- Boston Scientific Corp. And Boston Scientific Neuromodulation Corp. v. Nevro Corp.Some claims unpatentablePTAB · Mar 14, 2022 · IPR2020-01563 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 1–7 and 9–21 are unpatentable as anticipated by Bradley857 and obvious over Bradley857, Bradley384, and Meadows; claim 8 was not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“At the outset, we find that the plain language of clauses 1[i], 12[k], and 18[e], in isolation, requires only that the displayed image of one lead is aligned with the displayed image of the other lead without requiring any “repositioning” of previously displayed images. However, Patent Owner argues that other language recited in each independent claim requires first “establishing” the positions of the first and second leads, which necessarily means that “aligning” the images of the first and second leads refers to repositioning them on the display. Sur-reply 2–3. However, Patent Owner’s argument fails to recognize the distinction between establishing the physical “position” of the leads relative to a physical frame of reference and aligning computer-based images of those leads. For example, clauses 18[b] and 18[c] of independent claim 18 recite: “[b] establishing a first positional relationship between a location of a first signal delivery device and an anatomical feature of a patient” and “[c] establishing a second positional relationship between a location of a second signal delivery device and at least one of the location of the first signal delivery device or the anatomical feature of the patient.” Ex. 1001, 40:34–41. None of clauses 18[b] or 18[c] or the substantively identical clauses 1[d], 1[f], 12[h], 12[i]5 from the other independent claims mentions displaying an image of either lead on a computer screen. Rather, these clauses encompass establishing the spatial position of each of the first and second physical leads relative to a physical frame of reference (e.g., an anatomical feature of a patient or another lead). These limitations may be met without displaying leads on a computer screen at all. Accordingly, we reject Patent Owner’s argument that the claims first require positioning images of the leads on a display before aligning those images on the display. Rather, we find that a plain reading of “align” or” slip op. at 10
- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
“II. PATENT OWNER’S MOTION TO AMEND Patent Owner filed a contingent motion to amend claims. Paper 25. Patent Owner affirmatively withdrew its motion, Paper 36, after we issued Preliminary Guidance on the motion, Paper 32. Accordingly, Patent Owner’s motion to amend is moot, and we do not reach any issue presented in that motion.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest Petitioner’s definition of the ordinary level of skill. PO Resp. 17. For purposes of this Decision, we adopt Petitioner’s undisputed definition. We also find that Petitioner’s proposed definition is consistent with the level of skill demonstrated in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). E. CLAIMS 1–21: ANTICIPATION BY BRADLEY857” slip op. at 17
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner
“which electrodes are selected for delivering therapy. Reply 10. Petitioner also responds that Bradley857’s reference to Meadows incorporates Meadows method for determining whether an electrode is “available” to the user for delivering therapy by first confirming that impedance of the electrode is within a pre-established range. Id. For example, Meadows indicates that the “number of implanted and available electrodes is typically automatically determined by impedance measurements during hardware interrogation,” Ex. 1006, 34:57–59, and that impedance of an electrode “is a general measure of the fitness of the system to perform its required function,” id. at 46:61–64. Dr. Stone, Patent Owner’s expert, agrees that Meadows’s system does not deliver therapy to an electrode if the measured impedance for that electrode is too high or too low, that is, outside a pre-established range. Ex. 1040, 82:8–87:8.” slip op. at 33
Patent outcomesUS 10,076,665 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,076,665 - Merck Sharp & Dohme Corp. / Merck Sharp & Dohme B.V. et al. v. Microspherix LLCSome claims unpatentablePTAB · Jul 8, 2019 · IPR2018-00393 · APJ James A Worth · IPR · Final written decision
Claims 1–5, 7, 8, and 10–19 are unpatentable as obvious; claims 6 and 9 were not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMixed
“B. Motivation to Combine De Nijs and Schopflin The parties dispute whether a person of ordinary skill in the art would” slip op. at 21
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“that Merck failed to add a radiopaque marker to its Implanon device and that the lack of a negative impact on release rates shows unexpected success. PO Resp. 64; see also id. at 54 (“There is no dispute De Nijs does not discuss using a marker, and that Implanon did not use a marker.”). Petitioner states that the Implanon device is the commercial embodiment of Example 5 of De Nijs. Reply 5 (citing Ex. 2002, 3:15–16; Ex. 1067, 297:7–9). Example 5 of De Nijs has no polysiloxane jacket and no sealing of implant ends. Accordingly, this argument would be more relevant to claims 6 and 9 discussed below, which recite open ends or pores. Our analysis of claim 1 focuses on the broader scope of claim 1, which includes both sealed and 14 Patent Owner cited this case in its response. See PO Resp. 32. Accordingly, we do not find Petitioner’s reliance on this case at oral argument to be waived. 15 The Court in Intelligent Bio-Systems emphasized that there is a distinction between reasonable expectation of success and reason to pursue the references’ teachings. Id. at 1366–1368. According to Intelligent Bio- Systems, reasonable expectation of success only looks to “likelihood of success in combining references to meet the limitations of the claimed invention” and that, for example, appropriate cleavage conditions would have been irrelevant to the inquiry where such conditions are not required by the claim at issue. Id. at 1367. Inquiry into motivation to combine, however, considers whether a person having skill in the art would have believed that there was a reason for reaching the claimed invention in the first place. Id. at 1368; see also KSR Int’l Co., 550 U.S. at 418 (“it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”).” slip op. at 27
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for petitioner
“the examiner during the prosecution of the Veenstra patent. We note, however, that the claims in the prosecution of the unrelated Veenstra patent only reached allowance after incorporation of language that captured Veenstra’s unexpected results for localization of the barium sulfate as set out the specification. In other words, Merck’s other positions during the prosecution of the Veenstra patent were not successful. Because, Merck did not succeed “in persuading a court13 to accept that party’s earlier position” we do not find that estoppel applies to Petitioner in this proceeding. New Hampshire, 532 U.S. at 750–51. Accordingly, we do not agree with Patent Owner’s position that Petitioner is estopped from arguing that the addition of a marker disclosed in Schopflin to De Nijs’s implant is obvious.” slip op. at 21
- ExcludeMotion to exclude, deniedDenied
“First, Petitioner asserts certain exhibits and testimony should be excluded as irrelevant because they have not been discussed in any substantive paper. Paper 36, 2–4. But, as Patent Owner notes, Dr. Kiser cited the objected-to exhibits in his declarations to show his understanding of the state of the art. Paper 38, 3. Moreover, we agree with Patent Owner that the uncited portions of Dr. Kiser’s declarations include paragraphs of technical and legal background that provide context for his opinions. Id. at 5–6. We agree with Patent Owner that Dr. Kiser’s understanding of the state of the art and the exhibits supporting that understanding are relevant to the understanding of persons of ordinary skill in the art. Id. at 3–5. Accordingly, we deny Petitioner’s motion to exclude such testimony and exhibits.” slip op. at 70
Patent outcomesUS 9,636,402 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,636,402 - Nautilus, Inc. v. Icon Health & Fitness Inc.Some claims unpatentablePTAB · Nov 28, 2018 · IPR2017-01363 · APJ Timothy J Goodson · IPR · Final written decision
Claims 1–5 and 11–13 are unpatentable as obvious; claims 6–10 and 14–19 were not shown unpatentable because Six-Pak was not established as prior art.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Petitioner’s evidence to be deficient. What we find lacking is evidence that persons interested in exercise equipment knew of the TuffStuff website or would have been able to locate it through reasonable diligence. Even assuming that the two archived webpages captured by the Wayback Machine show that Six-Pak was available for anyone to view or download from the TuffStuff website,9 “‘[p]ublic accessibility’ requires more than technical accessibility.” Acceleration Bay, LLC v. Activision Blizzard Inc., __ F.3d __, 2018 WL 5795976, at *5 (Fed. Cir. Nov. 6, 2018) (affirming Board’s determination that a reference uploaded to a university website in the prior art period was not a printed publication when it was not meaningfully indexed to allow an ordinarily skilled person to locate the reference using the website’s search function). Petitioner has presented no evidence, in the Butler affidavit or elsewhere in the record, that the TuffStuff website could have been located through a reasonably diligent internet search.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“2. Claims 2–5 Petitioner contends that claims 2–5 would have been obvious over Sleamaker in view of Hanoun. Pet. 26–31. Petitioner argues that a skilled artisan would have been motivated to combine Sleamaker with Hanoun as proposed in its challenges to these claims because by 2013, it was known that exercise machines should track user performance and the market demanded such features. Id. at 19 (citing Ex. 1007 ¶¶ 44–50, 117–118). Sleamaker discloses electronics to track user performance (see Ex. 1002, 5:46–55), but according to Petitioner, “because the direction of its invention was not focused on the details of such electronics, a POSITA would have looked to Hanoun for a complimentary and more comprehensive system to measure performance in a flywheel-based exercise system.” Pet. 19 (citing Ex. 1007 ¶¶ 117–118). We find that Petitioner’s stated reasoning for combining Sleamaker and Hanoun is supported by rational underpinnings.” slip op. at 25
- Skill levelSkill level petitioner adoptedOther
“In our Decision on Institution, we adopted Petitioner’s proposal that an ordinarily skilled artisan at the time of the invention of the ’047 patent “would have had at least a bachelor’s degree in mechanical engineering or biomechanics and two years’ experience designing exercise equipment, or alternatively, an equivalent level of education and experience in product development and engineering regarding commercial fitness products.” Dec. on Inst. 7 (quoting Pet. 7). The parties’ post-institution briefing does not present any argument relating to the definition of the level of ordinary skill in the art. We maintain the definition of the level of ordinary skill in the art set forth in our Decision on Institution for the reasons stated therein. See Dec. on Inst. 7.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“II. CLAIM CONSTRUCTION Under the version of our rules applicable to this inter partes review,7 claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification. 37 C.F.R. § 42.100(b) (2016); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). In our Decision on Institution, we determined that resolution of the disputed issues at that stage did not require an express interpretation of any claim term. See Dec. on Inst. 6 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). The parties’ post-institution briefing does not present any claim construction arguments or issues. We maintain our determination that no express claim construction is necessary to resolve the disputed issues.” slip op. at 8
Patent outcomesUS 9,403,047 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 9,403,047 - J Squared, Inc. D/B/A University Loft Company v. Sauder Manufacturing CompanySome claims unpatentablePTAB · Jun 27, 2016 · IPR2015-00774 · APJ Linda E Horner · IPR · Final written decision
Claims 1, 2, 6–8, 10, and 11 are unpatentable over Mackey and/or Pollack II and Pollack I; claims 4, 5, 9, and 12–14 are not held unpatentable.
RulingsFinal written decision- BurdenFwd mixedMixed
“i. Conclusion - Obviousness We have weighed the entirety of the evidence in this proceeding, including J Squared’s evidence of obviousness and Sauder’s evidence of non-obviousness. On balance, we conclude that J Squared has shown by a preponderance of the evidence that the subject matter of claims 1, 2, 6‒8, 10, and 11 would have been obvious over Pollack II and Pollack I, but has not shown that the subject matter of claims 9 and 12‒14 would have been obvious over this prior art. III. CONCLUSIONS For the foregoing reasons, we determine the following: A. J Squared has shown by a preponderance of the evidence that claims 1, 2, 8, 10, and 11 are anticipated under 35 U.S.C. § 102 by Mackey; B. J Squared has not shown by a preponderance of the evidence that claims 4 and 5 are anticipated under 35 U.S.C. § 102 by Mackey; C. J Squared has shown by a preponderance of the evidence that claims 1, 2, 6‒8, 10, and 11 are unpatentable under 35 U.S.C. § 103 as obvious over Pollack II and Pollack I; and D. J Squared has not shown by a preponderance of the evidence that claims 9 and 12‒14 are unpatentable under 35 U.S.C. § 103 as obvious over Pollack II and Pollack I.” slip op. at 64
- Skill levelSkill level board ownOther
“considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962‒63 (Fed. Cir. 1986)). The court in GPAC held that the Board did not err in in failing to make a specific finding as to the level of skill in the art and relying instead on the references of record to inform it as to the level of skill in the art. Id.; see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown). J Squared did not proffer a specific level of skill of one of ordinary skill in the art, and relied instead on the prior art to reflect an appropriate level of skill. Tr. 78:15‒20. We find no need for testimony as to the level of skill in the art, as it is demonstrated aptly by the prior art of record. For purpose of this Final Written Decision, we resort to the prior art of record to assess the level of skill of one of ordinary skill in the art. In particular, as discussed below, the prior art explicitly proposes the combination of the teachings of the Pollack references.” slip op. at 37
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Sauder is, in essence, seeking to have the Board rewrite the claim to recite, “A combination consisting of a chair and a stool base portion.” We see no reason to narrow the claim, particularly when the body of the claim itself recites “said combination further comprises an assembly . . . .” Ex. 1001, 10:42. For these reasons, we construe “combination” to include, but not be limited to, a chair and a stool base portion.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“We reconsider our claim interpretation in light of the additional arguments and evidence provided by Sauder in its Patent Owner Response and by J Squared in its Reply. The function called for in this means plus function claim limitation is “releasably engaging said chair to said base portion.” Ex. 1001, 12:4‒5. We think Sauder has the correct interpretation of the functional recitation of claim 12. The focus of the language of claim 12 is on the verb “engaging,” while the adverb “releasably” modifies the verb “engaging” to simply require that the engagement is effected in such a way that it is not permanent. This understanding is consistent with the claim language used in the remainder of this clause, which focuses on releasable engagement of the chair “to” the base portion. We note that during prosecution of claim 12 (application claim 20) of the ’136 patent before the examiner, Sauder amended the claim language “manually operable means for releasably engaging said chair from said base portion” to recite instead “manually operable means for releasably engaging said chair to said base portion,” thereby clearly shifting the focus of this functional language from one of disengagement to engagement. Ex. 1013, 210. Consistent with our interpretation of “engage,” we construe the term “engaging” to mean locked together. The ’136 patent describes the structure corresponding to the function of releasable engagement, i.e., locking together of the chair to the base as being effected by the claw and the latch engaging the underside of the saddle: The claw 142 (illustrated in FIGS. 9, 10, 13 and 14) extends generally downward from the frame lower portion 106, near the second portion 124 of the frame lower portion 106, and is adapted for cooperating releasable engagement with the base 300. More specifically, and as will be discussed in greater detail in subsequent paragraphs herein, the claw 142 will function so as to releasably engage with a saddle 310 of the base 300. . . . More specifically, the clip clamp latch 160 extends generally downward from the frame lower portion 106, near its first portion 122, and is adapted for cooperating releasable engagement with the base 300 and more specifically with the saddle 310 of the base, discussed further below. Ex. 1001, 5:19‒26, 5:58‒62.” slip op. at 24
Patent outcomesUS 8,585,136 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,585,136 - J Squared, Inc. D/B/A University Loft Company v. Sauder Manufacturing CompanySome claims unpatentablePTAB · Jun 27, 2016 · IPR2015-00958 · APJ Linda E Horner · IPR · Final written decision
Claims 1, 2, 8, 9, and 11 are unpatentable as obvious over Yu and Clark; claims 4–7, 10, and 12–14 are not held unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownOther
“J Squared did not proffer a specific level of skill of one of ordinary skill in the art, and relied instead on the prior art to reflect an appropriate level of skill. Tr. 78:15‒20. We find no need for testimony as to the level of skill in the art, as it is demonstrated aptly by the prior art of record. For purpose of this Final Written Decision, we resort to the prior art of record to assess the level of skill of one of ordinary skill in the art. In particular, as discussed below, the prior art provides the suggestion itself for the modification of Yu’s deck chair with the rocker attachment of Clark.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“J Squared asserts that “[i]t would have been obvious to one having ordinary skill in the art at the time of the invention to modify Yu to have rockers as taught by Clark, because Yu discloses a folding chair and Clark discloses a clip-on rocker attachment that is designed specifically to attach to a folding chair.” Pet. 25. J Squared posits that “[a] skilled person would obviously size and position the front clips appropriately to fit onto Yu’s front legs when the rear clips are on Yu’s transverse rear bar,” and that “[w]ith Clark’s rockers attached, Yu’s chair would have base legs that naturally function as rockers when the chair is on the floor.” Id. at 26. J Squared further notes that “[t]he clip-on rocker attachment could be attached indefinitely, i.e., in both the first and second configurations and while changing from one to the other.” Id. J Squared also contends that “[t]he claimed invention is merely a combination of known prior art elements according to known methods to yield predictable results.” Id. We agree with J Squared that there is sufficient motivation found in the references themselves for the proposed combination of teachings from Yu and Clark. Both Yu and Clark are directed to folding deck chairs, and Clark demonstrates that it was desirable at the time of the invention to have a deck chair that is structured to function as a rocking chair. Further, we agree with J Squared that the clip-on rocker attachment of Clark could be attached indefinitely, i.e., in both the first and second configurations and while changing from the office chair configuration to the deck chair configuration. Sauder has not provided persuasive evidence to contradict this finding. We agree with J Squared’s reasoning that the modification of Yu with the rocker rails of Clark is merely a combination of known prior art elements according to known methods to yield predictable results.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“legs of Yu’s foldable deck chair after it has been detached from its pedestal base “would lock the legs in place and prohibit the folding character of Yu’s deck chair that [Yu] deems critical to its intended function.” PO Resp. 24 (citing Ex. 1002, Figs. 5, 6; Ex. 2039, 12:36‒37; Ex. 2072, 80). We disagree with Sauder’s reading of Yu. We find no asserted criticality to the folding aspect of Yu’s deck chair. Instead, we understand Yu to focus on the dual-purpose nature of the chair, serving as both an “office chair” and, when unfastened from the base, the seat structure 10 capable of use as a “deck chair.” Ex. 1002, 1:19‒27, 2:22‒31. Although Figure 6 of Yu depicts the seat structure 10 in a folded configuration, this is nowhere described in Yu as a critical feature of Yu’s chair. Even if the proposed modification were to render the seat structure 10 incapable of being folded, the proposed modification also improves Yu’s seat structure 10 by rendering it capable of being used as a rocker, an improvement that was, as evidenced by Clark, desirable in the art of lawn chairs. See In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016) (affirming a determination of obviousness based on motivation of one of ordinary skill to pursue the desirable properties taught by a secondary prior art reference, even at the expense of foregoing a benefit taught by a primary reference). We also disagree with Sauder’s contention that the proposed modification would render Yu’s chair unfit for its intended purpose. PO Resp. 24 (citing In re Gordon, 733 F.2d 900 (Fed. Cir. 1984)). In Gordon, the Board affirmed an examiner’s rejection of a claim directed to a blood filter with an inlet and outlet on the bottom over the prior art, French, which taught a gasoline filter with the inlet and outlet on the top. 733 F.2d at 901. The Board reasoned that “it would have been obvious to turn the French device upside down to have both the inlet and outlet at the bottom, rather than at the top.” Id. at 902. The Federal Circuit reversed, noting that “French teaches a liquid strainer which relies, at least in part, upon the assistance of gravity to separate undesired dirt and water from gasoline and other light oils.” Id. (explaining that “if the French apparatus were turned upside down, it would be rendered inoperable for its intended purpose”). Yu’s chair, as modified to include the rocker attachment of Clark, would still be capable of functioning as a dual purpose chair. Further, Clark provides the motivation to modify Yu’s chair and suggests the desirability of such a modification, and Sauder’s claims do not require the benefit (foldability) of Yu that is arguably lost by modification with the rocker attachment of Clark.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“Sauder asserts that the modification is based on impermissible hindsight “because neither Yu nor Clark teaches a non-folding chair or a top chair whose legs function as a rocker.” Id. at 24‒25. Sauder’s claims do not call for a non-folding chair, and Clark discloses the applicability of its rocker attachment to a folding chair, akin to the folding chair of Yu. This disclosure in Clark provides a suggestion in the prior art itself to apply the teachings of Clark to the chair of Yu. As such, impermissible hindsight is not being employed in the proposed combination.” slip op. at 22
Patent outcomesUS 8,585,136 mixed§ 103 obviousnesscites KSRPatents in suitUS 8,585,136
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.