• Lululemon USA Inc. v. Nike, Inc.Some claims unpatentable
  PTAB · May 21, 2025 · IPR2024-00159 · APJ Carl M Defranco · IPR · Final written decision

  Claims 8, 9, 14, 15, and 19 are unpatentable over Minami; claims 1–3, 7, 16–18, and 20 were not shown unpatentable over Good or Munsing.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “lululemon contends, and Nike does not dispute, that a person skilled in the art in the relevant time frame would have had “at least a bachelor’s degree in mechanical engineering, textile engineering, or similar technical degree and at least 3 years of experience working with knitted textiles for use in fabric-based articles, including apparel such as footwear” and such person’s “additional experience compensates for any differences in that person’s education as stated above.” Pet. 13–14 (citing Ex.1003 ¶¶ 33–35); see also PO Resp. 14 (“For purposes of this proceeding, Nike applies lululemon’s proposed level of skill in the art.”). We find that lululemon’s proposed definition is consistent with the problems and solutions described in the ’046 patent and the prior art of record. Thus, we adopt the parties’ agreed-upon definition of the level of skill in the art.” slip op. at 6

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

    “We are not persuaded by lululemon’s attempt to equate the term “channel” in that passage with an open-periphery configuration. Nowhere does that passage indicate that the “channel” has an open-periphery. Instead, lululemon merely presumes, without support, that channels are open-periphery structures. More accurately, the terms “tunnel” and “channel” in the passage cited by lululemon are used synonymously. That is made clear by the overall context of the ’046 patent at issue, which is directed to how tubular rib structures 126 are formed by “first” and “second” curved portions 416 and 418 that are “knitted together” to define “hollow tube 112.” See Ex. 1001, 10:16–11:14, Figs. 4, 5 (emphasis added). In particular, the sentence cited by lululemon describes hollow tube 112 as being “disposed between” first and second curved portions 416 and 418, which Figures 4 and 5 of the ’046 patent clearly depict in a closed-periphery configuration. See id. at 10:66–11:3, Figs. 4, 5. Moreover, the very next sentence expressly describes that hollow tube 112 has “a generally cylindrical or elliptical shape” wherein “[t]he diameter of one hollow tube and the diameter of other hollow tubes may differ in some embodiments.” Id. at 11:3–14 (emphases added). We are not aware of any open-periphery channels being described as having a cylindrical or elliptical shape, nor are we aware of such a channel being described as having a diameter. Thus, lululemon’s proposed claim construction ignores the context surrounding the ’046 patent’s description of the tubular rib structures when it describes them as having the configuration of a tunnel or channel.” slip op. at 10

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

    “We agree with Nike, given our construction of the claimed “tubular structures.” As shown in annotated Figures 1, 3, and 4 of Good (reproduced below), Good discloses a sock 12 having rib portions 22 (red) and webbed areas 24 (green). See PO Resp. 19. lululemon contends that Good’s rib portions 22 meet the claimed “tubular structures” because each rib portion 22 “roll[s] substantially together in the relaxed condition” and “has the shape of a tube, namely an elongate hollow structure.” Pet. 29–30. In support, lululemon points to Good’s Figure 3 (reproduced below center) as allegedly showing the tubular shape of Good’s rib portions 22. Id. at 30. Annotated Figure 3 is a vertical cross-section of rib portions 22 (red) shown in Good’s Figure 1. But, as Nike correctly notes, Good’s rib portions 22 are “C-shaped knitted portions,” which when stretched, go from an essentially C-shaped configuration (Figure 3) to a relatively flat, linear configuration (Figure 4). PO Resp. 19–20 (citing Ex. 2006 ¶¶ 48–49). Nowhere does Good disclose that the ends of C-shaped rib portions 22 ever meet and remain in a closed periphery configuration to form a hollow tube per our construction of “tubular structures” (as discussed above in Section II.B). In at least this way, Good’s C-shaped rib portions 22 differ from the claimed “tubular structures.”7 Thus, we find that Good does not disclose or otherwise suggest the claimed “tubular structures,” as properly construed, meaning that lululemon fails to demonstrate, by a preponderance of the evidence, that Good either anticipates claims 1–3, 7, 16–18, and 20, or, alternatively, renders obvious claim 3.” slip op. at 16

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “In our Institution Decision, we said that Munsing lacks the claimed “tubular structures” because “nowhere does Munsing indicate that the rows of stitches or loops form a rib that is tubular-like, let alone one with a closed periphery.” Inst. Dec. 10–12. During the trial phase, lululemon’s expert likewise agreed, conceding (on cross-examination) that Munsing only discloses non-tubular structures. See Ex. 2007, 40:9–41:11 (“Q [by Patent Owner’s counsel]: So you agree that . . . Munsing only discloses a nontubular rib? A [by lululemon’s expert]: That’s what I said.”). Nowhere does lululemon rebut that admission by its own expert, despite Nike noting it explicitly as a reason for rejecting Ground 2. Compare PO Resp. 25–26 (noting the admission of lululemon’s expert), with Pet. Reply 1–26 (addressing only Grounds 1 and 3, while omitting any mention of Ground 2, which is based on Munsing). Nor does lululemon ever dispute the preliminary findings in our Institution Decision as to why Munsing is not an anticipatory reference. Compare Inst. Dec. 10–12, with Pet. Reply 1–22. Thus, lululemon fails to demonstrate, by a preponderance of the evidence, that Munsing anticipates challenged claims 1–3, 7, 17, 18, and 20.” slip op. at 18

  Patent outcomesUS 9,375,046 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 9,375,046
• Lululemon Athletica Canada Inc. / Lululemon USA Inc. v. Nike, Inc.Some claims unpatentable
  PTAB · May 13, 2024 · IPR2023-00189 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1–4, 7, 8, and 11–16 are unpatentable over Arrasvuori; claims 5, 6, 9, 10, and 17–20 are not unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’256 patent, the background technical field, the prior art, and Petitioner’s unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Dr. Lynch (Ex. 1003 ¶¶ 43, 44).” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “simultaneously communicate in real-time to the first user at the first location and the second user at the second location, an interface indicating whether the challenge has been met.” Ex. 1001, 40:64–67 (emphasis added). The claim language itself suggests that “continuously generat[ing]” an interface in “real-time” allows the interface to indicate whether a challenge “has been met,” and doing so “in real-time” suggests that updates to the interface are generated as developments occur that may affect whether the challenge “has been met.” Notably, the subject claim limitation explicitly recites “continuously” generating the interface “in real-time”; it does not recite— but easily could have if intended—“periodically” generating the interface (i.e., at predetermined time intervals independent of the occurrence of developments that may affect whether the challenge has been met).3” slip op. at 29

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artDecided for petitioner

    “Petitioner contends Arrasvuori qualifies as prior art under 35 U.S.C. §§ 102(a) and 102(e) based on its filing and publication dates. Pet. 24. Patent Owner does not contest the prior art status of Arrasvuori. Also, on this record, we have no evidence of an invention date other than the earliest possible effective filing date of the challenged claims. Thus, for purposes of this Decision, we determine that Arrasvuori qualifies as prior art under 35 U.S.C. § 102(a) because Arrasvuori’s publication date of October 11, 2007, is before the earliest possible effective filing date of the challenged claims, which is March 3, 2008, and under § 102(e) because Arrasvuori’s filing date of March 29, 2006, is before the earliest possible effective filing date of the challenged claims (March 3, 2008). Ex. 1001, codes (22), (60), (63); Ex. 1005, code (22), (43).” slip op. at 18

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

    “Arrasvuori discloses (a) “[m]onitoring” of “users performing real- world fitness tasks” (Ex. 1005 ¶ 38), using (b) “monitoring equipment . . . integrated into . . . wireless nodes and/or other computers of users, and/or [] attached to bodies of users” (id. at ¶ 39 (emphasis added)), where (c) “[u]sers might . . . wear their wireless nodes and/or other computers” (id. (emphasis added)), and where (d) “[t]he phrase[] ‘computer’ . . . refer[s] but [is] not limited to . . . a computerized watch” (id. at ¶ 90 (emphasis added); see id. at ¶ 40 (disclosing that “employed monitoring equipment might include one or more sensors”)). We find that these descriptions in Arrasvuori provide an anticipatory disclosure, particularly to the skilled artisan, of the limitation “wirelessly-connected sensor worn on an appendage of a first user.” See Ex. 1017 ¶ 45; Ex. 2006, 84:10-85:22. Although Arrasvuori does not recite in a single sentence the substance of disclosures (a) through (d) above, such as explicitly stating that its “wireless node is a computerized watch,” this is not necessary for the skilled artisan to understand that Arrasvuori discloses such a feature. See In re Bond, 910 F.2d at 832–33 (anticipation “is not an ‘ipsissimis verbis’ test”). Moreover, as argued by Petitioner, Arrasvuori’s disclosure of sensors “attached to bodies of users” and of users “wear[ing]” sensors itself discloses the subject limitation as broadly recited, even without considering the additional disclosure of a computerized watch. See Pet. Reply 17 (“Arrasvuori teaches wrist-worn sensors by stating that its users can ‘wear their wireless nodes and/or other computers.’” (citing Ex. 1005 ¶39)).” slip op. at 21

  Patent outcomesUS 9,278,256 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,278,256
• FMC Technologies, Inc. v. Onesubsea IP UK LimitedSome claims unpatentable
  PTAB · Oct 11, 2017 · IPR2016-00907 · APJ Michelle N Wormmeester · IPR · Final written decision

  Claims 1, 10–12, 17–19, 21–23, 25–29, 31–35, 38, 39, and 41 are unpatentable; claims 36 and 37 were not shown unpatentable.

  RulingsFinal written decision

  • Expert testimonyOther

    “Owner now urges. Even Patent Owner’s expert admitted that the term “complete” is an “arbitrary” term that adds nothing “about what [to] decide is going to be an assembly and what’s not going to be an assembly.” Ex. 1015, 80:1–5, cited in Pet. Reply 4. As such, Patent Owner’s addition of the term “complete” sheds no light on how a skilled artisan would have understood the relationship of parts that make up an “assembly.” We reject Patent Owner’s attempt now to construe the term more narrowly than it did in the district court action. Accordingly, we construe “assembly” as “a multipart device.”” slip op. at 15

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

    “Owner now urges. Even Patent Owner’s expert admitted that the term “complete” is an “arbitrary” term that adds nothing “about what [to] decide is going to be an assembly and what’s not going to be an assembly.” Ex. 1015, 80:1–5, cited in Pet. Reply 4. As such, Patent Owner’s addition of the term “complete” sheds no light on how a skilled artisan would have understood the relationship of parts that make up an “assembly.” We reject Patent Owner’s attempt now to construe the term more narrowly than it did in the district court action. Accordingly, we construe “assembly” as “a multipart device.”” slip op. at 15

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

    “that these discrete components are not a diverter assembly.” PO Resp. 32. As support, Patent Owner points to Mr. Herrmann’s testimony that Kelly’s line 20 is part of a “production discharge line.” Id. at 32–33 (citing Ex. 2005, 248:13–249:2). Patent Owner also points to Petitioner’s explanation in its Petition that “[l]ine 20 connects from the well production string to production flowline body or collet body 22.” Id. at 33 (citing Pet. 8); see also id. (“collet body 22 is an independent component consisting of two flow passages that are connected to the production flowlines 20 and 24”). That line 20 is part of a production discharge line or that it connects from the well production string to collet body 22 does not preclude collet body 22 and line 20 from being a diverter assembly. Indeed, as discussed above, we find that collet body 22 changes the flow path of the fluid in opposite directions, thereby providing, together with line 20, “a multipart device that changes the course or direction of a fluid’s current flow path.” See also Ex. 2006 ¶ 83 (Patent Owner’s expert testifying that “[t]he production discharge line is simply a flowline that takes fluid from the tree and, in the case of Kelly, takes the fluid to a choke installed on the flowline”). Accordingly, Patent Owner’s argument here also does not adequately rebut Petitioner’s persuasive evidence and argument that Kelly discloses a “diverter assembly.”” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Petitioner must provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In that regard, Petitioner further argues that “[o]ne of skill in the art would have modified ‘subsea choke assembly 26’ of Kelly to include one or more of a pressure sensor, temperature sensor or flow sensor, or to substitute ‘subsea choke assembly 26’ with ‘production module 61,’ as taught by Fenton.” Pet. 26– 27. According to Petitioner, “[m]odifying Kelly’s subsea choke assembly by adding one or more temperature sensors, pressure sensors, or flow meters as taught by Fenton would provide information related to fluid flow through the assembly and allow more precise control of the choke to achieve desired flow characteristics.” Id. at 27. Petitioner relies on Mr. Herrmann’s declaration testimony as support for its argument. Id. at 27–28 (citing Ex. 1003 ¶¶ 32–33). Petitioner also argues that “a person of ordinary skill would have modified Kelly’s subsea apparatus in a second manner by substituting the entire ‘subsea choke assembly 26’ of Kelly with the entire ‘production module 61’ of Fenton,” indicating that “[s]uch a modification would be a simple substitution . . . and would provide the advantages of the additional functionality present in Fenton’s module.” Id. at 28. Based on the record before us, we are persuaded by Petitioner’s proffered reasoning for modifying Kelly’s choke assembly to include Fenton’s temperature sensors, pressure sensors, or flow meters to allow for more precise control of the choke. We also are persuaded by Petitioner’s proffered reasoning for substituting Kelly’s choke assembly with Fenton’s production module. Thus, we find that Petitioner has provided adequately “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See Kahn, 441 F.3d at 988.” slip op. at 47

  Patent outcomesUS 8,573,306 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,573,306
• Fpusa, LLC v. M-I LLCSome claims unpatentable
  PTAB · May 24, 2017 · IPR2016-00295 · APJ Timothy J Goodson · IPR · Final written decision

  Derrick rendered claims 1, 3–6, 8–10, 14, and 15 of the ’288 patent and claims 1, 3–6, 8–10, and 14–18 of the ’440 patent unpatentable; other instituted grounds were not proven.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “We note that the parties’ experts are in agreement that “preventing stalling” means avoiding clogging the screen with solids. Ex. 1013 ¶ 24; Ex. 2015 ¶¶ 49–50; Ex. 2017, 28:8–14. The specification supports this understanding of what it means to prevent stalling. See Ex. 1001, 3:37–42, 47–49, 6:34–39, 54–58. Further, both parties’ proposed constructions reflect this understanding of what it means to prevent stalling. In this respect, the parties’ proposals are similar. The parties capture that concept using slightly different wording. In our view, Petitioner’s construction hews more closely to the description in the specification. See id. Therefore, we adopt Petitioner’s proposed construction that “controlling air flow under at least a portion of the first screen to prevent stalling of the slurry on the screen” in claim 1 of the ’288 patent and “controlling air flow under the screen to prevent stalling of the slurry on the screen” in claim 9 of the ’440 patent include adjusting a pressure differential across a screen to allow solids to be conveyed along the screen unhindered and to allow fluid to flow through the screen.” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “C. “slurry” Claims 1 and 10 of both the ’288 and ’440 patents recite a “slurry.” Patent Owner proposes that this term should be construed to mean “a mixture of drilling fluid and drill cuttings.” 213 PO Resp. 25. Patent Owner notes that the parties stipulated to this construction in the Parallel District Court Litigation. Id. (citing Ex. 2018). In the claim construction section of Petitioner’s Reply, Petitioner does not respond to Patent Owner’s proposal or propose a different construction of this term. See 213 Pet. Reply 3–5. The specification supports Patent Owner’s proposal because it sets forth the proposed construction as an express definition of the term. See Ex. 1001, 5:20–21 (“As used herein, a slurry refers to a mixture of drilling fluid and drill cuttings.”). Therefore, we adopt Patent Owner’s proposal that “slurry” means “a mixture of drilling fluid and drill cuttings.”” slip op. at 15

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

    “We agree with Petitioner that Patent Owner’s proposal improperly equates the description of a “shale shaker” in the specification with the broader term “shaker” used in the claims. Although the specification focuses heavily on shale shakers that are used in the oil and gas industry, Patent Owner did not use the word “shale shaker” in its claims and instead chose the broader term “shaker.” See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). The deposition testimony of Petitioner’s expert cited by Patent Owner does not persuade us that a “shaker” means only a “shale shaker” and cannot include any other type of vibratory separator because Mr. Matthews was not asked that question; he was only asked the more ambiguous question of whether the term shaker “refers to” a shale shaker. Ex. 2017, 11:8–15. Therefore, we adopt only the parties’ agreed-upon portion of Patent Owner’s construction and interpret “shaker” to mean “a vibratory separator.”5” slip op. at 16

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “In the 295 IPR, the Petition was filed on December 8, 2015, less than nine months after the ’440 patent issued on July 7, 2015. 295 IPR, Ex. 1001, at [45]. Accordingly, the Petition in the 295 IPR is timely under 37 C.F.R. § 42.102(a) only if the ’440 patent is a “first-to-invent” patent, notwithstanding the July 31, 2014, filing date of the application that issued as the ’440 patent. Id. at [22]. Petitioner contends that the ’440 patent is a “first-to-invent” patent because, by virtue of its priority claims, it does not contain a claim having an effective filing date on or after March 16, 2013. 295 Pet. 2. In our Decision on Institution in the 295 IPR, we outlined the analysis that led to our preliminary determination that Petitioner had sufficiently shown that the 2 Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”). 3 If a post-grant review of such a patent is instituted, a petition for inter partes review is not timely until after the termination of the post-grant review. 37 C.F.R. § 42.102(a)(3). ’440 patent is a “first-to-invent” patent and, therefore, the Petition in the 295 IPR was timely. See 295 Dec. on Inst. 8–11. We also noted that “Patent Owner has the opportunity to present contrary evidence after institution.” Id. at 11. Patent Owner did not present any argument or evidence on this issue in its Patent Owner Response in the 295 IPR. At the hearing, Patent Owner stated that it does not dispute that the Petition in the 295 IPR was timely filed. See Tr. 73:22–74:5. Therefore, for the reasons discussed in our Decision on Institution, we determine that the Petition in the 295 IPR was timely.” slip op. at 11

  Patent outcomesUS 9,074,440 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,074,440
• Fpusa, LLC v. M-I LLCSome claims unpatentable
  PTAB · May 24, 2017 · IPR2016-00213 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1, 3–6, 8–10, 14, and 15 of the ’288 patent and claims 1, 3–6, 8–10, and 14–18 of the ’440 patent are unpatentable, principally anticipated by Derrick or Vasshus.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “to the “first-inventor-to-file” provisions of the AIA.2 A petition for inter partes review of a “first-inventor-to-file” patent (i.e., a patent described in section 3(n)(1) of the AIA) may not be filed until after at least “the date that is nine months after the date of the grant of the patent.” 37 C.F.R. § 42.102(a)(1).3 By contrast, a petition for inter partes review of a “first-toinvent” patent (i.e., a patent not described in section 3(n)(1) of the AIA) may be filed at any time after “the date of the grant of the patent.” 37 C.F.R. § 42.102(a)(2). Under section 3(n)(1), the first-inventor-to-file provisions apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time a claim to a claimed invention that has an effective filing date on or after March 16, 2013. See AIA § 3(n)(1). In the 295 IPR, the Petition was filed on December 8, 2015, less than nine months after the ’440 patent issued on July 7, 2015. 295 IPR, Ex. 1001, at [45]. Accordingly, the Petition in the 295 IPR is timely under 37 C.F.R. § 42.102(a) only if the ’440 patent is a “first-to-invent” patent, notwithstanding the July 31, 2014, filing date of the application that issued as the ’440 patent. Id. at [22].” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “We note that the parties’ experts are in agreement that “preventing stalling” means avoiding clogging the screen with solids. Ex. 1013 ¶ 24; Ex. 2015 ¶¶ 49–50; Ex. 2017, 28:8–14. The specification supports this understanding of what it means to prevent stalling. See Ex. 1001, 3:37–42, 47–49, 6:34–39, 54–58. Further, both parties’ proposed constructions reflect this understanding of what it means to prevent stalling. In this respect, the parties’ proposals are similar. The parties capture that concept using slightly different wording. In our view, Petitioner’s construction hews more closely to the description in the specification. See id. Therefore, we adopt Petitioner’s proposed construction that “controlling air flow under at least a portion of the first screen to prevent stalling of the slurry on the screen” in claim 1 of the ’288 patent and “controlling air flow under the screen to prevent stalling of the slurry on the screen” in claim 9 of the ’440 patent include adjusting a pressure differential across a screen to allow solids to be conveyed along the screen unhindered and to allow fluid to flow through the screen.” slip op. at 15

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The differences between these competing articulations of the level of ordinary skill in the art are fairly minor. Our analysis below, including the conclusions we reach, would be substantially the same under either proposal. Nevertheless, after considering the evidence of record, we adopt Mr. Palmer’s definition of the level of ordinary skill in the art because we agree that five years of relevant experience is sufficient to achieve the level of ordinary skill in this art. We are not convinced that an engineering degree is necessary, and Petitioner’s proposal is not specific about what “equivalent industry experience or education” would involve.” slip op. at 20

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

    “We agree with Petitioner that Derrick discloses the “controlling” step. As discussed in Section III.B. above, we construe this limitation to include adjusting a pressure differential across a screen to allow solids to be conveyed along the screen unhindered and to allow fluid to flow through the screen. The specification of the ’288 patent describes accomplishing this by toggling the pressure between vacuum and static. Ex. 1001, 6:35–39, 54–58. In the Parallel District Court Litigation, Patent Owner relied on that disclosure as support for the “controlling” step. Ex. 1018, 24. As indicated in our summary of Derrick above, Derrick describes the same technique for the same purpose. Ex. 1004 ¶ 79. Patent Owner’s arguments are not persuasive because they do not address the portions of Derrick on which Petitioner’s challenge is based. Patent Owner’s arguments distinguish Derrick’s disclosure of alternating application of suction and pressure. But Petitioner’s challenge is based on Derrick’s disclosure of alternating application and release of suction. Accordingly, we find that Derrick discloses each element of claim 1. b. Claims 3–6, 8, and 9 Turning to the dependent claims, Petitioner explains how Derrick discloses the subject matter of claims 3–6, 8, and 9. 213 Pet. 28–30. Aside from pointing out their dependency from claim 1, Patent Owner does not dispute Petitioner’s arguments regarding these claims. See 213 PO Resp. 30. Having reviewed the underlying evidence cited in support of Petitioner’s arguments, we agree with and adopt Petitioner’s analysis of how Derrick discloses the features of these dependent claims. 3.” slip op. at 24

  Patent outcomesUS 9,004,288 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,004,288
• NHK Seating Of America, Inc. v. Lear CorporationSome claims unpatentable
  PTAB · Feb 2, 2016 · IPR2014-01202 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 2, 4, 6, 8, 9, and 28–31 are unpatentable as anticipated by JP ’468; the remaining challenged claims are not held unpatentable.

  RulingsFinal written decision

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

    “The Specification describes two embodiments in which structures are “joined or fastened” to the seatback frame, namely, a first embodiment in which plate 10 having clamped ends 14 with clips 16, and springs 18 are joined to the frame 2, id. at 1:54–64, and a second embodiment in which spring 18, clips 32, and cam guides 46 are joined to frame 2, id. at 2:15–24. Headrest cushion 6 never touches frame 2 in either embodiment, but instead is connected to posts 8 (first embodiment) or 30 (second embodiment). “[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (citation omitted). Dependent claims 6 and 59 recognize that the posts are structures different than the headrest by reciting that the headrest “is separated from the seatback frame by a post.” Ex. 1001, C1 1:52–54 (claim 6), C1 4:31–32 (claim 59). The principle of claim differentiation instructs us to interpret “headrest” in claims 2 and 57 to refer to the headrest without the posts. Even if we were to interpret “headrest” to encompass the posts, however, posts 8 (first embodiment) and posts 30 (second embodiment) also never touch the seatback frame. Instead, the posts along with other structures functionally link the headrest to the frame.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “NHK persuades us by a preponderance of evidence that JP ’468 describes a headrest that is pivotally attached with the seatback frame. For the reasons expressed in part II.A above, we interpret “headrest pivotally attached with the seatback frame” more broadly than proposed by Lear. We interpret “pivotally attached with” to encompass a relationship between the headrest and seatback frame that involves the headrest being functionally linked via intervening structures to the seatback frame so that the headrest rotates forward in response to a rearward force applied to an impact target. Under our interpretation, JP ’468 describes “a headrest pivotally attached with the seatback frame.” We find that intervening structures physically join headrest 15 of JP ’468 to its frame member 8. Frame member 8, with its supporting arm 9 (the alleged seatback frame), is pivotally joined at axis 10 to bracket 5 of seat cushion support member 4 (the alleged bun frame), which is joined to floor 1 and thus also floor member 1′. Ex. 1008, 3–5, Figure 1. Headrest 15 is connected to arm 16, which is pivotally joined via pin 17 to bracket 18 “at the top part of floor member 1′.” Id. at 5. Headrest 15 is attached to frame 8 via the intervening structures described above and pivots about the recited axis. Accordingly, we find that a preponderance of evidence demonstrates that headrest 15 is “pivotally attached with the seatback frame” as recited in claims 2 and 57.” slip op. at 19

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

    “Similarly, we are not persuaded by NHK’s argument that using Ferrara’s spring would decrease the risk of whiplash injury. To the extent that Ferrara improves a headrest, it does so by providing the compliance that Dr. Viano recognized to reduce the risk of impact-based head injury in highspeed collisions. Ferrara never describes its spring, which softens a blow to the occupant’s head, as reducing the risk of whiplash injury, and the testimony from Dr. Viano that NHK cites does not support such a conclusion. Rather, Dr. Viano merely testifies that it is “possible” for “some blows to the head” to cause whiplash, Ex. 1018, 51:1–52:2, and whether such a blow causes whiplash “depends on so many factors,” id. at 52:4–53:1. Dr. Viano never testifies that Ferrara’s spring reduces the risk of whiplash injury, and NHK cites no evidence to support such a conclusion. Because NHK fails to establish that using Ferrara’s spring in Mertens’s headrest would “mitigate whiplash risk,” NHK’s proffered rationale for using Ferrara’s spring in Mertens’s headrest and, thus, NHK’s obviousness challenge is unpersuasive. “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). A challenge “on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (C.A.Fed.2006)). The argument and evidence proffered by NHK does not establish any credible reason to combine Ferrara’s spring with Mertens’s headrest. Nor does NHK proffer any evidence to establish whether a skilled artisan would have considered Ferrara’s spring 48 to have been an obvious substitute for Mertens’s torsion member 85 to permit rearward rotation of the headrest in severe collisions. NHK bears the burden of proving obviousness of the challenged claims by a preponderance of evidence, and we conclude that it has failed to do so in this case. Accordingly, we conclude that NHK has failed to establish that the combination of Mertens and Ferrara renders claims 2, 4, 6, 8, 9, 13–20, 31, 43–49, 55–60, 62–68, 70, 81, 84–90, 93, and 94 unpatentable as obvious under 35 U.S.C. § 103.” slip op. at 28

  • ExcludeMotion to exclude, deniedDenied

    “IV. LEAR’S MOTION TO EXCLUDE We have reviewed Lear’s Motion to Exclude, NHK’s Opposition to the Motion, and Lear’s Reply in support of the Motion. Based on our review, we deny the Motion in all respects for one or both of the following reasons: (1) the Motion is moot because it seeks to exclude evidence not considered or relied upon in rendering this Decision or (2) the Motion addresses issues more appropriate to determining the weight ascribed to the evidence rather than the admissibility of evidence. In rendering this Decision, we determine and ascribe the appropriate weight to all proffered evidence and, when appropriate, comment upon the weight ascribed.” slip op. at 29

  Patent outcomesUS 5,378,043 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,378,043
• NHK Seating Of America, Inc. v. Lear CorporationSome claims unpatentable
  PTAB · Jan 12, 2016 · IPR2014-01079 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1, 3, 6–9, 12–16, 20, and 21 are unpatentable; claims 2, 4, 10, 11, 17, and 25 are not shown unpatentable.

  RulingsFinal written decision

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

    “As will be described in greater detail below, headrest 22 moves variably upon vehicle impact. In the embodiment shown, such variable movement occurs in first and second manners wherein the first and second manners relate to first and second forward velocities respectively, those being the velocities of the headrest 22 forward toward the occupant or the front of the vehicle, and first and second trajectories respectively, those being the trajectories or paths of headrest 22. Such variable movement could be along any suitable combination of trajectories and velocities. As long as at least one of the first forward velocity and first trajectory is different than one of a second forward velocity and second trajectory, movement in first and second manners, variable movement, has been achieved. Ex. 1001, 5:12–26 (emphasis added). This passage is consistent with interpreting “first manner and second manner” as meaning “any two different ways.” As described in this quoted passage, if either the forward velocity or the trajectory of the headrest, or both changes, then movement in a first and second manner has occurred. For example, if the headrest were to move forward at one velocity and then merely slow down (or speed up) on the same trajectory, then movement would occur in a first and second manner.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “headrest that moves in a first manner and a second manner because Dr. Kent’s original modeling of Nakano’s headrest failed to account for the constraint imposed by brackets 35. Resp. 20–23. Lear further contends that its expert, Dr. Viano, “correctly model Nakano” and determined that brackets 35 were “essential” to predicting the motion of Nakano’s headrest. Id. at 23. Lear also argues that movement of Nakano’s headrest may be defined mathematically by a single equation, which allegedly demonstrates that Nakano’s headrest moves along “a single trajectory.” Id. at 23–24 (citing Ex. 2010 ¶¶ 112–15). Lear contends that Dr. Kent “admits” that a path of motion that can be expressed by a single equation establishes movement in only one manner. Id. at 25 (citing Ex. 2012, 17:3–14). Our review of the cited testimony, reveals that it does not support Lear’s contention. We also do not understand Dr. Viano’s testimony to support a conclusion that a “single equation” defines the movement of Nakano’s headrest. Dr. Viano refers to Exhibit 2018 as reflecting his derivation of the mathematical relationships that define movement of Nakano’s headrest. Ex. 2010 ¶ 112 (citing Ex. 2018). Exhibit 2014 demonstrates that one equation defines the movement of Nakano’s headrest in the x-direction and another equation defines it in the y-direction. Ex. 2018, 1. Dr. Viano never provides an exemplary output of these two equations to illustrate how Nakano’s headrest would actually move. More importantly, however, Lear does not explain how Nakano’s express description that the coordinated operation of links 61, 62, and 63 lifts its headrest (as shown in Figure 5b) and subsequently lifts the headrest obliquely forward (as shown in Figure 5d) fails to constitute movement in a first and second manner. NHK persuades us by a preponderance of evidence that Nakano describes a headrest that moves in a first and second manner. More specifically, Nakano expressly states that it lifts the headrest (a first manner) and then subsequently lifts the headrest obliquely forward (a second manner). We need not determine whether Dr. Kent’s first or second kinematic model or Dr. Viano’s kinematic or geometric model accurately depicts the movement of Nakano’s headrest because Nakano expressly describes movement in first and second manners.” slip op. at 16

  • Obviousness (§103) › Analogous artNon analogous artDecided for patent owner

    “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. Bigio, 381 F.3d at 1325. The appropriate field of endeavor is determined by referring to the specification of the patent at issue “including the embodiments, function, and structure of the claimed invention.” Id. at 1325–26. “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Clay, 966 F.2d at 659.” slip op. at 41

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

    “addressed by the ’949 patent, Lear persuades us that Seitzer fails to describe the guide member and follower of claims 2 and 25. Lear persuasively argues that Wiklund and Seitzer would not motivate a skilled artisan to incorporate a “bushing having a cam profile” into Wiklund’s support 24 (the alleged guideway) because Seitzer describes only rotating cams used in reciprocating machinery, not the claimed version of the guide member, a bushing having a cam configuration. Id. at 54–56. Drs. Viano and Kent agree that Seitzer describes rotating cams, Ex. 2010 ¶¶ 212–15; Ex. 2012, 198:12–14, 200:17–21. Both experts also agree that Seitzer does not describe the types of non-rotating cams to which the ’949 patent refers. Ex. 2010 ¶ 214; Ex. 2012, 205:3–5. We determine that a preponderance of the evidence establishes that Seitzer fails to describe the types of non-rotating cam configurations discussed in the ’949 patent. Accordingly, we conclude that the combination of Wiklund and Seitzer does not render the guide member and follower of claims 2 and 25 obvious. Resp. 52–56. 4. Conclusion For the reasons expressed above, we conclude that NHK fails to persuade us by a preponderance of evidence that the combination of Wiklund and Seitzer renders claims 2 and 25 unpatentable as obvious under 35 U.S.C. § 103.” slip op. at 43

  Patent outcomesUS 6,631,949 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,631,949
• NHK Seating Of America, Inc. v. Lear CorporationSome claims unpatentable
  PTAB · Dec 30, 2015 · IPR2014-01026 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 11, 14, and 17–21 are unpatentable; claim 15 was not shown unpatentable because Wiklund does not disclose its required sequential contact portions.

  RulingsFinal written decision

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

    “Ex. 1001, 5:9–22 (emphasis added). This passage is consistent with interpreting “first manner and second manner” as meaning “any two different ways.” As described in this quoted passage, if either the forward velocity or the trajectory of the headrest, or both changes, then movement in a first and second manner has occurred. For example, if the headrest were to move forward at one velocity and then merely slow down (or speed up) on the same trajectory, then movement would occur in a first and second manner.” slip op. at 8

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

    “Id. at 8:58–9:5 (emphasis added). The emphasized portion of the quotation establishes that Kage’s headrest moves differently at the beginning and end of its path S2'. Namely, Kage’s headrest moves quickly toward the occupant’s head at the beginning of path S2' and more slowly toward the occupant’s head at the end of path S2'.” slip op. at 14

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

    “claims 12, 17, 18, and 21 obvious and sets forth the evidence from Wiklund and Humer to support its contentions in detailed claim charts. Pet. 43–46. NHK also proffers Dr. Kent’s testimony to explain the manner in which Wiklund describes the requirements recited in these claims. Ex. 1010¶¶ 60– 69. Claims 12 and 21 depend from claims 10 and 20, respectively, and further recite a “damper connected between the headrest arrangement and the seatback.” Ex. 1001, 13:15–16 (claim 12), 14:26–27 (claim 21). NHK relies upon Humer for its disclosure of a damper as recited in these claims. Pet. 44–46. More specifically, NHK contends that Humer teaches using a damper 118 to improve “energy absorptions” of the Saab SAHR headrest. Pet. 43 (citing Ex. 1007, 7:27–8:4). NHK also contends that Wiklund is directed to the same Saab SAHR headrest. Pet. 43 (citing Ex. 1010 ¶ 60). NHK therefore concludes that an ordinary artisan would have found it obvious to improve Wiklund by adding Humer’s damper between the headrest arrangement and the seatback. Pet. 43–44. NHK contends that an ordinary artisan would have found it obvious to add a damper to Wiklund to “provide ‘some energy absorption to cause more even and controlled contact with the head during impact’ because without the damper 118 ‘the head tends to oscillate after impacting a headrest cushion.’” Id. at 44 (citing Ex. 1007, page 8:1–4; Ex. 1010 ¶¶ 60, 61, and 63).” slip op. at 34

  • ExcludeMotion to exclude, deniedDenied

    “IV. LEAR’S MOTION TO EXCLUDE We have reviewed Lear’s Motion to Exclude, NHK’s Opposition to the Motion, and Lear’s Reply in support of the Motion. Based on our review, we deny the Motion in all respects for one or both of the following reasons: (1) the Motion is moot because it seeks to exclude evidence not considered or relied upon in rendering this Decision or (2) the Motion addresses issues more appropriate to determining the weight ascribed to the evidence rather than the admissibility of evidence. In rendering this Decision, we determine and ascribe the appropriate weight to all proffered evidence and, when appropriate, comment upon the weight ascribed.” slip op. at 39

  Patent outcomesUS 6,655,733 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,655,733
• C&D Zodiac, Inc. v. B/E Aerospace, Inc.Some claims unpatentable
  PTAB · Oct 26, 2015 · IPR2014-00727 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1, 3–7, 9, 10, 12–14, 16–19, 21, 22, 24–29, 31, and 33–37 are unpatentable as obvious over Betts; claims 8, 20, 30, and 38 were not shown unpatentable over Betts and the Orange Book.

  RulingsFinal written decision

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

    “The term “enclosure unit” encompasses lavatories, aircraft closets, and aircraft galleys. Given the grounds of unpatentability that Petitioner raises, there is no need to further construe this term. 2. “lavatory stall unit” Whereas independent claim 1 recites “enclosure unit,” independent claim 9 recites “lavatory stall unit.” Patent Owner proposes the latter be construed as “a single room, enclosed on all sides, having a toilet and washbasin and large enough to fit a person inside.” PO Resp. 12. For reasons similar to those with respect to “enclosure unit,” we reject Patent Owner’s proposed construction of “lavatory stall unit.” Further, given the grounds of unpatentability that Petitioner raises, there is no need to provide an express construction for this term. More specifically, Petitioner does not rely on any particular prior art lavatory. Indeed, Petitioner does not rely on either of the asserted references to teach a “lavatory stall unit,” instead relying on the knowledge and skill of a person of ordinary skill in the art.” slip op. at 9

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

    “These proposed constructions would render the claim language “in a vertical plane” meaningless because tilting a seatback between an upright position and another position would have no effect on the shape of the aft surface of the seatback. Therefore, we do not adopt them. See Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1115 (Fed. Cir. 2002) (proposed construction that rendered a portion of the claim language meaningless held improper). Rather, we construe “in a vertical plane” according to its ordinary and customary meaning and consistent with the specification, which contrasts a forward wall in a vertical plane (see Fig. 1—the prior art) against a recessed forward wall (see Fig. 2—an embodiment of the claimed invention). In sum, the full limitation at issue encompasses an aft portion (in the case of claim 1) and an aft portion with an exterior aft surface (in the case of claims 9, 21, and 31) that has a flat shape but which is not within a vertical plane. This is within the broadest reasonable construction in light of the Specification, which discloses a substantially conforming recessed forward wall positioned behind the seat (see Ex. 1001, Fig. 2), as opposed to a wall that is flat in a vertical plane (see id. at Fig. 1). 4. “forward wall portion is shaped to substantially conform to the shape of the” slip op. at 10

  • BurdenFwd mixedMixed

    “As discussed below, Petitioner has shown by a preponderance of the evidence that claims 1, 3–7, 9, 10, 12–14, 16–19, 21, 22, 24–29, 31, and 33–37 of the ’838 patent are unpatentable as obvious over Betts. But, Petitioner has not shown by a preponderance of the evidence that claims 8, 20, 30, and 38 are unpatentable as obvious in view of Betts and the Orange Book, as Petitioner has not established that the evidence relied upon within the Orange Book is a printed publication.” slip op. at 3

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

    “motivated to efficiently use space on an aircraft, as evidenced by Betts, “to provide more room for passengers.” Id. ¶ 65 (quoting Ex. 1003, 1:6–7). Mr. Anderson further testifies that Betts teaches the person of ordinary skill in the art a recessed forward wall configuration that uses space more efficiently than a flat configuration, and that a person of ordinary skill in the art would have been motivated to apply the recessed configuration to other aircraft enclosures, including lavatories. Patent Owner argues that a person of ordinary skill in the art “would have been discouraged from attempting to tailor Betts’ divided space design to any lavatory stall unit (or any other enclosure unit) because Betts required separate enclosures divided both functionally and spatially.” PO Resp. 29. But, Petitioner’s ground of unpatentability is not premised on whether it would have been practical or possible to convert Bett’s “divided space” (i.e., its overhead coat compartment and floor luggage space) into a lavatory. Rather, Petitioner argues that it would have been obvious to apply Bett’s recessed forward wall design to other aircraft enclosures, including a lavatory. Pet. 19 (“One of ordinary skill in the art would recognize that the teachings of the McDonnell Douglas patent [i.e., Betts] are equally applicable to the forward walls of other enclosure units, such as lavatories or galleys.”) (citing Ex. 1009 ¶¶ 65–68); cf. In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (“Etter’s assertions that Azure cannot be incorporated in Ambrosio are basically irrelevant, the criterion being not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the 15 features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”).” slip op. at 15

  Patent outcomesUS 8,590,838 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,590,838
• Amkor Technology, Inc. v. Tessera, Inc.Some claims unpatentable
  PTAB · Oct 10, 2014 · IPR2013-00242 · APJ Kevin F Turner · IPR · Final written decision

  Claims 24 and 25 were held unpatentable as anticipated by Hwang; claims 1–8, 10–13, 18, and 19 were not shown unpatentable on the instituted grounds.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “within the scope of the apparatus described in Oldham, in which the resin is introduced under vacuum, i.e., “[t]he resin may be introduced under vacuum,” (Ex. 1003, 8:1), but the article within the mold is not maintained under vacuum. See Ex. 2055 ¶¶ 173–217. Dr. Goosey testifies that “Oldham provides little detail on the construction of its compression molding and transfer molding equipment or the details of the processing steps. All of this missing information would be necessary to draw conclusions about what is the inherent or necessary result of practicing the Oldham methods.” Id. at ¶ 88. Thus, although Oldham’s statement that “[t]he resin may be introduced under vacuum” (Ex. 1003, 8:1) may appear, at first, to be clear, one of ordinary skill in the art would have different interpretations as to what that statement discloses.” slip op. at 9

  • Skill levelOther

    “differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 7

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

    “Dr. Goosey also explains in detail that if the resin is under vacuum, that does not necessarily mean that the cavity is under vacuum (Id. at ¶¶ 127, 180– 185), that if the mold is under vacuum, that does not necessarily mean that the cavity is under vacuum (Id. at ¶¶ 196–197, see also Paper 76 at 45, 47 (for explanatory diagrams)), and that if the cavity is under vacuum, that does not necessarily mean that the assembly is under vacuum (Id. at ¶¶ 198–217). Dr. Goosey testifies to the possibility that the pressure on the assembly may rise during resin addition, (Id. at ¶¶ 208–217), which is acknowledged by Amkor’s declarant, Dr. Glew. Ex. 2054, 193:24–197:17. We find Dr. Goosey’s testimony persuasive that Oldham’s characterization that the “resin may be introduced under vacuum” does not necessarily mean that the assembly itself is under vacuum during the introduction of the resin. As such, we are not persuaded that Oldham teaches “applying a flowable encapsulant to the assembly while maintaining the assembly under a subatmospheric pressure,” per claim 1, and dependent claims 2–5.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “The analysis presented in Amkor’s Petition makes it clear that the first two obviousness grounds are dependent on the analysis with respect to claim 1 in the anticipation ground over Oldham, discussed above. Pet. 50–54, 56– 57. The obviousness grounds applying Oldham do not discuss how the secondary references would cure the defect we find in the anticipation of claim 1 over Oldham. As such, we conclude that Amkor has not shown by a preponderance of the evidence that claims 6–8, 10–13, 18, and 19 are unpatentable, on the basis of those instituted grounds.” slip op. at 13

  Patent outcomesUS 6,046,076 mixed
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,046,076

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.