶ 272. In short, we are persuaded that the following findings in Payne asserted by Petitioner are accurate, and that it supports adequately Petitioner’s proposed modification. The system of Payne already includes functionality requiring a user to log on to an account, Ex. 1006 at 6:9–42, 8:38–53, so it would have been trivial to place the log in functionality directly on the digital advertising documents, which are web pages, see id. at 9:64–10:1, 5:16–25, Fig. 5. Ex. 1003 at ¶ 240. When a patent simply arranges old elements, each performing the same function it had been known to perform and together yielding no more than one would expect from such an arrangement, the combination is obvious. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Pet. 48; see also Reply 11–16. As counter-evidence, Patent Owner cites to paragraphs 46–48 of the Declaration of Dr. Papakonstantinou. Those paragraphs, however, suffer from the same logical flaw identified above.” slip op. at 23

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Insofar as Patent Owner is asserting that Payne and Ackley are non- analogous art, we disagree. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). To that end, Payne discloses that it relates to the field of “user-interactive network sales systems for implementing an open marketplace for goods or services over computer networks such as the Internet.” Ex. 1006, 1:14–17. Ackley discloses that it relates to the field “computer-based systems and methods that enable sales transactions between third parties through a communications network, such as internet auctions and classified systems.” Ex. 1008, 1:21–25. We see little daylight between these two fields, especially given that Ackley’s use of the word “such as” with “internet auctions” indicates that such “internet auctions” are a non-limiting example, and, thus, do not materially limit Ackley’s field of endeavor.” slip op. at 28

  Patent outcomesUS 7,516,177 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,516,177
• Great West Casualty Company / Bitco General Insurance Corporation et al. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Jan 17, 2017 · IPR2015-01706 · APJ Michael W Kim · IPR · Final written decision

  Claims 11, 12, and 16–20 are unpatentable as obvious over MyLibrary.

  RulingsFinal written decision

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

    “In summary, we construe “content” as “electronic data embodying information for an individual or individuals,” and excluding “links to content,” but not excluding “content” associated with the “links to content.”5” slip op. at 16

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

    “written decision is issued shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (Affirming that USPTO has statutory authority to construe claims according to 37 C.F.R. § 42.100(b).). When applying that standard, we interpret the claim language as it would be understood by one of ordinary skill in the art in light of the Specification. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we generally give claim terms their ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning ‘is the meaning that the term would have to a person of ordinary skill in the art in question.’”). For the purposes of this decision, and on this record, we determine that most claim terms do not need express interpretation. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only those terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy.).” slip op. at 5

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “7. Conclusion We are persuaded that Petitioner has shown, by a preponderance of the evidence, that claims 11, 12, and 16–20 are unpatentable as obvious in view of MyLibrary. In addition to findings we make above in connection with our analysis of claims 11, 12, and 16–20 as obvious in view MyLibrary, we also adopt as our findings Petitioner’s positions as to how MyLibrary discloses each of the limitations of claims 11, 12, and 16–20. We further adopt as our own Petitioner’s rationales for modifying MyLibrary, as referenced above.” slip op. at 32

  Patent outcomesUS 7,516,177 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,516,177
• Inline Packaging, LLC v. Graphic Packaging International, Inc.All claims unpatentable
  PTAB · Jan 10, 2017 · IPR2015-01609 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–53 are held unpatentable: claims 1–4, 6–24, 26–29, and 31–33 as obvious over Kato and Clough; other claims under the stated § 103 grounds.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert discountedOther

    “Patent Owner cites to the Declaration of Dr. Floros to support many of its assertions set forth above, in particular, that Kato does not provide any indication that it would have been modified to include the microwave energy interactive material of Clough. See Ex. 2007, 28–38, 40–44. Dr. Floros’ testimony is unpersuasive for the same reasons as set forth above, and need not be repeated here.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proffers that a hypothetical person of ordinary skill in the art, with respect to and at the time of the ’078 patent, would have been a packaging professional with at least an undergraduate degree in packaging science (or related field) or comparable training/experience and would have had at least three (3) years of professional experience in the design of packaging materials for consumer products that are made from paperboard. Pet. 5. Patent Owner did not offer a skill level in the Patent Owner Response.4 Based on our review of the overall record, including the ’078 patent, we concur with the Petitioners’ assessment of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8

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

    “wherein the cut in the first end panel is substantially T-shaped” Dependent claims 4, 24, 36, and 49 each recite “wherein the cut [in] the first end panel is substantially T-shaped.” Dependent claims 30 and 43 recite substantially the same, with “slit” instead of “cut.” In the Patent Owner Preliminary Response, the Patent Owner asserted that the aforementioned claim limitation should be construed as “having a shape that closely resembles the capital letter ‘T’.” Prelim. Resp. 6–7 (citing Ex. 1001, 17:8–11). In the Decision on Institution, we agreed, although we clarified that we do not discern that the proposed construction provides any additional substantive clarity relative to the plain language. Dec. 7–8. After the Decision on Institution, while Patent Owner and Petitioner disagree with the application of the aforementioned claim construction, as set forth below, neither Patent Owner nor Petitioner has expressed disagreement with the construction itself. After considering anew the basis for our previous construction, we see no need for modification. slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “one of ordinary skill would not have modified Kato, which meets need (1), to include the microwave energy interactive material of Clough, so as to also meet need (2), because Kato is only directed to a container for holding an already-prepared (i.e., ready-to-eat) food item, and does not mention anything about a microwave browning and crisping package. PO Resp. 35– 36 (citing Exs. 1003, 2001, 2007). While Patent Owner’s assertions will be assessed in more detail below, fundamentally, Patent Owner’s assertions are misplaced as Clough, and not Kato, is cited for being directed to a microwave browning and crisping package. Pet. 14–16 (citing Exs. 1003, 1008). We agree with Petitioner that one skilled in the art would have recognized that Kato’s paperboard sleeve would have been used to microwave food therein and, thus, that one skilled in the art would have had ample reason to modify and improve Kato’s paperboard sleeve to brown and crisp food using Clough’s known technique of adding microwave interactive material to a sleeve to realize the advantages set forth in Clough. Pet. 14–16 (citing Ex. 1003 ¶¶ 106–114, 116–120; Ex. 1008). Primarily, Patent Owner’s assertions are flawed because they are almost uniformly directed to Kato alone. Essentially, Patent Owner is asserting that one of ordinary skill, when reading Kato, would discern that Kato is a perfect product for its stated purpose, that the stated purpose can never change or be added to, and, thus, that one of ordinary skill would never look outside the narrow confines of Kato for any modifications, no matter what improvements and advantages such modifications may bring. Such assertions are contrary to almost every doctrine of obviousness under KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). For example, KSR states “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR at 421. Patent Owner’s inflexible approach to Kato is more akin to that of an automaton, than to one of ordinary creativity. Furthermore, KSR explains explicitly that the ordinary artisan recognizes “that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR at 420 (emphasis added). No one disputes that Kato’s primary stated purpose aligns with need (1), i.e., a container for holding an already-prepared (i.e., ready-to-eat) food item. We are unpersuaded, however, that this primary stated purpose of Kato should be held in such high esteem so as to exclude all other purposes known in the art, such as need (2), especially when KSR counsels that “uses beyond their primary purposes” must be considered. To that end, the record is replete with evidence concerning the advantages of modifying a paperboard sleeve, including that of Kato, with the microwave energy interactive material of Clough in order to brown and crisp food, so as to meet need (2). See, e.g., Ex. 1008, 1:48–68, 2:1–3, 18– 31, 3:10–19, 63–68, 4:1–9, 28–37; Ex. 1003 ¶¶ 116–120. Patent Owner would have us believe that such a purpose is irreconcilably in conflict with Kato’s stated purpose. We disagree. As a matter of logic, Kato must be made of some type of material, and we are persuaded that Clough provides sufficient objective evidentiary support for the notion that one of ordinary skill would have had reason to include in the paperboard sleeve of Kato the microwave energy interactive material of Clough in order to brown and crisp food.” slip op. at 13

  Patent outcomesUS 8,872,078 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,872,078
• The Boeing Company v. Seymour LevineAll claims unpatentable
  PTAB · Dec 20, 2016 · IPR2015-01341 · APJ Trenton A Ward · IPR · Final written decision

  Claims 4, 5, 8, 9, 10, 14, and 16 are unpatentable as obvious under § 103 over the combinations listed in the decision.

  RulingsFinal written decision

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

    “The definition of “advice” is “information or notice given.” Ex. 3001 (Webster’s Third New International Dictionary 32 (1971), 3.). Thus, the plain and ordinary meaning of “maintenance advice” is consistent with the aforementioned evidence, in that “maintenance advice” can include maintenance information, but does not require “recommended maintenance actions.” Patent Owner argues that this dictionary definition cited by the Board includes an alternative definition of “advice” as a “recommendation regarding a decision or course of conduct.” PO Resp. 33 (citing Ex. 3001, 3). Patent Owner further argues that this alternative definition of “advice” is most consistent with specification. PO Resp. 33. Patent Owner fails, however, to cite to any portions of the specification to support this argument (see id.) and fails to explain why we should not be guided by the more general statements in the specification, such as the description in the specification that a “preferred maintenance advisory” can be based “on an expert system for fault isolation,” which is in no way “recommended maintenance actions.” Ex. 1001, 3:36–37. We are not persuaded by Patent Owner’s argument that “maintenance advice” must include recommended maintenance actions. Accordingly, we adopt the portion of the proposed definitions on which the parties agree and determine that the term “maintenance advice” means “problem-specific maintenance information.” See also Dec. 7–8.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “skill in the art relevant to the ’618 patent would have a “B.S. degree in electrical, systems, or computer engineering, or an FAA Mechanic Certificate with an airframe rating in accordance with 14 CFR part 65.71 and 65.85.” Ex. 1002 ¶ 15. According to Patent Owner’s Declarant, Mr. Grabowsky, a person of ordinary skill in the art relevant to the ’618 patent would have “at least a B.S. degree in electrical, systems, or computer engineering, or an FAA Mechanic Certificate with an airframe rating in accordance with 14 CFR part 65.71 and 65.85; as well as either an M.S. or equivalent work experience, such as 3-5 years of experience in avionics.” Ex. 2011 ¶ 8. Thus, both declarants generally agree on the level of skill, although Mr. Grabowsky suggests experience is required in addition to the B.S. degree or the FAA Mechanic Certificate. See id. Based on our review of the ’618 patent, the types of problems and solutions described in the ’618 patent and cited prior art, and the testimony of Petitioner’s Declarant and Patent Owner’s Declarant, we adopt Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention. We are not persuaded that the additional experience of an M.S. or equivalent work experience, such as 3-5 years of experience in avionics, is required, as suggested by Mr. Grabowsky, as we are unclear as to why the claimed subject matter is beyond the abilities of someone who otherwise meets applicable federal regulatory standards. Based on the stated qualifications of Dr. Helfrick (Ex. 1002 ¶¶ 5–9) and the stated qualifications of Mr. Grabowsky (Ex. 2011 ¶¶ 6–7), Petitioner’s Declarant and Patent Owner’s Declarant both meet the requirements of this definition. We note that the applied prior art also reflects the appropriate level of skill at the time of the claimed invention. See Okajima, 261 F.3d at 1355.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “and ARINC 624-1 because ARINC 624-1 is a standard directed to the very types of on-board systems discussed in Ward.”)). Additionally, Petitioner contends that ARINC publishes standards for the aviation industry, developed by committees that include aircraft manufacturers, avionics manufacturers, and airlines, and that the ACARS transmitter disclosed in Ward is based on, and, thus, would follow, an ARINC standard. Pet. 30 (citing Ex. 1002 ¶¶ 23, 75). Also, Petitioner contends that both Ward and ARINC 624-1 discuss utilizing (1) onboard maintenance systems including ACMS to collect aircraft performance data and (2) an ACARS transmitter to transmit such data to a ground station. Pet. 30. Petitioner adds that ARINC 624-1 provides an explicit motivation to utilize Ward’s ground based maintenance analysis software in implementing its maintenance system, because ARINC 624-1 states that “if known in advance of an airplane’s arrival at a terminal, selected information held in the OMS central maintenance computer’s memory could be useful to line maintenance personnel in planning timely corrective action.” Pet. 30–31 (quoting Ex. 1014 § 2.2.4). We agree, for the reasons stated by Petitioner, that, given the similarity and overlap in disclosures, and applicability of the ARINC standard to the ACARS transmitter of Ward, a person of skill in the art would have been motivated to improve the system in Ward with the teachings in ARINC 624-1. In view of the foregoing, we determine Petitioner has presented and sufficiently established an “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” with respect to claim 4 for this ground, and we adopt its contentions as our own. KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 21

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner

    “on an aircraft having a flight data recorder.” Pet. Reply 15.10 Furthermore, Petitioner identifies that claims 8–10 all require “aircraft position data directed to said flight data recorder.” Id. Petitioner argues that Mr. Levine’s October 9, 1996 Invention Disclosure is insufficient, because it does not reflect the conception of the invention that Patent Owner ultimately claimed, which requires two data recorders—one onboard the aircraft and a second, remote recorder on the ground. Id. We do not agree with Petitioner’s argument that claims 4 and 8–10 require a flight data recorder on the ground, as claim 4 merely recites a “central station” “configured to receive and analyze said digital aircraft performance.” We do agree, however, with Petitioner’s argument that the express language of independent claim 4 requires “an aircraft having a flight data recorder.” Furthermore, claim 4 requires that the “digital aircraft performance data,” which the “central station” is configured to receive and analyze, is “data directed to the flight data recorder.” Thus, the invention recited in independent claim 4, and its dependent claims, must include a flight data recorder onboard the aircraft and, separately, a central station configured to receive and analyze data directed to the onboard flight data recorder. 10 The recitation “[a]n aircraft maintenance system for use on an aircraft having a flight data recorder” appears in the preamble of claim 4. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Marketing Int’l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). Here, the body of claim 4 refers to “the flight data recorder” as an active limitation in the claim. Therefore, we determine that the preamble is limiting for claim 4.” slip op. at 31

  Patent outcomesUS RE39,618 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
• Deere & Company v. Richard GrammAll claims unpatentable
  PTAB · Sep 22, 2016 · IPR2015-00899 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–11 and 27–34 are unpatentable as obvious over the three combinations of prior art identified by the Board.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “a “header” or a “combine” per se; rather, it is a header height control apparatus—an “apparatus for detecting and controlling the height above the soil of an agricultural machine as it traverses a field.” Ex. 1001, 1:11–13. Nonetheless, there is no prohibition on a patentee drafting his or her claim in a manner that further limits the invention if additional structure is recited in the claim. As argued by Patent Owner, the recitation of “a non-cut crop header” and “a combine” in the preamble of claim 1, provide antecedent basis for at least two terms recited in the body of the claim—“the header” and “said combine.” The body of the claim reflects that the patentee chose to claim the header control apparatus in terms not limited to said apparatus standing alone, but rather the apparatus as attached (coupled) to the header of a combine. See, e.g., Ex. 1001, 7:33–34 (“a pre-loaded, generally linear flexible arm coupled to a forward portion of the header” (emphasis added)); 7:44–45 (“control means coupled to said header” (emphasis added)); 7:48– 51 (“wherein said flexible arm and angular deflection sensing means are attached to a head housing disposed on a forward portion of said combine” (emphases added)); 7:54–56 (“wherein said mounting bracket further couples said flexible arm to a forward end of said head housing” (emphasis added)). The prosecution history reflects that the patentee at first desired the recitation of “header” in the claim to be limited to “non-cut crop” headers, in an attempt to distinguish cut crop headers. Ex. 1002, 142 (Amendment filed June 19, 2000). The examiner, however, did not accept such argument (id. at 152–53 (Office Action mailed Aug. 24, 2000)), and the patentee did not reiterate or maintain the argument in amending the claims following the August 24, 2000, final rejection. Id. at 158–63 (Amendment filed Nov. 22, 2000). Nonetheless, the prosecution history is informative on this issue. In light of our discussion above regarding the claim language, specification, and the prosecution history, we do not construe the entire preamble as limiting. In particular, the preamble recites an apparatus for maintaining, and is presented clearly as reciting an intended use. That being said, we agree with the Patent Owner that the phrase “non-cut crop header” limits the terms “the header” and “said header” recited in the body of claim 1 such that “the header” and “said header” recited in the body of claim 1 are the same “non-cut crop header” recited in the preamble of the claim.11” slip op. at 24

  • Skill levelSkill level board ownOther

    “The parties’ statements of the level of ordinary skill are not significantly different, and the differences between their proposed levels of ordinary skill would not affect the outcome of this proceeding.5 In light of our review of the record, including the ’395 patent, the competing expert testimony, and the issues discussed during the oral argument, we agree with different aspects of the parties’ proposals. First, as Petitioner notes in its Reply, a mechanical engineer having familiarity with hydraulic systems and sensors, as Patent Owner proposes, does not have experience necessarily with agricultural equipment or combines. Reply 2, n.1. Thus, Patent Owner’s educational prong is overly broad. Second, Petitioner’s educational prong, on the other hand, is too narrow, requiring “design” of combines or 5 Indeed, neither party argues that any difference between the proposed levels of ordinary skill would affect the outcome of this proceeding. agricultural equipment. Third, we find that Petitioner’s experience prong also is too narrow, because it requires experience specifically in the “design” of agricultural equipment or combines. Accordingly, we find that the level of ordinary skill in the art is “a mechanical engineer having familiarity6 with agricultural equipment, such as combines, and hydraulic systems and sensors” or “a person having 10 or more years of experience7 working with combines.”8” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner

  Patent outcomesUS 6,202,395 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,202,395
• Deere & Company v. Richard GrammAll claims unpatentable
  PTAB · Sep 22, 2016 · IPR2015-00898 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–11 and 27–34 are unpatentable as obvious over the three instituted combinations of prior art.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “significantly different, and the differences between their proposed levels of ordinary skill would not affect the outcome of this proceeding.5 In light of our review of the record, including the ’395 patent, the competing expert testimony, and the issues discussed during the oral argument, we agree with different aspects of the parties’ proposals. First, as Petitioner notes in its Reply, a mechanical engineer having familiarity with hydraulic systems and sensors, as Patent Owner proposes, does not have experience necessarily with agricultural equipment or combines. Reply 2, n.1. Thus, Patent Owner’s educational prong is overly broad. Second, Petitioner’s educational prong, on the other hand, is too narrow, requiring “design” of combines or agricultural equipment. Third, we find that Petitioner’s experience prong also is too narrow, because it requires experience specifically in the “design” of agricultural equipment or combines. Accordingly, we find that the level of ordinary skill in the art is “a mechanical engineer having familiarity6 with agricultural equipment, such as combines, and hydraulic systems and 5 Indeed, neither party argues that any difference between the proposed levels of ordinary skill would affect the outcome of this proceeding. 6 The familiarity may have been gained, as proposed by Petitioner, by “approximately three years of experience in combine or agricultural equipment design, including components thereof, such as headers and header height control systems” (Pet. 5 (citation omitted)), but also may have been gained through other experience. sensors” or “a person having 10 or more years of experience7 working with combines.”8” slip op. at 11

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

    “We agree with Petitioner that under either party’s proposed construction, Cleveland’s sensor arm, including spring 38, is flexible. See infra pages 41–42 (Section III.B.5.a.ii.b)2.b.). Accordingly, we need not choose between either party’s proposed constructions. 2. Other Claim Terms The parties propose constructions for several additional claim terms, including “pre-loaded,” “angular deflection sensing means,” “control means,” “biasing means,” “first stop means,” “second stop means,” “guard means,” and “flange.” Pet. 11–15; Resp. 19–23. Although the parties have some disagreement as to the meaning of several of these terms, there is no dispute that the references upon which we instituted review disclose these elements of the claims.4 Accordingly, there is no controversy as to these terms that requires our resolution in order to ascertain whether the claims would have been obvious to one of ordinary skill in the art as of the time of the invention in light of the references and arguments before us.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingMixed

    “a “header” or a “combine” per se; rather, it is a header height control apparatus—an “apparatus for detecting and controlling the height above the soil of an agricultural machine as it traverses a field.” Ex. 1001, 1:11–13. Nonetheless, there is no prohibition on a patentee drafting his or her claim in a manner that further limits the invention if additional structure is recited in the claim. As argued by Patent Owner, the recitation of “a non-cut crop header” and “a combine” in the preamble of claim 1, provide antecedent basis for at least two terms recited in the body of the claim—“the header” and “said combine.” The body of the claim reflects that the patentee chose to claim the header control apparatus in terms not limited to said apparatus standing alone, but rather the apparatus as attached (coupled) to the header of a combine. See, e.g., Ex. 1001, 7:33–34 (“a pre-loaded, generally linear flexible arm coupled to a forward portion of the header” (emphasis added)); 7:44–45 (“control means coupled to said header” (emphasis added)); 7:48– 51 (“wherein said flexible arm and angular deflection sensing means are attached to a head housing disposed on a forward portion of said combine” (emphases added)); 7:54–56 (“wherein said mounting bracket further couples said flexible arm to a forward end of said head housing” (emphasis added)). The prosecution history reflects that the patentee at first desired the recitation of “header” in the claim to be limited to “non-cut crop” headers, in an attempt to distinguish cut crop headers. Ex. 1002, 142 (Amendment filed June 19, 2000). The examiner, however, did not accept such argument (id. at 152–53 (Office Action mailed Aug. 24, 2000)), and the patentee did not reiterate or maintain the argument in amending the claims following the August 24, 2000, final rejection. Id. at 158–63 (Amendment filed Nov. 22, 2000). Nonetheless, the prosecution history is informative on this issue. In light of our discussion above regarding the claim language, specification, and the prosecution history, we do not construe the entire preamble as limiting. In particular, the preamble recites an apparatus for maintaining, and is presented clearly as reciting an intended use. That being said, we agree with the Patent Owner that the phrase “non-cut crop header” limits the terms “the header” and “said header” recited in the body of claim 1 such that “the header” and “said header” recited in the body of claim 1 are the same “non-cut crop header” recited in the preamble of the claim.13” slip op. at 23

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “e. Conclusion of Obviousness We have considered Petitioner’s evidence and argument and determine that the combination of DPC, Chmielewski, Cleveland, and DA meets the limitations of claims 1–7, 10, 27, 28, and 34, and that one of ordinary skill in the art would have had reason, with rational underpinning, for combining the teachings of these references. We have considered Patent Owner’s arguments to the contrary and determine that they are unpersuasive. The parties do not introduce or rely on objective indicia of nonobviousness. After weighing the evidence, we conclude that Petitioner has shown, by a preponderance of the evidence, that claims 1–7, 10, 27, 28, and 34 would have been obvious over DPC, Chmielewski, Cleveland, and DA.” slip op. at 61

  Patent outcomesUS 6,202,395 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,202,395
• Jackel International Limited / Mayborn USA, Inc. v. Admar International, Inc.No claims unpatentable
  PTAB · Sep 21, 2016 · IPR2015-00979 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–5, 7–12, and 14 were not shown unpatentable under § 103 because the cited references did not teach or suggest the claimed spout.

  RulingsFinal written decision

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

    “In summary, we find that the extrinsic evidence cited by Patent Owner indicates that the ordinary and customary meaning of “spout,” as would have been understood by one of ordinary skill in the art in the context of the entire disclosure of the ’841 patent, is “a tube or lip projecting from a container, through which liquid can be poured and through which a user drinks” (see Ex. 1001 at 2:6–11, 5:11–13, 5:60–67, 6:2–7, 6:17–23, 10:5–8, Figs. 1, 2, 5, 11–14, claims 1, 8; Ex. 2011, 1688) and does not include a nipple (see Ex. 2022 at 5–8, Figs. 1–3; Valderrama Decl. ¶¶ 91–94). Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2011) (“Even under the broadest reasonable interpretation, the Board’s construction ‘cannot be divorced from the specification and the record evidence,’ and ‘must be consistent with the one that those skilled in the art would reach.’”). Accordingly, based on the complete record before us, we interpret “spout” to mean “a tube or lip projecting from a container, through which liquid can be poured and through which a user drinks” and does not encompass a nipple.” slip op. at 18

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

    “For the reasons discussed above in Section II.A, we determine that the broadest reasonable interpretation in view of the ’841 patent’s specification of “spout” to be “a tube or lip projecting from a container, through which liquid can be poured and through which a user drinks” and does not encompass a nipple. We agree with Patent Owner that liquid cannot be poured through a nipple. PO Resp. 10 (“Spouts are intended for a stream of liquid, while nipples are intended for liquid to seep.”); see also Tr. 24:2– 26:3, 29:12–16 (arguing liquids are poured through a spout); Ex. 1022 at 140:1–12 (Mr. Valderrama testifying that Raymond and Mutti do not have a spout); Ex. 2026, 34:20–35:15, 50:23–51:7 (Dr. Brown testifying that Raymond does not refer to a spout). We find that liquid cannot be poured through Petitioners’ asserted spout (Pet. 18 (citing Ex. 1002 ¶ 32; Ex. 1003 at 5:17–20, Fig. 2)). The full record persuades us that Petitioners’ asserted spout in Raymond and similar structure in Mutti do not teach or suggest the spout of claim 1. See PO Resp. at 28–30 (citing Valderrama Decl. ¶¶ 135– 138; Ex. 1005, Fig. 2–4; Ex. 2026, 27:24–25:16, 86:10–25). Therefore, we find that Raymond fails to teach or suggest the spout of claim 1, as argued by Petitioners. Petitioners rely on Mutti to teach slits that would be understood to be self-sealing. Pet. 19–20 (citing Ex. 1002 ¶ 69; Ex. 1004, Figs. 10–11). Petitioners’ reliance on Mutti does not remedy the deficiency discussed above regarding the “spout” of claim 1.” slip op. at 21

  • ExcludeMotion to exclude, deniedDenied

    “Declaration of Stuart Brown (Ex. 1002)” because Patent Owner contends that “Dr. Brown admittedly has no experience in the design or development of the no-spill cups at issue in the ’841 patent” and “thus no basis to render an opinion of a person ordinarily skilled in the art.” Paper 31, 1. Petitioners respond that Patent Owner “failed to make a timely objection within ten business days of the institution of trial in this matter as required by 37 C.F.R. 42.64(b)(1)” and that Dr. Brown “is more than qualified to opine as a technical expert witness in the relevant art.” Paper 30, 1. Patent Owner filed a Reply (Paper 34). We agree with Petitioners that Patent Owner’s Motion to Exclude is not in compliance with 37 C.F.R. § 42.64(b). Even if Patent Owner’s Motion complied with our rules, however, as discussed above, we considered the Brown Declaration against the full record and gave it appropriate weight. And even having considered the relevant portions of the Brown Declaration, we are persuaded by Patent Owner’s arguments regarding whether the relied upon references teach or suggest “spout.” We, thus, deny Patent Owner’s Motion to Exclude.” slip op. at 26

  • Strike new argumentNew argument consideredDecided for petitioner

    “We agree with Petitioners that the portions of Petitioners’ Reply identified by Patent Owner are properly responsive to arguments presented by Patent Owner in its briefs. Also, to the extent any of the identified portions can be deemed new arguments, even when those new arguments are considered, as discussed above, we are nevertheless persuaded by Patent Owner’s arguments regarding whether the relied upon references teach or suggest “spout,” and so the objection is overruled.” slip op. at 25

  Patent outcomesUS 8,695,841 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,695,841

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.