- Frameless Hardware Company LLC v. C.R. Laurence Co., Inc.Some claims unpatentablePTAB · Jul 5, 2023 · IPR2022-00356 · APJ Frances L Ippolito · IPR · Final written decision
Claims 1, 5, and 7 are unpatentable as anticipated by Sprague ’905, claim 8 is unpatentable as obvious over Sprague ’905 and Trainor, and claim 4 was not shown unpatentable.
RulingsFinal written decision- BurdenDecided for petitioner
“We decline to dismiss or terminate this proceeding on this basis. Patent Owner has not provided us any controlling authority that prevents a petitioner from advancing one construction in the District Court Litigation as an infringement defendant and a different construction as a Petitioner before the Board. Further, we note that 37 C.F.R. § 42.100(b) provides that the Board shall use the same claim construction standard as the courts, not that the Board shall use the same construction. The Board does, however, “consider[]” prior claim constructions by a district court. See 37 C.F.R. § 42.100(b). In any event, the related District Court Litigation here has been stayed; there is no court construction before us, only the parties’ proposals. Sur-sur-sur-reply 5; see Tr. 67:22–68:4 (“JUDGE IPPOLITO: And the related district court proceeding, by my recollection, has been stayed without the claim construction hearing; is that correct? MR. FRANKLIN: That’s correct. It was stayed without a claim construction hearing, without a claim construction order, without a tentative claim construction order, and for that matter, without the briefing on claim construction having been completed.”). Thus, to the extent that Patent Owner contends there is danger of inconsistent results, that danger is mitigated by the stay.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in that art “would have had a bachelor’s degree in mechanical engineering or an equivalent field, plus at least two years of experience working in the field of mechanical design and product testing.” Pet. 7 (citing Ex. 1007 ¶¶ 34–36). Patent Owner does not dispute this level of skill. See generally PO Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“We begin with the claim language. Patent Owner’s proposed construction proffers language that is not expressly recited in the claim. In particular, claim 1 does not recite a “spring.” Ex. 1001, 10:34–56. Nor does a “spring” appear in the other limitations of any claims. Thus, the express claim language does not require more than spring action. Our reading of claim 1 is consistent with the ’413 patent’s Specification that describes the operation of a spring action force clamping member, but does not describe a clamping member with a spring that specifically provides the spring force. In other words, while we agree that the spring action clamping member is recited as providing “spring action,” we are, however, not persuaded that this limitation requires a “spring.” As noted in the Specification, Figures 2 and 3 of the ’413 patent teach that an outwardly directed spring force may be created by U-shaped sections 58 of the spring action clamping member. Ex. 1001, 5:44–47. The ’413 patent further discloses that “[t]he degree of outwardly directed spring force may be varied by varying the bend radius of the U-shaped sections 58.” Id. at 5:47–49. As such, the outwardly directed spring action force is disclosed in these sections as being generated by U-shaped sections of the spring action clamping member interconnecting with walls 60 shown in Figure 2. Id. at 5:44–47. The Specification does not disclose a specific type of spring structure, nor does it define the U-shaped sections of the spring action clamping member interconnecting with walls 60 as a “spring.”” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“(3) Discussion Based on the complete record, we are persuaded by Petitioner that Sprague ’905 teaches these limitations. To start, as discussed in our claim construction above, we have not adopted Patent Owner’s proposed construction that requires a “spring action clamping member” to include a “spring.” See supra Sect. II.E. Rather, we have construed the plain and ordinary meaning of “spring action clamping member” to be that the “spring action clamping member provides a spring action force.” In this way, we are not persuaded that claim 1 requires a “spring” that requires material and physical dimensions according to Patent Owner’s proposed definition. See Ex. 2022 ¶ 27. This is particularly so when the express claim term is broader, requiring only a spring action force, and the Specification of the ’413 patent does not support Patent Owner’s narrower construction. With this construction in mind, we find Sprague ’905 teaches these contested limitations. In particular, Sprague ’905 discloses that the tightening of screw 206 forces clamp member 204 to move in the driven direction of arrow A shown in Figure 12. Ex. 1003, 6:50–51. Sprague ’905 teaches this forced movement brings clamp member 204 into contact with housing 202 at inclined surfaces that cause arms 208, 210 to move toward each other and “provide clamping force.” Id. at 6:51–57. Moreover, Sprague ’905 further discloses that the rail system is “easier to assemble and disassemble” and “facilitates easy field maintenance and replacement.” Id. at 2:39–42, 2:45–46. We find that this disclosure is consistent with the notion that screw 206 can be untightened to release clamp member 204 and move arms 208, 210 away from each other.” slip op. at 39
Patent outcomesUS 9,074,413 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,074,413 - Nespresso USA, Inc. v. K-Fee System GMHBInstitutedPTAB · Apr 14, 2023 · IPR2022-01574 · APJ James J Mayberry · IPR · Institution
The Board instituted IPR of claims 1–13, finding a reasonable likelihood that claim 1 is obvious over Yoakim, Jarisch ’929, and Rossi.
RulingsInstitution decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“earlier filed application only if the disclosure of the earlier application provides [written description] support for the claims of the later application, as required by 35 U.S.C. § 112.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008); see also In re NTP, Inc., 654 F.3d 1268, 1276 (Fed. Cir. 2011) (“[A] patent’s claims are not entitled to an earlier priority date merely because the patentee claims priority. Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120.” (citations omitted)). The written-description inquiry is a question of fact, is context-specific, and must be determined on a case-by-case basis. Ariad banc). The test for sufficiency of support is whether the disclosure of the application relied upon “reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). “One shows that one is ‘in possession’ of the invention by describing the invention, with all its claimed limitations . . . .” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). We determine that Patent Owner has not demonstrated, at this stage of the proceeding, that the Challenged Claims are entitled to claim priority to the second German application, and, as such, Jarisch ’929 is prior art on the current record. We determine that Patent Owner has not sufficiently demonstrated that the second German application provides written description support for at least the identifier as recited in independent claims 1, 7, and 10. We determine, at this stage of the proceeding and on the current record, that the embodiment of Figures 16, 17, and 18 does not show an identifier with a repeat pattern on the bottom side of the flange as required by the claims. The disclosure of the second German application explains that the means 2.4.2 is a toothed ring, with the teeth formed in the outer circumference of the flange, not on the bottom of the flange. See, e.g., Ex. 1047, 41:17–27 (explaining that the annular peripheral region 2.4 has “in its outer region” means 2.4.2 (emphasis added)); id., Fig. 18 (showing that the outer edge of the flange interacts with pinion 24).” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art The level of skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). “This reference point prevents . . . factfinders from using their own insight or, worse yet, hindsight, to gauge obviousness.” Id. Factors pertinent to a determination of the level of ordinary skill in the art include: (1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field. Env’t Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id. Moreover, these factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). In determining a level of ordinary skill, we also may look to the prior art, which may reflect an appropriate skill level. Okajima, 261 F.3d at 1355.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We construe each claim “using the same claim construction standard that 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). Under this standard, claim terms are generally given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc) (“We have frequently stated that the words of a claim ‘are generally given their ordinary and customary meaning.’” (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996)).” slip op. at 16
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Yoakim, Jarisch ’929, and Rossi to arrive at the subject matter of the claims challenged in Ground 1. As an initial matter, Petitioner contends that Yoakim, Jarisch ’929, and Rossi are “analogous art in the field of portion 10 The U.S. patent statute precludes the type of multiple dependent claims appearing in the second German application. See 35 U.S.C. § 112(e) (2011) (“A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim.”). applied in automatic coffee/expresso machines.” Pet. 44 (referencing Ex. 1004 ¶¶ 2–3; Ex. 1006 ¶¶ 1–2; Ex. 1041, 1; Ex. 1003 ¶ 188); cf. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“References within the statutory terms of 35 U.S.C. § 102 qualify as prior art for an obviousness determination only when analogous to the claimed invention.”). Patent Owner does not dispute this contention.” slip op. at 27
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,254,491 - PTAB · Mar 23, 2023 · IPR2022-01402 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR on claims 1, 3, 4, 14, and 16–20, finding a reasonable likelihood of prevailing on obviousness over Geiwitz and, for claims 19–20, Geiwitz and Cardio Manual.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“which Patent Owner asserts the ’318 patent, but that litigation does not involve Petitioner. Ex. 2002 (infringement contentions from Rosen Technologies LLC v. Lennox International Inc., Case No. 3:22-cv-00732 (N.D. Tex.)). As Fintiv notes, the Board generally disfavors discretionary denial when litigation did not involve the petitioner, unless “the issues are the same as, or substantially similar to those already or about to be litigated, or other circumstances weigh against redoing the work of another tribunal.” Fintiv, IPR2020-00019, Paper 11, 13–14. We consider the Fintiv factors. Id. at 6.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityNot reached
“B. REAL PARTY IN INTEREST Patent Owner asserts that Petitioner fails to name Lennox and Ecobee, the litigation parties, as real parties in interest. Prelim. Resp. 26–27. Because no time bar would apply to either allegedly unnamed real party in interest (see Prelim. Reply 1), we decline to address Patent Owner’s assertions at this stage. See SharkNinja Operating, LLC v. iRobot Corp., IPR2020-00734, Paper 11, 18 (Oct. 6, 2020) (precedential).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. LEVEL OF SKILL IN THE ART Petitioner asserts skilled artisans “would have had at least a Bachelor’s degree in Electrical Engineering or a similar degree and at least two years of professional experience,” and would have been “familiar with the circuitry and operation of programmable, touchscreen thermostats having liquid crystal displays.” Pet. 7 (citing Ex. 1003 ¶ 48). Patent Owner does not dispute that definition, and offers that skilled artisans “would have had a bachelor’s degree in electrical engineering or a related field, and at least two years of experience in working with HVAC systems or thermostat systems.” Prelim. Resp. 5. We perceive no distinction between how the two definitions might affect our analysis. We adopt Petitioner’s definition, as it is supported by expert testimony.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“First, the claim language requires that the control program establish on the liquid crystal display both “a representation of a first virtual button” and “a first legend indicative of a first control function of said thermostat.” Ex. 1001, 13:28–39 (claim 1), 15:1–9 (claim 16), 16:18–26 (claim 19). The claims do not require that the legend is part of the button, or any other specific relationship between the legend and button. Thus, the claim language does not support the construction Patent Owner seeks. Second, the Summary of the Invention states that “an image representative of a first virtual button may be shown on the touch screen display with graphics (alphanumeric characters and/or icons) on or closely associated with the first virtual button.” Id. at 3:53–56. By using a disjunctive, “or,” the Specification establishes that the legend (e.g., 4 Although Patent Owner seeks construction of “a first legend indicative of a first control function,” its proposed construction only addresses “legend,” while maintaining the other claim language. Prelim. Resp. 5–9. We address “legend” in the context of the other claim language and therefore need not address the full phrase. alphanumeric characters) need not be located on the button to which it corresponds. Accordingly, we decline to adopt Patent Owner’s asserted construction at this stage. No other aspect of the challenged claims requires construction for purposes of institution. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 7,156,318 - Logan Outdoor Products, LLC, D/B/A Camp Chef v. Lifetime Products, Inc.Institution deniedPTAB · Mar 22, 2023 · IPR2022-01467 · APJ Robert L Kinder · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim unpatentable under the asserted anticipation and obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“Based on the record before us, Petitioner has not shown sufficiently how Dahle’s distinct embodiments would have been combined to teach each limitation of claims 1, 10, and 15. First, Petitioner has not established sufficiently that insert 26, which is capable of burning charcoal or other burnable elements, discloses the claimed “wood pellet heat source.” Ex. 1004 ¶¶ 34, 42. Dahle’s insert 26 is designed to hold charcoal or similar burnable elements, and Petitioner does not explain how the insert discloses a wood pellet heat source. Dr. Stevick testifies that “[p]ellet grills are the types of grill that integrate the use of wood smoking in place of gas burners or charcoal to cook food.” Ex. 1003 ¶ 58 (emphasis added). Dr. Stevick explains that pellet grills may utilize a pellet reservoir that feeds pellets to an auger, which then transports them to a pellet burner, also referred to as a fire pot. Id. ¶ 62; see also Ex. 1001, 2:51–53 (“The wood pellet burner may include a cylindrical structure configured to receive wood pellets from the wood pellet reservoir via an auger.”). But none of this explains why Petitioner believes that Dahle’s insert 26 (depicted below in Figure 3) is a wood pellet burner.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner disagrees with the Petitioner’s statements regarding a person of ordinary skill in the art, but does not provide a proposed alternative. See Prelim. Resp. 14. Patent Owner further notes that the disagreement does not have any bearing on its contentions. Id. The level of ordinary skill in the art can be evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The level of ordinary skill proposed by Petitioner appears to be consistent with that of the references, and we apply Petitioner’s proposed level of ordinary skill for purposes of this Decision.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“First, Petitioner has not established sufficiently that insert 26, which is capable of burning charcoal or other burnable elements, discloses the claimed “wood pellet heat source.” Ex. 1004 ¶¶ 34, 42. Dahle’s insert 26 is designed to hold charcoal or similar burnable elements, and Petitioner does not explain how the insert discloses a wood pellet heat source. Dr. Stevick testifies that “[p]ellet grills are the types of grill that integrate the use of wood smoking in place of gas burners or charcoal to cook food.” Ex. 1003 ¶ 58 (emphasis added). Dr. Stevick explains that pellet grills may utilize a pellet reservoir that feeds pellets to an auger, which then transports them to a pellet burner, also referred to as a fire pot. Id. ¶ 62; see also Ex. 1001, 2:51–53 (“The wood pellet burner may include a cylindrical structure configured to receive wood pellets from the wood pellet reservoir via an auger.”). But none of this explains why Petitioner believes that Dahle’s insert 26 (depicted below in Figure 3) is a wood pellet burner.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“Petitioner first observes that both references are directed to dual-fuel grilling systems that utilize both gas burners and wood pellet burners. Pet. 93. Even presuming this to be true, it does not provide a rational basis for modifying Sauerwein as proposed on its own; it is merely an observation that the references are analogous art. The mere fact that two references may be analogous art, however, is not adequate to demonstrate motivation to combine, even at this stage of the proceeding. See Johns Manville Corp. v. Knauf Insulation, Inc., IPR2018-00827, Paper 9 at 10–11 (PTAB Oct. 16, 2018) (Decision Denying Institution) (informative) (“Demonstrating that a reference is analogous art or relevant to the field of endeavor of the challenged patent is not sufficient to establish that one of ordinary skill would have had reason to combine its teachings with other prior art in the manner set forth in the claim.”). Petitioner next states that Dahle teaches that dual-fuel source grills can be configured for different purposes. Pet. 93–94. Although we generally agree with this statement, it does not explain why a person of ordinary skill in the art would have considered it obvious to add a burner or shorten Sauerwein’s cooking surface and also move its wood pellet heat source directly below the gas heat source.” slip op. at 30
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,292,531 - PTAB · Jan 9, 2023 · IPR2022-01142 · APJ Ryan H Flax · IPR · Institution
Instituted IPR of claims 1–14 on all asserted grounds: anticipation by or obviousness over Roy or Chang, and obviousness over Simonoff and Naef.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute trial in an inter partes review. We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314. After reviewing the parties’ submissions, we conclude Petitioner demonstrates a reasonable likelihood it would prevail in showing that claims of the ’124 patent are unpatentable under the presented grounds. Therefore, we institute inter partes review of all challenged claims (1–14) under the grounds raised in the Petition, pursuant to 35 U.S.C. § 314. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 7 (citing Ex. 1003 ¶¶ 28–30).9 Patent Owner states that it “adopt[s] Petitioner’s proposed level of ordinary skill in the art because it comports with the technology and claims of the ’124 Patent as well as the asserted prior art.” Prelim. Resp. 5. Patent Owner adds that “[t]he expert witnesses of the parties are persons of (at least) ordinary skill in the art of the ’124 Patent and its claims.” Id. We accept Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’124 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[]” evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). B.” slip op. at 17
- Expert testimonyPetitioner expert creditedOther
“In re Merck for this point). And, further, when considering obviousness, the prior art must be considered for all of its teachings, including unpreferred embodiments. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). With this precedent in mind, we restate that Simonoff’s disclosure appears to fully include Naef’s disclosure. Ex. 1006, 3:24–29. Further, both references apparently identify the existence and general functionality of central-server systems for remote computer collaboration where the server is in charge of updating all networked computers’ displays, even if Naef’s disclosed invention is not such a system, but instead puts a client computer in control. See generally Ex. 1006; Ex. 1007. Finally, Petitioner’s witness, Dr. Terveen, testifies that the person of ordinary skill in the art would have had good reason to “improve Simonoff’s similar collaboration system” by having its server return update/annotation messages back to the source client along with the other clients during its “multi-casting,” as suggested by Naef, because this would “avoid[] conflicts between user inputs and [would] allow[] the source client to see the edits as the other clients would see them. Ex. 1003 ¶73 (citing Ex. 1015, 12:56–67; Ex. 1008, 45; Ex. 1006, 24:22–27). At this stage of the proceedings, we credit Dr. Terveen’s testimony and find Petitioner’s position reasonable. We are not persuaded by Patent Owner’s arguments or evidence at this stage (we are not entirely sure what qualifies Mr. Sunatori’s as a reliable witness at this point) so as to dissuade us from instituting trial on this ground.” slip op. at 52
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Owner’s positions on claim construction, both identifying that claim construction is unnecessary and then proposing the above-indicated claim construction. Prelim. Reply 1. Petitioner argues that neither the disputed claim language itself nor the Specification supports Patent Owner’s proposed claim construction because the claims simply state “that the output message includes information defining the content to be shared, not the input message itself or a copy of it.” Id. Petitioner cites two portions of the ’124 patent’s written description that contradict Patent Owner’s narrow definition of the claim language––the first indicating that input messages and output messages may be in different formats and have different data and that the output messages can be generated once the input messages are read (Ex. 1001, 14:27–33), and the second indicating that the output messages could combine multiple input messages, and that output messages represent input messages that themselves represent computer input such as a mouse drag (id.at 33:1–9). We agree with Petitioner that the record does not support narrowing the meaning of the disputed claim language as argued by Patent Owner and, based on the present record, we do not expressly construe this claim language.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,963,124 - Flowco Production Solutions LLC v. Well Master CorporationInstitution deniedPTAB · Jan 6, 2023 · IPR2022-01386 · APJ James P Calve · IPR · Institution
Institution was denied because the petition did not show a reasonable likelihood of proving claims 1–11, 13, 15, 16, 18–21, 23, and 24 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore deny institution of inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. DISCUSSION A. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have at least a bachelor’s degree in physics or an appropriate engineering discipline, as well as at least three years of experience in designing well plungers.” Pet. 5–6. Patent Owner does not dispute Petitioner’s contention. Prelim. Resp. 2; Ex. 2001 ¶ 38. We adopt Petitioner’s proposed level of skill in the art for purposes of this Decision.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“The ’892 patent prosecution history evidences that an unimpeded fluid path does not include valves. During prosecution, Patent Owner amended the independent claims to claim “an unimpeded fluid path” in claims 1 and 23 and “an unimpeded narrow passageway within the fluid path” in claim 18. Ex. 1002, 61–64 (emphasis in original). Patent Owner argued that, The Applicant has amended independent claims 1, 18, and 23 to clarify that the fluid path is unimpeded. The alleged fluid path through the body of the plunger disclosed by Brown identified at page 4 of the Office Action is not unimpeded due to the presence of valves 76 and 102/104. Thus, Brown cannot anticipate claims 1, 2, 4–8, 12, 18, 19 or 23 of the present application. Id. at 66. In response, the Examiner issued a Notice of Allowability but did not provide a Statement of Reasons for Allowance. Id. at 43. “Prosecution disclaimer can arise from both claim amendments and arguments.” Tech. Props. Ltd. v. Huawei Techs. Co., 849 F.3d 1349, 1357 (Fed. Cir. 2017). Here, Patent Owner’s amendments to claim an unimpeded fluid path/passageway and arguments distinguishing Brown’s fluid path as being impeded by valves 76, 102/104 (versus unimpeded as claimed) clearly and unmistakably disclaimed coverage of plungers having bypass valves in the fluid path and narrow passageway through the plunger body.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“b. Motivation to Combine Further, we are persuaded by Patent Owner’s argument that a skilled artisan would not have modified Gray’s bypass valve with Victor’s stopper because their different principles of operation would render Gray’s plunger unsuitable for its intended purpose of providing lift in early stage wells. See Prelim Resp. 35–38 (citing Ex. 2001 ¶¶ 66–75, 103–107, 111). Mr. Cosby testifies that Gray and Victor operate differently so adding a narrow passage of Victor to Gray’s plunger would reduce the ability of Gray’s plunger to work in high pressure wells. Ex. 2001 ¶¶ 103–07; see Ex. 1005 ¶¶ 57, 91, 98, 111–12. The record supports Mr. Cosby’s testimony, and Petitioner’s attorney arguments do not address the arguments and evidence. Pet. 14–15. For this additional reason, Petitioner has failed to show a reasonable likelihood of demonstrating the unpatentability of any of claims 1–11, 13, 15, 16, 18–21, 23, and 24 under Ground 1.” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,627,892 - PTAB · Nov 29, 2022 · IPR2022-00864 · APJ Eric C Jeschke · IPR · Institution
The Board instituted IPR on claims 1–5, 7–36, 40, and 41 on all asserted §103 grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“1. whether the same petitioner previously filed a petition directed to the same claims of the same patent; 2. whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it; 3. whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition; 4. the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; 5. whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent; 6. the finite resources of the Board; and 7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review. Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 15–16 (PTAB Sept. 6, 2017) (precedential). The General Plastic factors are not dispositive, but part of a balanced assessment of the relevant circumstances in a proceeding, including the merits. Consolidated Trial Practice Guide 58 (Nov. 2019), https://www.uspto.gov/TrialPracticeGuide Consolidated (“TPG”).” slip op. at 10
- Strike new argumentNew argument consideredOther
“Arguments and information that are not presented and developed in the Petition, but instead are incorporated by reference, are not entitled to consideration, as it is improper to incorporate by reference arguments from one document into another document. See 37 C.F.R. § 42.6(a)(3); Cisco Sys., Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 7–10 (PTAB August 29, 2014) (informative) (discussing incorporation by reference). We note that Patent Owner does not argue that Petitioner has failed to adequately present a reason to combine Zupancich and Bosher in that asserted ground absent the allegedly improperly incorporated discussions in paragraph 413 of the Jobin Declaration. At this stage of the proceeding, we do not view as improper Petitioner’s reliance on that paragraph of the Jobin Declaration as part of its reason to combine analysis. 4. Conclusion For these reasons, these arguments by Patent Owner do not present any bases to deny the Petition in this proceeding.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art would have “had at least a Bachelor’s degree in mechanical or structural engineering, or related fields, and two years’ experience designing structures with comparable mechanical and/or structural elements to the ’855 Patent’s subject matter.” Pet. 10 (citing Jobin Decl. ¶¶ 23–26). Petitioner also states that “[a]dditional experience may compensate for less education.” Id. (citing Jobin Decl. ¶¶ 23–26). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 26
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage of the proceeding and based on the current record, we need not construe explicitly any of the claim language discussed in this section or any other claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent 15 “VIPs” refers to vacuum insulated panels. necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).16” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,263,855 - PTAB · Oct 18, 2022 · IPR2022-00878 · APJ Lynne H Browne · IPR · Institution
The Board instituted IPR on claims 55–72, 78–80, and 83–85 on all eight asserted grounds after finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art would have been a mechanical engineer, medical device engineer, or an interventional cardiologist with a working knowledge of stent-based prostheses for use in a patient’s heart or vasculature to replace and/or repair a diseased valve, intravascular delivery systems for the delivery of such prostheses, and methods associated with the delivery and implantation of such prostheses in a patient. Pet. 31 (citing Ex. 1026 ¶ 27). Patent Owner “does not dispute Petitioners’ definition of a person of ordinary skill in the art.” Prelim. Resp. 3 (citing Pet. 31). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“On the record before us, we agree with Patent Owner that the term “folds” need not be construed at this time. We further agree with both parties that many claim terms are defined by the ’400 patent and these definitions control. Pet. 26; Prelim. Resp. 16. The meaning of the claim term “substantially conical” is central to our analysis of Grounds 5–8. Accordingly, we reproduce the definition of this term from the Specification of the ’400 patent below:” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“folds” need not be construed at this time. We further agree with both parties that many claim terms are defined by the ’400 patent and these definitions control. Pet. 26; Prelim. Resp. 16. The meaning of the claim term “substantially conical” is central to our analysis of Grounds 5–8. Accordingly, we reproduce the definition of this term from the Specification of the ’400 patent below: resembling a cone or a portion thereof at some point in the practical use of the structure with the specific property that the transverse (that is, on a plane of section generally perpendicular to the axis of flow of the valve) cross-sectional perimeter or area of said structure in the operationally closed position decreases monotonically moving from the level of the leaflet apposition to the proximal end of the valve. Ex. 1001, 12:47–54. We agree with Patent Owner and Petitioner that this definition of “substantially conical” applies to the claims at issue in this proceeding. issue in this proceeding for at least some of the challenges presented by Petitioner as will be discussed in Sections II.D–II.H below. As, however, construction of this claim term is not required for our institution decision, we invite the parties to brief this issue in their respective responses to this decision. slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“however, the references relied are the same or substantially the same as art presented to the Office. Prelim. Resp. 75.8 We thus determine under the first part of the Advanced Bionics framework that these references were previously presented to the Office. Accordingly, we proceed to the second part of the Advanced Bionics framework and consider whether Petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. See Advanced Bionics, Paper 6 at 10 (“[I]f the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something”). In Grounds 1–4, Petitioner explains how references meet the limitations of the claims at issue. Pet. 31–75. For the reasons discussed in Section II.D–II.G below, we find that Petitioner demonstrates that the Examiner erred by overlooking the specific teachings in the relevant prior art such that the error by the Office was material to the patentability of the challenged claims. See Advanced Bionics, Paper 6 at 21. Thus, with respect to Grounds 1–4, on this record, we determine that the totality of the evidence favors declining to exercise our discretion under § 325(d) to deny institution.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,737,400 - PTAB · Oct 4, 2022 · IPR2022-00851 · APJ Eric C Jeschke · IPR · Institution
The Board instituted IPR on claims 1–19, 39, and 40 on all asserted § 103 grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“the claims challenged in this proceeding and in the ’293 IPR. Of the nine claims challenged in the ’293 IPR, seven are also challenged in this proceeding. Based on the overlap in the claims challenged in the ’293 IPR and this proceeding, the first factor weighs in favor of exercising our discretion to deny institution.” slip op. at 13
- BurdenInstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art “would have at least a Bachelor’s degree in mechanical or structural engineering, or related fields, and two years’ experience designing structures with comparable mechanical and/or structural elements to the ’511 Patent’s subject matter.” Pet. 10 (citing Jobin Decl. ¶¶ 23–26). Petitioner also states that “[a]dditional experience may compensate for less education.” Id. (citing Jobin Decl. ¶¶ 23–26). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 25
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“At this stage of the proceeding and based on the current record, we need not construe explicitly any of the claim language discussed in this section or any other claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we 14 “VIPs” refers to vacuum insulated panels. 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))).15” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,913,511 - Ironridge, Inc. v. Pegasus Solar, Inc.Institution deniedPTAB · Aug 10, 2022 · PGR2022-00024 · APJ Eric C Jeschke · PGR · Institution
The Board denied institution because the Petition did not show that any challenged claim 1–12 was more likely than not unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324. Upon consideration of the evidence and arguments in the record, for the reasons below we determine that the information presented does not show that it is more likely than not that Petitioner would prevail with respect to at least one of the challenged claims. We thus deny institution of post-grant review. See 37 C.F.R. § 42.208(b) (“At any time prior to institution of post-grant review, the Board may deny all grounds for unpatentability for all of the challenged claims. Denial of all grounds is a Board decision not to institute post-grant review.”).” slip op. at 2
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Patent Owner’s counsel was sufficient to meet the service requirements of 37 C.F.R. § 42.205. Section (a) of that regulatory provision states that “[t]he petition and supporting evidence must be served on the patent owner at the correspondence address of record for the subject patent. The petitioner may additionally serve the petition and supporting evidence on the patent owner at any other address known to the petitioner as likely to effect service.” Section (b) adds that, “[u]pon agreement of the parties, service may be made electronically.” 37 C.F.R. § 42.205(b) (emphasis added). Although Petitioner does appear to have emailed the Petition to persons satisfying the requirements in § 42.205(a), there is nothing in the record indicating an agreement between the parties that service may be made electronically, as required by § 42.205(b). See, e.g., Ex. 1020 at 1 (showing an attorney for Petitioner in this proceeding asking Mr. Holm if Patent Owner would “agree to electronic service” without any showing of a subsequent agreement). Without an agreement between the parties as to sufficiency of electronic service, we find Petitioner’s emailing of the Petition to Mr. Holm and Mr. Fisher insufficient to effect service.” slip op. at 12
- PTAB / AIA Trials › Discretionary denialNot reached
“B. Discretion Under 35 U.S.C. § 324(a) and § 325(d) Patent Owner argues that we should exercise our discretion under § 324(a) and under § 325(d) to deny institution. See Prelim. Resp. 50–51 (discussing § 324(a)), 11–21 (discussing § 325(d)). Because we deny the Petition after considering the merits of each ground, we need not and do not reach Patent Owner’s arguments based on discretion.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art at the time of the alleged invention “would have had at least a bachelor’s degree in mechanical engineering, structural engineering, or similar technical field, with at least three years of relevant (metal fabrication, aluminum extrusion, architectural glass structural) product design experience.” Pet. 36 (citing Cinnamon Decl. ¶ 51). Petitioner adds that “[a]n increase in experience could compensate for less education.” Id. (citing Cinnamon Decl. ¶ 51). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,998,847
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.