• BTL Industries, Inc. v. Inmode Ltd.No claims unpatentable
  PTAB · Oct 1, 2025 · IPR2024-00703 · APJ Meredith C Petravick · IPR · Final written decision

  Claims 1–58 were not shown unpatentable: the Edwards, Ingle, and Mosher combination fails to establish key limitations, and Ollivier was not shown to be a prior art printed publication.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We apply Patent Owner’s proposed definition, as it appears consistent with the field of the ’511 patent and the prior art and is consistent with testimony of Dr. Poulos and the cross-examination testimony of Dr. Berenholz. See Okajima v. Bourdeau, 261 F.3d 1350, 1355, (Fed. Cir. 2001) (the level of ordinary skill in the art may be reflected in the prior art itself); Ex. 2001 ¶¶ 35–39; Ex. 2005, 55:5–17, 57:17–58:19. In our view, however, Petitioner’s proposed definition is not so different that our decision would change if we were to apply Petitioner’s proposed definition.” slip op. at 9

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

    “Patent Owner’s argument are persuasive. We agree with Patent Owner that a plain reading of the wherein clause requires the treating to begin at the introitus and extend at least the first centimeter into the vagina and up to 3.5 cm in from the introitus. This construction is consistent with the ’511 patent’s Specification, which states: In typical embodiments, the length of the energy delivery element is about 1 to about 3 cm in length, in other embodiments it may be as long as about 4 cm. This is a length well adapted to treating the lower aspects of the vagina, wherein treatment by the method comprises contacting the vaginal epithelium in a region that extends from the introitus inward to a position about 3 to 4 cm inward from the introitus. In some embodiments of the invention, the method can b[e] practiced with a single row of parallel contract sites immediately inside the introitus. In other embodiments, the method may include deeper rows, or rows that overlap an initial row, while keeping the contact sites within the lower portion of the vagina. Ex. 1001, 3:28–40 (emphasis added); see also id. at 14:47–57. The ’511 patent Specification also states: “the portion of the vagina to be treated is a region between the introitus and a position located no further than about 3 to about 4 cm inward from the introitus.” Id. at 11:48–51 (emphasis added). Given the plain language of claim 1, consistent with the ’511 patent’s Specification, we construe “heating a portion of the vagina extending from the introitus inwardly to a location from 1 cm to 3.5 cm in from the introitus” to require heating a portion of the vagina beginning at the introitus and extending at least the first centimeter into the vagina and up to 3.5 cm in from the introitus.” slip op. at 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Patent Owner’s arguments is persuasive. The cited portion of Mosher does not explicitly state the location of the treatment area. Ex. 1006 ¶ 74. In it Reply, Petitioner additionally points to paragraph 54 of Mosher, which states: “Preferably, the location of the treatment volume of endopelvic fascia will be disposed along a length of the urethra between the bladder neck and the external meatus so as to avoid injuring nerves.” Pet. Reply 14 (quoting Ex. 1006 ¶ 54). Petitioner argues that “[t]reating the vaginal wall adjacent to the mid-urethral region is within the claimed region of ‘from 1 cm to 3.5 cm in from the introitus.’” Pet. Reply 14–16. This, however, does not teach the claimed area beginning at the introitus and extending at least the first centimeter into the vagina and up to 3.5 cm in from the introitus. The Petition fails to show that either Edwards or Mosher discloses heating a portion of the vagina beginning at the introitus and extending at least the first centimeter into the vagina and up to 3.5 cm in from the introitus. In its Reply, Petitioner argues that it would have been obvious to modify Edwards to treat the area beginning at the introitus and extending at least the first centimeter into the vagina and up to 3.5 cm in from the introitus. See, e.g., Pet. Reply 2–4, 16–17 (citing Pet. 35). The Petition’s argument is unpersuasive because it is conclusory and does not adequately address Edwards’s use of a speculum. Pet. 35. The Petition includes no” slip op. at 26

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

    “In its Reply, Petitioner argues that it would have been obvious to modify Edwards to treat the area beginning at the introitus and extending at least the first centimeter into the vagina and up to 3.5 cm in from the introitus. See, e.g., Pet. Reply 2–4, 16–17 (citing Pet. 35). The Petition’s argument is unpersuasive because it is conclusory and does not adequately address Edwards’s use of a speculum. Pet. 35. The Petition includes no persuasive explanation as to why it would have been obvious to modify Edwards to use the treatment blade without the speculum. See Pet. 22–24, 35–36. We determine that Petitioner fails to meet its burden to show by a preponderance of the evidence that claim 1 is unpatentable over Edwards, Ingle, and Mosher.” slip op. at 26

  Patent outcomesUS 8,961,511 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,961,511
• Intelligent Wellhead Systems, Inc. v. Downing Wellhead Equipment, LLCNo claims unpatentable
  PTAB · Jun 9, 2025 · IPR2024-00300 · APJ Frederick C Laney · IPR · Final written decision

  Claims 1–38 were not shown unpatentable because Petitioner failed to establish Krupa as prior art and failed to show the claimed fluid-triggered valve sequence in Carr or Tolman.

  RulingsFinal written decision

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

    “Although we agree with Petitioner that the plain meaning of limitation 1.2 does not require the recited determination to occur at the first well, it does require the determination to be about the condition(s) of the fluid communicated to the first well by the manifold, regardless of where or how the information is gathered to make that determination. Limitation 1.2 recites plainly that the “determining” step is specifically about whether “the fluid communicated via the manifold has satisfied one or more conditions.” Ex. 1001, 22:38–39 (emphasis added). Considering the antecedents for “the fluid” and “the manifold”––i.e., “communicating fluid to a first well via a manifold” (id. at 22:35, limitation 1.1)––limitation 1.2 expressly identifies the fluid which “the manifold” has “communicated” to the first well to be exactly the fluid used for “determining” whether “one or more conditions” are “satisfied” to trigger the recited responses. Id. This is because “the fluid” refers to a fluid passing to a first well by way of a manifold and the past tense of “communicated via the manifold” indicates, more specifically, that it is the fluid passed by the manifold which must satisfy a condition(s). The Specification of ’770 patent illustrates this by checking the “frac rate” of the fluid discharged by a manifold to a first well to make the determination about whether to permit a regular swap or a continuous pumping swap (“CP swap”). Ex. 1001, 13:30–54, Fig. 12. Therefore, contrary to Petitioner’s representation that limitation 1.2 does not “requir[e] the fluid used for ‘determining’ to have been communicated to the first well” (Pet. Reply 3), the plain meaning of limitation 1.2 does require the fluid used” slip op. at 12

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “anticipated by, or would have been obvious over, Krupa necessarily requires Krupa to be first qualified as prior art. See Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008) (party’s burden to prove anticipation of a patent includes initial burden of going forward with evidence that there is anticipating prior art). Under 35 U.S.C. § 102(a)(2)— the subsection under which Petitioner contends Krupa qualifies as prior art—when the reference patent document’s actual filing date is before the challenged patent’s filing date, a petitioner need only refer to the filing dates appearing on the challenged patent and reference patent document to make prima facie showing that the reference is prior art. 35 U.S.C. § 102(d)(1) (“For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent.”).” slip op. at 16

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We determine that the Petition did not adequately present Petitioner’s contention that Tolman discloses or suggests a “master valve” that a skilled artisan would understand to be the claimed “first valve,” which is first introduced in the Reply. The issue is whether Petitioner’s identification of Tolman’s “tree valve” for the claimed first valve was particular enough to allow Petitioner to rely specifically on the “master valve” in the well tree to show Tolman discloses the first valve. We find that it is not. It is undisputed that a well tree include several different valves: (1) valves for communicating fluid to a well (e.g., for treatment or stimulation); (2) valves for communicating fluid from a well (e.g., for flowback); and (3) valves for communicating fluid both to and from a well (e.g., master valve). See Reply 19–20; Ex. 1002 ¶¶ 542–545; Ex. 1044 ¶¶ 33–34, 38–42; Tr. 33:12–18, 34:3–12, 36:8–37:18, 39:4–17; Ex. 2013, 85:4–86:19, 87:1–12, 89:2–11. And the opening/closing of these different valves are controlled independently of the other valves based on different parameters. Id. identifying a tree valve, generally, does not provide the particularity necessary to provide notice that the master valve is the particular valve being relied upon. Further compounding this problem is the fact that the Petition repeatedly refers to a plurality of valves, rather than a singular “master valve.” The variability of possible valves suggested by simply referring to a tree valve fails to provide a level of particularity that clearly identifies which specific structure is being relied upon to perform which part of the recited procedure. Ultimately, we agree with Patent Owner that because the Petition does not specifically identify the master valve in the Petition, which the Petitioner’s Reply suggest was the intention all along, Patent Owner was put at a disadvantage because its ability to fully develop a response was impeded. Therefore, Petitioner’s reliance particularly on the “master valve” of the well tree, and the newly introduced evidence associated therewith, was improper and may not be considered. Nevertheless, as discussed below, even if Petitioner were allowed to rely on the master valve, we still find the Tolman Grounds to be deficient.” slip op. at 56

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

    “However, Carr does not disclose or suggest: relying on the condition(s) of the fluid communicated by first isolated manifold path 122 to first well 140 to be the determinative factor for causing first and second valves 470 and 472 to perform a sequenced response that includes–– (1) opening second valve 472, (2) communicating fluid to second well 142 through second valve 472, and (3) after opening second valve 472, closing first valve 150 from communicating fluid to first well 140. At the time of the invention, when a first well is being operated individually using high pressure pumping, we find that skilled artisans would have considered concurrent operation of the second well’s valves to be hazardous and activities that can not occur. See Ex. 1031, 4 (“specifically identified activities that were restricted from occurring at the same time (i.e., CAN NOT OCCUR activities). As an example, if the operations on a well involved high pressure pumping . . . then manipulating manifold well valves and wellhead trees valves on another well were not allowed to be performed concurrently”); Ex. 2012 ¶ 148. would have had a reasonable expectation of being able to successfully avoid the unacceptable hazards known to be associated with opening second valve 472 and communicating fluid to second well 142, while individually operating on first well 140 using high pressure pumping.10 Furthermore, Petitioner provides no persuasive evidence that a skilled artisan would have known that those unacceptable hazards could be avoided (or acceptably minimized) by using a condition(s) of the fluid communicated by first isolated manifold path 122 to first well 140 as a trigger for opening second valve 472 and communicating fluid to second well 142, while first well 140 is being individually operated.” slip op. at 34

  Patent outcomesUS 11,560,770 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,560,770
• Precision Planting LLC v. Maschio Gaspardo S.P.A.No claims unpatentable
  PTAB · Mar 21, 2025 · IPR2024-00008 · APJ Benjamin D M Wood · IPR · Final written decision

  Claims 1–5, 7–14, and 16 were not shown unpatentable because the asserted anticipation and obviousness grounds failed to establish the claimed thrust-bearing element and its required location.

  RulingsFinal written decision

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

    “We determine that the evidence of record overcomes the presumption that § 112, para. 6 does not apply because “thrust-bearing element” does not recite sufficiently definite structure in this case. See, e.g., Pet. 22 (the term is not used here according to its common meaning). First, the word “element” is a “[g]eneric term[]” or “verbal construct[]” often “used in a claim in a manner that is tantamount to using the word ‘means’” because it does not “connote sufficiently definite structure.” Williamson, 792 F.3d at 1350. We find nothing in the ’121 patent or elsewhere in the record suggesting that “element” in the term “thrust-bearing element” should be considered other than a generic placeholder term. Second, although the term “thrust bearing” may connote certain structure, “thrust-bearing element” does not. A “thrust bearing” is “a well-known term of art in engineering and is ‘a bearing which sustains axial loads and prevents axial movement of a loaded shaft.’” Ex. 1003 ¶ 46 (citing Ex. 1017, 2147). “The balls of traditional thrust bearings are positioned inline with the axial force, as thrust bearings are designed specifically to transmit axial load.” Id. Here, however, “thrust-bearing” is hyphenated, and is therefore a phrasal adjective modifying “element” rather than the noun phrase “thrust bearing.”8 Further, there are “substantial differences”” slip op. at 15

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

    “We largely agree with Petitioner. “[S]tructure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” B. Braun Med. Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed.Cir.1997). The Specification of the ’121 patent “clearly links or associates” two components with the function of bearing axial thrust from the sowing disc: shaft 27 with flanging 30, and thrust-bearing plate 31. Ex. 1001, 3:25–35. Thrust-bearing plate 31 is expressly described as “bear[ing] on that surface of the disc which faces seal 24 . . . in order to withstand at least some of the axial load produced by the disc 16 on the seal 24. Ex. 1001, 3:28–31. Rotatably-mounted shaft 27 with flanging 30 is “fixed” to thrust-bearing plate 31 and therefore bears the axial load from the disc via the thrust-bearing plate. Id. at 3:25–28.10 10 Drive element 32 is described as part of thrust-bearing element 26 and permits thrust-bearing element 26 to be driven in rotation with sowing disc 16. Ex. 1001, 3:36–40. It is not described as bearing any axial load, however. Further, it is not necessary for the thrust-bearing element to rotate with the sowing disc for that element to bear axial load from the sowing disc. See id. at 3:58–59 (“Provision is also made for the thrust-bearing element 26 to be made idle and not driven in rotation by the [drive] shaft 20.”). Ultimately, however, whether drive element 32 is properly considered as part of the corresponding structure is not relevant to the outcome of this case. We disagree with Patent Owner that bearings 28 and seat 29 should be considered corresponding structure. The Specification does not associate these structures with any axial load-bearing function. Instead, bearings 28 and seat 29 are described as the means by which, and the location in which, shaft 27 is rotatably mounted. Ex. 1001, 3:25–27. Regardless, whether or not bearings 28 and seat 29 are considered corresponding structure does not affect the outcome of this case. In summary, we construe “thrust-bearing element” as a means-plus- function claim term under 35 U.S.C. § 112, para. 6. Its recited function is to bear thrust, or more specifically to “withstand at least some of the axial load produced by the disc on the seal.” The structure described in the Specification as corresponding to this function is shaft 27 with flanging 30, and thrust-bearing plate 31. We construe the limitation as directed to this structure, and equivalent structures.” slip op. at 21

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

    “The question is not whether the patentee disclaimed coverage over structures in which the thrust-bearing element is not located entirely in the movable portion of the housing. Instead, we must simply ascertain what the patentee meant by “supported rotatably in the movable portion.” To answer this question, we look to the Specification, which “is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315. “The construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct construction.” Id. at 1316. Here, it is undisputed that in the sole embodiment described by the ’121 patent, the thrust-bearing element is supported by and entirely within the movable portion of the housing. Ex. 1001, Figs. 1, 2; Pet Post-Hearing Resp. 1; PO Post-Hearing Resp. 2. Construing “in the movable portion” to require the thrust-bearing element to be entirely within the movable portion both “stays true to the claim language and most naturally aligns” with the sole disclosed embodiment. Such a construction does not import the word “entirely” from the sole embodiment into the claims because the construction “arises from the claim language itself.” See SharkNinja Operating LLC v. iRobot Corp., 2024 WL 1132219, *2–*3 (Fed. Cir. 2024) (construing “primary brush assembly disposed within the round housing perimeter” to require that the primary brush assembly be “entirely within” the round housing perimeter is not an improper incorporation of “entirely” from embodiments into the claims because the construction “arises from the claim language itself”). Accordingly, having reviewed the complete record and the parties’ pre- and post-hearing briefing, we determine that “supported rotatably in the movable portion” means supported rotatably entirely in the space defined by the movable portion.” slip op. at 25

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “b. When “Thrust-Bearing Element” is Construed as a Means-Plus-Function Claim Limitation, there is Insufficient Evidence in the Record to Support a Finding that VenHuizen Discloses a Thrust- Bearing Element that is Supported Rotatably in the Movable Portion As noted above, Petitioner contends that VenHuizen’s shaft 55, retaining hub 56, and handle 58 together constitute the claimed thrust-bearing element “under a proper means-plus-function definition.” Pet. Reply 18–19.12 We do not discern sufficient evidence of record or persuasive technical reasoning from Petitioner to support a finding that these elements together are “supported rotatably in the movable portion” of the housing, as claim 1 requires. Ex. 1001, 4:38–39. We construed this limitation to require the thrust-bearing element to be supported rotatably entirely in the space defined by the movable portion (the space defined by VenHuizen’s second housing member 90). Petitioner does not contend, much less show, that these components are supported rotatably entirely in the movable second housing member 90. On the contrary, of the three components constituting VenHuizen’s thrust-bearing element, all of retaining hub 56 and most of shaft 55 are located in the fixed portion of the housing (first housing member 50), not the movable portion 90. See Ex. 1001, Fig. 6. Only handle 58 is ever located in the movable portion (when the fixed and movable portions are joined together). See id. Accordingly, Petitioner has not shown that VenHuizen discloses a thrust-bearing element rotatably supported in the movable portion.” slip op. at 35

  Patent outcomesUS 8,770,121 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,770,121
• Whitewater West Industries, Ltd. v. American Wave Machines, Inc.No claims unpatentable
  PTAB · Nov 20, 2023 · IPR2022-01034 · APJ Alyssa A Finamore · IPR · Final written decision

  Claims 1–19 were not shown unpatentable because the cited references did not establish the required independent chamber actuation by the controller.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA”) would have “knowledge and familiarity with: (i) design of mechanical structures and (ii) fluid characteristics and the interaction of fluid forces upon mechanical structures” and that this knowledge and familiarity “could be obtained by: (i) successfully completing a Master’s degree in Mechanical Engineering or (ii) at least 5 years of experience in a job working with control systems, including designing or implementing such wave generation machines.” Pet. 13 (citing Ex. 1009 ¶¶ 32–33). Patent Owner does not contest Petitioner’s definition for the level of ordinary skill in the art. PO Resp. 8–9 (Patent Owner asserting “it will be assumed that a [POSITA] has a background and the level of skill described in Petitioner’s definition”). We see no reason to deviate from Petitioner’s proffered level of ordinary skill in the art. We apply Petitioner’s level of ordinary skill in the art in this decision.” slip op. at 11

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

    “would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Furthermore, we expressly construe the claims to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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))). Petitioner and Patent Owner dispute the meaning of the term “a controller connected to the chambers” recited in independent claims 1 and 13. PO Resp. 10–13; Reply 2–3; Sur-reply 1–3. Patent Owner argues “a [POSITA] would understand, from the face of the claim language itself, that “a controller connected to the chambers” means “a single common controller having a connection to the chambers,” (PO Resp. 10 citing Ex. 2006 ¶ 27)), whereas Petitioner contends “the plain and ordinary meaning of ‘a controller’ should not be limited to a ‘single common controller’ but should be ‘a device that has the ability to offer commands or control another device’” (Reply 3 (citing Ex. 1016 ¶¶ 11–20)). The parties also dispute the meaning of the term “the delay . . . is . . . a fraction of the chamber period” recited in claims 8, 9, 11, and 17. For the reasons set forth below in our discussion of the asserted grounds of unpatentability, we determine that no term requires an express construction for us to ascertain whether Petitioner has shown the challenged claims are unpatentable.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “persuaded that Raike discloses or renders obvious the controller recited in limitations [1.C] and [13.C]. There is no dispute as to limitations [1.C] and[13.C] requiring a controller connected to the chambers so that each chamber is able to actuate the release of water from the chamber independently of the release of water from the other chambers. For a disclosure of the recited controller, Petitioner relies solely on Raike’s embodiment employing a third mode of operation. Tr. 18:21. Raike discloses the third mode of operation in a single sentence: “all of the caissons 31–34 can be actuated at different times in a predetermined or random sequence.” Ex. 1004, 6:62–64. This sentence does not expressly disclose actuating each caisson independently of the other caissons and is ambiguous as to whether the caissons are actuated in pairs in a predetermined or random sequence or one at a time in a predetermined or random sequence. Petitioner argues a POSITA would understand Raike’s disclosure of the third embodiment to be the latter, namely actuating the caissons in any sequence, including the independent actuation of each caisson one at a time in sequential order. Petitioner’s argument is based on Dr. Stevick’s explanation of how Raike’s pneumatic system could actuate the caissons one at a time in sequential order. Dr. Stevick’s explanation, however, misrepresents Raike’s pneumatic system. Dr. Stevick’s explanation entails pendulum duct sections 63 being in a neutral position in which pendulum duct sections 63 are situated in a vertical orientation halfway along their arcuate path of travel. Ex. 1016 ¶¶ 52–43; Ex. 2010, 23:4–17. Raike is silent regarding any neutral position. Moreover, Raike does not disclose situating pendulum duct sections 63 in a vertical orientation halfway along their arcuate path of travel but instead discloses swinging pendulum duct sections 63 between two extreme positions of their arcuate paths. Ex. 1004, 5:16–28.” slip op. at 23

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Petitioner also contends that Raike renders obvious the controller recited in limitations [1.C] and [13.C]. Pet. 23–24. Petitioner, however, does not provide any further argument or evidence apart from this conclusory assertion. We are not persuaded that Raike renders obvious the recited controller, and Petitioner has not shown, by a preponderance of the evidence, that Raike renders obvious the subject matter of independent claims 1 and 13. 3.” slip op. at 25

  Patent outcomesUS 9,279,263 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,279,263
• Eastman Kodak Co. / Agfa Corp. et al. v. CTP Innovations, LLCNo claims unpatentable
  PTAB · Nov 25, 2015 · IPR2014-00788 · APJ Benjamin D M Wood · IPR · Final written decision

  The Board held claims 10–20 not shown unpatentable because the asserted combinations did not show a reason to produce and provide the plate-ready file from a location remote from the printer.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “reasonable interpretation in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278 (Fed. Cir. 2015). Under this standard, the claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We expressly construe below only those claim terms that require analysis to resolve arguments related to the patentability of the challenged claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those [claim] terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). All other terms will be accorded their ordinary and customary meaning as would be understood by one of ordinary skill at the time of the invention. 1. “A method of providing printing and publishing services to a remote client in real time using a communication network” (claim 10); “A method of providing printing and publishing services to a remote client . . . in real time using a wide area communication network” (claim 16) The preamble for each of independent claims 10 and 16 recites a method of providing printing and publishing services to a remote client “in real time.” In the Decision on Institution, we determined that “the preambles in the claims at issue, including the term ‘real time,’ do not limit the scope of the claims.” Dec. on Inst. 11–13. Neither Patent Owner in its Response nor Petitioner in its Reply disputed this determination. Further, we are not aware of any evidence adduced at trial that calls this determination into question. Therefore, based on our analysis in the Decision on Institution, we determine that the preambles in the claims at issue, including the term “real time,” do not limit the scope of the claims.” slip op. at 8

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

    “The Specification does not define “plate-ready file” expressly, but its meaning is discernible from the term itself: a file that can be used to produce a printing plate without further modification. See Ex. 1001, 10:7– 14 (equating the term “plate-ready file” with “a single file that is stable, predictable, and ready to image to proof or plate”). Moreover, as Petitioner states, the plate-ready file can be used with a platesetter to create a plate directly, or with an imagesetter to produce film that is then used to create the plate. Pet. 22. Further, we agree with the parties that because the file is “plate-ready,” it represents a page layout file that has gone through the prepress process, including RIPing. That is the purpose of prepress production: transforming “copy” into “a medium that is reproducible for printing,” such as a “computer to plate (CTP) file.” Id. at 1:26–38. Accordingly, in addition to the constructions we applied in the Decision on Institution, we construe “plate-ready file” to mean a file that represents a page layout that has gone through prepress processing, including RIPing, and is ready to image to a plate using either a platesetter or imagesetter.” slip op. at 9

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner seeks to exclude Mr. Suetens’ first Declaration for essentially the same reasons discussed above: that Mr. Suetens lacks personal knowledge regarding the public accessibility of Apogee. We have reviewed the First Motion and determine that Patent Owner’s objections to the First Suetens Declaration go more to the weight of the Declaration than to its admissibility. Further, we note that the public accessibility of the Apogee reference is a substantive issue that is better suited for Patent Owner’s Response than for a motion to exclude. For these reasons, we deny Patent Owner’s First Motion to Exclude.” slip op. at 17

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

    “§ 102, a reference must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) 8 Paper 30, 3; Tr. 31:4–8. (internal citation and quotation marks omitted). “Whether a reference is publicly accessible is determined on a case-by-case basis based on the facts and circumstances surrounding the reference’s disclosure to members of the public.” Id. (internal citation and quotation marks omitted). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (internal citation and quotation marks omitted). We find that Petitioner has shown by a preponderance of the evidence that Apogee was publicly accessible before the ’155 patent’s filing date. There does not seem to be any dispute that Apogee was printed at least as early as April 1998. Further, Petitioner has shown that a large number of copies were printed and distributed to Agfa subsidiaries around the world in 1998. Ex. 1024 ¶¶ 10–14, Atts. E–H. Petitioner has also proffered evidence of at least one Agfa sales representative, Mr. Jahn, publicly distributing Apogee to potential customers at conferences. Ex. 1023. Given that Apogee was created to promote the Apogee system to prospective customers, and that a very large number of copies of the reference were printed, it is reasonable to infer that many of these copies made their way into the possession of interested persons. We also credit Mr. Jahn’s testimony that an earlier version of Apogee was posted on his website before the critical date, and that he directed interested persons to that document. Although we do not rely on this version itself in considering Petitioner’s grounds of unpatentability, we consider this testimony further evidence that a person of ordinary skill, using reasonable diligence, could have gained access to the Apogee reference.” slip op. at 20

  Patent outcomesUS 6,738,155 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,738,155
• Eastman Kodak Co. / Agfa Corp. et al. v. CTP Innovations, LLCNo claims unpatentable
  PTAB · Nov 25, 2015 · IPR2014-00790 · APJ Benjamin D M Wood · IPR · Final written decision

  Claims 1–3 were not shown unpatentable because Petitioner did not establish that the proposed combinations would produce the required plate-ready file at the central service facility.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for patent owner

    “1. A printing and publishing system which generates a printing plate-ready file from data provided remotely in real time using a communication network The preamble for each of independent claims 1, 2, and 3 recites a “printing and publishing system which generates a printing plate-ready file from data provided remotely in real time.” In the Decision on Institution, we determined that “the preambles in the claims at issue, including the term ‘real time,’ do not limit the scope of the claims.” Dec. on Inst. 14. Neither Patent Owner in its Response nor Petitioner in its Reply disputed this determination. Further, we are not aware of any evidence adduced at trial that calls this determination into question. Therefore, based on our analysis in the Decision on Institution, we determine that the preambles in the claims at issue, including the term “real time,” do not limit the scope of the claims.” slip op. at 9

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

    “We agree with Patent Owner to the extent that the claim itself defines “end user facility,” “printing company facility,” and “central service facility” in terms of the particular functions they perform; e.g. the end user facility performs page building operations, the printing company facility provides printing operations, and the central service facility performs file processing and content management operations. But we maintain the view that these facilities must be distinct components of the claimed printing and publishing system. “Where a claim lists elements separately, the ‘clear implication of the claim language’ is that those elements are distinct components of the patented invention.” Becton, Dickenson and Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (internal citations and quotation marks omitted); cf. Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 935 (Fed. Cir. 2013) (holding that phrase “first and second occluding disks” means physically separate occluding disks). The Specification supports this conclusion because it consistently describes the three facilities as separate entities, each connected to the same communication network to facilitate the transfer of data between each other. See, e.g., Ex. 1001, 2:54–64, 4:26–33, Figs. 1–5.” slip op. at 10

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

    “§ 102, a reference must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (internal citation and quotation marks omitted). “Whether a reference is publicly accessible is determined on a case-by-case basis based on the facts 8 Paper 35, 3; Tr. 31:4–8. and circumstances surrounding the reference’s disclosure to members of the public.” Id. (internal citation and quotation marks omitted). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (internal citation and quotation marks omitted). We find that Petitioner has shown by a preponderance of the evidence that Apogee was publicly accessible before the ’349 patent’s filing date. There does not seem to be any dispute that Apogee was printed at least as early as April 1998. Further, Petitioner has shown that a large number of copies were printed and distributed to Agfa subsidiaries around the world in 1998. Ex. 1025 ¶¶ 10–14, Atts. E–H. Petitioner also has proffered evidence of at least one Agfa sales representative, Mr. Jahn, publicly distributing Apogee to potential customers at conferences. Ex. 1024. We also credit Mr. Jahn’s testimony that an earlier version of Apogee was posted on his website before the critical date, and that he directed interested persons to that document. Although we do not rely on this version itself in considering Petitioner’s grounds of unpatentability, we consider this testimony evidence that a person of ordinary skill, using reasonable diligence, could have gained access to the earlier version Apogee, which reasonably would have led that person to the updated version. Given that Apogee was created to promote the Apogee system to prospective customers; a very large number of copies of the reference were printed, at least some of which were distributed at conferences and trade shows; and an earlier, substantively identical version was publicly available in electronic form on the internet; we find that Apogee was publicly accessible before the critical date.” slip op. at 21

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner seeks to exclude Mr. Suetens’ first Declaration for essentially the same reasons discussed above: that Mr. Suetens lacks personal knowledge regarding the public accessibility of Apogee. We have reviewed the First Motion and determine that Patent Owner’s objections to the First Suetens Declaration go more to the weight of the Declaration than to its admissibility. Further, we note that the public accessibility of the Apogee reference is a substantive issue that is better suited for Patent Owner’s Response than for a motion to exclude. For these reasons, we deny Patent Owner’s first motion to exclude.” slip op. at 18

  Patent outcomesUS 6,611,349 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,611,349
• Eastman Kodak Co. / Agfa Corp. et al. v. CTP Innovations, LLCNo claims unpatentable
  PTAB · Nov 25, 2015 · IPR2014-00791 · APJ Benjamin D M Wood · IPR · Final written decision

  Claims 10–14 were not shown unpatentable over either asserted obviousness combination because the evidence did not show a reason to produce the plate-ready file away from the printing facility.

  RulingsFinal written decision

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

    “§ 102, a reference must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (internal citation and quotation marks omitted). “Whether a reference is publicly accessible is determined on a case-by-case basis based on the facts and circumstances surrounding the reference’s disclosure to members of the public.” Id. (internal citation and quotation marks omitted). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (internal citation and quotation marks omitted). We find that Petitioner has shown by a preponderance of the evidence that Apogee was publicly accessible before the ’155 patent’s filing date. There does not seem to be any dispute that Apogee was printed at least as early as April 1998. Further, Petitioner has shown that a large number of copies were printed and distributed to Agfa subsidiaries around the world in 1998. Ex. 1024, Atts. E–H. Petitioner has also proffered evidence of at least one Agfa sales representative, Mr. Jahn, publicly distributing Apogee to potential customers at conferences. Ex. 1023. Given that Apogee was created to promote the Apogee system to prospective customers, and that a very large number of copies of the reference were printed, it is reasonable to infer that many of these copies made their way into the possession of interested persons. We also credit Mr. Jahn’s testimony that an earlier version of Apogee was posted on his website before the critical date, and that he directed interested persons to that document. Although we do not rely on this version itself in considering Petitioner’s grounds of unpatentability, we consider this testimony further evidence that a person of ordinary skill, using reasonable diligence, could have gained access to the Apogee reference.” slip op. at 20

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner seeks to exclude Mr. Suetens’ first Declaration for essentially the same reasons discussed above: that Mr. Suetens lacks personal knowledge regarding the public accessibility of Apogee. We have reviewed the First Motion and determine that Patent Owner’s objections to the First Suetens Declaration go more to the weight of the Declaration than to its admissibility. Further, we note that the public accessibility of the Apogee reference is a substantive issue that is better suited for Patent Owner’s Response than for a motion to exclude. For these reasons, we deny Patent Owner’s First Motion to exclude.” slip op. at 17

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

    “this limitation, either the end user or the host facility must produce the plateready file and provide it to the printer. Petitioner argues that “one of ordinary skill could predictably implement Apogee at a central service facility.” Pet. Reply 4 (emphasis added). But as our reviewing court recently stated, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden, 2015 WL 6756451, at *5 (emphasis in original) (citing InTouch Techs., Inc. v. VGO Commc’n, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Jebens does not teach or suggest generating a “plate-ready file” as we have construed the term above, i.e., a file that “that has gone through prepress processing, including RIPing.” Apogee teaches generating a plateready file from a PDF, but does not teach or suggest providing it to a remote 8 Claim 10 only requires a “client” and a “printer” that are “remote” with respect to each other. printer. Petitioner asserts that “one of ordinary skill in the art would have been motivated to incorporate Apogee into the Jebens printing system to allow for a printing facility to produce a printing plate for offset printing.” Pet. 29. But Petitioner does not point us to any evidence—in Jebens, Apogee, or otherwise—that a person of ordinary skill in the art would have combined Jebens and Apogee in such a way that a plate-ready file would have been produced at Jebens’ host facility or end user facility rather than at its printing facility. In other words, there is no evidence that a person of ordinary skill in the art would have considered generating a plate-ready file anywhere other than where the printing plates are produced: at the printing facility. Evidence that a skilled artisan could have generated the plate-ready file at Jebens’ host facility, without any evidence of a reason why the skilled artisan would have done so, is insufficient to show obviousness. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421–23 (2007) (considering the obviousness of a claim to an adjustable automobile throttle pedal combined with an electronic sensor, holding that “[a] person having ordinary skill in the art could have combined [the adjustable pedal] with a pedal position sensor in a fashion encompassed by [the claim], and would have seen the benefits of doing so” (emphasis added)); InTouch Techs., 751 F.3d at 1352 (holding that expert witness “succumbed to hindsight bias” in basing obviousness opinion on “belief that one of ordinary skill in the art could combine these references, not that they would have been motivated to do so” (emphasis in original)). For these reasons, Petitioner has not shown by a preponderance of the evidence that claim 10, and its dependent claims 11– 14, would have been obvious over Jebens and Apogee.” slip op. at 25

  Patent outcomesUS 6,611,349 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,611,349
• Igb Automotive Ltd. / I.G. Bauerhin GmbH v. Gentherm GmbHNo claims unpatentable
  PTAB · Oct 13, 2015 · IPR2014-00667 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–6 were not shown unpatentable under §103 because the proposed combinations did not establish the claimed attachment component or a sufficient reason to replace Larsson’s sealing bellows.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “structure that accomplishes the attachment or connection of one structure to another. For instance, attachment component 72 constitutes a mechanism for attaching a blower to insert 10. Ex. 1001, 7:59–61. Indeed, the ordinary meaning of “attachment” is “the physical connection by which one thing is attached to another.”6 In other words, at its core, the meaning of the term “attachment” conveys that an “attachment component” must be a component that facilitates an act of physical connection. In that respect, we conclude that “attachment component” requires more than “simply a member having an opening therein” as urged by IGB. See Pet. Reply 2. Accordingly, on the record now before us, and consistent with the Specification of the ’573 and the ordinary meaning of the term “attachment,” an “attachment component” is understood as a component that physically connects structures to one another. Furthermore, in the context of claim 1, the attachment component must be “adapted to receive a blower housing.” Thus, the claim requires that the “attachment component” is a component that is configured so as to physically connect the blower housing to another structure.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayMotivation not foundTeaching away foundDecided for patent owner

    “20 and fan 19 does realize some benefit of vibration dampening and noise reduction, careful review of IGB’s proposed substitution of Pfahler’s sleeve 20 and fan 19 for Larsson’s bellows 41 and suction device 26 raises issues tending to undermine IGB’s obviousness position vis-à-vis the claims of the ’573 patent. In that regard, as noted by Gentherm (PO Resp. 18–19, 24), and as testified to by Dr. Rice (Ex. 2001 ¶¶ 39, 52), Larsson places considerable emphasis as a part of its disclosed invention on the sealing benefit provided by bellows 41. Indeed, Larsson makes clear that bellows 41 is a “special characteristic of the invention” and “prevent[s] air from leaking to the suction device through pores in the filling material” that surrounds channel 25. Ex. 1004, 5:59–63. The leakage prevention is described as acting in concert “with the low flow resistance of the insert 15” to demonstrate “improved efficiency” of Larsson’s device. Id. at 6:47–54. The underlying premise of IGB’s combination incorporating Larsson and Pfahler, however, is that one of ordinary skill in the art would have omitted bellows 41, i.e., the very component in Larsson characterized as a “special characteristic of the invention,” and substituted sleeve 20 therefor. IGB does not offer, as a part of its Petition or Reply, an adequate explanation, or point to record evidence, tending to show that a skilled artisan would have viewed Pfahler’s sleeve 20 as a component interchangeable with Larsson’s bellows 41. Yet, such interchangeability lies at the heart of IGB’s assertion of obviousness stemming from the combination of Larsson and Pfahler. IGB does not point to content of the record demonstrating that Pfahler’s sleeve 20 is understood as also operating as a sealing component. Indeed, we observe that, in contrast with Larsson’s bellows 41, sleeve 20 is configured with a closed upper end and multiple “oblong holes 28” for distributing air in a circumferential direction. Ex. 1004, 3:45–46, 55–65, Fig. 2; see Ex. 2001 ¶ 49. In that respect, due to the particular positioning and configuration of sleeve 20 in Pfahler’s cushion assembly, the sleeve is not understood as providing the type of sealing that is attributed to Larsson’s bellows 41.” slip op. at 20

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “may touch or contact some structure associated with suction device 26, we are not persuaded that such contact amounts to physically connecting the suction device to some other structure. To that end, we do not discern that bellows 41 forms an “attachment component adapted to receive a blower housing” as is required by claim 1. We note also the testimony of Dr. Rice, that Larsson’s bellows 41 does not amount to the required “attachment component.” Ex. 2001 ¶¶ 37–43. Although IGB contends that during cross examination of Dr. Rice, he “confirmed that the bellows 41 provides a connection to the air mover of Larsson” (Pet. Reply 3), we do not discern that Dr. Rice’s recognition that Larsson’s bellows 41 may contact some portion of Larsson’s suction device constitutes testimony that the bellows is the required attachment component. We are not persuaded by IGB that Dr. Rice’s testimony in his Declaration that bellows 41 does not form the required “attachment component” should be discounted.” slip op. at 18

  Patent outcomesUS 7,637,573 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,637,573
• International Business Machines Corporation v. Intellectual Ventures II, LLCNo claims unpatentable
  PTAB · Sep 23, 2015 · IPR2014-00587 · APJ Meredith C Petravick · IPR · Final written decision

  Claim 1 was not shown unpatentable because Petitioner did not establish that Hughes and Abraham qualify as prior art.

  RulingsFinal written decision

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

    “construction, in light of the Specification, of “contents of the packet” in step c is the header and/or payload of the packet. Petitioner’s construction is supported, sufficiently, by the ’694 patent, itself, which discloses embodiments of selecting access rules based upon the header and/or payload of the packet. The ’694 patent discloses a first embodiment in which the firewall selects a rule based on header parameters only, and discloses that, based on the header parameters, the packet may be passed or dropped. See Ex. 1004, col. 2, ll. 35–37, 40–43, col. 3, ll. 10–12, Fig 1 (path formed by steps 101, 102, 103, and 104). The ’694 patent also discloses that an access control proxy selects a rule based on an analysis of the payload of a single or multiple packets. Id. at col. 3, ll. 4–8, 18–22, 30–32, col. 4, ll. 28–34, 38–40, Fig. 1 (path formed by steps 106 and 107). The ’694 patent further discloses alternate embodiments in which the “access control proxy selects an access rule that pertains to the packet based both on an analysis of the payload and the header parameters of the packet” (Ex. 1004, col. 3, ll. 38–41) and the “access rule is retrieved based upon a combination of the contents and header parameters of the packet” (id. at col. 4, ll. 36–38).” slip op. at 9

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedReference not prior artDecided for patent owner

    “To establish an actual reduction to practice, the patentee must prove that he (1) constructed an embodiment or performed a process that meets all the claimed limitations of the invention, and (2) determined that the invention worked for its intended purpose. Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998). “The essential inquiry here is whether the advance in the art represented by the invention . . . was embodied in a workable device that demonstrated that it could do what it was claimed to be capable of doing.” Scott v. Finney, 34 F. 3d 1058, 1063 (Fed. Cir. 1994) (emphasis omitted) (quoting Farrand Optical Co. v. United States, 325 F.2d 3278, 333 (2d Cir. 1963)). “In order to establish an actual reduction to practice, an inventor’s testimony must be corroborated by independent evidence. . . . [A] ‘rule of reason’ analysis is applied to determine whether an inventor’s testimony regarding reduction to practice has been sufficiently corroborated.” Cooper, 154 f.3d at 1330 (citation omitted); see also Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996) (corroboration requirement “arose out of a concern that inventors testifying in patent infringement cases would be tempted to remember facts favorable to their case by the lure of protecting their patent or defeating another’s patent”). The sufficiency of corroboration is determined according to a “rule of reason.” Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993). This, however, does not dispense with the requirement that some independent evidence provide corroboration. Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985). The requirement of “independent” corroboration requires evidence other than the inventor’s testimony. In re NTP, Inc., 654 F.3d 1279, 1291–92 (Fed. Cir. 2011).” slip op. at 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “of the evidence, that the challenged claim is unpatentable. 35 U.S.C. § 316(e). This burden includes, inter alia, showing that any reference on which it relies is prior art under 35 U.S.C. § 102. See Mahurkar, 79 F.3d at 1576 (holding that accused infringer “bore the burden of persuasion . . . on all issues relating to the status of [the asserted reference] as prior art”). Hughes and Abraham presumptively constitute prior art under 35 U.S.C. §§ 102(a) or 102(e) because their filing dates are prior to the ‘694 patent’s earliest effective filing date, giving rise to Patent Owner’s burden of coming forward with evidence supporting a date of invention before September 9, 1998. Mahurkar, 79 F.3d at 1576–77; see Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008) (finding that when party challenging validity came forward with art that is prior to the challenged patent’s application date, the patentee has the burden of going forward with evidence that “the asserted claim is entitled to the benefit of a filing date prior to the alleged prior art”). Upon consideration of the all the evidence, we are persuaded that Patent Owner has met its burden of coming forward with sufficient evidence to corroborate independently inventor Mr. Dutta’s testimony that the inventors of the ’694 patent reduced to practice the claimed invention “at least as early as early 1996 but no later than June 11, 1996” (PO Resp. 36). Thus, we are not persuaded that Hughes and Abraham are prior art under 35 U.S.C. §§ 102(a) or 102(e). C. Obviousness over Hughes and Abraham Petitioner fails to demonstrate that claim 1 is unpatentable under 35 U.S.C. § 103 because Petitioner has not demonstrated that Hughes and Abraham are prior art.” slip op. at 18

  • ExcludeMotion to exclude, deniedMixed

    “under Federal Rule of Evidence (“FRE”) 602. Pet. Mot. 4–5; Pet. Mot. Reply 1–3. FRE 602 states that “[a] witness may testify to a matter only if evidence is introduced sufficient to support a finding that the witness has personal knowledge of the matter. Evidence to prove personal knowledge may consist of the witness’s own testimony.” Fed. R. Evid. 602. Exhibit 2006 is the Declaration of Partha Dutta. According to Petitioner, in paragraphs 22, 23, and 26, Mr. Dutta testimony contains statements that require an understanding of the proper legal scope of the ’694 patent, but there is insufficient evidence to support a finding Mr. Dutta has personal knowledge of that proper legal scope of the ’694 patent. Id. at 4. We dismiss Petitioner’s motion to exclude paragraphs 22, 23, and 26 paragraphs of Exhibit 2006 as moot because we do not rely upon the statements made in these paragraphs that Petitioner alleges to require an understanding of the proper legal scope of the ’694 patent in reaching our decision. Although we cite to paragraphs 22, 23, and 26 of Ex. 2006 above, we only rely upon other statements in those paragraphs, which do not address the legal scope of the ’694 patent, such as “the prototype code is no longer available.” Ex. 2006 ¶ 26.” slip op. at 20

  Patent outcomesUS 6,826,694 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,826,694
• TRW Automotive US LLC v. Magna Electronics Inc.No claims unpatentable
  PTAB · Jun 25, 2015 · IPR2014-00262 · APJ Benjamin D M Wood · IPR · Final written decision

  TRW failed to prove claims 1–3, 5, 10, 13–16, 25, 26, and 28 unpatentable as obvious over the asserted combinations because Yanagawa did not teach the claimed object-identification feature.

  RulingsFinal written decision

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

    “of interest is enhanced” (emphasis added). It does not, as TRW’s arguments suggest, recite that the knowledge of various aspects of the object of interest is enhanced. Further, using the definition of “enhance” on which the parties apparently agree (PO Resp. 6 (quoting Ex. 2034); Pet. Reply 2 (same)), the plain meaning of “identification of objects of interest is enhanced” is that the identification of objects of interest is improved, e.g., in quality, as Magna proposes. That is, the quality of the identification of objects of interest is better than it would have been if the identification had not been based on processing multiple frames of image data.” slip op. at 7

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

    “As an initial matter, there is no dispute that the portion of Yanagawa on which TRW relies teaches “comparing over successive frames image data associated with objects in said forward field of view of said image sensor.” Further, there does not seem to be any dispute that the portion of Yanagawa on which TRW relies describes calculating the relative speed and distance of an object of interest that has already been identified as such. Therefore, the dispute is whether that teaching corresponds to “enhanc[ing]” “identification of objects of interest” as claim 1 requires. We determine that it does not. As discussed above, we construe “identification of objects of interest is enhanced” to mean that the quality of the identification of objects of interest is improved; i.e., that the identification is less likely to be erroneous. But, as Magna correctly points out, Yanagawa’s speed and distance calculations of a leading vehicle are independent of its identification of the leading vehicle as an object of interest; nor does Yanagawa teach that such calculations reduce the possibility of error in an identification of an object of interest. See PO Resp. 9–10; Ex. 2032 ¶¶ 27–36 (supporting testimony of Matthew A. Turk, Ph.D.).” slip op. at 11

  • Strike new argumentNew argument disregardedDecided for patent owner

    “As an initial matter, this argument is newly raised in the Reply, and is based on a portion of Yanagawa that TRW alleges, for the first time, corresponds to the enhanced limitation. Although the argument is based on Magna’s proposed claim construction rather than the construction that TRW proposes in its Reply,8 we consider the dispute over the proper construction 8 TRW did not propose a construction for the enhanced limitation in the Petition. of this term to be sufficiently foreseeable so that TRW should have presented the argument and evidence in the Petition. TRW’s failure to do so at that time has deprived Magna of the opportunity to respond to it, as Magna could not respond to TRW’s Reply. For this reason, we decline to consider it. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (stating that a reply that belatedly presents evidence will not be considered, and that one indication that a new issue has been raised in a reply is where the petitioner submits “new evidence necessary to make out a prima facie case” of unpatentability of an original claim).” slip op. at 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Claim 25 expressly requires that the comparison of a frame of image data with a successor frame be for the purpose of “identify[ing], at least in part, an object of interest.” For the reasons discussed above in Section II.B.1, we determine that the passage on which TRW relies is not directed to the identification of objects of interest; instead, it describes calculating the relative speed and distance of a previously identified object of interest. Accordingly, for the reasons discuss above, we determine that TRW has not shown by a preponderance of the evidence that claims 25, 26, and 28 would have been obvious over Yanagawa, Vellacott, Koshizawa, and Kawahara. III. CONCLUSION For the foregoing reasons, we determine that TRW has not shown by a preponderance of the evidence that claims 1–3, 5, 10, 13–16, 25, 26, and 28 of the ’894 patent are unpatentable under 35 U.S.C. § 103(a).” slip op. at 15

  Patent outcomesUS 7,655,894 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,655,894

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.