• Valve Corporation v. Ironburg Inventions Ltd.Some claims unpatentable
  PTAB · Jan 26, 2023 · IPR2017-01928 · APJ Mitchell G Weatherly · IPR · Remand

  Claims 1, 2, 9, 11–17, and 21–24 are unpatentable over Burns with Uy or AlphaGrip; claim 10 was not shown unpatentable because Burns does not teach detachable paddles.

  RulingsRemand decision

  • RemandOther

    “rendered claims 3–8 and 18–20 unpatentable. Valve, 8 F.4th at 1381. The Federal Circuit reversed our determination that Burns was not prior art. Id. at 1381. The Federal Circuit also vacated our determination that Valve had failed to prove that collectively claims 1, 2, 9–17, and 21–24 were unpatentable as obvious in view of Burns in combination with either Uy or AlphaGrip. Id. Accordingly, the Federal Circuit remanded the case to us to consider Valve’s challenges to the patentability of claims 1, 2, 9–17, and 21–24 of the ’229 patent as obvious based on the combinations of prior art listed in the table below. Claims6 35 U.S.C. § References 1, 2, 9, 10, 14–17, 21–24 103 Burns, Uy 1, 2, 9–17, 21, 22 103 Burns, AlphaGrip Id. C. Remand Background On remand, we authorized the parties to concurrently file an opening brief and then concurrently file responsive reply briefs. Paper 44, 4. The parties agreed, and we concurred, that no new evidence would be submitted during the remand proceeding. Id. at 3. Accordingly, we decide the issues on remand based on the record that was submitted during the original trial.” slip op. at 4

  • 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. Valve contends that the ordinarily skilled artisan would have: a bachelor’s degree in an industrial design or engineering field, and approximately two years of relevant experience, for example. Alternatively, the same or an equivalent level of skill in the art could be obtained by end users or hobbyists who have substantial experience modifying or creating customized game controllers that include features to better suit their needs, even without any college education. Pet. 10 (citing Ex. 1009 ¶ 11). Ironburg, without expressly defining the level of ordinary skill, contends that a college degree of the type identified by Valve is not required. See Supp. PO Resp. 4–6. Ironburg notes that the level of ordinary skill is “relatively low” and the technology involved “is simple and straightforward.” Id. at 4 (citing Ex. 2016 ¶ 21). Ironburg’s contentions regarding the level of ordinary skill are consistent with Valve’s position, id. at 6, which we apply in our analysis. D. Whether AlphaGrip Is a Prior Art Printed Publication” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We find Ironburg’s critique of Mr. Willner’s testimony unavailing. Valve persuasively responds that Mr. Willner testifies that he personally recalls reviewing AlphaGrip on the internet during 2006, which significantly predates the filing of the oldest application in the priority chain of the ’229 patent, May 22, 2013, by at least six years. Compare Ex. 1009 ¶ 3 (testifying that online publication of AlphaGrip happened in 2006), with Ex. 1001, code (60) (identifying provisional application filed May 22, 2013, as earliest-filed priority application). Mr. Willner testifies that he is the inventor and designer of the controller that is reviewed in AlphaGrip, which we find to qualify him as an ordinarily skilled artisan. Ex. 1009 ¶¶ 1–3. Besides expressly testifying that he viewed AlphaGrip online during 2006, Mr. Willner also testifies in some detail about his recollection of his interactions with the author of AlphaGrip, Ryan Paul, and the events surrounding the publication of Mr. Paul’s review on Arstechnica’s website. Id. ¶¶ 4–5. Mr. Willner also reviews the version of AlphaGrip that Valve submitted as prior art and testifies that it is a true and correct copy of the review that he remembers seeing online during 2006. Id. ¶¶ 6–7. We find Mr. Willner’s testimony to be reliable in part because he recalls being “delighted” by the praise Mr. Paul lavished on the AlphaGrip controller. Id. ¶ 8. The publication of AlphaGrip marked an important event for Mr. Willner’s company. Mr. Willner states that he immediately posted a link on his own company’s website to Arstechnica’s AlphaGrip review in 2006, and his company maintains the link to Arstechnica’s review of AlphaGrip “to this day.” Id. We find that all these facts increase the probative value of Mr. Willner’s testimony on the issue of whether AlphaGrip was published and could easily have been found by interested persons during 2006. Although Mr. Willner may not have been a webpage manager for Arstechnica or be able to testify about precisely how many people accessed AlphaGrip in 2006, we find his testimony, as one of skill in the art himself to be compelling. Not only has Ironburg failed to refute any of Mr. Willner’s testimony with countervailing evidence, Ironburg did not cross-examine Mr. Willner to test his memory of the specific events set forth in his testimony. See PO Resp. 16–18 (failing to provide countervailing evidence or cite cross examination testimony).” slip op. at 12

  • ExcludeMotion to exclude, deniedMixed

    “We also disagree with Ironburg that we should exclude as hearsay or irrelevant Dr. Rempel’s testimony on how flexible the Burns’ paddles were or the extensive body of objective evidence cited and relied upon by him to support his testimony.9 Mot. 12–13. To the contrary, we agree with Valve that Dr. Rempel may properly rely upon the cited exhibits even if they would otherwise be inadmissible hearsay because they constitute the types of information upon which an expert would reasonably rely under Fed. R. Evid. 703. Opp. 10. Accordingly, we deny-in-part the Motion to the extent that it seeks to strike or exclude testimony in Dr. Rempel’s second declaration or Exhibits 1020, 1025, 1026, 1031, 1036, 1042 cited by Dr. Rempel in support of his analysis.” slip op. at 18

  Patent outcomesUS 9,352,229 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,352,229
• Vizio, Inc. v. Polaris Powerled Technologies, LLCRehearing granted
  PTAB · Sep 15, 2020 · IPR2020-00043 · APJ Kara L Szpondowski · IPR · Rehearing

  The Board granted rehearing but denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim.

  RulingsRehearing decision

  • RehearingRehearing, grantedRehearing, deniedGranted in part

    “We have considered Petitioner’s Request for Rehearing and, for the reasons set forth below, we grant Petitioner’s Request for Rehearing, but we are not persuaded to change our ultimate conclusion to deny institution of inter partes review. II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. When rehearing a decision on petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus.” slip op. at 3

  • Other 314aInstitution denied discretionary otherDenied

    “III. DISCUSSION OF THE REQUEST FOR REHEARING On May 4, 2020, we issued our Decision denying institution of inter partes review based upon: (1) the advanced stage of the California District Court proceeding; (2) the investment of time and resources by the District Court and the parties in the California District Court proceeding; (3) overlap in the invalidity theories that Petitioner is pursuing here and in the California District Court proceeding; and (4) overlap in the claims challenged in the California District Court proceeding. Inst. Dec. 6–12. In the Decision, we did not reach any of the ten substantive grounds for patentability. See generally Inst. Dec. Rather, the denial of institution was solely based on our findings under 35 U.S.C. § 314(a). Id.” slip op. at 4

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

    “review under 35 U.S.C. §314(a) and 37 C.F.R. §42.4. Institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2012); see also 37 C.F.R. § 42.4(a) (2019) (“The Board institutes the trial on behalf of the Director.”) For the reasons set forth below, upon considering the arguments and evidence of record, we are not persuaded to change our ultimate conclusion to deny institution of inter partes review.7” slip op. at 5

  • BurdenDenied

    “The petition must identify with particularity each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim. 35 U.S.C. § 312(a)(3); see also 37 C.F.R. § 42.22(a) (content of petitions); 37 C.F.R. 42.104 (content of petition). Petitioner’s conclusory statements, without more, are irreparably lacking in detail. Petitioner does not provide any analysis to support the assertion of obviousness over Oki. In fact, Petitioner instead asserts that Oki discloses all of the limitations in each of claims 1, 2, 4–7, 9, 15, 16, and 18, so it is unclear what modification, if any, is required to Oki, or even the basis of Petitioner’s obviousness grounds. E.g., Pet. 28– 33. Petitioner does not clearly point out the differences between the claimed invention and Oki. Nor does Petitioner explain why a person of ordinary skill in the art would have found the claimed subject matter obvious in spite of those differences. Petitioner has not provided sufficient reasoning or facts on which to base a conclusion that a person of ordinary skill in the art would have found it obvious, in light of Oki’s disclosure, to modify Oki to meet the claim limitations. Accordingly, Petitioner fails to demonstrate a reasonable likelihood that it would prevail on this ground of unpatentability.” slip op. at 28

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 8,223,117
• Valve Corporation v. Ironburg Inventions Ltd.Rehearing denied
  PTAB · Oct 30, 2019 · IPR2017-01928 · APJ Mitchell G Weatherly · IPR · Rehearing

  The Board denied Valve’s rehearing request, leaving claims 1–24 not shown unpatentable because Valve did not establish that Burns was a prior art printed publication.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). Therefore, Valve must demonstrate that we misapprehended or overlooked matters previously argued and specifically identify the location in its papers at which it made the argument that we misapprehended or overlooked in order to justify modifying our Final Decision. It has failed to do so. Instead, Valve asks us to reconsider and reweigh evidence and” slip op. at 3

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “As explained in detail, in our Final Decision, we do not consider Exhibit 1003 to be the same as the document accessible using the 1 The cited pages of Exhibit 1040 (pp. 171–179) refer to a copy of the Burns article provided by the Examiner during prosecution of an unrelated but commonly owned patent that appears to have been retrieved from the “Wayback Machine” web archive. See Ex. 1040, 172 (referring to “WAYBACK MACHINE”). However, neither the cited pages nor the Examiner’s Notice of References Cited lists the Webarchive URL. See id. at 165, 171–179 (listing only URL to xboxer360.com domain as source of Burns article). Webarchive URL. Final Dec. 17–29. The URL listed on Exhibit 1003 refers to a URL on the xboxer360.com domain, not the Webarchive URL on the web.archive.org domain. Ex. 1003, 1–10. Contrary to Valve’s contentions otherwise, URLs are not prior art materials themselves, but merely addresses that might permit a user to access information via the internet. Valve also wholly fails to identify any specific argument or evidence that it advanced during the trial that we misapprehended or overlooked in reaching our decision on the issue of whether Valve had proven that Exhibit 1003 was a prior art printed publication.” slip op. at 4

  • ExcludeNot reached

    “Ironburg filed a Motion to Exclude Evidence (Paper 30, “Mot.” or “Motion”). Valve opposed the Motion (Paper 31, “Opp.” or “Opposition”). Ironburg filed a Reply in support of the Motion (Paper 32, “Mot. Reply”).” slip op. at 3

  § 102 anticipation
  Patents in suitUS 9,352,229
• Kranos Corporation v. Riddell, Inc.No claims unpatentable
  PTAB · Jul 11, 2019 · IPR2016-01646 · APJ James J Mayberry · IPR · Remand

  On remand, the Board found claims 1–7, 11, 13, 25–28, 30, 32–37 not shown unpatentable on the added grounds; it also denied Riddell’s motion to exclude as moot.

  RulingsRemand decision

  • RemandOther

    “motion to terminate the appeal in IPR2016-01646 and remand the proceeding, in light of SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), and the Director’s Guidance on the Impact of SAS on AIA Trial Proceedings, for us to address claims and grounds that we had not instituted.3 In response, we modified our Decision on Institution to institute trial for all challenged claims and all grounds. Paper 32, 3 (the “November 9, 2018, Order”). We ordered briefing on those claims and grounds added to the trial in the November 9, 2018, Order. See Paper 32, 3–7.” slip op. at 3

  • PTAB / AIA Trials › Motions to amend / substitute claimsAdverse judgmentGranted

    “certain claims and grounds added to the trial in our November 9, 2018, Order. Paper 33. In the motion, Kranos “requests adverse judgment as to . . . [c]laims 3, 4, 7, 13, and 36.” Id. at 2. The motion continues that claims 6 and 26 remain in this proceeding for the grounds of “[o]bviousness over each of Sears or Rappleyea in combination with Ispas.” Id. As to claims 3, 4, 7, 13, and 36, Kranos’s motion is granted. Accordingly, we will enter the following judgment as to those claims: (1) claim 13 is not proven unpatentable as anticipated by Sears; (2) claim 13 is not proven unpatentable as anticipated by Rappleyea; (3) claim 13 is not proven unpatentable as anticipated by Zeller; (4) claim 36 is not proven unpatentable as obvious over Sears, Rappleyea, or Monica and Halstead; and (5) claims 3, 4, and 7 are not proven unpatentable over Sears or Rappleyea and Ispas.” slip op. at 9

  • Skill levelSkill level board ownDecided for petitioner

    “record before us, and ultimately found that a person having ordinary skill in the art to which the ’118 patent pertains would have at least a Bachelor’s degree in engineering or physics and at least one year of experience in designing protective equipment, protective helmets, or plastic parts including the design of protective or structural plastic elements. Final Wrtn. Dec. 9–10. We also found that additional experience (at least three years) may be substituted for a formal engineering degree. Id. at 10. We found that the prior art of record reflects this level of ordinary skill in the art. Id. at 10–11. We noted that our patentability analysis presented below would reach the same findings and determinations under Kranos’s or Mr. Shewchenko’s definition of the level of ordinary skill in the art. Id. at 11. In the supplemental briefing, neither party argued for a different definition of the level of ordinary skill than the definition adopted in our Final Written Decision, nor do we discern any reason, based on the supplemental record, to change this definition.” slip op. at 12

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

    “The term “aligned along” does not appear in any claim addressed in this Supplemental Final Written Decision. See, e.g., Final Wrtn. Dec. 11 (indicating that the term “aligned along” appears in independent claim 34). In the Final Written Decision, we determined that we did not need to expressly construe the term “integrally formed” to resolve the parties’ dispute. See id. at 16. As will be apparent from our analysis below, we need not address this term further here.” slip op. at 13

  Patent outcomesUS 8,528,118 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,528,118
• Cook Group Incorporated / Cook Medical LLC v. Boston Scientific Scimed, Inc.Some claims unpatentable
  PTAB · Dec 28, 2018 · IPR2017-00440 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1–4, 6–7, 10–16, 18, and 20 are unpatentable; claims 5 and 8 are not shown unpatentable. Substitute claims 21, 30, and 38 are unpatentable as obvious over Sackier and Kirsch.

  RulingsFinal written decision

  • Expert testimonyOther

    “3. Dr. Nicosia’s Declaration in support of its Opposition to Patent” slip op. at 7

  • Skill levelOther

    “B. Person of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art as of the” slip op. at 16

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

    “B. “clip” The Parties now agree that “clip,” as the term is generally understood,” slip op. at 14

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

    “as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). We conclude that Petitioner has not met its burden of showing this element to be present in Sackier because Petitioner combines features from distinct embodiments in Sackier without establishing persuasively that those embodiments are so directly related to each other such that one of ordinary skill in the art, looking at the reference as a whole, would recognize a disclosure of the invention as claimed. Accordingly, although a very close call, we conclude that Petitioner has failed to demonstrate anticipation of claims 1, 12, and 20 by Sackier for this reason.” slip op. at 21

  Patent outcomesUS 9,271,731 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,271,731
• Cook Group Incorporated / Cook Medical LLC v. Boston Scientific Scimed, Inc.No claims unpatentable
  PTAB · Dec 28, 2018 · IPR2017-00435 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1–4, 6–18, and 20 were not shown unpatentable over Malecki; the contingent motion to amend was denied as moot.

  RulingsFinal written decision

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

    “construction more persuasive because it is grounded in, and most consistent with, the specification of the ’731 patent. Contrastingly, Petitioner does not offer a specific interpretation of “inner walls” and its arguments are generally based on extrinsic evidence, including claim charts from the related district court litigation (Pet. 15), arguments from related proceedings (Pet. Reply 3), and the prior art reference (Malecki) relied on to challenge the claims (id. at 3–4). Petitioner criticizes the Patent Owner’s position but provides no express interpretation of “inner walls of the first and second clip arms;” instead, Petitioner argues why Patent Owner’s proposed construction is wrong. Pet. Reply 4–5. Dr. Nicosia does not expressly define or otherwise persuasively explain the definition of “inner walls” in his declarations either. See generally Exs. 1037, 1095, and 1109.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Person of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art as of the time of the filing of the application that became the ’731 patent would have possessed the knowledge and skill of an engineer or similar professional 5 The parties have not introduced evidence of secondary considerations in this proceeding. with at least an undergraduate degree in engineering, or a physician having experience with designing medical devices. Pet. 10 (citing Ex. 1037 ¶ 11). Patent Owner does not dispute Petitioner’s proposal, and we adopt it based on the final record before us. It is also consistent with the level of skill evidenced by the references.” slip op. at 15

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Based on the final trial record, including our interpretation of “inner walls of the first and second clip arms” to mean “the exterior surfaces of the first and second clip arms that are inward-facing relative to the longitudinal axis of the clip,” Petitioner has not persuasively established that Malecki Embodiment #1 discloses this limitation. We find persuasive the testimony of Dr. Vaitekunas, that “[t]he jaws of Malecki Embodiment #1 have four walls,” and a person of ordinary skill in the art “would understand Figure 28A to illustrate links 404, 406 connecting to the side walls of jaws 308C, 310C on the side or lateral wall opposite (or underneath) the one shown in Figure 28A.” Ex. 2010 ¶¶ 66, 68. We agree with Dr. Vaitekunas that a person of ordinary skill in the art would not consider side or lateral walls as “inner walls” under the broadest reasonable interpretation of that term. Thus, the portion of the jaw identified by Petitioner as shaded in green (Pet. 26) is a portion of the side/lateral wall, not an inward-facing wall. See Ex. 2010 ¶ 68. Petitioner has also not persuasively established that linkages 404, 406 contact any outside portion of the inner wall. As noted by Patent Owner above, Petitioner’s expert admits that Malecki does not disclose links 404, 406 contacting the radially inward-facing walls. See Ex. 2012 at 274:12–23. We also do not find persuasive Petitioner’s pin engagement theory. First, neither Petitioner nor Dr. Nicosia persuasively establish that a slot and pin channel (Pet. 15) is used in Malecki Embodiment #1. See Ex. 1095 ¶ 27. As pointed out by Dr. Vaitekunas, Petitioner’s theory that an engagement between a pin and a pin hole satisfies the “engaging the inner walls of the first and second clip arms” limitation is based on structure that is simply not disclosed in Malecki. Ex. 2010 ¶ 69. Further, we agree with Dr. Vaitekunas that “[e]ven if contact does occur between a pin and a pinhole, the contact occurs in the pin hole, not the exterior surface of a radially inward-facing wall.” Id.” slip op. at 25

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

    “Based on the final trial record, including our interpretation of “inner walls of the first and second clip arms” to mean “the exterior surfaces of the first and second clip arms that are inward-facing relative to the longitudinal axis of the clip,” Petitioner has not persuasively established that Malecki Embodiment #1 discloses this limitation. We find persuasive the testimony of Dr. Vaitekunas, that “[t]he jaws of Malecki Embodiment #1 have four walls,” and a person of ordinary skill in the art “would understand Figure 28A to illustrate links 404, 406 connecting to the side walls of jaws 308C, 310C on the side or lateral wall opposite (or underneath) the one shown in Figure 28A.” Ex. 2010 ¶¶ 66, 68. We agree with Dr. Vaitekunas that a person of ordinary skill in the art would not consider side or lateral walls as “inner walls” under the broadest reasonable interpretation of that term. Thus, the portion of the jaw identified by Petitioner as shaded in green (Pet. 26) is a portion of the side/lateral wall, not an inward-facing wall. See Ex. 2010 ¶ 68. Petitioner has also not persuasively established that linkages 404, 406 contact any outside portion of the inner wall. As noted by Patent Owner above, Petitioner’s expert admits that Malecki does not disclose links 404, 406 contacting the radially inward-facing walls. See Ex. 2012 at 274:12–23. We also do not find persuasive Petitioner’s pin engagement theory. First, neither Petitioner nor Dr. Nicosia persuasively establish that a slot and pin channel (Pet. 15) is used in Malecki Embodiment #1. See Ex. 1095 ¶ 27. As pointed out by Dr. Vaitekunas, Petitioner’s theory that an engagement between a pin and a pin hole satisfies the “engaging the inner walls of the first and second clip arms” limitation is based on structure that is simply not disclosed in Malecki. Ex. 2010 ¶ 69. Further, we agree with Dr. Vaitekunas that “[e]ven if contact does occur between a pin and a pinhole, the contact occurs in the pin hole, not the exterior surface of a radially inward-facing wall.” Id. Finally, Petitioner seems to recognize that a modification would be” slip op. at 25

  Patent outcomesUS 9,271,731 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,271,731
• Cook Group Incorporated / Cook Medical LLC v. Boston Scientific Scimed, Inc.Some claims unpatentable
  PTAB · Nov 15, 2018 · IPR2017-00135 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1, 3–5, and 10 are unpatentable as obvious over Kimura (claims 1, 3–5) and Kimura with Sackier (claim 10); claims 7, 11–15, and 17 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Person of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art as of the time of the filing of the application that became the ’371 patent would have possessed the knowledge and skill of an engineer or similar professional with at least an undergraduate degree in engineering, or a physician having experience with designing medical devices. Pet. 8 (citing Ex. 1029 ¶ 11). Patent Owner does not dispute Petitioner’s proposal, and we adopt it for purposes of this Decision.” slip op. at 15

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

    “The issue we have with Patent Owner’s contentions, as pointed out by Petitioner, is that Patent Owner does not establish persuasively how its claims require the “reversible open/close” feature and the “tactile feel features.” See Pet. Reply 27–29. Even presuming that these features did indeed drive tremendous commercial success and industry praise for the commercial products, Patent Owner does not adequately explain in its analysis how the claims of the challenged patent require these particular features that drive commercial success. Patent Owner seems to suggest that a break section in the control wire will fracture and that this feature in the commercial product relates to the tactile feel. PO Resp. 57 (citing Ex. 2029 ¶¶ 91–93) (“After the yoke has disengaged, if the handle spool is moved further proximally, a break section in the control wire will fracture, leaving the ball within the yoke and uncoupling the control wire from the distal components of the device.”). This “break section in the control wire” is not, however, claimed or covered in claim 1, the claim that purportedly embodies the commercial product. The claims alleged to cover the product do not specifically require any “tactile feel feature.”3 Likewise, while the claims may allow for an opening and closing of the clip assembly, there is no requirement in these claims that the clip assembly, as “demanded” by physicians, repeatedly open and close. Thus, both of the drivers of commercial success and industry praise are not commensurate in scope with the claims of the patented invention. See Ex. 1046 ¶¶ 23–29 (explaining how features are not claimed).” slip op. at 16

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

    “district court proceeding, Petitioner contends that “coupled to the sheath” means “slideable inside the sheath” and “the sheath confines the bushing.” Pet. 9. Petitioner provides no additional support. The district court tentatively rejected this broad interpretation. See Ex. 2003, 27–28 (“[T]he Court recommends that ‘coupled to the sheath’ be construed as ‘linked together, connected, or joined, but not slidable inside the sheath.’”). Patent Owner contends that Petitioner’s proposed construction of “coupled to the sheath” is “unreasonably broad,” but provides little citation to the intrinsic record before us. Prelim. Resp. 13–14. Instead, Patent Owner notes that the plain and ordinary meaning of coupled is “linked together, connected, or joined,” citing to an unrelated Federal Circuit decision as well as the related district court determination. Id. at 14; Ex. 2003, 28. In our proceeding, Petitioner has not provided persuasive evidence or argument to support its claim interpretation by merely pointing to what Patent Owner purportedly argued in district court. Based on the final record before us, “coupled to the sheath” means “linked together, connected, or joined” to the sheath. Our construction is consistent with the district court’s analysis and reflects the common understanding of the term “coupled” in the mechanical arts to require more than simply abutting or contacting. See generally Ex Parte Paul Robert Homrich, Appeal 2014-005786, 2016 WL 3541285, at *3 (PTAB, June 27, 2016) (“When used in mechanical systems, the plain and ordinary meaning of ‘coupled’ means to link together or connect,” and coupled requires more than contact or abut.).” slip op. at 10

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

    “We are not persuaded that Petitioner has demonstrated sufficiently that Adams discloses “a bushing extending between a proximal end coupled to the sheath,” (Ex. 1027, 17:4–5) as required by claim 1 of the ’371 patent. Based on the final record, Petitioner’s contention that retainer 110 [bushing] is slidable inside the sheath, or confined by the sheath, does not establish persuasively that the proximal end of the bushing is coupled to the sheath as required by claim 1. The claimed coupling must be “proximal coupling” and Petitioner can only point to distal coupling via distal tabs 118, 119 (Pet. Supp. Reply 6) – this is not “proximal” coupling. Further, for the bushing and the sheath to be coupled requires them to be “linked together, connected, or joined” in some manner and Petitioner has not established any such connection for proximal coupling. Petitioner also has failed to establish a persuasive reason for linking or connecting retainer 110 and sheath 112 – indeed, doing so would negatively impact the ability of retainer 110 to freely slide out of sheath 112. See Prelim. Resp. 27. Adams suggest that when control wire 108 is actuated and the clip is locked into the lock sleeve, retainer release 109 pulls retainer 110 back, disengaging retainer tabs 118, 119 from the two retainer holes as depicted in Figure 4.” Ex. 1023, 7:26–44 Finally, we note that our decision would not change if we adopted the district court’s claim interpretation. The district court adopted a claim construction of “a bushing extending between a proximal end coupled to the sheath” as “linked together, connected, or joined, but not slidable inside the sheath.” Ex. 2003, 28 (emphasis added). Should the district court’s interpretation be the correct one, Patent Owner’s position is much stronger whereas Petitioner’s theory is based on slidable movement. See Pet. 9 (arguing for “slideable inside the sheath” and “the sheath confines the bushing”); Pet. Supp. Reply 6. Having now considered the evidence in the complete record established during trial, we are not persuaded that Petitioner has demonstrated by a preponderance of the evidence that claim 1 would have been anticipated by Adams. Petitioner has not established persuasively that Adams discloses “a bushing extending between a proximal end coupled to the sheath.” For this reason, Petitioner has failed to prove by a preponderance of the evidence that Adams anticipates claim 1.” slip op. at 22

  Patent outcomesUS 8,974,371 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,974,371
• Nike Inc. v. Jezign Licensing, LLCAll claims unpatentable
  PTAB · May 29, 2018 · IPR2017-00246 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1 and 2 are unpatentable over Shkalim and Chiaramonte; claim 3 is unpatentable over Shkalim and Powell, Chien and Powell, and Chiaramonte and Powell.

  RulingsFinal written decision

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

    “Patent Owner misapprehends Petitioner’s proposed construction for “sole,” and the Board’s initial adoption thereof. Contrary to Patent Owner’s argument, we understand that Petitioner does not assert “sole” to mean “heel,” or is otherwise synonymous with “heel.” See Pet. 12–14. Also contrary to Patent Owner’s argument, the Board merely stated: “[t]he ’590 patent does not define the term ‘sole’ or disavow the heel portion of the athletic shoe as being part of the sole,” and that “Patent Owner fails to address the disclosures in the ’590 patent or explain why the record as a whole, including the intrinsic evidence, requires a narrower construction of the term ‘sole.’” Dec. 9–10. We reiterate that the ’590 Patent (to include the incorporated ’586 Patent) does not include a lexicographical definition that specifies that the heel is distinct from the sole. Further, as detailed below, the ordinary meaning of the heel being a portion of the sole is consistent with the Specification.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham, 383 U.S. at 17. “The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Petitioner asserts “[a] person of skill in the art at the time of the alleged invention of the ’590 patent would have had a bachelor’s degree in footwear, apparel, or industrial design or an equivalent field and 1–3 years of work experience in footwear, apparel, or industrial design, or a high school education with 2-4 years of work experience in footwear, apparel, or industrial design.” Pet. 4–5 (citing Ex. 1002 ¶ 28). Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art. See PO Resp. 1–23. We adopt Petitioner’s description of a person of ordinary skill in the art.” slip op. at 17

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

    “b. Analysis of Claims 1 and 2 Petitioner contends that Shkalim discloses “[a]n illuminated shoe comprising: an upper; a sole attached to said upper, the sole including a translucent perimeter surface,” as recited in claim 1. See Pet. 21–23. Petitioner bases it contention on Shkalim’s disclosures in Figures 1, 2, and 7 of a sole attached to the upper, Shkalim’s disclosure of a transparent housing or cover 3 containing lighting elements inserted into channel 15 that runs along substantially the whole sole of the shoe, and Shkalim’s disclosure that the connection between the cover and the material of heel and sole can be effected by incorporating the plastic material of cover 3 into the material of the heel. See id. (citing Ex. 1003, [57], 1:1–2, 1:5–10, 1:40–53, 3:6–34; Ex. 1002 ¶¶ 62, 63, 65). We find that Shkalim discloses “a light source disposed within said sole,” as recited in claim 1, based on Shkalim’s disclosure of lighting elements 4 in transparent housing or cover 3, and channel 15 in the sole or heel to which housing or cover 3 may be inserted.7 See Pet. 23–24; Ex. 1003, 3:6–50, 4:5–9, Figs. 1(b), 2, 2(a), (b), 3, 5; Ex. 1002 ¶ 66. Petitioner contends Shkalim discloses “a push-button switch coupled to the light source to activate the light source such that the light source provides continuous illumination across a substantial portion of the perimeter surface, regardless of whether the wearer is standing still or walking,” as recited in claim 1. See Pet. 24–26. Petitioner bases its contention on Shkalim’s disclosure in Figure 1 of on-off switch 2 that lights lighting elements 4 contained in transparent housing or cover 3, and rechargeable battery 8 connected to lighting elements 4 and switch 2. See id. (citing Ex. 1003, Figs. 2(a), 2(b), 3, 4, 2:24–26, 3:6–10, 3:34–40, 3:55–4:4; Ex. 1002 ¶¶ 67–68). We agree with Petitioner and find that Shkalim’s disclosures of transparent cover 3 containing lighting elements 4 in the channel 15 of sole, which runs along substantially the whole sole of the 7 Here, and through our analysis, we note that our Scheduling Order cautions Patent Owner “that any arguments for patentability not raised in the [Patent Owner’s Response] will be deemed waived.” See Paper 13, 5; see also See In re NuVasive, Inc., 842 F.3d 1376, 1380–81 (Fed. Cir. 2016). shoe, meets the claims limitation of “the lighting elements provide illumination across a substantial portion of the perimeter surface” of the sole. See Pet. 25; Ex. 1003, 2:24–30, 3:15–25, 3:41–45, Fig. 3. Petitioner further contends Shkalim’s switch 2 allows the user to turn” slip op. at 19

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

    “Petitioner contends that a person of ordinary skill in the art “would have been motivated to combine the illuminated nameplate on the sole of the Powell shoe with the illuminated sole of the Shkalim shoe” to arrive at the sole required by claim 3. Pet. 32 (citing Ex. 1002 ¶ 85). More specifically, Petitioner asserts combining the features of Shkalim and Powell “would have required nothing more than the application of ordinary skill, and would have been the simple substitution of one known element (a sole with a continuously illuminated translucent region) with another (a sole with translucent regions arranged to spell a word) with nothing more than predictable results.” Id. at 34 (citing Ex. 1002 ¶ 89). Petitioner further contends “[i]t would have been simple to modify the translucent portion of Shkalim so as to create translucent letters to form a word.” Id. at 34–35 (citing Ex. 1002 ¶ 89; Ex. 1006, 2:24–27). Petitioner asserts that it was known in the prior art, including Shkalim and Powell, to add lights to shoes to enhance aesthetic appeal and appearance. Pet. 35–36 (citing Ex. 1003, 1:1–5, Ex. 1006, 1:31–35; Ex. 1014, 2:10–15; Ex. 1002 ¶¶ 90–92). Petitioner relies on Mr. Rake to support its position. Mr. Rake generally testifies that during the late 1990s, ordinary artisans in the field of apparel design recognized the rise in consumer demand for personalized apparel and that this era of increased attention on personalization would have motivated a person of ordinary skill in the art to incorporated Powell’s name plate into the light-up athletic shoes disclosed by Shkalim. Ex. 1002 ¶¶ 93–95 (citing Exs. 1015, 1016). Petitioner then argues, [g]iven the similarities in the structure and function between Powell and Shkalim, as well as their aesthetic objectives and the robust consumer demand for personalized goods, a person of ordinary skill would have been motivated to incorporate into Shkalim the translucent regions being formed in the shape of alpha numeric characters and being arranged to spell a word of Powell. Pet. 35; Ex. 1002 ¶ 89 (Petitioner’s declarant Mr. Rake stating the same). On the foregoing bases, we agree with Petitioner that the combination” slip op. at 28

  Patent outcomesUS 6,837,590 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,837,590
• Valve Corporation v. Ironburg Inventions Ltd.Some claims unpatentable
  PTAB · Sep 22, 2017 · IPR2016-00949 · APJ Phillip J Kauffman · IPR · Final written decision

  Claims 1–12 and 15–18, and 20 are unpatentable: claims 1, 3–12, 15–17, 19, and 20 as anticipated by Tosaki; claims 1–12, 15–18, and 20 as obvious over Enright and Tosaki.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “This Motion has no meaningful distinction from the Motion filed in IPR2016-00948, and we incorporate that analysis here. Consequently, we deny Patent Owner’s Motion.” slip op. at 4

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

    “Patent Owner’s argument is that the ’770 patent expresses a clear intent to disavow controllers having a recessed portion that does not receive a user’s fingers. See PO Resp. 17–22. Stated in a positive sense, Patent Owner argues that the ’770 patent expresses a clear intent to cover only recessed portions that receive a user’s fingers. Patent Owner does not identify, nor do we discern, any explicit disclosure in the ’770 patent that the invention includes only recessed portions that receive a user’s fingers. The description that “preferably” each elongate member is mounted in a recess such that a user’s fingers may be received in the recess is an exemplary disclosure of a preferred embodiment. See Ex. 1011, 1:62–67. Likewise, the disclosures that the elongate members (e.g., paddles 11) are mounted within recesses so that a user may engage the elongate members with the tips of the fingers are exemplary. See Ex. 1011, 2:21–25, 3:39–44, Fig. 3. Consequently, the ’770 patent does not express a clear intent to limit the claimed invention to recessed portions that receive a user’s fingers. See e.g., SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed.Cir. 2001); see also Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed.Cir. 1988) (“Although the specification may aid the court in interpreting the meaning of disputed claim language, particular embodiments and examples appearing in the specification will not generally be read into the claims.”). In light of the disclosures above, the ordinary meaning that a recessed portion is an indentation is consistent with the Specification.” slip op. at 11

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

    “We agree with Petitioner (Pet. Reply 9–10) that nothing in claim 1 precludes the back of Tosaki’s steering wheel 14 from corresponding to the back of the controller as claimed. Claim 1 is an open-ended claim, so that additional components like base casing 10 with its bottom plate 11 are not precluded. Patent Owner’s assertion is not persuasive because it is not commensurate in scope with the claims. c) Conclusion Petitioner has demonstrated by a preponderance of the evidence that Tosaki anticipates independent claim 1.” slip op. at 23

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We accept Patent Owner’s uncontested assertions regarding the education level of the inventors; however, this information provides an incomplete picture because other factors are involved. See e.g. Daiichi Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating a non-exhaustive list of six factors that are a guide to determining the level of skill in the art). For example, one concern is the type of problems encountered in the art, and the problem solved by the ’770 patent is but one type of problem encountered. Tosaki describes that removing a hand from the controller to manipulate switches makes prompt reaction difficult and degrades usability, and describing that repositioning the user’s hands can affect comfort. Ex. 1002, 1:54–67, 2:19–23. Tosaki describes an apparatus that permits manipulation of a plurality of switches while holding the controller. Id. at 3:20–23. Tosaki’s solution also includes switches on the back of the controller (shift levers) that are accessible to a user’s fingers. Id. at 3:36–4:8. Enright describes that controller had become more complex in that the number of functions and user input devices increased to the point that user’s had difficulty moving a finger to a desired button. Ex. 1003 ¶ 2. Enright describes that movement between input devices can be difficult. Id. at ¶¶ 3–4. As a solution, Enright disclosed a device that permits selection of discrete button commands without looking at or moving fingers from buttons. Id. ¶ 5. Enright’s solution includes switches (mode switches 32, 34) added to the underside (back) of the controller to reside near a user’s fingers for easy operation. Id. at ¶ 32. Enright also discloses that these switches may be located elsewhere is ergonomically desired. Id. In light of this, the prior art of record demonstrates that switch position on the controller, usability, and comfort were known problems in the art. Further, prior solutions included placing switches to be easily accessible to a user’s finger or thumb, and placing switches so that those switches are accessible without removing a finger or thumb from another switch. In particular, these solutions placed controls on the back of the controller to be accessible to a user’s fingers. The technology involved was placement of switches in ergonomically desired locations that permit usability.” slip op. at 37

  Patent outcomesUS 9,089,770 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 9,089,770
• Valve Corporation v. Ironburg Inventions Ltd.Some claims unpatentable
  PTAB · Sep 22, 2017 · IPR2016-00948 · APJ Phillip J Kauffman · IPR · Final written decision

  Claims 1, 6, 13, 14, 16, 17, 19, and 20 are unpatentable: Tosaki anticipates them, and Enright with Tosaki also renders claim 20 obvious.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “In our Decision to Institute, we explained that a preliminary response cannot serve as an effective objection for two reasons.2 Dec. 4–5 (entered on September 27, 2016). First, objections must be made after institution of trial. See 37 C.F.R. § 42.64(b)(1) (objections are due ten days from institution of trial). Second, an objection and a preliminary response may not be combined into a single document. See 37 C.F.R. § 42.6(a)(3) (prohibiting combined documents).” slip op. at 5

  • Strike new argumentNew argument consideredDecided for petitioner

    “The Petition fails to address a claimed characteristic of the elongate members (flexibility). See PO Resp. 39–41 (arguing that Enright does not disclose elongate members that are flexible as claimed). This cannot be corrected in Petitioner’s Reply. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767 (Aug. 14, 2012) (a reply may not raise a new issue or belatedly present evidence); 35 U.S.C. § 312 (a)(3) (requiring petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”); 37 C.F.R. § 42.104(b)(4) (a petition for inter partes review must identify how the construed claim is unpatentable under the statutory grounds on which the petitioner challenges the claim and must specify where each element of the claim is found in the prior art patents or printed publications relied upon); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015); see also Paper 39, 2 (pointing out that Petitioner is making a new argument).20 Petitioner has not demonstrated by a preponderance of the evidence that claim 1 is unpatentable under 35 U.S.C. § 103 as obvious over Enright and Tosaki. The same is true of claims 2–11, 13, 16, and 17 by virtue of their dependence from claim 1. 20 Petitioner argues that Patent Owner’s contention could not have been addressed earlier because the Board did not explicitly construe this claim limitation. Petitioner’s burden is not alleviated by the lack of a claim construction by the Board.” slip op. at 38

  • Expert testimonyPetitioner expert discountedMixed

    “In our Institution Decision, we observed that the Petition does not explain persuasively how observations from a UK patent examiner, which presumably are based on UK law and not United States law, are of use in our proceeding. Dec. 4. Petitioner asserts that Mr. Donohoe must be a person of ordinary skill because the level of ordinary skill is low, and because the UK Intellectual Property Office employed Mr. Donohoe to examine the video game controller art. Pet. Reply 16–17. Petitioner chose not to address our concern regarding the distinctions between United States and UK law. Because of those distinctions, Petitioner’s assertions and evidence with regard to Mr. Donohoe are entitled to little or no weight. This shortcoming is not fatal to this ground of unpatentability because, as explained below, the prior art of record is reflective of the level of skill in the art.” slip op. at 39

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner contends that the level of skill in the art is relatively low and that “less than a year of experience or other training in controller assembly or tooling is required.” PO Resp. 34; Ex. 2002 ¶ 30 (Patent Owner’s expert opining that the level of skill is “no more than a year of experience or other training in controller assembly or tooling”). Patent Owner bases this level of skill on the education level of the inventor and the type of problems encountered in the art. PO Resp. 35. Regarding the education level of the inventors, Patent Owner provides evidence that the named inventors have degrees in unrelated fields. Id. (citing Ex. 2008, 3; Ex. 2009, 4). Patent Owner asserts the problem solved was that users of conventional game controllers were at risk of hand strain or injury from having to operate many different controls on the front of the controller with only a user’s thumbs. Id. at 35–36 (citing Ex. 2012 ¶ 10; Ex. 1001, 1:33–40, 3:56–61). Petitioner does not contest the education level of the inventors or the problem solved by the ’525 patent. Pet. Reply 15–16. Rather, Petitioner asserts that Patent Owner has taken the illogical position that the qualifications of a person of ordinary skill in the art are maximum levels of experience or training rather than minimums. Id. To the extent that Patent Owner’s assertion suggests that the level of skill may not exceed a year of experience or other training in controller assembly or tooling, we disagree. Patent Owner does not cite, nor are we aware, of any legal precedent supporting the assertion that education and experience levels are maximums that must not be exceeded. Regarding the problem solved by the ’525 patent, the portions cited by” slip op. at 40

  Patent outcomesUS 8,641,525 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,641,525

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.