- Unified Patents, LLC v. Flexiworld Technologies, Inc.No claims unpatentablePTAB · Nov 1, 2023 · IPR2022-00775 · APJ Christopher L Ogden · IPR · Final written decision
Claims 27 and 28 were not shown unpatentable under either § 103 ground because the petitioner did not establish that Olgaard or Acharya was prior art; the revised contingent motion to amend was dismissed as …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Relying on Dr. Freedman’s testimony, Unified argues that a person of ordinary skill in the art would have had “(1) an undergraduate degree in electrical and computing engineering or a closely related field; and (2) two or more years of experience in wireless content transmission,” where “[m]ore relevant experience could compensate for less education, and vice versa.” Pet. 7 (citing Ex. 1003 ¶¶ 36–38). Flexiworld does not contest Unified’s description of the level of ordinary skill for this proceeding. See PO Resp. 8 (citing Ex. 2010 ¶ 67). Because Unified’s description is supported by uncontroverted testimonial evidence and appears consistent with the types of problems and solutions in the ’257 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:20–5:35 (“Technical Field” and “Background” sections of the ’257 patent, describing background knowledge relating to wireless content transmission between electronic devices).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Unified argues that “all terms should be given their plain meaning,” and does not propose any explicit constructions. See Pet. 8. In the context of this proceeding, Flexiworld agrees. See PO Resp. 29. We do not find it necessary to explicitly construe any terms to resolve the issues in this proceeding. 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))).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“2. Conclusion as to Obviousness For the reasons above, we determine that evidence independent of inventor testimony corroborates (1) a conception date no later than October 22, 2000 and (2) reasonably continuous diligence in reducing the claimed invention to practice until January 19, 2001. Having considered the evidence as a whole under a rule-of-reason analysis, we determine that Unified has not shown that the conception date for the claimed invention was on or after October 24, 2000, or that the inventors did not exercise reasonably continuous diligence during the critical period between October 24, 2000 and January 19, 2001. Unified relies on a priority date of October 24, 2000 for Olgaard and a priority date of December 22, 2000 for Acharya. See Pet. 1–2 & n.2; see also Ex. 1005, code (63); Ex. 1007, codes (22), (43). However, the corroborated conception date for claims 27 and 28 antedates the above priority dates for both Olgaard and Acharya. See supra Section III.C.1. Thus, Unified has not shown that either Olgaard or Acharya is prior art under 35 U.S.C. § 102(e) (2006). Unified provides no theory of obviousness that does not depend on either Olgaard or Acharya being prior art. See Pet. 2, 8–80.” slip op. at 20
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“claimed inventions were conceived no later than October 22, 2000, and Unified has not shown to the contrary by a preponderance of the evidence. First, we find credible Mr. Chang’s testimony that Exhibit 2013 and other related drafts, including their filenames and metadata, have not been altered. Ex. 2031 ¶ 1. We regard the metadata as the most reliable indicator of the latest date each draft was completed. Although the filename dates may differ from the metadata dates, these minor differences do not call into question the reliability of the metadata as the last date on which the drafts were modified. Most significantly, the “last modified” date for Exhibit 2013 is October 22, 2000. That the inventors produced at least three other drafts and then filed a provisional application just ten days later on November 1, 2000 further supports a conception date before October 24, 2000. Ex. 2031 ¶ 6; Ex. 2016; Ex. 2040.” slip op. at 16
Patent outcomesUS 9,836,257 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,836,257 - Telefonaktiebolaget LM Ericsson / Ericsson Inc. et al. v. K.Mizra LLCNo claims unpatentablePTAB · Oct 26, 2023 · IPR2022-00730 · APJ Iftikhar Ahmed · IPR · Final written decision
Claims 22, 23, 30, 32, and 33 were not shown unpatentable because Pakzad did not disclose the claimed combined macro and femto timing information, and the obviousness grounds did not address that limitation.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“information from all three types of sources together or at the same time. Patent Owner argues that “a [person of ordinary skill in the art] would understand that this passage in Pakzad ‘any one of several sources’ confirms that Pakzad only uses a single signal source at a time.” PO Resp. 34 (citing Ex. 2002 ¶ 69). Dr. Chrissan testifies that he understands this disclosure to mean that “Pakzad teaches a single signal source at a time, not more than one.” Ex. 2002 ¶ 70 (emphasis added). We find Patent Owner’s interpretation, supported by Dr. Chrissan’s testimony, to be a reasonable reading of Pakzad’s disclosure. Dr. Chrissan further testifies that “Pakzad’s invention is about using both a course [sic] routing graph and fine routing graph to make computation of a motion model (e.g., a particle filter) more efficient,” and “Pakzad was not directed to leveraging a heterogenous network by incorporating both macro and femto cells concurrently.” Id. ¶ 68. We agree with Dr. Chrissan’s explanation for the lack of clear disclosure in Pakzad about which measurements Pakzad uses with its particle filter.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art “would have been someone with at least (1) a bachelor’s degree in electrical engineering, computer engineering/science, or a related scientific field, and (2) either (a) a master’s degree in electrical engineering, computer engineering/science, or a related filed, or (b) two or more years of work or research experience in wireless networking and/or computing.” Pet. 21 (citing Ex. 1009 ¶ 23). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art, but adds that the person of ordinary skill in the art “may alternatively have additional years of practical and relevant work or research experience as substitution for less or different technical education, and vice versa.” See PO Resp. 17. We determine that the level of ordinary skill proposed by Petitioner is consistent with the ’819 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We adopt Petitioner’s proposed level in deciding the patentability of the challenged claims.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“claim 30 should be construed “to refer to the previously recited ‘femto base station timing information,’ ‘macro base station timing information,’ and ‘femto base station position information.’” PO Resp. 18. Patent Owner argues that its proposed construction is “based on at least three aspects of the intrinsic record: (1) the claim language itself; (2) guidance from the specification defining the disputed term; and (3) illustrative embodiments confirming the meaning of the disputed term.” Id. (citing Ex. 2002 ¶ 47). Specifically, Patent Owner contends that “the specification describes two embodiments that further confirm to a [person of ordinary skill in the art] that ‘the base station information’ consists of the [three types of information previously] recited.” Id. at 19–23 (citing Ex. 1001, 19:29–33, 20:50–54, Figs. 8, 9; Ex. 2002 ¶¶ 47–55).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“More importantly, anticipation requires that the four corners of a single, prior art document describe every element of the claimed invention, and we are not persuaded that Pakzad describes the combinational use of the two different types of timing information as claimed. See Xerox Corp. v. 3Com Corp., 458 F.3d 1310, 1322 (Fed. Cir. 2006) (citing Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000)). The Federal Circuit has made it clear that “it is not enough that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371 (citation omitted) (emphasis added). In Net MoneyIN, although a prior art reference described two protocols, which when taken together, disclosed “all five links arranged or combined in the same way as claimed,” the Federal Circuit determined that the reference did not anticipate the claim. See id. Rather, the Federal” slip op. at 28
Patent outcomesUS 8,958,819 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Enfish · Phillips · KSR · GrahamPatents in suitUS 8,958,819 - Edwards Lifesciences Corporation / Edwards Lifesciences LLC v. Aortic Innovations, LLCNo claims unpatentablePTAB · Aug 25, 2023 · IPR2022-00556 · APJ John G New · IPR · Final written decision
Claims 1–4 were not shown unpatentable because the asserted references did not teach or suggest the limitation requiring no outer graft covering between the fibers and outer frame.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“As the plain language of the claim term suggests, an “outer graft covering” must cover some, or all, of the metallic outer frame of the prosthetic heart valve. Consequently, and according to the plain and ordinary meaning, we understand an “outer graft covering” to be a structure, 29 such as a cloth, fabric or other material, that covers all, or part of, the metallic outer frame. Importantly, because an outer graft covering must cover the external surface of the outer frame, and specifically “between the first portion of fibers and the outer frame,” we understand this claim term to mean that the cover must extend over (i.e., “cover”) not only the struts and members of the metallic outer frame, but must also cover the open spaces, or interstices, in the spaces between those struts and members. Consequently, the ordinary and customary meaning of the limitation “free of an outer graft covering between the fibers and the outer frame” is that there can be no such outer graft covering present anywhere between the outwardly extending fibers and the metallic outer frame.” slip op. at 29
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“As an initial matter, there is little disagreement between the parties and their experts that PET can be a graft covering. However, the disputed limitation requires something more. Specifically, it requires that “the outer seal is free of an outer graft covering between the fibers and the outer frame.” We are not persuaded that Petitioner has demonstrated, by a preponderance of the evidence of record, that Levi, Spenser II, or Walther, upon which Petitioner relies, teaches or suggests the incorporated limitation of claim 1 reciting “wherein the valve assembly is free of an outer graft covering between the first portion of fibers and the outer frame.” In our analysis, we must first determine what is meant by the claim term “outer graft covering.”” slip op. at 29
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Furthermore, our understanding of an outer graft covering as a material or structure that covers at least a portion of the outer surface of the prosthetic heart valve, such that both the struts and members of the metallic outer frame, as well as the interstices between those struts and members, is covered by the outer graft covering, reinforces our prior conclusion that the outer skirt of Levi constitutes an outer graft covering that is prohibited by challenged claim 1. We consequently conclude that Petitioner has not met 35 its burden with respect to demonstrating, by a preponderance of the evidence, that Levi teaches or suggests the limitation reciting “wherein the outer seal is free of an outer graft covering between the fibers and the outer frame.”” slip op. at 35
Patent outcomesUS 10,987,236 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,987,236 - Recor Medical, Inc. / Otsuka Medical Devices Co., Ltd. v. Medtronic Ireland Manufacturing Unlimited Co.No claims unpatentablePTAB · Jul 14, 2023 · IPR2022-00431 · APJ Eric C Jeschke · IPR · Final written decision
Claims 1–4 and 8–12 were not shown unpatentable because Petitioner did not prove the asserted anticipation or obviousness grounds by a preponderance of the evidence.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that [t]he level of ordinary skill encompassed a team of people, having a person with a Ph.D. or M.D. and five years of clinical and/or research experience treating diseases of the kidneys and circulatory systems and a person with at least a Bachelor’s degree in biomedical engineering or a related field and at least five years of experience designing catheter-based ablation systems. Pet. 40 (emphasis omitted) (citing Daft Pet. Decl. ¶¶ 64–68). Patent Owner responds that, “[f]or purposes of this proceeding, [Patent Owner] does not object to the definition of a person of ordinary skill in the art (‘POSITA’) proffered by Petitioner[] and adopted by the Board at institution as the result remains the same regardless of the definition—the Challenged Claims are valid.” PO Resp. 16; see also Dec. Inst. 15–17 (adopting, for purposes of institution, Petitioner’s proposed definition of the person of ordinary skill in the art). In addition, however, Patent Owner proposes a different level of ordinary skill in the art “should the Board believe that the difference in definition impacts the outcome” of this proceeding.8 PO Resp. 16. Both Petitioner and Patent Owner discuss how” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“to transmit ultrasound energy waves to target renal neural fibers” (claim 1, element 1d) and “configured to [perform certain functions] to the target neural fibers” (claims 3, 4, 8, and 9). See Pet. 23–25; PO Resp. 17–22; Pet. Reply 10; PO Sur-reply 1–2. Petitioner asserts that the phrase “configured to” should be construed as “able to.” Pet. 23; see Pet. 23–24 n.5 (discussing how “able to” has the same meaning as “capable of”). Patent Owner responds that “[t]he Board need not reach the construction of this term as Petitioner[’s] arguments fail under either construction, but to the extent a construction is required, ‘configured to’ should be construed as ‘designed to.’” PO Resp. 18. Based on the complete record, we do not discern a need to construe explicitly this phrase because doing so would not change the result 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 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 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“the alleged motivation to use the device of Acker in Levin’s renal neuromodulation method. As noted by Patent Owner, after introducing Webster (by patent number), Levin states that “[s]imilar catheter based apparatus can be used to ablate the renal nerve with an intent to treat [Chronic Renal Failure].” Ex. 1004 ¶ 64 (emphasis added) (cited at PO Resp. 39 (discussing how “Levin explicitly qualif[ies] its statement by referring to ‘similar’ (not identical) catheters”)). But neither Petitioner nor its declarants have established that Acker’s ultrasound catheter is in fact “[s]imilar” to that in Webster in a manner that would support the view that one of ordinary skill in the art would have understood that Acker’s catheter could be used to “ablate the renal nerve with an intent to treat [Chronic Renal Failure]” as disclosed in paragraph 64 of Levin—i.e., to perform Levin’s renal neuromodulation method. See id. Dr. Mendelsohn states that Acker’s use of ultrasound-based ablation falls within the “any thermal means” disclosure in Webster (see Ex. 1052, 3:40–42), but Dr. Mendelsohn does not address why Acker’s ultrasound catheter is “[s]imilar” to the catheter in Webster (even after expressly noting the presence of that statement in Levin). See Mendelsohn Decl. ¶ 71 (“Moreover, Webster teaches transvascular nerve ablation using RF thermal ablation or ‘any thermal means’ and Levin teaches catheters similar to Webster’s can be used for renal denervation. Ultrasound ablation disclosed in Acker is a ‘thermal means’ of ablation.”).” slip op. at 21
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“(2) Objective Indicia of Nonobviousness We next turn to Patent Owner’s objective evidence of nonobviousness. Patent Owner alleges (1) unexpected results and skepticism, (2) copying, (3) praise, and (4) long-felt but unsolved need and failure of others. See PO Resp. 60–68; PO Sur-reply 25–27. Petitioner responds. See Pet. Reply 36–37. We have considered the evidence and argument presented by both parties, but do not address the issues in detail. See Alza Corp. v. Mylan Labs., Inc., 391 F.3d 1365, 1373 n.9 (Fed. Cir. 2004) (“Because [patent challenger] has not made a prima facie case of obviousness, we need not address the parties’ assertions regarding the district court’s discussion of secondary considerations.”).” slip op. at 31
Patent outcomesUS 8,845,629 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,845,629 - Linkedin Corporation v. Ebuddy Technologies B.V.No claims unpatentablePTAB · Jun 30, 2023 · IPR2022-00164 · APJ Jason M Repko · IPR · Final written decision
LinkedIn did not prove claims 1–3 and 6–10 unpatentable on any asserted Eaton- or Kim-based anticipation or obviousness ground.
RulingsFinal written decision- ExcludeOther
“In its Motion to Exclude, Patent Owner seeks to exclude Petitioner’s Exhibits 1017–1020, 1022–1026, 1030, 1032, 1033, 1034, and 1036. Mot. 1. Even without excluding any of these exhibits, Petitioner has not proven that any challenged claims are unpatentable. Thus, we dismiss Patent Owner’s Substitute Motion to Exclude as moot.” slip op. at 36
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s alternative definition that “a PHOSITA[3] would possess equivalent additional formal education such as graduate studies, or work experience to replace formal education” is unclear or, at best, does not meaningfully contribute to the first definition. See id. For example, Petitioner does not explain whether or how additional graduate studies would be both equivalent and additional to the education described in the first definition. See id. Patent Owner does not propose an alternative definition. See generally PO Resp.; Sur-reply. Thus, in this decision, we apply Petitioner’s proposed definition, without the alternative qualifier about “equivalent additional formal education . . . or work experience.” See Pet. 6. We determine that Petitioner’s definition is supported by the testimony of Dean Willis. Ex. 1004 ¶¶ 32–35.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction We need only construe terms that are in controversy and only to the extent necessary to resolve the dispute. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We need not construe any terms to resolve the issues in this case.” slip op. at 6
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“We credit Dr. Rajeev Surati’s testimony6 (Ex. 2020 ¶ 2053) on this issue over Dean Willis’s testimony (Ex. 1004 ¶¶ 211–13) because Dr. Rajeev Surati’s testimony is more consistent with Kim’s disclosure and Dean Willis’s Declaration lacks an adequate explanation. Thus, Petitioner has not shown that Kim discloses the associating step.” slip op. at 16
Patent outcomesUS 8,230,135 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,230,135 - Linkedin Corporation v. Ebuddy Technologies B.V.No claims unpatentablePTAB · Jun 30, 2023 · IPR2022-00165 · APJ Jameson Lee · IPR · Final written decision
Claims 1–3 and 6–10 were not shown unpatentable because Eaton and Kim each failed to disclose the claimed array and alternative-title limitations, and the obviousness grounds did not cure those deficiencies.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“alternative” or “alternative title.” Neither party contends that “alternative” or “alternative title” is a term of art with an art recognized meaning. In plain English, “alternative” as an adjective designates something that is another option, another choice. Dictionary.com (accessed June 23, 2022), https://www.dictionary.com/browse/alternative (Ex. 3002) (“affording a choice of two or more things, propositions, or courses of action,” “(of two things, propositions, or courses) mutually exclusive so that if one is chosen the other must be rejected: The alternative possibilities are neutrality and war.”). The specification of the ’179 patent also consistently uses the word “alternative” to mean something in lieu of or in place of another choice. For instance, the ’179 patent describes: Advantageously, data associated with the event can also (or in the alternative) be provided to the title provisioning engine 616. Ex. 1001, 8:15–17 (distinguishing “also” from “alternative”). A given event may cause the title provisioning engine 616 to rewrite the entire title array 618 with title strings associated with the most recent events. Alternatively, a given event may cause the title provisioning engine 616 to append title strings to the end of the title array 618. Id. at 8:24–28 (using “alternative” in mutually exclusive context). slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“During oral hearing, counsel for Petitioner clarified that the index to an array may start from “0” rather than “1” and that the index also need not be a number. Tr. 18:13–19:19. With that clarification, counsel for Patent Owner indicated that there no longer is any dispute with regard to the meaning of “array.” Tr. 61:14–25. Accordingly, we have no need to construe the term “array.” 4. “event” The term “event” is recited in independent claim 1. The specification” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“reproduced above, are “event messages / strings 300 (shaded in green).” Pet. 30 (citing Ex. 1006 ¶ 31). But the cited evidence does not support that assertion. Paragraph 31 of Eaton describes the referenced column simply as “associated event 300.” Ex. 1006 ¶ 31. Further, even if the column stores associated event messages, Petitioner cites nothing to show that the associated messages in server memory column 300 are the event presence notification messages discussed above in the context of limitation 1[ii]. Alternatively, Petitioner relies on Eaton’s Figure 6 embodiment. Pet. 31. Petitioner asserts (id.) that in the Figure 6 embodiment server memory 160 stores an array of event notifications, referencing an annotated version of Eaton’s Figure 6, reproduced below: Figure 6 is a block diagram of an alternate embodiment of a server memory for use within a server of the instant message communication system, and Petitioner has shaded the EVENT AN–NN column green and the words “SERVER MEMORY” red. Ex. 1006 ¶ 19. Petitioner asserts that both the TOPIC N column 540 and the EVENT AN-NN column 670 as the stored event notifications. Pet. 31 (citing Ex. 1006 ¶¶ 56–58). But the assertion is not supported by the cited evidence. Paragraphs 56–58 of Eaton do not indicate that either topic entries 540 or event entries 670 are the event presence notification messages discussed above in the context of limitation 1[ii]. In its Reply, Petitioner asserts that event presence notification message EPNM “is associated with the character strings labelled Topics [1]- [N], and using ‘Topic N’ as the example, it is tied to ‘Event[s] AN-NN’ (representing the ‘events’ from the plurality of events 180 discussed in Claim 1[i]).” Reply 22. Even assuming that there is an association, Petitioner still has not shown that EPNM is any of Topics [1]-[N] in Figure 6. Similarly, Petitioner has not shown that EPNM is any of Event [1]-[N] in Figure 2.” slip op. at 26
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“’179 Patent as provided above in Ground 1. To the extent that there are arguably any meaningful differences between those claims and Eaton’s disclosures, those differences would have been trivial and obvious modifications to make for a PHOSITA.” Pet. 49. This conclusory assertion of obviousness does not specifically identify any difference between the claimed invention and Eaton, and does not provide any reasoning or rational underpinning to support the assertion. Conclusory assertions of obviousness are insufficient to satisfy Petitioner’s burden of proof. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Petitioner asserts that to the extent that Eaton discloses various, “distinct” embodiments, it would have been obvious to one with ordinary skill in the art to combine Eaton’s teachings into a single system. Pet. 49. Petitioner also asserts that one with ordinary skill in the art “would understand that Eaton discloses possible configurations and/or operations of the same system, and to the extent that it is argued or found otherwise, the functions would have been entirely obvious to combine for [one of ordinary skill in the art] given Eaton’s express disclosures.” Id. It is uncertain what distinct embodiments are referred to by Petitioner. However, even assuming that the disclosures of Eaton’s embodiments, already discussed by Petitioner, are properly combinable, there still remains the deficiencies, discussed above in the alleged anticipation of claim 1 by Eaton, relating to the step of storing the event notification in an array, the step of providing the event notification from the array to a process executed by a processor, and the step of providing an alternative title from the array to the process. Accord Inst. Dec. 57.” slip op. at 33
Patent outcomesUS 8,402,179 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,402,179 - Apple Inc. v. Memoryweb, LLCNo claims unpatentablePTAB · Jun 30, 2023 · IPR2022-00032 · APJ Jason M Repko · IPR · Final written decision
Claims 1–12 were not shown unpatentable over A3UM, Belitz, and Rasmussen because the obviousness challenge relied on an unsupported account of A3UM’s Places view and an inadequate combination rationale.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art in 2011 (or 2014) would have had (1) at least a bachelor’s degree in computer science, computer engineering, or electrical engineering, and (2) at least one year of experience designing graphical user interfaces for applications such as photo management systems. Pet. 9 (citing Ex. 1003 ¶¶ 41–43). In the Institution Decision, we applied Petitioner’s proposed definition. Inst. Dec. 10. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. PO Resp. 18. We continue to find that the skill level identified by Petitioner (Pet. 9) is consistent with the record. Thus, we use the same definition here that we used in the Institution Decision.” slip op. at 31
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“C. Claim Construction Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We do no need to construe any terms to resolve the issues in this case.” slip op. at 31
- Expert testimonyPetitioner expert creditedPatent owner expert creditedMixed
“size version of the selected image in the Places view. PO Resp. 55 (citing Ex. 2025 ¶¶ 156–157). Patent Owner’s argument is adequately supported by Dr. Surati’s testimony. Ex. 2025 ¶¶ 156–157. We credit Dr. Surati over Dr. Terveen on this issue because Dr. Surati’s testimony is consistent with the teachings in A3UM. See id.; Ex. 1003 ¶ 186. Specifically, the Petition and Dr. Terveen’s declaration rely on page 251 of A3UM to support the assertion that the Places view displays the original digital image in the Viewer. See Pet. 50; Ex. 1003 ¶ 186. The cited part of A3UM provides an overview of the Viewer. Ex. 1005, 251. A screenshot showing the Viewer and Browser is reproduced below. Id. The screenshot shows a Viewer displaying the image selected in the Browser. Id. The Browser displays several thumbnail images. Id. The Viewer displays a larger detailed view of the selected thumbnail image. Id. Dr. Surati testifies that this part of A3UM is not describing the Places view. Ex. 2025 ¶ 159. According to Dr. Surati, “clicking the thumbnail in the Browser in the Places view does not cause the Places view map to be replaced with a full size image corresponding to the selected thumbnail image.” Id. ¶ 156. Dr. Surati’s testimony (id. ¶¶ 155–157) is adequately supported by” slip op. at 38
Patent outcomesUS 9,552,376 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,552,376 - Stryker Corporation / Wright Medical Technology, Inc v. Osteomed LLCNo claims unpatentablePTAB · May 30, 2023 · IPR2022-00191 · APJ Sheridan K Snedden · IPR · Final written decision
Claims 15 and 21 were not shown unpatentable because Slater does not disclose the claimed tensile-load transfer, and Falkner with Duncan lacks the claimed arrangement and adequate motivation to modify.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“hole is configured to direct the transfixation screw on a trajectory that is a fixed angle or is configured to allow for “adjustable orientation” based on “a predetermined allowable angular range” such as opening 26 of Slater, identified by Petitioner as the transfixation screw hole. Pet. 16; Ex. 1005, 12:23–25, 11:21–22. Here, I first note the specification does not describe a plate having a hole identified as a transfixation screw hole that would accommodate insertion of a screw at a plurality of angles through the same hole. Rather, the specification repeatedly describes the disclosed plate system as having a transfixation screw hole where it is the inner surface of that hole that is configured to direct a screw at a trajectory, which, according to Mr. Sommers, is language a person of ordinary skill in the art would understand to describe a degree of precision around a single fixed angle. Ex. 1001, 1:26–45, 2:8–14, 2:42–46; Ex. 2002 ¶¶ 50, 94, 96; PO Resp. 16– 19. For example, the specification describes how “increased plate thickness around transfixation screw hole 102 may also enable transfixation screw hole 102 to be machined into bone plate 100 at an angle relative to the top surface of bone plate 100.” Ex. 1001, 9:8–12 (emphasis added). In other embodiments, the central axis of the inner surface of the transfixation screw hole defines the trajectory. Id. at 1:60–61; 6:41–67. By comparison, other holes in the disclosed plates are not disclosed with the same level of effort specification even includes a description of an oblong opening such as the one found in Slater, described as compression hole 132 and serves the purpose of tightening bones so as to “to press together at the interface of joint 106.” Id. at 9:12–9:46. Taken together, the specification, when read as a whole, describes plates with a transfixation screw hole configured at a single trajectory selected to achieve the functional objectives of the plate, namely, joint fusion, where that single trajectory is preferably between 30 and 70 degrees, and more preferably, 50 degrees. Id. at 6:41–55. Petitioner fails to direct us to any example or other disclosure to support its alternative interpretation, namely, a plate configured with a transfixation screw hole 102 configured to permit the placement of a screw at a plurality of trajectories or angles.” slip op. at 51
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“configuration, which relies on Petitioner’s argument that Slater uses a lag screw with threads on its end that only engage the second bone in Slater’s two-bone configuration. See Pet. 26–29; Reply 13–15. We are not persuaded by Petitioner’s argument because Slater does not expressly or inherently disclose how its lag screw threads interact with the first and second bone. Slater’s Figure 4 “shows an elevation view of a second screw type 70” having “a longer shank to increase depth of penetration and has an abbreviated threaded portion to allow the majority of the shank to slide through aligned tibial and talus screw holes finally anchoring in the calcaneus bone.” Ex. 1005, 12:32–13:3. This description of screw type 70 in the three-bone configuration does not state that the screw only engages the third bone, the calcaneus bone, and describes the “majority of the shank” as “slid[ing] through” holes in the first two bones without stating that none of the threads engage a portion of, for example, the end of the second bone adjacent the third bone. See id. More importantly, even if this portion of Slater describes a three-bone embodiment where the threads only engage the third bone, Slater provides insufficient support for Petitioner’s position that the threads of screw type 70 only engage the second bone in Slater’s two-bone embodiment, which Petitioner relies on as the anticipatory embodiment of Slater. See Pet. 21; Ex. 1002 ¶ 108 (arguing that Slater’s Figure 1 shows two-bone embodiment). Slater contains no details on this aspect of its alternative two-bone embodiment, such that the threads of the screw may engage the end of the first bone adjacent the second bone and still provide satisfactory results. At best, Petitioner and Dr. Gall’s related testimony establish that it would have been desirable, and perhaps obvious, to have the threads of screw type 70 only engage the second bone in Slater’s two-bone embodiment to create a vise-like configuration that transfers tensile load as claimed, but that does not establish that Slater expressly or inherently discloses such an embodiment to satisfy the anticipation standard.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Falkner’s single-bone embodiment (e.g., as shown in Figures 1 and 2) by citing various other teachings in Falkner, we see minimal analysis that explains why the POSA would have been motivated to make those modifications with a reasonable expectation of success to arrive at claim 10’s subject matter. Even when only one reference is involved, the mere fact that each claim limitation might be found in such reference’s disclosure does not necessarily prove obviousness without analysis that explains why the skilled artisan would have combined those teachings to arrive at the claimed subject matter. In re Stepan, 868 F.3d 1342, 1345–46 n.1 (Fed. Cir. 2017) (“Whether a rejection is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.”) (emphasis added). We recognize that Falkner discloses that its plates may be designed to traverse a joint between bones. See, e.g., Ex. 1006 ¶¶ 21, 23, 29. But there is a dearth of detail about such a hypothetical plate’s actual design. On this record, it appears to us that making such a plate or modifying the plate of Figure 1 to render it suitable to, for example, spanning a joint between the tibia and talus, would require the person of ordinary skill in the art to make distinct design choices beyond any embodiment explicitly described in Falkner. Even then, it is not a foregone conclusion that all the claim limitations would be met (e.g., surfaces of the first and second ends that conform to a bone geometry, and a thicker bridge portion relative to the ends). Petitioner provides minimal argument and evidentiary support to explain why all the claimed features would be included. Petitioner argues, for example, that Falkner’s Figure 1 shows a portion of a transfixation screw hole that has a depth greater than a portion of the plate’s first and second ends. Pet. 41–43. What Petitioner identifies, however, is not the screw hole but the head of a screw. Id. at 42 (hashed red-circle). Neither the identified bridge portion nor screw hole itself appears to have a depth greater than the plate’s first end—claim 10 recites that the depth be greater than a portion of the first and second ends. Petitioner briefly remarks that Falkner “contemplates reducing the [plate] thickness of the bone plate to minimize irritation of soft tissue in regions such as the ‘first end’ of the plate.” Id. (citing Ex. 1006 ¶¶ 32, 35; Ex. 1002 ¶¶ 151, 174). But, on this record, whether Falkner’s cited disclosures teach or suggest that the plate’s first end, in particular, should be made thinner than the bridge and screw hole portions lacks clarity; and Petitioner does very little to explain why a POSA would have been motivated to decrease the thickness at that specific part of the plate.” slip op. at 41
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Finally, for similar reasons, we find the testimony of Patent Owner’s declarant Mr. Sommers more credible and persuasive than the testimony of Petitioner’s declarant Dr. Gall. For example, Dr. Gall opines that Slater discloses a vise configuration, but fails to point to any portion of Slater disclosing that configuration with respect to the two-bone embodiment. See Ex. 1002 ¶ 117; Ex. 1027 ¶¶ 33–46. Again, this testimony may establish the desirability of such a configuration and that one of ordinary skill in the art, when using Slater’s plate, may do so in the manner Dr. Gall proposes, but that does not establish that Slater expressly or inherently discloses a vise-like configuration due to threaded engagement with only the second bone in Slater’s two-bone embodiment. We view the testimony of Mr. Sommers as more credible because it more accurately tracks Slater’s disclosures. See Ex. 2002 ¶¶ 81–82 (opining that Slater “does not describe whether there would also be threads” in the second of the three bones in the three-bone embodiment, in practice the threads may engage multiple bones, and Slater does not illustrate or describe how the screw would be used on a two-bone configuration), 75, 105–116 (opining that Slater fails to disclose the transfer of tensile load limitations).8” slip op. at 27
Patent outcomesUS 9,763,716 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,763,716 - Stryker Corporation / Wright Medical Technology, Inc. v. Osteomed LLCNo claims unpatentablePTAB · May 30, 2023 · IPR2022-00190 · APJ Sheridan K Snedden · IPR · Final written decision
The Board found claim 15 not unpatentable: Slater did not anticipate it, and Petitioner did not show it obvious over Falkner and Duncan.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Finally, for similar reasons, we find the testimony of Patent Owner’s declarant Mr. Sommers more credible and persuasive than the testimony of Petitioner’s declarant Dr. Gall. For example, Dr. Gall opines that Slater discloses a vise configuration, but fails to point to any portion of Slater disclosing that configuration with respect to the two-bone embodiment. See Ex. 1002 ¶ 112; Ex. 1027 ¶¶ 37–46. Again, this testimony may establish the desirability of such a configuration and that one of ordinary skill in the art, when using Slater’s plate, may do so in the manner Dr. Gall proposes, but that does not establish that Slater expressly or inherently discloses a vise-like configuration due to threaded engagement with only the second bone in Slater’s two-bone embodiment. We view the testimony of Mr. Sommers as more credible because it more accurately tracks Slater’s disclosures. See Ex. 2002 ¶¶ 57–58 (opining that Slater “does not describe whether there would also be threads” in the second of the three bones in the three-bone embodiment, in practice the threads may engage multiple bones, and Slater does not illustrate or describe how the screw would be used on a two-bone configuration), 81–83, 108–120 (opining that Slater fails to disclose the transfer of tensile load limitations).2” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“art references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Petitioner proposes that a person of ordinary skill in the art (“POSA” or “POSITA”) at the time of the invention would be an individual having at least a bachelor’s degree in engineering with at least two years of experience in the field, such as experience with the design of surgical implants, or a clinical practitioner with a medical degree and at least two years of experience as an orthopedic surgeon. Pet. 13 (citing Ex. 1002 ¶¶ 35–39). Patent Owner does not dispute Petitioner’s proposal about the POSA’s qualifications. PO Resp. 22. For this Decision, we adopt and apply Petitioner’s proposal for the POSA level, which does not appear to be inconsistent with the level of skill reflected in the asserted prior art.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“screw with threads on its end that only engage the second bone in Slater’s two-bone configuration. See Pet. 26–29 (citing Ex. 1002 ¶ 112; Ex. 1005, 11:19–25, 12:32–13:3, 13:21–24); Pet. Reply 13–15 (citing Ex. 1002 ¶ 112; Ex. 1005, 5:28–6:10, 6:18–28, 12:32–13:3, 19:25–26, 22:13–18, 27:11–17; Ex. 1027 ¶¶ 121–123; Ex. 1027 ¶¶ 33–42; Ex. 1031, 67:23–68:7, 68:17– 70:3, 70:16–19, 71:5–9, 74:6–25, 75:5–13, 77:14–22, 106:19–107:17; Ex. 2003, 46:23–48:4, 90:24–91:23). We are not persuaded by Petitioner’s argument because Slater does not expressly or inherently disclose how its lag screw threads interact with the first and second bone. Slater’s Figure 4 “shows an elevation view of a second screw type 70” having “a longer shank to increase depth of penetration and has an abbreviated threaded portion to allow the majority of the shank to slide through aligned tibial and talus screw holes finally anchoring in the calcaneus bone.” Ex. 1005, 12:32–13:3. This description of screw type 70 in the three-bone configuration does not state that the screw only engages the third bone, the calcaneus bone, and describes the “majority of the shank” as “slid[ing] through” holes in the first two bones without stating that none of the threads engage a portion of, for example, the end of the second bone adjacent the third bone. See id. More importantly, even if this portion of Slater describes a three-bone embodiment where the threads only engage the third bone, Slater provides insufficient support for Petitioner’s position that the threads of screw type 70 only engage the second bone in Slater’s two-bone embodiment, which Petitioner relies on as the anticipatory embodiment of Slater. See Pet. 27– 28; Ex. 1002 ¶¶ 111–112 (arguing that Slater’s Figure 1 shows two-bone embodiment). Slater contains no details on this aspect of its alternative twobone embodiment, such that the threads of the screw may engage the end of the first bone adjacent the second bone and still provide satisfactory results. At best, Petitioner and Dr. Gall’s related testimony establish that it would have been desirable, and perhaps obvious, to have the threads of screw type 70 only engage the second bone in Slater’s two-bone embodiment to create a vise-like configuration that transfers tensile load as claimed, but that does not establish that Slater expressly or inherently discloses such an embodiment to satisfy the anticipation standard.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Moreover, to the extent Petitioner’s challenge purports to modify Falkner’s single-bone embodiment (e.g., as shown in Figures 1 and 2) by citing various other teachings in Falkner, we see minimal analysis that explains why the POSA would have been motivated to make those modifications with a reasonable expectation of success to arrive at claim 10’s subject matter. Even when only one reference is involved, the mere fact that each claim limitation might be found in such reference’s disclosure does not necessarily prove obviousness without analysis that explains why the skilled artisan would have combined those teachings to arrive at the claimed subject matter. In re Stepan Co., 868 F.3d 1342, 1345–46 n.1 (Fed. Cir. 2017) (“Whether a rejection is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.”) (emphasis added). Falkner’s cited plate in Figures 1 and 2 is not arranged as claimed. Ex. 1006, Fig. 1. It is not configured to secure two discrete bones (e.g., the tibia and talus) across an intermediate joint between those bones, nor is the plate configured with first and second ends having inner surfaces that substantially conform with a geometry of first and second discrete bones. This is plain from the cross-sectional anatomical views of the tibia, joint, and talus shown in the figure itself. To make the plate so configured would seemingly require redesign or modifications. Petitioner’s obviousness analysis on claim 10 is, however, wanting for detail as noted above (e.g., minimal explanation why the POSA would have modified the Falkner plate with a reasonable expectation of success). We recognize that Falkner discloses that its plates may be designed to traverse a joint between bones, including the ankle joint. See, e.g., Ex. 1006 ¶¶ 21, 23, 29. But there is a dearth of detail about such a hypothetical plate’s actual design. On this record, it appears to us that making such a plate or modifying the plate of Figure 1 to render it suitable to, for example, spanning a joint between the tibia and talus would require the person of ordinary skill in the art to make distinct design choices beyond any embodiment explicitly described in Falkner. Even then, it is not a foregone conclusion that all the claim limitations would be met (e.g., surfaces of the first and second ends that conform to a bone geometry, and a thicker bridge and screw hole portion relative to the ends), and Petitioner provides minimal argument and evidentiary support to explain why all the claimed features would be included. Petitioner argues, for example, that Falkner’s Figure 1 shows a portion of a transfixation screw hole that has a depth greater than a portion of the plate’s first and second ends. Pet. 40–42. What Petitioner identifies, however, is not the screw hole but the head of a screw. Id. at 42 (hashed red-circle). Neither the identified bridge portion nor screw hole itself appears to have a depth greater than the plate’s first end—claim 10 recites that the depth be greater than a portion of the first and second ends. Petitioner briefly remarks that Falkner “contemplates reducing the [plate] thickness of the bone plate to minimize irritation of soft tissue in regions such as the ‘first end’ of the plate.” Id. at 41 (citing Ex. 1006 ¶¶ 32, 35; Ex. 1002 ¶ 133). But, on this record, whether Falkner’s cited disclosures teach or suggest that the plate’s first end, in particular, should be made thinner than the bridge and screw hole portions lacks clarity; and Petitioner does very little to explain why a POSA would have been motivated to decrease the thickness at that specific part of the plate.” slip op. at 40
Patent outcomesUS 9,351,776 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,351,776 - Stryker Corporation / Wright Medical Technology, Inc. v. Osteomed LLCNo claims unpatentablePTAB · May 30, 2023 · IPR2022-00189 · APJ Sheridan K Snedden · IPR · Final written decision
Claim 16 was not shown unpatentable: Slater does not anticipate it, and the Falkner-Duncan combination does not render it obvious.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“declarant Mr. Sommers more credible and persuasive than the testimony of Petitioner’s declarant Dr. Gall. For example, Dr. Gall opines that Slater discloses a vise configuration, but fails to point to any portion of Slater disclosing that configuration with respect to the two-bone embodiment. See Ex. 1002 ¶ 99; Ex. 1027 ¶¶ 33–42. Again, this testimony may establish the desirability of such a configuration and that one of ordinary skill in the art, when using Slater’s plate, may do so in the manner Dr. Gall proposes, but that does not establish that Slater expressly or inherently discloses a vise-like configuration due to threaded engagement with only the second bone in Slater’s two-bone embodiment. We view the testimony of Mr. Sommers as more credible because it more accurately tracks Slater’s disclosures. See Ex. 2002 ¶¶ 57–58 (opining that Slater “does not describe whether there would also be threads” in the second of the three bones in the three-bone embodiment, in practice the threads may engage multiple bones, and Slater does not illustrate or describe how the screw would be used on a two-bone configuration), 81–83, 108–120 (opining that Slater fails to disclose the transfer of tensile load limitations).2” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For this Decision, we adopt and apply Petitioner’s proposal for the POSA level, which does not appear to be inconsistent with the level of skill reflected in the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Having considered the parties’ positions and evidence of record, we determine that no express construction of any claim term is necessary to determine whether to institute inter partes review. 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))). To the extent further discussion of the meaning of any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Finally, while the term “trajectory” used in isolation may not necessarily connote a fixed angle, the assessment here is whether the recitation of an inner surface of a screw configured to direct a screw at a trajectory is describing a fixed angle, and more specifically, describing a screw hole configured to direct a screw at a single trajectory. In view of the claim structure of independent claims 1 and 11, the content of the specification, and testimony of Mr. Sommer’s, summarized above, I determine it does. The claims expressly require a transfixation screw hole that itself is “configured to direct the transfixation screw through the transfixation screw hole . . . at a trajectory,” which in context indicates that a screw hole directs the trajectory of the screw, even if other factors may also influence the trajectory. Cf. Reply 2–3. In other words, we agree with Patent Owner that “[a person of ordinary skill in the art] reading [claim 11] in light of the intrinsic record would understand that [the claim language describing the recited screw hole] means that the shape of the inner surface of the transfixation screw hole is such that it guides the screw at a fixed angle.” PO Resp. 17; Ex. 2002 ¶ 94.” slip op. at 51
Patent outcomesUS 8,529,608 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,529,608
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.