• Crusoe Energy Systems, LLC v. Upstream Data Inc.Some claims unpatentable
  PTAB · Jan 21, 2025 · PGR2023-00039 · APJ Matthew S Meyers · PGR · Final written decision

  Claims 1 and 24 are unpatentable under § 101 as directed to an abstract idea without an inventive concept; the petitioner did not prove the remaining challenged claims unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Best Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (citations omitted). “The patent’s purpose can also be informative.” Id. (citation omitted). Petitioner asserts that one of ordinary skill in the art (“POSITA”) would have had “a degree in chemical engineering, petroleum engineering, process engineering, mechanical engineering, or a similar field with 1–2 years of experience in designing power generation systems, Blockchain mining systems, or other comparable hands-on experience.” Pet. 7 (citing Ex. 1003 ¶ 19). Petitioner adds that “[a]lternatively, a person having 3–5 years of experience in the Blockchain mining industry would also qualify as a POSITA” and “[a]dditional education could substitute for professional experience, or vice versa.” Id. at 7–8 (citing Ex. 1003 ¶ 19).” slip op. at 10

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

    “We apply the same claim construction standard used in district court actions under 35 U.S.C. § 282(b), namely that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.200(b) (2024). In applying that standard, claim terms generally are given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).” slip op. at 11

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

    “To address that “the mining processors are connected to the network interface and adapted to mine transactions associated with the blockchain database and to communicate with the blockchain database,” as recited by limitation [1c_iii], Petitioner asserts that CryptoKube’s system includes “Bitcoin miners such as spondooliestech SP35 servers.” Pet. 25 (citing Ex. 1006, 1–4). And, relying on the declaration testimony of Mr. Kasdorf, Petitioner concludes that one of ordinary skill in the art would have understood that to mine Bitcoin, the mining processors need to be connected to a network interface and adapted to mine transactions associated with the blockchain database and to communicate with the blockchain database, which is implemented as a public ledger distributed among many peer-to-peer devices connected to the Internet. Id. (citing Ex. 1004 ¶¶ 108–109; Ex. 1010 ¶ 419). Mr. Kasdorf’s declaration testimony is nearly verbatim to the Petition and similarly provides no indication as to what in CryptoKube constitutes a “mining processor” other than his conclusory opinion that one of ordinary skill in the art “would have understood that to mine bitcoin, the mining processors need to be connected to a network interface and adapted to mine transactions associated with the 19 We note that Mr. Kasdorf’s reliance on Kheterpal is limited to Kheterpal’s background discussion regarding the Bitcoin protocol inasmuch as it “defines a system in which the creation and distribution of the bitcoin cryptocurrency is governed by consensus among a peer-to-peer network” and includes “a public ledger in which new transactions are verified and recorded by members of the network via cryptography.” Ex. 1010 ¶ 4. Ex. 1004 ¶ 108 (citing Ex. 1010 ¶ 4). Thus, we agree with Patent Owner that in the Petition, neither Petitioner nor Mr. Kasdorf explains or “cite[s] any evidence regarding which component is the ‘necessarily’ present mining processor (limitation 1[c_i]) or how this unspecified mining processor is ‘connected to the network interface and adapted to . . . communicate with the blockchain database’ (limitation 1[c_iii]).” PO Resp. 42–43 (citing Ex. 1004 ¶¶ 104–105, 108–109).” slip op. at 21

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner’s contention that “a combination of an ASIC chip and a controller would meet the ‘mining processor’ limitation” (Pet. Reply 11 (citing Ex. 1036 ¶ 21)) is an improper new argument. In determining whether an argument is a proper argument in reply, we look to see if the Reply argument is responsive to an argument from Patent Owner and expands on a position in the Petition. See Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1384 (Fed. Cir. 2023) (“[W]e have held that a reply may be proper if it is responsive and simply expands on previously raised arguments.”). Or, if Petitioner relies on previously unidentified disclosure “to make a meaningfully distinct contention.” Id. at 1383 (“[W]e held that a petitioner who asserted in its reply previously unidentified prior-art disclosures ‘to make a meaningfully distinct contention’ was impermissibly raising a new theory of unpatentability.”). We find that Petitioner’s argument in reply is closer to the later situation. Here Petitioner does not expand on a position from the Petition that Patent Owner criticizes based on the merits of the contentions. Rather, Petitioner supplements its conclusory assertion that a “mining processor” is necessarily present in CryptoKube’s spondooliestech SP35 servers (Pet. 23, 25 (citing Ex. 1006, 1–4)) with its new assertion that that “a combination of an ASIC chip and a controller would meet the ‘mining processor’ limitation.” Pet. Reply 11. Petitioner does not purport to have presented this theory in the Petition. Id. Instead, Petitioner argues that this theory was properly raised in response to what Petitioner alleges to be an admission by” slip op. at 27

  Patent outcomesUS 11,574,372 mixed
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Berkheimer · Electric Power · Phillips · KSR · Graham
  Patents in suitUS 11,574,372
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Resonant Systems, Inc.Some claims unpatentable
  PTAB · Jan 8, 2025 · IPR2023-00993 · APJ Michael T Cygan · IPR · Final written decision

  Claims 1, 2, 7, 8, 11, 15–17, and 20 are unpatentable under § 103; claims 3–6, 9, 14, and 19 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art [“POSITA”] at the critical time “would have had a bachelor’s degree in electrical engineering, mechanical engineering, computer science, or a similar field and two years of experience related to electronic consumer product design [and the] POSITA could have also obtained similar knowledge and experience through other means.” Pet. 6 (citing Ex. 1003 ¶ 31). Patent Owner states that it would require experience with electro-mechanical control systems rather than electronic consumer product design. PO Resp. 3. Because Petitioner provides for “similar knowledge and experience through other means,” we do not discern any meaningful distinction. Thus, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’830 patent and the prior art of record.” slip op. at 7

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “Determining whether a limitation that does not use the term “means” invokes § 112, paragraph 6, involves a three-part inquiry: (1) there is a generic placeholder that substitutes for the term “means”; (2) the generic placeholder is modified by functional language; and (3) the limitation does not include the structure, material, or acts necessary to perform the function in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015); Tri-Med, Inc. v. Stryker Corp., 514 F.3d 1256, 1259–60 (Fed. Cir. 2008); Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1303–04 (Fed. Cir. 2015) (the court must “determine whether the claim nevertheless recites sufficient structure for performing the . . . function to take it outside the bounds of” § 112, paragraph 6).” slip op. at 8

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

    “Limitation [1b] With respect to limitation [1b], a “moveable component,” Petitioner argues that it should be construed as a means (component) having a function (moveable) that corresponds to a structure (a moving weight). Pet. 7. Petitioner argues that “essentially any physical component can perform the function of being moved,” references different types of structure as the moving components in the ’830 patent, and concludes that therefore the term has no definite structure. Pet. Reply 2 (citing Ex. 1001, Figs. 4A–4G, 14, 15–17). Patent Owner argues for a non-means-plus-function construction of a component that “is capable of being moved.” PO Resp. 7–8 (citing Ex. 2008 ¶ 55). Patent Owner argues, and Petitioner agrees, that “there is likely no material difference between” the parties’ proffered constructions such that construction is necessary. Id. at 8; Pet. Reply 7. We agree, because Petitioner has shown, and Patent Owner does not contest, that the prior art teaches such a component under either construction. Infra § II(D)(2)(a). Because Petitioner’s assertions and our determination would be unaffected by its proposed construction, we need not construe this term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

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

    “We agree with Patent Owner that a showing of motivation is required. Whether a proposed combination rests on “combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful.” In re Stepan Co., 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017). The General Electric decision cited by Petitioner does not hold otherwise. In General Electric, the Federal Circuit considered an obviousness challenge based on combining disclosures from multiple references. See Gen. Elec., 983 F.3d at 1339–40, 1344–52. The Federal Circuit criticized the Board for dissecting an embodiment disclosed in the primary reference into a collection of “individual elements” and requiring the patent challenger to “re-do the work already done” regarding that embodiment in the primary reference. Id. at 1351–52. The Federal Circuit did not consider an obviousness challenge based on combining multiple embodiments from a single reference. See id. at 1344–52. Therefore, we do not agree with Petitioner that no motivation to combine the Figure 3 and Figure 83 embodiments of Fukumoto need be shown.” slip op. at 29

  Patent outcomesUS 9,941,830 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,941,830
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Resonant Systems, Inc.Some claims unpatentable
  PTAB · Jan 8, 2025 · IPR2023-00992 · APJ Steven M Amundson · IPR · Final written decision

  Claims 1, 2, 7, 8, 11, and 17 are unpatentable; claims 3–6, 9, and 14 are not shown unpatentable, and claims 15 and 16 were disclaimed.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention “would have had a bachelor’s degree in electrical engineering, mechanical engineering, computer science, or a similar field and two years of experience related to electronic consumer product design.” 3 The parties do not provide evidence or argument regarding objective indicia of nonobviousness. See, e.g., Pet. 9–93; Resp. 18–66. Pet. 6. Petitioner also asserts that an ordinarily skilled artisan “could have also obtained similar knowledge and experience through other means.” Id. Dr. Wolfe’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶ 30. Patent Owner asserts that a person of ordinary skill in the art at the time of the alleged invention “would have had (1) a bachelor’s degree in electrical engineering, mechanical engineering, or a comparable field of study, and (2) at least two years of professional experience with electro-mechanical control systems, or other similarly relevant industry experience.” Resp. 3. Patent Owner also asserts that “[a]dditional relevant industry experience may compensate for lack of formal education or vice versa.” Id. Dr. Goossen’s testimony supports Patent Owner’s assertions. See Ex. 2008 ¶ 16.” slip op. at 15

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

    “10. SUMMARY “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Above, we discussed issues concerning the “component” limitations in claims 1, 3, and 4 and an ambiguity in claim 4. See supra §§ III.C.4(c), III.C.5(c), III.C.6(c), III.C.7(c), III.C.8(c), III.C.9. We determine that no other claim language requires a discussion of scope or an explicit construction to decide whether Petitioner satisfies the “preponderance of the evidence” standard for proving unpatentability. D. Alleged Obviousness over Fukumoto: Claims 1–3, 7–9, and 17 Petitioner contends that claims 1–3, 7–9, and 17 are unpatentable under § 103(a) because the claims would have been obvious over Fukumoto. See Pet. 9–35; Reply 16–22. Patent Owner disputes Petitioner’s contentions. See Resp. 18–27; Sur-reply 7–14. Below, we provide an overview of Fukumoto. Then, we consider the obviousness issues. For the reasons explained below, we agree with Petitioner that claims 1, 2, 7, and 17 are unpatentable under § 103(a) because the claims would have been obvious over Fukumoto but disagree that claims 3, 8, and 9 are unpatentable based on Fukumoto.” slip op. at 44

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner

    “2. MEANS-PLUS-FUNCTION CLAIMING The patent statute provides that “[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112 ¶ 6 (2006). The absence of the word “means” in a claim limitation creates a rebuttable presumption that § 112’s means-plus-function provision does not apply. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). When a claim limitation lacks the word “means,” a party may rebut the presumption that § 112’s means-plus-function provision does not apply by demonstrating that “the claim term fails to ‘recite[] sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Williamson, 792 F.3d at 1348 (alteration by the court) (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). Construing a means-plus-function limitation involves two steps: first, identify the claimed function or functions; and second, determine what structure, if any, disclosed in the patent’s specification corresponds to the claimed function or functions. Williamson, 792 F.3d at 1351; see Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001). For the second step, a person of ordinary skill in the art must “recognize the structure in the specification and associate it with the corresponding function in the claim.” All-Voice Computing PLC v. Nuance Commc’ns, Inc., 504 F.3d 1236, 1241 (Fed. Cir. 2007). The “duty to link or associate structure to function is the quid pro quo for the convenience” of using means-plus-function claiming. B. Braun Med., Inc., v. Abbott Lab’ys, 124 F.3d 1419, 1424 (Fed. Cir. 1997). When a limitation recites two or more functions, the specification” slip op. at 18

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

    “Conclusion About Obviousness/Nonobviousness For the reasons discussed above, Fukumoto teaches claim 1’s subject” slip op. at 64

  Patent outcomesUS 9,369,081 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,369,081
• Sony Interactive Entertainment LLC v. Quantum Imaging LLCSome claims unpatentable
  PTAB · Dec 6, 2024 · IPR2023-00954 · APJ James J Mayberry · IPR · Final written decision

  Claims 1, 3, 4, and 7–9 are unpatentable over Angles under §103; claims 5 and 6 were not shown unpatentable over Angles.

  RulingsFinal written decision

  • Expert testimonyOther

    “prosecution history and the amendment changing “held at” to “accessible at,” testimony upon which Patent Owner relies to support its position. Specifically, Dr. Medvidović testifies that a person having ordinary skill in the art would have understood the two phrases to be synonymous because, 1) the amendment was not made to overcome a prior art reference, 2) the applicant did not make a statement disclaiming that “being accessible at” does not encompass “being held at,” and 3) the examiner did not object to the amendment as exceeding the scope of the Specification. See Ex. 2005 ¶ 34. We find that Dr. Medvidović’s conclusion is not supported by his reasoning. First, an amendment made not to overcome a prior art reference does not mean an amendment that does not change the scope of a claim. An applicant is free to amend a claim at any time during prosecution, even an amendment that may expand the scope of a claim (one made not to overcome a prior art rejection). Second, whether “being accessible at” encompasses “being held at” is not the issue—because the scope of one term encompasses the scope of another term does not make the two terms” slip op. at 26

  • ExcludeDenied

    “III. MOTION TO EXCLUDE EVIDENCE Patent Owner moves to exclude Exhibits 1017–1020, 1026, and 1027,” slip op. at 83

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art The level of skill in the art is “a prism or lens” through which we view” slip op. at 15

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

    “Accordingly, we conclude that the plain and ordinary meaning of the” slip op. at 27

  Patent outcomesUS 8,458,028 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,458,028
• Wirtgen America, Inc. v. Caterpillar Inc.Some claims unpatentable
  PTAB · Mar 12, 2024 · IPR2022-01397 · APJ Matthew S Meyers · IPR · Final written decision

  Claims 1–12 are unpatentable under § 103 over Willis and Xing, with claim 8 also unpatentable over Willis, Xing, and Laux; claim 13 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the arguments presented and the cited references, we find Petitioner’s unopposed definition of the level of ordinary skill reasonable, supported by the prior art evidence, the Specification, and Dr. Stein’s Declaration testimony (Ex. 1003 ¶¶ 21–24), and, for purposes of this Decision, adopt it as our own.” slip op. at 21

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

    “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). slip op. at 22

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

    “Petitioner asserts that “it was known that implementing a variable transmission in a milling machine could improve fuel efficiency” (id. at 33–34), and relying on the declaration testimony of Dr. Stein, reasons that one of ordinary skill in the art “would have recognized that using a hydromechanical CVT permitted controlling an engine to a speed that minimizes fuel consumption for a given load while controlling transmission gear ratios to achieve desired transmission output speeds that maximize machine performance.” Id. at 34 (citing Ex. 1003 ¶ 66). Petitioner further asserts that Xing taught a method of controllably adjusting a CVT to further improve fuel efficiency without impacting machine performance. Supra [Pet. 18–24]. Thus, implementing a CVT and control method like that taught by Xing in Willis’s milling machine would have been a matter of combining prior art elements according to known methods to yield predictable results. Id. (citing Ex. 1003 ¶ 66). Relying on the declaration testimony of Dr. Stein, Petitioner takes the position that one of ordinary skill in the art “would have expected to successfully incorporate Xing’s teachings, including those related to CVTs, engines, transmission control algorithms, and associated sensors, into Willis’s milling machine” because it would have been no more that the combination of “prior art elements according to known methods to yield predictable results.” Pet. 34 (citing Ex. 1003 ¶¶ 65–66); see also id. at 34–35 (“This combination would further apply a known technique and hardware to a known device that was ready for improvement, predictably yielding the result of the expected improvement.”). Petitioner concludes that one of ordinary skill in the art “would have expected that such a combination would improve the fuel consumption and energy efficiency of Willis’s milling machine, while maintaining desired rotor speed during operation.” Id. at 35. We find, on the complete trial record, that a person having ordinary” slip op. at 28

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

    “Owner’s counterarguments and find, on the complete trial record, that Petitioner demonstrates, by a preponderance of the evidence, that the combination of Willis and Xing teaches or suggests “determining an engine load of the engine” and “adjusting an engine speed of the engine based on the engine load” as recited by limitation 1[b], and recited in part by limitation 1[c]. Petitioner explains that Xing’s controller 116 “receive[s] signals from sensors communicatively coupled to the controller, such as torque sensor 122 and engine speed sensor 124” (Pet. 45 (citing Ex. 1006, 8:16–40)), and [b]ased on those signals, the controller in Xing evaluated power losses from the transmission and other power consuming components at different candidate operating speeds, measured engine load to determine the work output demanded of the machine, and independently set engine speeds and transmission ratios to minimize fuel consumption while achieving desired performance. Id. at 46 (citing Ex. 1006, 8:67–9:3, 9:9–17). We find Petitioner’s explanation to be consistent with Xing’s disclosure that the current load power requirement for the work vehicle may be determined indirectly by calculating the current engine power (Pengine) and the current power loss (Ploss) for the work vehicle 10. For example, as indicated above, the controller 116 may be configured to continuously monitor the engine speed and the engine torque (via sensors 122, 124), thereby allowing for the current engine power to be calculated by the controller 116. Ex. 1006, 9:37–44; see also id at 9:27–31 (“The relationship between the load power requirement and the power produced by the engine 22 of the work vehicle 10 is provided” by Equation 1: “Pengine = Pload + Ploss.”).” slip op. at 34

  Patent outcomesUS 9,975,538 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,975,538
• Wirtgen America, Inc. v. Caterpillar Inc.Some claims unpatentable
  PTAB · Mar 5, 2024 · IPR2022-01395 · APJ James J Mayberry · IPR · Final written decision

  Claims 1–15, 17–33, 35–42, and 44 are unpatentable under § 103; claims 45–61 and 63 were not shown unpatentable because the petition failed to identify corresponding structure for means-plus-function limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner contends “[a] POSITA in the field of the ’995 patent (mobile construction machines) would have had knowledge of the literature concerning machine design, including hydraulic systems and their use to steer and position wheels/tracks, before July 2004.” Pet. 15–16 (citing Ex. 1003 ¶¶ 27–28). Petitioner further contends that a person having ordinary skill in the art would have had: (i) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working on mobile construction machine design (or in a similar field); or (ii) seven years of experience working on mobile construction machine design (or in a similar field). Id. at 16 (citing Ex. 1003 ¶¶ 27–28). Patent Owner does not address the level of ordinary skill in the art in its Response. Dr. Klopp states that “[w]hile I do not opine on the correctness of [Petitioner’s] description [of the level of ordinary skill], I apply [Petitioner’s] description of a person of ordinary skill in the art for the purposes of my declaration.” Ex. 2004 ¶ 26. Based on the prior art, the sophistication of the technology at issue, and Mr. Orr’s Declaration testimony, we adopt Petitioner’s undisputed definition of the level of ordinary skill. We determine that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’995 patent. Ex. 1003 ¶¶ 27–28; Ex. 1001 (describing a mobile construction machine); Exs. 1005–1015 (disclosing aspects of mobile construction machine design).” slip op. at 27

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “1. Means-plus-function terms Independent claim 45 uses “means-plus-function” language, reciting several such clauses. Ex. 1001, 14:31–50; see 35 U.S.C. § 112 ¶ 6 (we cite to the pre-AIA version of the statute applicable to the challenged claims). Means-plus-function claiming occurs when a claim term is drafted in a manner that invokes 35 U.S.C. § 112 ¶ 6, which states: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. See 35 U.S.C. § 112 ¶ 6; Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015) (en banc). “Determining the claimed function and the corresponding structure for a claim limitation written in means-plus-function format are both matters of claim construction.” WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1347 (Fed. Cir. 1999) On the complete record, we have not been directed to any dispute between the parties whether § 112 ¶ 6 applies to the recited means-plus-function clauses in the Challenged Claims. Pet. 17; PO Resp. 9.” slip op. at 28

  • BurdenNot shown unpatentable

    “Our Rules require that, “[w]here the claim to be construed contains a means-plus-function [limitation] . . ., the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3); cf. Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (“[A] challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.”).” slip op. at 32

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

    “and find, on the complete trial record, that Petitioner demonstrates, by a preponderance of the evidence, that a person of ordinary skill in the art would have had reason to modify the Bitelli to allow for rear wheel steering. First, we find that the complete record support’s Petitioner’s basis that Bitelli would have a rear wheel scraping problem. See Pet. 37. Bitelli ’037 expressly states that “[o]ne limitation shown by the machine described in the aforementioned patent is that when the rear wheels or tracks are set in their retracted position inside the frame, when turning they scrape the ground with considerable resistance.” Ex. 1014 ¶ 12. The exhibit makes clear that the “aforementioned patent” is a patent application with the number VI98U000098. Id. ¶ 11. The trial record also makes clear that Bitelli, a published European patent application, claims priority to that patent application. See Ex. 1011, code (30) (claiming priority to Italian application VI980098 U). As such, the machine in Bitelli is the machine with the wheel scraping problem identified in Bitelli ’037. See also Pet. Reply 9 (showing images from Ex. 1011 and Ex. 104211 (the Italian application referenced in Ex. 1014 depicting the same machine). Accordingly, we do not find an evidentiary gap in Petitioner’s contentions. Cf. PO Resp. 19–20; PO Sur-reply 11–12.” slip op. at 41

  Patent outcomesUS 7,523,995 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,523,995
• Wirtgen America, Inc. v. Caterpillar Inc.Some claims unpatentable
  PTAB · Mar 5, 2024 · IPR2022-01394 · APJ James J Mayberry · IPR · Final written decision

  Claims 18, 21–29, and 31–35 are unpatentable over the stated § 103 grounds; claims 30, 45, and 49–63 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner contends that a person having ordinary skill in the art “in the technical field of the ’995 patent (mobile construction machines) would have had knowledge of the technical literature concerning machine design, including hydraulic and mechanical systems and their use to steer and position wheels or tracks, before July 2004.” Pet. 15 (referencing Ex. 1003 ¶¶ 35–36). Petitioner further contends that a person having ordinary skill in the art would typically have had: (i) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working on mobile construction machine design (or in a similar field); or (ii) seven years of experience working on mobile construction machine design (or in a similar field). Id. (referencing Ex. 1003 ¶¶ 35–36). Patent Owner does not address the level of ordinary skill in the art in its Response. Dr. Klopp states that “[w]hile I do not opine on the correctness of [Petitioner’s] description [of the level of ordinary skill], I apply [Petitioner’s] description of a person of ordinary skill in the art for the purposes of my declaration.” Ex. 2004 ¶ 26. Based on the prior art, the sophistication of the technology at issue, and Mr. Orr’s Declaration testimony, we adopt Petitioner’s undisputed definition of the level of ordinary skill. We determine that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’995 patent. Ex. 1003 ¶¶ 35–36; Ex. 1001 (describing a mobile construction machine); Exs. 1005–1015 (disclosing aspects of mobile construction machine design).” slip op. at 24

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Independent claim 45 uses “means-plus-function” language, reciting several such clauses. Ex. 1001, 14:31–50; see 35 U.S.C. § 112 ¶ 6.10 10 We cite to the pre-AIA version of the statute applicable to the Challenged Claims. Means-plus-function claiming occurs when a claim term is drafted in a manner that invokes 35 U.S.C. § 112 ¶ 6, which states: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. See 35 U.S.C. § 112 ¶ 6; Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015) (en banc). The parties do not dispute that § 112 ¶ 6 applies to the recited means-plus-function clauses in the Challenged Claims. See Pet. 16–20; PO Resp. 5–6 (implying that § 112 ¶ 6 applies in arguing that Petitioner did not satisfy the requirements for construing certain means-plus-function terms).” slip op. at 25

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for petitioner

    “Turning to the corresponding structure, the Specification of the ’995 patent identifies only one structure that performs the recited function— actuator 44. The Specification states that “second actuator 44 is associated with the support device 40 and is adapted to maintain the same rotational direction of the one ground engaging unit 20 in each of the projecting and retracted positions.” Ex. 1001, 4:44–47; see id. at 4:56–60 (“[S]econd actuator 44 is connected to the lifting column 46 and is adapted to cause at least a portion of the lifting column 46 to rotate about a lifting column axis 48 that is oriented generally vertically relative to the work machine.”). The Specification at least suggests that actuator 44 does not need to be a rotary actuator, or, at least, that a linear actuator is an equivalent structure to a rotary actuator. For example, in describing “one of the preferred embodiments,” the Specification describes that “at least one of the first and second actuators 42, 44 is a rotary actuator,” suggesting that actuator 44 is not necessarily a rotary actuator. Ex. 1001, 4:61–62; see also id. at 5:17–21 (“These embodiments may be advantageously combined by employing a rotary actuator as described above as either or both of the first and second actuators 42, 44, and by positioning these actuators at the specified longitudinally spaced apart locations.”), 5:21–24 (“[I]t may also be preferable that at least the second actuator 44 be implemented using the rotary actuator construction and placed at the upper portion of the lifting column 46.” (emphasis added)); but see id. at Fig. 3 (depicting actuator 42 as a linear actuator). Accordingly, we find that the corresponding structure identified in the Specification for the recited function is a rotary or linear actuator. As such, we do not agree with Petitioner’s construction limiting the actuator to a rotary actuator. We also do not agree with Petitioner that the second actuator must be at the top portion of the lifting column. The Specification clearly identifies that the second actuator may be located “on the lifting column” “spaced apart from the first actuator 42,” and that locating the second actuator at the upper portion of the lifting column is merely a preferred location. See Ex. 1001, 5:8–24.” slip op. at 29

  • Strike new argumentNew argument disregardedDecided for patent owner

    “evidence, that a person having ordinary skill in the art would have modified Piccoli’s teachings to connect the second end of the first actuator to the swing arm as required by claim 30. In the Petition, the only evidence to support its modification is conclusory testimony from Mr. Orr. This testimony is accorded no weight. See Xerox Corp., IPR2022-00624, Paper 9. With respect to Petitioner’s reliance on Dubay as state-of-the-art evidence (for the first time in the Reply), we agree with Patent Owner that this argument is an improper new argument. In determining whether an argument is a proper argument in reply, we look to see if the Reply argument is responsive to an argument from Patent Owner and expands on a position in the Petition. See Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1384 (Fed. Cir. 2023) (“[W]e have held that a reply may be proper if it is responsive and simply expands on previously raised arguments.”). Or, if Petitioner relies on previously unidentified disclosure “to make a meaningfully distinct contention.” Id. at 1383 (“[W]e held that a petitioner who asserted in its reply previously unidentified prior-art disclosures ‘to make a meaningfully distinct contention’ was impermissibly raising a new theory of unpatentability.”). We find that Petitioner’s argument in reply is closer to the later situation. Here Petitioner does not expand on a position from the Petition that Patent Owner criticizes based on the merits of the contentions. Instead, Petitioner supplements it contentions by arguing that the linear actuator does not have to be attached to the lifting column to retract and extend Volpe’s leg assembly, and by citing to Dubay when Patent Owner argues that Petitioner provides no supporting evidence for its contentions. These responses are the type of “meaningfully distinct contention[s]” that signal that Petitioner is augmenting deficient contentions in the Petition with new arguments.” slip op. at 61

  Patent outcomesUS 7,523,995 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,523,995
• Caterpillar Inc. v. Wirtgen America, Inc.Some claims unpatentable
  PTAB · Feb 6, 2024 · IPR2022-01310 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1, 15, 16, 22, and 26 are unpatentable under §103; claims 12 and 23 were not shown unpatentable under the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art (“POSITA”) would have had “at least a four-year degree in mechanical engineering or a closely related field and at least two years of experience designing, developing, servicing or operating heavy machinery, including their components and control systems.” Pet. 6 (citing Ex. 1006 ¶ 23). Petitioner also states that “[a]dditional education could substitute for professional experience, and significant work experience—such as working with, servicing, or operating heavy machinery in the field—could substitute for formal education.” Id. “Patent Owner does not dispute the Petition’s definition” of the level of ordinary skill. PO Resp. 17. Based on the prior art, the sophistication of the technology at issue, and Dr. Singhose’s declaration testimony, we adopt Petitioner’s undisputed definition of the level of ordinary skill. See Ex. 1006 ¶ 23; see, e.g., Exs. 1002, 1003 (providing information on the PM-465 Cold Planer); Ex. 1004; Ex. 1005; Ex. 1037.” slip op. at 16

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

    “Petitioner contends that “[t]he prior art renders all challenged claims unpatentable under the plain and ordinary meaning of the claims.” Pet. 6.8 Patent Owner does not believe that any claim terms need construction to resolve the grounds raised in the Petition, but in its claim construction section it previews a claim construction argument relevant to dependent claim 15. PO Resp. 17–18. We address that issue in the context of claim 15 below. 8 Petitioner “notes that the parties exchanged preliminary claim constructions in the parallel litigation,” and provides the construction for two terms from that litigation, “controller” and “ground engaging sensor,” but argues that “[t]hose constructions are irrelevant to the outcome here and the Board thus need not address them.” Pet. 6–7. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the record before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). To the extent that the scope of any particular claim term requires discussion, however, we provide it in our assessment of the challenges, which we turn to next. For example, we address explicit and implicit claim construction issues in the context of claims 15 and 23 below.” slip op. at 17

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

    “the art would have had reason to consider sensors other than the PM-465’s grade slope wheel and Sehr’s ultrasonic sensors due to issues with those approaches. See Pet. 61 (citing Ex. 1002, 32, 48–49; Ex. 1005, 1:23–45, 1:52–68); see also Pet. Reply 17–18. Petitioner also persuasively argues that Samuelson addresses these concerns with a more robust sensor-integrated cylinder that monitors ground position. Pet. 61–62 (citing Ex. 1005, 1:23– 45, 1:52–68). Zarniko discloses that a prior art “height control device has a mechanical sensor for sensing the level height of the bearing frame with respect to the unmachined road surfacing. This mechanical sensor in prior art height control devices constitutes, for example, a sensing wheel with height adjustment.” Ex. 1005, 1:24–29. That is, a grade slope wheel such as that disclosed in OMM. Zarniko continues that “[a] . . . problem of . . . [this] height control device is that the mechanical sensor for sensing the road surfacing can easily be damaged under the rough conditions which normally exist in road repair work.” Id. at 1:41–45. This evidence directly underpins Petitioner’s reasoning. Second, we agree with Petitioner that it was known to use side plates themselves to actuate such sensors. See Pet. 62 (citing Ex. 1002, 32, 48–49; Ex. 1006 ¶ 165). The System Operation Testing and Adjusting Manual (“SOTA”11) suggests using the side plates for grade monitoring. Id. (citing Ex. 1003, 15); Ex. 1003, 15 (“The method for measuring grade that contacts a reference surface uses a grade position sensor. The sensor can be actuated by one of the following devices: wheel, ski, and side plate of the machine.” (emphasis added)). Once Samuelson’s sensor-integrated cylinders are added to the combination, with two on each side, the piston and cylinder unit provides an integrated path system, and all of the limitations of claim 22 are present in the combination. See Pet. 62–64.12” slip op. at 27

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We credit Dr. Singhose’s testimony concerning robustness, as it is consistent with the evidence of record. See, e.g., Ex. 1006 ¶¶ 165, 168; Ex. 1005, 1:24–45 (Zarniko disclosing that mechanical sensors such as those like OMM’s grade slope wheel “for sensing the road surfacing can easily be damaged under the rough conditions which normally exist in road repair work.”).” slip op. at 29

  Patent outcomesUS 8,424,972 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,424,972
• Medtronic Corevalve LLC / Medtronic, Inc. v. Speyside Medical, LLCSome claims unpatentable
  PTAB · Aug 12, 2022 · IPR2021-00243 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–4, 6–10, 16, and 17 are unpatentable as obvious over Lane; claims 18–22 and 24 were not shown unpatentable over the Lane and Thomas combinations.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 7. Petitioner does not challenge Patent Owner’s modification to its proposed definition, and Petitioner’s expert, Dr. Drasler, agrees that experience in the field of prosthetic cardiovascular implants would have included experience with transcatheter prosthetic cardiovascular implants as well as delivery systems and methods used to implant such prostheses. See generally Pet. Reply; Ex. 2048, 11:6–12:1. Thus, based on our review of the complete record, we adopt Petitioner’s definition of the level of ordinary skill in the art, modified as proposed by Patent Owner. We note, however, that our analysis in this proceeding would not differ if we did not adopt the modification proposed by Patent Owner.” slip op. at 8

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

    “We agree with Petitioner. Patent Owner’s proposal that the distal end of the delivery catheter “houses the prosthetic” is in tension with the express language of the claim because the proposed construction suggests that “houses” necessarily means more than “at least” part of the prosthesis is disposed in the distal end. Indeed, if “houses” was not more limiting than “at least partially disposed” there would be no need to further define the spatial relationship between the distal end of the catheter and the prosthetic valve. Petitioner further argues that the Patent Owner’s construction is improper because it “wrongly limits the term to require that ‘the proximal end includes a handle that controls the deployment of the implant.’” Pet. Reply at 3 (citing PO Resp. 37–38). Petitioner asserts that the claims do not recite a handle and the ’897 patent’s “specification makes clear that a handle is a separate, optional component that is not integral to a delivery catheter: inner tubular member ‘can’ be connected to handle 907 and outer tubular member ‘can be connected’/‘attach[ed]’ to outer sheath handle 908.” Id. (citing Ex. 1001, 20:19–29, 26:30–33, claim 10). We again agree with Petitioner. Although the specification describes an embodiment in which proximal end 905 of inner tubular member 904 can be connected to handle 907 and proximal end 902 of outer tubular member 901 can be connected to handle 908 (Ex. 1001, 20:19–26), it is generally improper to read limitations from specific embodiments into the claims. See Cadence Pharms. Inc. v. Exela PharmSci Inc., 780 F.3d 1364, 1369 (Fed. Cir. 2015) (“[E]ven if all of the embodiments discussed in the patent included a specific limitation, it would not be proper to import from the patent’s written description limitations that are not found in the claims themselves.” (internal quotations omitted)); SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”). Furthermore, at the oral hearing, Patent Owner indicated that “the proximal end includes a handle that controls the deployment of the implant” part of its proposed construction is not necessary. Tr. 61:8–14. In view of the above, we decline to adopt Patent Owner’s proposed” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “Furthermore, inventors can act as their own lexicographers if they clearly set forth a definition of a claim term other than its ordinary and customary meaning. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 677 (Fed. Cir. 2015). But any such definition must appear in the specification “with reasonable clarity, deliberateness, and precision.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Absent any such definition, “limitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Here, a definition of “introducer catheter” does not appear in the specification “with reasonable clarity, deliberateness, and precision.” See generally Ex. 1001.” slip op. at 17

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

    “We determine that we need not expressly construe this claim term to resolve the parties’ disputes because doing so would have no effect on the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 22

  Patent outcomesUS 9,445,897 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,445,897
• Fisher & Paykel Healthcare Limited v. Resmed LimitedSome claims unpatentable
  PTAB · Mar 7, 2018 · IPR2017-00059 · APJ James J Mayberry · IPR · Final written decision

  Claims 73–76, 78–82, and 84–86 are unpatentable under § 103; claims 23–72, 77, and 83 were not shown unpatentable because the proposed modification would change Ogden’s principle of operation.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “We find both parties assert very similar definitions of the level of ordinary skill in the art. Both definitions include a degreed engineer with two years of experience. Fisher identifies the fields of experience as “masks, respiratory therapy, patient interfaces or relevant product design experience” and ResMed, through Mr. Sleeper, defines the field of experience as “relevant product design experience.” Mr. Sleeper declares that additional experience may compensate for less education and additional education may compensate for less experience. We find, based on our review of the complete record, that the evidence of record supports a level of ordinary skill in the art consistent with the parties’ definitions—a person having a bachelor’s degree in mechanical engineering, biomedical engineering or other similar type of engineering degree combined with two years of experience in the field of masks, respiratory therapy, patient interfaces, or other relevant product design experience. We also find that additional experience may compensate for less education and additional education may compensate for less experience. Further, we note that our patentability analysis presented below would reach the same findings and determinations under either party’s definition of the level of ordinary skill in the art.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “ResMed takes the position that the plurality of tabs must form the snap-fit structure. See PO Resp. 27 (“Moreover, even if there was a ‘snap-fit,’ there would only be a snap-fit by a single tab (detent 43, illustrated below in Figure 1)—not the required plurality of tabs”); Tr. 35:7–9 (“The plurality of tabs are what need to have the snap-fit. And having one snap-fit for one tab is not enough to meet this claim language.”). As detailed below, we determine that the broadest reasonable construction of the disputed claim limitation encompasses a structure having a plurality of tabs, but the plurality of tabs not necessarily providing the snap-fit structure. That is, under the broadest reasonable construction, a single tab may provide the snap fit structure. First, the plain reading of claim 73 supports our construction. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“[T]he context in which a term is used in the [claim at issue] can be highly instructive.”). As a starting point, the plain meaning of the phrase “plurality of tabs” is two or more tabs and we discern nothing in the record to indicate a contrary meaning. See, e.g., Dayco Prod., Inc. v. Total Containment, Inc., 258 F.3d 1317, 1327–28 (Fed. Cir. 2001) (“[W]e have held that ‘plurality,’ when used in a claim, refers to two or more items, absent some indication to the contrary.”). The plain language of the claim also requires the two or more tabs be structured to attach removably the headgear connector to the rigid mask frame. The claim language further requires this removable attaching be with a snap-fit. The language of the claim, however, does not require two or more tabs be associated with the snap-fit. That is, nothing in the plain language of the claim element precludes a structure that includes two or more tabs interfacing with the rigid mask, where only one of the tabs is associated with snap-fit aspect of the interfacing.” slip op. at 13

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

    “What a reference teaches and how a proposed modification of a reference would change its principle of operation are underlying factual inquiries in an obviousness analysis. See, e.g., Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1046 (Fed. Cir. 2017) (addressing the Board’s factual findings with respect to a reference’s principle of operation). We find that Ogden’s principle of operation is to employ a rigid plate loosely mounted to a rigid shell, such that “in use, the rigid plate is free to move relative to the rigid shell in response to any unequal forces being applied to it by the side straps as the patient, for example, turns his or her head from side-to-side.” Ex. 1102, 1:57–61; see also PO Resp. 52–53, 61 (indicating that Ogden’s principle of operation is its loosely-mounted rigid plate). Ogden’s disclosure as a whole supports our finding as to its principle of operation. As Ogden discloses, the loose-fitted rigid plate “rotate[s] to compensate for any unequally applied forces as the patient moves his or her head.” Ex. 1102, 4:17–20. [W]hen the patient turns his or her head and instead of tending to lift the shell 3 and its seal 5 off the patient’s face and breaking the seal as in FIG. 4, the rigid plate 9 of the present invention in FIG. 5 rotates relative to the rigid shell 3. This movement then compensates or equalizes the forces and keeps the shell 3 securingly in place with the center lines 69 and 71 of the shell 3 and the patient’s face aligned. Id. at 4:31–38; see also 4:61–5:3 (describing how Ogden’s facial mask compensates for any unequal applied forces by the side straps through the operation of loosely-mounted rigid place 9); Fig. 4 (illustrating how the seal at a patient’s face is broken by side-to-side movement with a rigid plate fixedly mounted to a rigid shell); cf. id. at 1:16–20 (“[A] common problem often arises that the mask will tend to unseat and leak as the patient turns his or her head (e.g., from side-to-side) or rolls over in bed and the straps contact and are deflected by a pillow, blanket, or other object.”); PO Resp. 52 (describing the problem addressed by Ogden).” slip op. at 32

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “A reference may be said to teach away when a person of ordinary skill, upon reading the reference . . . would be led in a direction divergent from the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)); see, e.g., In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that, to teach away, the prior art must “criticize, discredit, or otherwise discourage the solution claimed”). We find that Ogden’s disclosure fails to rise to the level of teaching away. Ogden provides a solution to a problem with fixed headgear connectors but does not criticize, discredit, or otherwise discourage fixed headgear connectors. Instead, Ogden illustrates that a specific prior art mask with a fixed headgear connector may result in leakage of supplied air to the mask and discloses an improvement to that specific mask. Ogden does not indicate that a fixed headgear connector renders a mask inoperable or otherwise indicates that a person having ordinary skill in the art would not consider a path that led to a mask with a fixed headgear connector. We also do not agree with ResMed’s characterization that Ogden expressly teaches away from the proposed combination. Ogden expressly teaches a solution, but does not expressly teach away from other solutions. We note that, “[w]here the prior art contains ‘apparently conflicting’ slip op. at 38

  Patent outcomesUS 8,960,196 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,960,196

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.