• Sharkninja Operating LLC / Sharkninja Management LLC et al. v. Bissell Inc.All claims unpatentable
  PTAB · Jan 11, 2024 · IPR2022-01177 · APJ Carl M Defranco · IPR · Final written decision

  Claims 1–20 are unpatentable as anticipated by Beskow; the Board did not reach the additional obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “SharkNinja submits that one skilled in the art would have had “a Bachelor’s degree in Mechanical Engineering (or an equivalent discipline) or equivalent work experience, and at least one year’s worth of experience in research, design and/or development related to vacuum cleaners (or other comparable industrial design).” Pet. 14. Bissell does not dispute SharkNinja’s proposed definition of the level of skill in the art, and we see no reason to question it. See PO Resp. 1–9. Accordingly, we adopt the level of skill in the art as defined by SharkNinja.” slip op. at 4

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

    “Despite that exchange, Bissell still presents no evidence as to the meaning of “selectively provided,” aside from asserting the term is “ambiguous” while at the same time arguing that the term requires more than simply showing that Beskow’s agitator “can” or “cannot” be mounted on the base. Notably, however, Bissell never elaborates on why Beskow must disclose “when” the agitator can be removed, as opposed to simply disclosing it can be removed. In contrast, SharkNinja presents Beskow’s Figures 1A and 7A to show that agitator 110 is removable. Thus, without more from Bissell, we fail to see why we should construe “selectively provided” any more narrowly than simply requiring that the agitator “can” or “cannot” be mounted on the base, as SharkNinja proposes. To that end, we find that Beskow’s agitator, as depicted in Figures 1A and 7A, clearly falls within the meaning of “selectively provided on the base,” as properly construed.” slip op. at 9

  • Strike new argumentNew argument consideredDecided for petitioner

    “We disagree that SharkNinja’s proposed construction of “selectively” in its reply is untimely or not supported by the evidence. At the outset, we note that Bissell did not provide any meaningful construction of the term in the Patent Owner Response. See PO Resp. 2–5. By opening the door in its Response to the meaning of “selectively” and by disputing that Beskow teaches this limitation, Bissell cannot reasonably fault SharkNinja for proposing its own construction of the term in its Reply. This is especially true given Bissell’s refusal to construe the term itself, despite recognizing some ambiguity in the claim’s use of that term. See Hrg. Tr. 46 (Bissell’s counsel explaining that “the word selectively is ambiguous” and that “[i]n the Patent Owner’s response we pointed out the ambiguities.”); see also id. at 49 (“[PTAB JUDGE]: Okay. So it’s your position that it’s an ambiguous term then? [BISSELL’S COUNSEL]: Yes, Your Honor.”). Thus, in the absence of any construction of “selectively” from Bissell in contending that Beskow lacks this claim limitation, SharkNinja was fully within its right to propose its own construction in its Reply to support of its assertion that Beskow teaches this limitation. As such, we reject the notion that SharkNinja’s proposed construction was untimely or otherwise not properly within the scope of its Reply.” slip op. at 6

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

  Patent outcomesUS 11,096,542 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 11,096,542
• Sharkninja Operating LLC / Sharkninja Management LLC et al. v. Bissell Inc.All claims unpatentable
  PTAB · Jan 11, 2024 · IPR2022-01176 · APJ Carl M Defranco · IPR · Final written decision

  Claims 1–20 are unpatentable as anticipated by Beskow; the Board did not reach the additional obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “SharkNinja submits that one skilled in the art would have had “a Bachelor’s degree in Mechanical Engineering (or an equivalent discipline) or equivalent work experience, and at least one year’s worth of experience in research, design and/or development related to vacuum cleaners (or other comparable industrial design).” Pet. 14. Bissell does not dispute SharkNinja’s proposed definition of the level of skill in the art, and we see no reason to question it. Accordingly, we adopt the level of skill in the art as defined by SharkNinja. B. Claim Construction” slip op. at 6

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

    “We disagree with Bissell that, as claimed, the suction nozzle assembly must be a separate and distinct component from the base. Although we agree that “provided on the base” may be construed to mean that the suction nozzle assembly is a separate and distinct component positioned on, or attached to, the base, we also conclude that “provided on the base” may be construed more broadly to mean that the suction nozzle assembly is part of the base or included in the base. That broader meaning comports with the specification of the ’541 patent and the plain and ordinary meaning of the term “provided on.”” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We find unpersuasive Bissell’s assertion that Beskow’s suction nozzle assembly is not “provided on the base,” as claimed. See PO Resp. 7–10, 17– 21. That is because Bissell’s assertion that the suction nozzle assembly, as claimed, must be a physically separate component from the base relies on an improper claim construction. As discussed above, we construe “a suction nozzle assembly provided on the base” to encompass not only a suction nozzle assembly that is “positioned on” the base, as Bissell asserts, but also one that it is “part of” the base or “included in” the base.” To that end, Beskow discloses that “debris and fluid inlets 724, 726 may be formed entirely or partially as a removable inlet tray 730” and “may be separately removable from the cleaning head 102, integral to or not removable from the cleaning head 102.” Ex. 1004, 20:6–7, 29–32. That the debris and fluid inlet portions of Beskow’s suction nozzle assembly are removably attached to Beskow’s cleaning head 102 (i.e., the claimed “base”) necessarily means they are “positioned on” and “included in” the base under the proper construction of “provided on the base.” Indeed, Beskow’s disclosure is no different than the preferred embodiment of the ’541 patent, where suction nozzle assembly 580 “is configured to be received in the upper cover 542,” which indisputably is part of “base 14.” Ex. 1001, 10:52–54, Fig. 8 (emphasis added); see also id. at 8:12–13 (“Upper cover 542 can be configured to releasably receive the suction nozzle assembly 580.”). Thus, we find that Beskow satisfies the claim limitation of “a suction nozzle assembly provided on the base.”” slip op. at 14

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

    “SharkNinja also challenges claims 1–20 as being rendered obvious by either Beskow alone or the combined teachings of Beskow and Li. See Pet. 25–26. Bissell responds that SharkNinja’s showing for these challenges fails “for the same reasons discussed with respect to Ground 1.” PO Resp. 33. Because we determine that claims 1–20 are unpatentable as anticipated by Beskow, we need not address whether those same claims are unpatentable under SharkNinja’s additional grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018) (holding that petitioner “is entitled to a final written decision addressing all of the claims it has challenged”); Boston Scientific Scimed, Inc. v. Cook Grp. Inc., 809 F. Appx 984, 990 (Fed. Cir. 2020) (nonprecedential) (recognizing that the “Board need not address issues that are not necessary to the resolution of the proceeding” and, thus, has “discretion to decline to decide additional instituted grounds once the petitioner has prevailed on all its challenged claims”).” slip op. at 23

  Patent outcomesUS 11,096,541 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 11,096,541
• 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
• Innovative Growers Equipment, Inc. v. Pipp Mobile Storage Systems, Inc.All claims unpatentable
  PTAB · Oct 27, 2023 · IPR2022-00893 · APJ Barry L Grossman · IPR · Final written decision

  Claims 25–27, 45, 50, 58, and 59 are unpatentable as obvious over Ellestad and Hutto; the Board did not reach the other grounds.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “B. Real Parties in Interest Petitioner identifies Innovative Growers Equipment Inc. as the real party-in-interest. See 2nd Corr. Pet. 1. Patent Owner identifies Pipp Mobile Storage Systems, Inc. as the real- party-in-interest. Paper 6, 2 (Mandatory Notices). partes review should not be instituted because Petitioner “appears to have failed to accurately identify all real parties in-interest.” Prelim. Resp. 21 (sub-heading “D”). We addressed this issue in our Decision to Institute. Dec. Inst. 9–13. Patent Owner did not raise this issue or argument in its PO Response. Thus, we consider this issue waived. See Dec. Inst. 39 (“Patent Owner is reminded that arguments from a Preliminary Response not made in a Response may be deemed waived.”; Paper 11 (Scheduling Order), 9 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”).” slip op. at 3

  • Skill levelSkill level board ownOther

    “With regard to the level of ordinary skill in the art, Petitioner asserts a person of ordinary skill in the art at the time of the ’099 patent would have been a person having at least an undergraduate Bachelor’s degree in mechanical engineering, a Bachelor of Science in engineering from an Accreditation Board for Engineering and Technology (ABET) - accredited institution of higher learning in the United States, or equivalent. 2nd Corr. Pet. 6. Petitioner also argues that a person of ordinary skill would have at least four years of experience in “the design of air flow distribution systems.” Id. In its Preliminary Response, Patent Owner argued that Petitioner failed to provide a correct definition of a person of ordinary skill. See Prelim. Resp. 22–23. Patent Owner did not provide its own proposed level of skill. In its PO Response, Patent Owner failed to present any argument concerning this issue. Accordingly. we consider this issue waived by Patent Owner. See Dec. Inst. 39 (“Patent Owner is reminded that arguments from a Preliminary Response not made in a Response may be deemed waived.”); Paper 11 (Scheduling Order), 9 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”). At the hearing, in response to a question from the Board about the” slip op. at 19

  • Prior constructionPrior construction not adoptedDecided for patent owner

    “that the term “rack” should be construed as “a stand with upright supports and two or more vertically stacked growing regions.” Ex. 2027, 19. The District Court stated that “Pipp’s [Patent Owner’s] proposed terminology of ‘two or more vertically stacked growing regions’ is confusing and does not accurately reflect the invention.” Id., 20. As further stated by the District Court, based on “Innovative’s” [Petitioner in the proceeding before us] argument, the specification discusses racks having shelves, not “vertically stacked growing regions,” and so the Court finds it appropriate to construe the term in reference to such shelves. Further, the specification and embodiments indicate that a rack may have a varying number of shelves, but must always include at least one shelf. Id. Accordingly, the Court construed “rack” to mean “a stand with upright supports and at least one shelf.” Id. As required by our rules (37 C.F.R. § 42.100(b)), any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the inter partes review proceeding will be considered. We have fully considered the District Court’s claim construction in Exhibit 2027 and give it substantial probative weight. We are not, however, bound by a previous district court interpretation of a disputed claim term. Knowles Elecs. LLC v. Iancu, 886 F.3d 1369, 1376 (Fed. Cir. 2018). We consider claim construction based on the arguments of the parties in this IPR proceeding, which are different than the arguments in the District Court, the evidence before us, and our own analysis of the record in this proceeding.” slip op. at 23

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

    “In the Detailed Description, the Specification states “[t]he air can enter the filter housing 101 and flow through one or more filters 111. The filtered air can then flow into a plenum. A carbon dioxide gas inlet 113 can be coupled to the plenum and the carbon dioxide can be mixed with the filtered air.” Id., 3:66–4:3. The reference numeral 113 for the gas inlet is not shown in any of the patent figures, and thus does not provide us with the location, structure, or function of the plenum. through the fan 105, the air must passes [sic] through the air filters 111.” Id., 6:47–48. Here, the word “plenum” is used as a synonym for “housing,” because air from fan 105 enters filter housing 101. As stated in the Specification, “a fan 105 can be used to push the air into the intake collar 103. The air can enter the filter housing 101 and flow through one or more filters 111. The filtered air can then flow into a plenum.” Ex. 1001, 3:65– 4:1. A plenum, however, is neither shown nor described.” slip op. at 32

  Patent outcomesUS 10,806,099 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,806,099
• Lightspeed Commerce Inc. / Clover Network, LLC v. Cloudofchange, LLCAll claims unpatentable
  PTAB · Oct 19, 2023 · IPR2022-00997 · APJ Jeremy M Plenzler · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over Woycik and over Olson in view of Woycik; the Board did not find claims 1–20 unpatentable over Tengler.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have been obvious based on the reference disclosures. See Okajma, 261 F.3d at 1355. In other words, the lens of the level of ordinary skill in the art does not change a prior art’s disclosure, though it may change one’s understanding of what is disclosed. Patent Owner does not explain how its definition provides a reference point that would alter the Petition’s assertion of obviousness. Indeed, as noted by Petitioner, “P[atent ]O[wner]’s expert concedes ‘the difference in levels of ordinary skill proposed by the parties do not change his opinions about the disclosure of the prior art.’” Id. (citing Ex. 1035, 156:25–157:6); see also Ex. 1034, 10–14. Patent Owner provides no rebuttal to this position, other than a single sentence in its Sur-Reply alleging that “[a]lthough experienced in ‘point-of-transaction systems,’ Petitioner’s expert is not a POSITA with respect to the ’012 Patent under either standard.” PO Sur-Reply 23 (citing PO Resp. 8–10). Petitioner’s position has support in the record, not only based on the statements from Patent Owner’s expert noted above, but also with respect to the issues presented in the Patent Owner Response. With respect to the challenges based on Woycik, for example, the disputed issues relate to server considerations. There is no dispute that Woycik teaches POS builder” slip op. at 9

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

    “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). A preamble, however, “generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.” Id. at 809. We agree with Petitioner and the Supplemental Claim Construction Order from the District Court in the Lightspeed Litigation that the preamble is unnecessary to understand the claim. Here, the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention. slip op. at 13

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

    “As the Federal Circuit has explained, “a patentee is entitled to a rebuttable presumption of nexus between the asserted evidence of secondary considerations and a patent claim if the patentee shows that the asserted evidence is tied to a specific product and that the product ‘is the invention disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). A patentee is not entitled to a presumption of nexus if the patented invention is only a component of a commercially successful machine or process. Id. Once “the patentee has presented a prima facie case of nexus, the burden of coming forward with evidence in rebuttal shifts to the challenger . . . to adduce evidence to show that the commercial success was due to extraneous factors other than the patented invention.” Demaco, 851 F.2d at 1392–93. Here, we have no presumption of nexus. Nor does Patent Owner” slip op. at 15

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

    “Even if Patent Owner had established nexus, there is insufficient evidence to show that the NCR Silver product was a commercial success. The jury verdict form simply asks whether “NCR has infringed the . . . claims of the ’012 patent” (Ex. 2008, 3) and asks for “the amount of damages . . . for NCR’s infringement of the ’640 Patent and/or the ’012 Patent” (id. at 7). There is no evidence, such as market share, establishing that the NCR Silver product was a commercial success. See, e.g., In re Applied Materials, Inc., 692 F.3d 1289, 1300 (Fed. Cir. 2012) (discussing the importance of market share compared to sales, alone, to prove commercial success). And, here, we do not even know how the damages relate to the two identified patents individually.” slip op. at 17

  Patent outcomesUS 10,083,012 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,083,012
• Lightspeed Commerce Inc. / Clover Network, LLC v. Cloudofchange, LLCAll claims unpatentable
  PTAB · Oct 18, 2023 · IPR2023-00232 · APJ Jeremy M Plenzler · IPR · Final written decision

  Claims 1–28 are unpatentable under § 103 over Woycik, Woycik and Manno, and Olson and Woycik; the Board did not reach the Manno-only ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Accordingly, we discern no reason that Mr. Gray’s qualifications are insufficient to testify on the disputed issues. Nevertheless, we also agree with Petitioner that a person of ordinary skill in the art is not limited to someone experienced in building POS screens. Although, as noted above, the ’640 patent characterizes the novelty as eliminating the need for a specialized programmer to build POS screens, we know that is not novel, as Patent Owner, itself, now acknowledges as explained above. Rather, what is now alleged by Patent Owner to be the novel aspect of the invention relates to the web-based back office system. And even if we accept that experience with POS systems is necessary, as Petitioner notes, and Patent Owner does not dispute, “Mr. Gray explains that his work experience ‘had to do with point of sale and point of transaction.’” See Pet. Reply 3 (citing Ex. 2022, 53:3–54:2). Patent Owner makes much of purported differences between point of sale and point of actual differences are or how they affect Mr. Gray’s qualifications to testify in this proceeding. See Pet. Reply 3; PO Sur-Reply (stating without further discussion: “Although experienced in ‘point-of-transaction systems,’ Petitioner’s expert is not a POSITA with respect to the ’640 Patent under either standard. POR, 9-10.”). For purposes of this decision, we analyze the asserted prior art with” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Accordingly, we discern no reason that Mr. Gray’s qualifications are insufficient to testify on the disputed issues. Nevertheless, we also agree with Petitioner that a person of ordinary skill in the art is not limited to someone experienced in building POS screens. Although, as noted above, the ’640 patent characterizes the novelty as eliminating the need for a specialized programmer to build POS screens, we know that is not novel, as Patent Owner, itself, now acknowledges as explained above. Rather, what is now alleged by Patent Owner to be the novel aspect of the invention relates to the web-based back office system. And even if we accept that experience with POS systems is necessary, as Petitioner notes, and Patent Owner does not dispute, “Mr. Gray explains that his work experience ‘had to do with point of sale and point of transaction.’” See Pet. Reply 3 (citing Ex. 2022, 53:3–54:2). Patent Owner makes much of purported differences between point of sale and point of actual differences are or how they affect Mr. Gray’s qualifications to testify in this proceeding. See Pet. Reply 3; PO Sur-Reply (stating without further discussion: “Although experienced in ‘point-of-transaction systems,’ Petitioner’s expert is not a POSITA with respect to the ’640 Patent under either standard. POR, 9-10.”).” slip op. at 10

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

    “There appears to be an underlying dispute, at least with respect to what is required by POS builder software. PO Resp. 18; Pet. Reply 5–8. But this only appears with respect to the Manno, alone, challenge. We need not expressly construe “POS builder software” because, as explained below, we do not reach the Manno, alone, challenge in this decision. Accordingly, we do not need to construe any terms expressly to reach our decision. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

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

    “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). A preamble, however, “generally is not limiting 6 The parties agree that this issue has been fully briefed. See Tr. 21:2–6, 38:25–39:3. deletion of the preamble phrase does not affect the structure or steps of the claimed invention.” Id. at 809. We agree with Petitioner and the Supplemental Claim Construction Order from the District Court in the Lightspeed Litigation that the preamble is unnecessary to understand the claim. Here, the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention. The body of claim 1 expressly recites “an internet connection from said one or more point of sale terminals to a web server” and “point of sale builder software that runs on said web server,” which we address below. slip op. at 24

  Patent outcomesUS 9,400,640 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,400,640
• Lightspeed Commerce Inc. / Clover Network, LLC v. Cloudofchange, LLCAll claims unpatentable
  PTAB · Oct 18, 2023 · IPR2022-00779 · APJ Jeremy M Plenzler · IPR · Final written decision

  Claims 1–28 are unpatentable under § 103 over Woycik, Woycik and Manno, and Olson and Woycik; the Board did not reach the Manno-alone ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of skill in the art is a reference point for gauging what would have been obvious based on the reference disclosures. See Okajma, 261 F.3d at 1355. In other words, the lens of the level of ordinary skill in the art does not change the prior art’s disclosure, though it may change one’s understanding of what is disclosed. Patent Owner does not explain how its definition provides a reference point that would alter the Petition’s assertion of obviousness. Indeed, as noted by Petitioner, “P[atent ]O[wner]’s expert concedes ‘it would be hard to point out’ any opinions in his supporting declaration that rely on the difference in levels of ordinary skill proposed by the parties.” Id. (citing Ex. 1030, 53:6–14). Patent Owner provides no rebuttal to this position, other than a single sentence in its Sur-Reply alleging that “[a]lthough experienced in ‘point-of-transaction systems,’ Petitioner’s expert is not a POSITA with respect to the ’640 Patent under either standard.” PO Sur-Reply 25 (citing PO Resp. 9–10).” slip op. at 9

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

    “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). A preamble, however, “generally is not limiting slip op. at 24

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

    “There appears to be an underlying dispute, at least with respect to what is required by POS builder software. PO Resp. 18; Pet. Reply 5–8. But this only appears with respect to the Manno, alone, challenge. We need not expressly construe “POS builder software” because, as explained below, we do not reach the Manno, alone, challenge in this decision. Accordingly, we do not need to construe any terms expressly to reach our decision. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

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

    “Owner makes no attempt to identify any features of the “NCR Silver” product, which it identifies as the commercially successful product. We know, based on Mr. Cheng’s testimony, that the NCR Silver product included features that are not found in the claims of the ’640 patent. See Ex. 1030, 139:10–142:3. We credit that testimony, but we do not credit testimony from Mr. Cheng that a nexus existed between the claims and the NCR Silver product because it has no basis in fact. Rather, it is conclusory, merely stating that “based on the damages and the [jury] verdict, that a nexus existed.” Id. at 141:12–13. whether a nexus exists, let alone Patent Owner establishing a nexus between the evidence and the merits of the claimed invention. Accordingly, Patent Owner has failed to establish nexus. Even if Patent Owner had established nexus, there is insufficient evidence to show that the NCR Silver product was a commercial success. The jury verdict form simply asks whether “NCR has infringed the . . . claims of the ’640 patent” (Ex. 2008, 3) and asks for “the amount of damages . . . for NCR’s infringement of the ’640 Patent and/or the ’012 Patent” (id. at 7). There is no evidence, such as market share, establishing that the NCR Silver product was a commercial success. See, e.g., In re Applied Materials, Inc., 692 F.3d 1289, 1300 (Fed. Cir. 2012) (discussing the importance of market share compared to sales, alone, to prove commercial success). And, here, we do not even know how the damages relate to the two identified patents individually.” slip op. at 15

  Patent outcomesUS 9,400,640 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,400,640
• Chanel, Inc. v. Molo Design, Ltd.All claims unpatentable
  PTAB · Aug 9, 2023 · IPR2022-00546 · APJ Carl M Defranco · IPR · Final written decision

  Claim 1 is unpatentable as anticipated by Okuno; claims 4–6 are unpatentable as obvious over Okuno, SoftHousing I, SoftHousing II, Kennedy, and Dorsey.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Chanel argues, with support from its declarant, Mr. Rake, that one skilled in the art during the relevant time frame “would have a bachelor’s degree and at least two years of relevant experience working as an industrial designer, interior designer, furniture designer, architect, or other similar 7 Although occasionally we may focus on Molo’s arguments, we do not shift the ultimate burden from Chanel. We focus on Molo’s arguments simply to identify issues in dispute, many of which we find unpersuasive in view of the record as a whole. professional” and “would be knowledgeable regarding furniture design and/or the design of exhibit and display systems, and would have a general understanding of related manufacturing processes.” Pet. 21–22 (citing Ex. 1003 ¶¶ 41–43). Molo does not contest Chanel’s definition, and Mr. Rake agrees that it accurately reflects the level of skill in the art. See Pet. Reply 1 (“The parties agree on the POSITA and level of ordinary skill in the art.”); Ex. 2010 ¶ 33 (“I believe this is an accurate definition of a POSITA and have used this for my analysis.”). Because Chanel’s definition of the level of skill in the art appears reasonable and consistent with the ’134 patent and the prior art, we adopt it for purposes of our analysis. C. Claim Construction” slip op. at 6

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

    “a passage extending in a direction between the end panels and intersecting the panels.” Id. at 9:24–26 (emphases added). In our view, that claim language does not, on its face, state that the passage must intersect the end panels, as Molo argues. Instead, we agree with Chanel that the more sensible reading of that language is that the phrase “passage . . . intersecting the panels” refers to intersecting the “laminar panels” forming the inter-connected portions of the core, and not “the end panels” forming the terminal portions of the core. See Pet. Reply 2 n.1. Indeed, Molo expressly acknowledges as much— slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “adopt Molo’s proposed construction that would require a passage that intersects both end panels. Accordingly, we do not accept the premise of Molo’s argument that Okuno fails to disclose the claimed “passage” as recited in claim elements [c] and [d].” slip op. at 17

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

    “and the other prior art references, Chanel argues it would have been obvious to make Okuno’s lampshade of fire-resistant material because Okuno describes concerns with “overheating” from a lightbulb and one skilled in the art would have recognized that the use of a fire-resistant material would alleviate that concern. Id. at 29–30 (citing Ex. 1003 ¶¶ 95–96; Ex. 1011, 3).” slip op. at 22

  Patent outcomesUS 9,797,134 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 9,797,134
• Chanel, Inc. v. Molo Design, Ltd.All claims unpatentable
  PTAB · Aug 9, 2023 · IPR2022-00544 · APJ Richard H Marschall · IPR · Final written decision

  Claims 21–23 are unpatentable: claim 21 is anticipated by Okuno, and claims 22–23 are obvious over Okuno combined with SoftHousing I, SoftHousing II, Kennedy, and Dorsey.

  RulingsFinal written decision

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

    “Because the issue of whether Petitioner met its burden to prove unpatentability can be resolved without expressly construing the claim terms “end panels,” “operable,” and “flaccid,” we reject the notion that Petitioner somehow violated our rules by not developing a more explicit construction of those terms. In addition, because Patent Owner does not dispute Petitioner’s position that we need not formally construe any of the terms to address the issues in this proceeding or offer a competing construction, we need not construe any of these terms. See, e.g., Nidec, 868 F.3d at 1017 (approving Board decision not to construe claim language where the construction is not material to the dispute).” slip op. at 13

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

    “phrase “a passage extending in a direction between said end panels and intersecting said cellular structure” does not, standing alone, state that the passage must extend through both end panels, as Patent Owner argues in its proposal. Instead, we agree with Petitioner that the more natural reading of a passage “extending in a direction between” two objects does not require that the passage extend through those objects. See Pet. Reply 2. Patent Owner chastises Petitioner for not citing any evidentiary support for its “ordinary meaning” argument, such as a dictionary definition, but a party need not support an interpretation of claim language with extrinsic evidence when the language itself is clear on its face. See Seabed Geosolutions (US) Inc. v. Magseis FF LLC, 8 F.4th 1285, 1287 (Fed. Cir. 2021) (“If the meaning of a claim term is clear from the intrinsic evidence, there is no reason to resort to extrinsic evidence.”); PO Sur-reply 10. Further, Patent Owner does not support its own “ordinary meaning” argument—it cites to a paragraph from the Declaration of Mr. Ball, but that paragraph does not address the construction or meaning of this claim phrase. See PO Sur-reply 9 (citing Ex. 2010 ¶ 106); Ex. 2010 ¶ 106 (addressing whether Okuno disclose a light source within the passage). Patent Owner also argues that other language in the claim requiring the passage to intersect the cellular structure supports its position because the passage must intersect all of the cellular structure, not a portion of it. PO Sur-reply 9. The claim language, however, does not require a passage that intersects all of the cellular structure merely because it employs the phrase “intersecting said cellular structure,” and Patent Owner does not adequately support such a reading of the claim. See id.” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “As discussed above in our claim construction analysis, we decline to adopt Patent Owner’s proposed construction that would require a passage that extends through both end panels or its related argument that the passage must intersect “all of the cellular structure.” See PO Sur-reply 9 (arguing that the claim requires the passage to intersect more than a portion of the cellular structure), 11 (arguing that the passage in Figure 36 does not “intersect all of the cellular structure of the core” and therefore does not fall within the scope of claim 21). Accordingly, we do not accept the premise of Patent Owner’s argument that Okuno fails to disclose the claimed “passage” in claim elements [c] and [d]. Further, even if Patent Owner did not premise its argument on its flawed proposed claim construction, we find Petitioner’s arguments and evidence as to claim elements [c] and [d] persuasive. See Pet. 26–28 (citing Ex. 1011, 1–2, 4, Figs. 1–2 (annotated), 3–4); Pet. Reply 17–21 (citing Ex. 1001, 11:23–27; Ex. 1011, cols. 1–3, Figs 1–5; Ex. 1048, 66:7–17; Ex. 2011, 166:12–167:3); Ex. 1003 ¶¶ 89–91. Even if we accept Patent Owner’s interpretation of Okuno as failing to “disclose a single ‘passage,’” we agree with Patent Owner that Okuno at least teaches two distinct passages because “each substrate of Okuno forms a different passage, as indicated by Owner Response, however, and appear to rely again on its proposed construction without addressing Petitioner’s construction. See id. at 13 (“None of the images of Okuno depict ‘a passage’ extending through the panels.”). In any event, Patent Owner’s counsel clarified at the oral hearing that its argument as to Ground 1, anticipation by Okuno, hinges on our acceptance of its proposed construction. See Tr. 51:21–24 (“[Board]: If we disagree with your claim construction on passage, then Grounds 1 and 2 would both lead to findings of unpatentability. Is that accurate? [Patent Owner’s Counsel]: You are exactly correct, Your Honor.”). differently shaped cutouts.” PO Resp. 19. Petitioner’s annotated versions of Figures 1 and 2, reproduced above, highlight these passages in green. See Pet. 27. Both of these passages “extend[] in a direction between said end panels and intersecting said cellular structure” as Petitioner argues and as shown in Okuno’s Figures 1 and 2, and therefore Okuno discloses claim element 1[c]. See id. In addition, those same figures show illuminator 6 (a light bulb) highlighted in yellow and within the passage formed by the generally rectangular cutout with an arched top on the left-hand side of annotated Figures 1 and 2. See id. at 28. As Petitioner points out, Okuno describes its illuminator as a “lightbulb or a lamp” operable to illuminate the core of Okuno’s shade. Id. (citing Ex. 1011, 1–4). These disclosures support Petitioner’s contention that Okuno discloses element 1[d], requiring “a light source located within said passage and operable to illuminate said core from the interior thereof.” See id. Based on our review of the record, we find that Petitioner establishes by a preponderance of the evidence that Okuno discloses claim elements [c] and [d].” slip op. at 22

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

    “We find Petitioner’s argument and evidence on these points persuasive. First, Petitioner establishes that multiple prior art references teach the use of various types of LED lights within flexible furniture with the goal of illuminating the furniture in a way that would have been amenable for use in Okuno’s passage. See Pet. 29–34; Ex. 1003 ¶¶ 95–102. For example, Kennedy discloses LED lighting strips placed within voids or passages in a flexible partition. See Ex. 1035 ¶¶ 37, 116, Fig. 15. Second, Petitioner sets forth a number of persuasive reasons why one of ordinary skill in the art would have been motivated to replace Okuno’s light bulb with LED lights within its passage, including the generation of less heat within the structure and better aesthetics. See Pet. 35–36; Ex. 1003 ¶¶ 103–106. We find Petitioner’s arguments and evidence, including its supporting declarant testimony, persuasive. Accordingly, we find that Petitioner proves by a preponderance of the evidence that one of ordinary skill in the art would have been motivated to modify Okuno to include a ribbon of LED 11 After raising its argument as to the “passage” limitation in claim 21, Patent Owner argues that Okuno’s design would suffer from hot spots, and that “Dorsey would similarly suffer from multiple hotspots, as it discloses LEDs between fabric sheets.” PO Resp. 23 (citing Ex. 1034 ¶ 23). Patent Owner argues that its claimed “passage” and “expandable structure” in claim 21 would allow the lights claimed in claim 22 to follow the passage without creating hot spots. Id. We view these arguments as pertaining to the “passage” limitation of claim 21, which we found Okuno anticipates for the reasons provided above, rather than an argument directed to claim 22 in the event that we found claim 21 anticipated by Okuno. To the extent that Patent Owner intended to raise an argument as to claim 22 in this context, the arguments lacks adequate development and support. lights in its passage, and that such a modification would result in an article that meets all of the limitations of claims 22 and 23.” slip op. at 28

  Patent outcomesUS 8,561,666 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,561,666
• Mercedes-Benz USA, LLC v. Westport Fuel Systems Canada Inc.Institution denied
  PTAB · Jun 20, 2023 · IPR2023-00351 · APJ Frances L Ippolito · IPR · Institution

  The Board denied institution on all challenged claims because the claims receive the provisional’s earlier priority date, making Gottlieb unavailable as prior art.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition, Preliminary Response, and the evidence of record, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we do not institute inter partes review of claims 1–3, 6, 13, 14, 16–22, 26–28, and 41 of the ’138 patent based on the grounds raised in the Petition.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “Reading the ’791 provisional’s description of the hydraulic link in conjunction with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, its thickness must remain unchanged, or, in the words of claim 1, be “substantially constant.” Indeed, according to the ’791 provisional, the fluid acts as a solid because O-ring seals and extremely small clearances between needle piston 72 and chamber cap 86 prevent the trapped fluid from flowing around the piston upon actuation of the force, which clearly supports that the thickness of the fluid must remain substantially constant. Those disclosures reasonably convey to one skilled in the art that the inventor had possession of the hydraulic link limitation of claim 1, including it having a substantially constant thickness, as of the ’791 provisional’s filing date. Likewise, we observe that claim 41 recites that the “hydraulic fluid acts as an incompressible solid so that movement caused by the actuation of said dimensionally responsive member is transmitted through said fluid layer.” Ex. 1001, 20:53–56 (emphases added). Again, the ’791 provisional discloses that the “trapped fluid acts as a solid and transmits the movement of the magnetostrictive material 40 to the needle valve 14, causing it to lift against the needle spring 16.” Id. at 12:5–13:14 (emphases added). We find, based on this description of the hydraulic link, with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, it would act as an incompressible solid. Petitioner does not further dispute that the ’791 provisional discloses the remaining limitations of the challenged claims. As such, the evidence of record demonstrates sufficient written description support in the ’791 provisional for the challenged claims. Thus, the challenged claims are entitled to an effective filing date of October 15, 1999, which means that Gottlieb does not qualify as prior art. And because Gottlieb forms the basis of all the challenges, its exclusion is fatal to the Petition.” slip op. at 12

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “Reading the ’791 provisional’s description of the hydraulic link in conjunction with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, its thickness must remain unchanged, or, in the words of claim 1, be “substantially constant.” Indeed, according to the ’791 provisional, the fluid acts as a solid because O-ring seals and extremely small clearances between needle piston 72 and chamber cap 86 prevent the trapped fluid from flowing around the piston upon actuation of the force, which clearly supports that the thickness of the fluid must remain substantially constant. Those disclosures reasonably convey to one skilled in the art that the inventor had possession of the hydraulic link limitation of claim 1, including it having a substantially constant thickness, as of the ’791 provisional’s filing date. Likewise, we observe that claim 41 recites that the “hydraulic fluid acts as an incompressible solid so that movement caused by the actuation of said dimensionally responsive member is transmitted through said fluid layer.” Ex. 1001, 20:53–56 (emphases added). Again, the ’791 provisional discloses that the “trapped fluid acts as a solid and transmits the movement of the magnetostrictive material 40 to the needle valve 14, causing it to lift against the needle spring 16.” Id. at 12:5–13:14 (emphases added). We find, based on this description of the hydraulic link, with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, it would act as an incompressible solid. Petitioner does not further dispute that the ’791 provisional discloses the remaining limitations of the challenged claims. As such, the evidence of record demonstrates sufficient written description support in the ’791 provisional for the challenged claims. Thus, the challenged claims are entitled to an effective filing date of October 15, 1999, which means that Gottlieb does not qualify as prior art. And because Gottlieb forms the basis of all the challenges, its exclusion is fatal to the Petition.” slip op. at 12

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

    “Petitioner does not further dispute that the ’791 provisional discloses the remaining limitations of the challenged claims. As such, the evidence of record demonstrates sufficient written description support in the ’791 provisional for the challenged claims. Thus, the challenged claims are entitled to an effective filing date of October 15, 1999, which means that Gottlieb does not qualify as prior art. And because Gottlieb forms the basis of all the challenges, its exclusion is fatal to the Petition.” slip op. at 13

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 6,575,138

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.