• 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
• Maxlinear, Inc. v. Cresta Technology Corp. And CF Crespe LLCSome claims unpatentable
  PTAB · Apr 17, 2019 · IPR2015-00592 · APJ Patrick M Boucher · IPR · Remand

  Claims 1–3, 5, and 10–20 are unpatentable by collateral estoppel; claims 4, 6–9, and 21 were not shown unpatentable because the combination rationale was insufficient.

  RulingsRemand decision

  • RemandOther

    “After this proceeding was remanded by the Federal Circuit, we invited the parties to address a proposed procedure that would include additional briefing regarding the impact of the prior holdings that claims 1–3, 5, and 10–20 are unpatentable, and the parties filed their respective proposals. Papers 78–80. In its proposal, Petitioner suggested that Patent Owner “has waived the right to address the patentability of claims 4, 8, and 9” because “Patent Owner never separately argued for the patentability of these claims.” Paper 79, 1; see MaxLinear, 880 F.3d at 1378 n.4 (“On remand, the Board may consider whether CRESPE has waived arguments concerning these claims.”). But those claims were not challenged in the earlier proceedings that held claims 1–3, 5, and 10–20 unpatentable. Rather, those claims were only challenged in this proceeding with respect to art that was not at issue in the earlier proceedings. In advancing its contention, Petitioner effectively makes the untenable argument that Patent Owner must provide separate reasons for the patentability of claims 4, 8, and 9, even when we determine that its own case-in-chief for those claims is insufficient. In addition, Petitioner’s proposal requests briefing on the issues of “whether claims 6, 7 and 20 materially alter the [unpatentability] analysis on which the prior [unpatentability] determinations rested.” Id. We have considered, and deny, that request. The Federal Circuit’s remand order noted that the fact that “MaxLinear was not a party to the other IPRs is . . . irrelevant since Cresta, the predecessor in interest to CRESPE, was party to the original determination.” MaxLinear, 880 F.3d at 1377. But the Federal Circuit’s order does not state or suggest that the fact that different prior art was considered in the earlier proceedings is similarly irrelevant. Indeed, we agree with Patent Owner that “[t]he Federal Circuit has not ordered the Board and the parties to start over from scratch, and certainly not with new prior art.” Paper 80, 3; see Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015) (“The Board may control its own proceedings, consistent with its governing statutes, regulations, and practice.”). Patent Owner is correct that “[a]llowing new prior art to be considered on remand after the Final Decision on the merits would essentially be starting a new IPR proceeding.” Paper 80, 9. As Patent Owner asserts, “[t]he parties and the Board would have to argue and consider new grounds, new expert testimony would have to be taken and presented, and a new Final Decision would have to be rendered.” Id. The Federal Circuit’s instruction is limited: “We remand this case to the Board so that it may consider the patentability of the surviving disputed dependent claims 4, 6-9, and 21.” MaxLinear, 880 F.3d at 1378. We have complied with this instruction in two ways: first, by applying the Federal Circuit’s instruction regarding the collateral-estoppel impact on challenged claims 1–3, 5, and 10–20; and, second, by clarifying that Petitioner’s argument regarding the combination of Van De Plassche and Ishikawa compels a conclusion that Petitioner’s showing is insufficient with respect to claims 4, 6–9, and 21, independent of any conclusion previously reached with respect to independent claims 1 and 17. While the Federal Circuit includes language in its remand order that might be construed as suggesting applying different prior art in the latter analysis, 880 F.3d at 1377, the scope of this proceeding is limited by the prior art and the arguments in the Petition here. SAS Institute, 138 S. Ct. at 1356 (“in an inter partes review the petitioner is master of its complaint”); see Paper 80, 8 (Patent Owner addressing potential ambiguity of Federal Circuit’s instruction).” slip op. at 35

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Experience is but one of several factors that may be considered when determining the level of ordinary skill in the art. See, e.g., In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995) (identifying factors as 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 a given case, every factor may not be present, and one or more factors may predominate.” Id. Patent Owner’s distinction relates to a portion of one factor (education) in a determination that involves several factors. The significance of the level of ordinary skill in the art is the role it plays in an obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry”). Patent Owner does not explain persuasively how the alleged omission by Petitioner impacts the obviousness analysis. We conclude that Petitioner’s proposed definition, which is consistent with the level of skill generally reflected by the prior art of record, reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 11

  • ExcludeMotion to exclude, deniedDenied

    “Importantly, we find that Patent Owner did not exhaust avenues available to it in attempting to secure answers to its questions from Dr. Hashemi. The line of questioning involving Exhibit 2008 occurred late in the day, “well after the close of business on the east coast,” and an attempt by the parties to telephone the Board during the deposition was unsuccessful. See Opp. 3; Ex. 2006, 154:24–155:4. The parties discussed contacting the Board the following day, and continuing the deposition the day after that, when Petitioner would make Dr. Hashemi available for further cross-examination after receiving guidance from the Board. Ex. 2006, 155:5–157:13. Rather than proceed in this fashion, Patent Owner decided to abandon the line of questioning and passed the witness for redirect: “I think after we talked about it a bit, I think we will withdraw our questions on this document and just move on to redirect.” Id. at 157: 22–25 (emphasis added). Dr. Hashemi could have answered the questions and sought a protective order that would insulate his answers from the public record, providing the Board with the information needed to perform a focused evaluation of the credibility and reliability of specific statements in his testimony. But a significant measure of responsibility for whether Dr. Hashemi’s testimony is tainted with bias lies with Patent Owner for declining to pursue the issue to a point of greater clarification. Indeed, we are limited in how strongly we can fault Petitioner for failing to submit a clarifying declaration from Dr. Hashemi, in light of Patent Owner’s decision to “withdraw” the questions at issue. Because the evidence is insufficiently developed, we are similarly limited in the degree to which we can draw adverse inferences from Dr. Hashemi’s refusal to answer questions, and unable to conclude, by a preponderance of the evidence, that Dr. Hashemi’s testimony is tainted by an undisclosed bias. Accordingly, we deny Patent Owner’s Motion to Exclude.” slip op. at 16

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Not reached

    “C. Petitioner’s Motion to File Supplemental Information Pursuant to our authorization, Petitioner filed a Motion for Leave to File Exhibits 1213–17 as Supplemental Information, which Patent Owner opposes. Papers 83, 86. The Motion asserts that such information is “relevant to the issues in the case, specifically the lack of nexus between any purported secondary consideration, including surprising or unexpected results.” Paper 83, 1. We do not reach Patent Owner’s arguments regarding secondary considerations because we conclude that Petitioner’s case-in-chief is insufficient. Accordingly, we dismiss the Motion as moot.” slip op. at 17

  Patent outcomesUS 7,075,585 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,075,585
• Axon Enterprise, Inc. v. Digital Ally, Inc.Rehearing denied
  PTAB · Feb 25, 2019 · IPR2017-00515 · APJ Minn Chung · IPR · Rehearing

  The Board denied Axon’s rehearing request, leaving in place the denial of institution for claims 10–17 and 20 because the petition did not show a reasonable likelihood of unpatentability.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing of our Decision denying institution of trial based on the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). 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., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2

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

    “III. ANALYSIS In the Decision, we determined that Petitioner did not demonstrate sufficiently that the combination of Vasavada and Tabak teaches or renders obvious all limitations of independent claim 10. Dec. 30–37. Our analysis focused on the limitations of claim 10 identified by Petitioner as limitations 10[D] and 10[G] (Pet. 58, 64), which recite “a recording device manager operable” (limitation 10[D]) to “broadcast, in response to receiving the trigger signal, at least one communication signal including correlation data to the first recording device and the second recording device instructing the first recording device to begin recording said first set of record data and instructing the second recording device to begin recording said second set of record data” (limitation 10[G]). Dec. 30–37. Claim 10 refers to the signal broadcast to the first and second recording devices as “the broadcast communication signal.” Ex. 1001, 16:52–53.” slip op. at 3

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

    “required an “actual, physical substitution” of Tabak’s content recording device for Vasavada’s radios. Req. Reh’g 11, 13. The Decision did not require Petitioner to prove an actual physical substitution or bodily incorporation of Tabak’s content recording device into Vasavada’s system. Instead, the Decision properly determined that the Petition failed to explain adequately how Petitioner’s proposed combination of Vasavada and Taka produces the claimed invention. See Dec. 34–38; see also TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016) (an explanation of how the references would be combined to produce the claimed invention is necessary to show obviousness).” slip op. at 7

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “The Request appears to simply disagree with our determination that Dr. Houh’s testimony was not supported or corroborated by the disclosures of Vasavada. Mere disagreement with a decision is not a proper basis for rehearing when a party’s arguments were considered and addressed in the decision. The Request also contends that we “overlooked Dr. Houh’s expertise in the field” (Req. Reh’g 13) and “[b]ased on his qualifications, Dr. Houh indisputably possesses sufficient technical expertise to be of assistance to the trier of fact” (id. at 15). We were not, however, required to accept Dr. Houh’s testimony merely because Petitioner offered it. See Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1022 (Fed. Cir. 2017) (the Board was not required to credit expert evidence simply because [a party] offered it) (citing In re Ethicon, Inc., 844 F.3d 1344, 1352 (Fed. Cir. 2017); 37 C.F.R. § 42.65(a)). Dr. Houh’s qualifications, impressive as they may be, do not by themselves render Dr. Houh’s testimony credible without being supported by underlying facts or evidence of record. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). As discussed above, upon review of the disclosures of Vasavada cited by Dr. Houh, we determined on our own that Dr. Houh’s testimony was not supported by Vasavada, and found Dr. Houh’s testimony not credible. Dec. 32–33. Finally, the Request asserts that Dr. Houh’s testimony was unrebutted because Patent Owner did not submit a declaration disputing Dr. Houh’s testimony. Req. Reh’g 13–15. Petitioner appears to turn the burdens requirement of an inter partes review proceeding on its head. Patent Owner had no obligation to “rebut” Petitioner’s contentions or submit a declaration “rebutting” Petitioner’s contention that Vasavada discloses limitation 10[G]. See 37 C.F.R. §§ 42.107(a) (“The patent owner may file a preliminary response to the petition.” (emphasis added)), 42.108(c) (“The Board’s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence, . . . .” (emphasis added)). Rather, it was Petitioner’s burden to demonstrate sufficiently in the Petition that the cited prior art renders the challenged claims unpatentable, including showing that the Petition’s contentions (e.g., Vasavada discloses limitation 10[G]) are supported by evidence. See 35 U.S.C. § 314(a); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” (emphases added)) (citing 35 U.S.C. § 312(a)(3)); Intelligent Bio-Sys., 821 F.3d at 1369 (requiring “the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (emphases added)). As discussed above, the Decision properly determined that the Petition did not meet this burden required on Petitioner.” slip op. at 13

  § 103 obviousnesscites KSR
  Patents in suitUS 9,253,452
• Infobionic, Inc. v. Braemar Manufacturing, LLCAll claims unpatentable
  PTAB · Jul 27, 2018 · IPR2017-00796 · APJ Michael L Woods · IPR · Final written decision

  Claims 1–9 and 11–26 are unpatentable: claims 1–6, 9, 11–14, 16–20, 22, 24, and 26 as obvious over Ferguson and Kehr; claims 7, 15, 21, 23, and 25 over Ferguson, Kehr, and Yasushi; claim 8 …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on our review of the ’767 patent, the types of problems and solutions described in the ’767 patent and applied prior art, and the testimony of Dr. Stone and Dr. Fernald, we adopt Petitioner’s asserted level of ordinary skill and find that a POSITA at the time of the alleged invention would have at least a bachelor’s degree in a suitable engineering field (e.g., mechanical or electrical), or equivalent proficiency, and at least two to three years of experience in the research and/or development of remote patient monitoring systems, such as cardiac remote patient monitoring systems, where more education may substitute for relevant experience and vice versa. Stone Decl. ¶¶ 13-14. This education and experience would include a solid familiarity with the communication between components of a patient monitoring system. Pet. 6–7 (citing Ex. 1002 ¶¶ 13–14). We also agree with Patent Owner that any differences in the parties’ proposed level of ordinary skill does not impact our analysis. See PO Resp. 8.” slip op. at 11

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

    “Petitioner does not rely on Ferguson’s base station for being both battery-powered and “plugged in,” or having both a landline connection and a cellular connection, as Patent Owner’s argument presumes (Pet. 15–18), nor does Petitioner’s proposed modification require the combined system to disclose such structure (see id.). Furthermore, claim 1 does not require the claimed communications device to be both battery powered and plugged into a wall, or have both a landline and wireless connection. Ex. 1001, 7:2–36. Even if Ferguson only uses a single cellular connection for data transfer (Ex. 1004, 5:30–33 (“[f]or data transfer, the base station connects the memory card or smart card, via modem and land or cellular telephone line”)), we find persuasive Dr. Stone’s testimony that a POSITA would have been motivated to delay routine, non-urgent communications, to avoid tying up that cellular line (see Ex. 1002 ¶¶ 111–114). We credit Dr. Stone’s testimony that “incorporating the transmission timing scheme of Kehr into the system of Ferguson would have been routine for one of ordinary skill and desirable for promoting resource efficiency.” Ex. 1002 ¶ 114. In particular, we find persuasive Dr. Stone’s testimony that modifying Ferguson would “strike an appropriate balance of ensuring patient safety (e.g., by requiring immediate transmission of urgent data) while avoiding the use of power and cellular bandwidth resources (e.g., by allowing later transmission of non-urgent data).” Id. (emphasis added).” slip op. at 29

  • ExcludeMotion to exclude, deniedDenied

    “We agree with Petitioner. First, we agree with Petitioner that Patent Owner has not met its burden of explaining why these exhibits must be excluded as hearsay. Id. at 1. Here, Patent Owner refers to the exhibits as a whole and does not state precisely what aspect of these 18 exhibits are hearsay. See Paper 25, 1– 2. Further, Patent Owner’s argument challenges the sufficiency of the evidence in arguing that “nothing in these [exhibits] states that they are describing pricing for analog-only cellular plans . . . [or] states that users can use free nighttime and weekend minutes for data usage.” Id. at 1. By asserting that “nothing in” the exhibits support Dr. Stone’s testimony, Patent Owner’s argument is a criticism of Dr. Stone’s testimony and instead focuses on the weight that we should give to the exhibits—and its related testimony—rather than to the exhibits’ admissibility as hearsay. See Paper 29, 4 (“[s]uch arguments go the exhibits’ weight, not their admissibility”). Thus, it is not a proper basis for a motion to exclude. Second, we agree with Petitioner that even if the exhibits are hearsay, the exhibits would be admissible under FRE 807. Paper 29, 3–4. To qualify for the residual exception under FRE 807, four requirements must be met: (1) the statement has equivalent circumstantial guarantees of trustworthiness; (2) it is offered as evidence of a material fact; (3) it is more probative on the point for which it is offered than any other evidence that the proponent can obtain through reasonable efforts; and (4) admitting it will best serve the purposes of these rules and the interests of justice. FRE 807. Petitioner argues persuasively that the four requirements are met. See Paper 29, 3–4. Regarding (1), circumstantial guarantees of trustworthiness, Petitioner points out that there “is no dispute regarding their authenticity and both parties and their experts relied on such Internet Archive Captures.” Id. at 3. Regarding (2), Petitioner argues that the statement is evidence of a material fact, namely, what a POSITA would have understood about cellular providers’ peak and off-peak pricing. Id. Regarding (3), Petitioner argues that “there is no better evidence reasonably available that shows these providers’ advertised rate plans at the time.” Id. at 4. Regarding (4), Petitioner argues that admitting these exhibits serves the interest of justice” slip op. at 57

  • BurdenFwd mixedUnpatentable

    “V. CONCLUSION We determine that Petitioner has shown by a preponderance of the evidence that: (1) claims 1–6, 9, 11–14, 16–20, 22, 24, and 26 are unpatentable over Ferguson and Kehr; (2) claims 7, 15, 21, 23, and 25 are unpatentable over Ferguson, Kehr, and Yasushi; and (3) claim 8 is unpatentable over Ferguson, Kehr, and Surwit. VI. ORDER In consideration of the foregoing, it is hereby: ORDERED that claims 1–9 and 11–26 of U.S. Patent No. RE43,767 E are unpatentable;” slip op. at 60

  Patent outcomesUS RE43,767 unpatentable
  § 103 obviousnesscites KSR · Graham
• Van Der Hoeven Horticultural Projects B.V. v. Houweling Nurseries Oxnard, Inc.Some claims unpatentable
  PTAB · Jun 6, 2018 · IPR2017-00476 · APJ Jeremy M Plenzler · IPR · Final written decision

  Claim 29 is unpatentable over Reisinger under § 103; claims 1–28 were not shown unpatentable because Reisinger’s ducting is not an end gable and the proposed combination lacked a sufficient rationale.

  RulingsFinal written decision

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

    “and 2 above, the “gabled end” is a region at an end wall of the greenhouse separated from the growing section by a partition. The ’617 patent also explains that “the greenhouse can be arranged without a gabled end,” and provides an example of such an arrangement as one where “the first louver [is] arranged over the fans with the cooling mechanism located at the fans such that ambient air can be pulled directly into the tubes with the air passing the cooling mechanism for additional cooling” and “[p]ipes . . . provide an air passageway between the second vent and the fans during the mode when air from within the crop section is to be recycled.” Ex. 1001, 9:33–41 (emphases added). As noted above, in such arrangements, a direct flow path is provided between first vent 24/first louver 30 to draw ambient air into the system and piping provides a flow path from second vent 34/second louver 36 for air recirculation from growing section 16. We find that “piping,” as used in the ’617 patent, is ducting, as that term is used in the art. Consistent with that finding, Patent Owner’s declarant Mr. Turkewitsch distinguishes ducting from structure such as a plenum or a chamber. See, e.g., Ex. 1031 53:22–55:10. Accordingly, we determine that the alternate example from the ’617 patent noted above discloses use of a ducted system in place of gabled end 14 for air flow. Based on the Specification, therefore, we find that ducting or other piping is not considered an “end gable” in the ’617 patent. As discussed further below, for purposes of this decision, we do not need to determine the precise requirements of the term “end gable” in the claims in order to determine that Petitioner has failed to establish unpatentability of the claims including that term because we at least determine that, even under the broadest reasonable interpretation, an “end gable” does not include ducting.” slip op. at 8

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Petitioner contends that Reisinger’s fresh air inlet 2, for example, corresponds to the “one or more vents” and flap 10 corresponds to the “one or more mechanisms selectively moveable to cooperate with said one or more vents to control air flow through said one or more vents.” Pet. 64–65 (referencing discussion of similar limitations in claim 1 discussed on pages 35–40 of the Petition). Petitioner explains that Reisinger’s climate control system also meets the additional limitations directed to operation of the “climate control system” in claim 29. Id. (referencing discussion of similar limitations in claim 1 discussed on pages 40–44 of the Petition). We are persuaded by those contentions, which Patent Owner does not dispute.10 With respect to any requirement that the claim has regarding a roof and sidewalls, generally, we are also persuaded by Petitioner’s contentions in connection with those features. See, e.g., Pet. 32 (citing Ex. 1002 ¶¶ 86– 88). Petitioner explains, for example, that “a POSA would have understood Reisinger to disclose them because a greenhouse was known to include a ceiling, and Reisinger’s disclosed function of smoothly adjusting the ratio of fresh air and recirculated air would not work unless the air inlets 1 and 2 were enclosed on the sides.” Id. Patent Owner does not dispute those contentions, which, as stated above, we find persuasive.” slip op. at 15

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

    “Reisinger’s greenhouse and climate control system, because . . . Landstrom is in the same field of endeavor as Reisinger,” “there would have been a reasonable and predictable expectation of success to a POSA in combining the teachings of Reisinger and Landstrom to incorporate Landstrom’s end gable chamber into Reisinger,” and “incorporating Landstrom’s end gable chamber into Reisinger’s greenhouse and climate control system including vents, louver and airflow modes does not change the principle of operation of either component.” Id. at 79–81. Patent Owner disputes whether Landstrom teaches an “end gable” or an “end portion,” and contends that Petitioner has failed to establish that one skilled in the art would have combined Landstrom’s teachings asserted by Petitioner in connection with those features with Reisinger. PO Resp. 66– 72, 74–75. Even accepting Petitioner’s contentions that Landstrom teaches an “end gable” and an “end portion” as required by the claims, Petitioner has failed to establish sufficiently that one skilled in the art would have found it obvious to include those features from Landstrom in Reisinger’s system. Sufficient rationale for combing features from multiple references requires more than those references merely being in the same field of endeavor and that the combination would have had a reasonable expectation of success and not change the principle of operation. See Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (“obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention”). We are lacking any, let alone sufficient, rationale from Petitioner in this proceeding.” slip op. at 19

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

    “obviousness in Patent Owner’s Response fails to address any relation of the claim elements, or even any particular claim, to that evidence. See PO Resp. 76–80. Nevertheless, even if we were to assume some nexus, that nexus appears to be between Patent Owner’s evidence and the features of claims 1 and 17, rather than those of claim 29. For example, in its discussion of copying, Patent Owner asserts “the ModulAir design has the same ‘corridor’ (or ‘end gable’) design as that of the Ultra Clima®.” Id. at 78. As noted above, claim 29 recites an “end portion,” rather than the “end gable” recited in claims 1 and 17. Moreover, Patent Owner presents evidence of similar designs, rather than actual copying. See, e.g., id. (“the designs are almost identical”). “[C]opying requires the replication of a specific product.” Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004). That products are similar is not persuasive evidence of copying. See Iron Grip, 392 F.3d at 1325 (“Not every competing product that arguably falls within the scope of a patent is evidence of copying. Otherwise every infringement suit would automatically confirm the nonobviousness of the patent.”). With respect to industry praise, we note that evidence, too, is only relevant when it is directed to the merits of the invention claimed. See Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311 (Fed. Cir. 2006). Patent Owner fails to provide any connection between the particular features of claim 29 and the alleged industry praise. Nevertheless, even if we were to assume sufficient nexus had been established by Patent Owner, when we weigh all of the evidence, for and against patentability, we determine that the preponderance of the evidence weighs in favor of unpatentability of claim 29. As explained above, we are persuaded that Reisinger, itself, in a single embodiment, teaches each of the features found in claim 29, other than expressly describing a roof and sidewalls. As also explained above, however, we are persuaded that one skilled in the art would readily appreciate that greenhouses include a roof and sidewalls, which Patent Owner does not dispute. Accordingly, Patent Owner’s evidence does not outweigh Petitioner’s evidence of obviousness.” slip op. at 16

  Patent outcomesUS 8,707,617 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 8,707,617
• 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
• Kranos Corporation D/B/A Schutt Sports v. Riddell, Inc.No claims unpatentable
  PTAB · Feb 7, 2018 · IPR2016-01649 · APJ Barry L Grossman · IPR · Final written decision

  Claims 1, 2, 4–8, 13, 15, and 16–19 were not shown unpatentable under either §103 ground based on inadequate claim mapping and an unpersuasive rationale to combine.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner does not present an evidence-based analysis of factors typically considered in determining the level of ordinary skill. Petitioner merely states a conclusion without any analysis or persuasive evidence to support that conclusion. Petitioner’s entire assertion concerning the level of ordinary skill is the following sentence: It is contemplated that a person of skill in the art (“POSITA”) in the field of coupling and release mechanisms at the time of the invention of the ‘269 patent would have a bachelor’s degree in engineering or more than three years of experience in product design, with specific experience in attachment and release mechanism design. Pet. 50 (emphasis added). Petitioner does not cite any evidence in the Petition to support this assertion.5 5 Petitioner cites to the Declaration of Mr. Float in its Reply. Pet. Reply 9 (citing Ex. 1028 ¶ 65). Mr. Float’s declaration testimony merely restates Petitioner’s conclusion without any analysis, facts, or data to support that conclusion. As such, his testimony on this issue is entitled to little if any probative weight. 37 C.F.R. § 42.65. We further note that Petitioner did not provide this evidence with the Petition and consequently Patent Owner did not have notice or an opportunity to respond. Patent Owner proposes a higher level of ordinary skill than that asserted by Petitioner. According to Patent Owner, a person of ordinary skill would have had “a degree in a relevant technical, physics or engineering field and at least two years of experience in designing and engineering sports helmets. Alternatively, a POSITA could have at least five years of experience designing sports helmets, even without the relevant technical degree.” PO Resp. 21–22 (citing Ex. 2001 ¶ 21) (emphasis added). Mr. Shewchenko testifies that he is aware of “the factors that may be considered in determining the level of ordinary skill in the art.” Ex. 2001 ¶ 16. These factors include: (1) the education level of the inventor; (2) the types of problems encountered in the art; (3) the prior art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the education level of active workers in the field. Id. Mr. Shewchenko also testifies that “[g]iven the potential for significant injury, football (and other contact sports) has instituted rigid safety standards for helmets.” Id. at 20 (citing the National Operating Committee on Standards for Athletic Equipment (“NOCSAE”) safety guidelines for athletic equipment (Exhibit 2003)). Mr. Shewchenko concludes “[i]n view of these potential safety hazards and stringent performance requirements associated specifically with the design of helmets for contact sports,” it is his opinion that: a person of ordinary skill in the art with respect to the ‘269 patent would have [had] a degree in a relevant technical, physics, or engineering field and at least two years of experience designing and engineering sports helmets. Alternatively, one could be considered a person of ordinary skill in the art without the relevant technical degree with at least five years of experience designing sports helmets.” Id. at 21. We have not been directed to any evidence in the record concerning the educational level of the inventors of the ’269 patent; the rapidity with which innovations in the relevant technology are made; or the educational level of workers active in the field. The type of problems discussed in the ’269 patent suggest skill involving” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for patent owner

    “Dependent claim 2 addresses the direction of the actuation force applied to the coupler mechanism. It recites the negative limitation that “the actuation force lacks a rotational component.” Dependent claims 7 and 18 each recite that a component of the “releasable coupler mechanism,” the “cylindrical body,” “lacks threads.” As dependent claims, these claims further limit the claims from which they depend. As such, as an initial premise, these dependent claims suggest that, under the doctrine of claim differentiation, the construction of the phrase “releasable coupler mechanism” in independent claims 1 and 13 is broader than, and thus does not include, limitations on the direction of the actuation force (“lacks a rotational component,” as recited in claim 2) or any exclusion of threads (“lacks threads,” as recited in claims 7 and 18). As we explain below, however, the doctrine of claim differentiation does not control the outcome here. b. Specification The Abstract summarizes the “invention” by stating “[t]he present invention is directed to an improved sports helmet including a quick release connector assembly for the faceguard that allows for rapid disconnection of the faceguard from the helmet shell . . . [using] [a]n inwardly directed actuation force that lacks a rotational component.” Ex. 1001, Abstract (emphasis added). This summary emphasizes that the quick-release feature of the “releasable coupler mechanism,” and the rapid disconnection function, are dependent on an inwardly directed force that does not have a conventional rotational component.” slip op. at 13

  • BurdenNot shown unpatentable

    “Our rules require a petition to specify where each element of the claim is found in the prior art patents or printed publications relied upon. 37 C.F.R. § 42.104(b)(4), (5). It is unclear from Petitioner’s argument where each element of challenged claims 1, 4, 13, and 15 is found in either Ide or Szendel and how and why the two references would have been combined. For example, independent claims 1 and 13 each require a releasable coupler mechanism that requires a “washer,” a “cylindrical body,” and a “head.” Dependent claims 4 and 15 require a cylindrical body with two segments of different diameters. Petitioner has not identified persuasively which elements of Ide or Szendel are being relied upon to meet these limitations, and why it would have been obvious to combine the selected elements. We decline to speculate as to Petitioner’s intentions. Accordingly, Petitioner has not met its burden to establish that claims 1, 4, 13, and 15 are unpatentable.” slip op. at 29

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

    “Common sense” is a conclusory label. It is the final step in a reasoned analysis based on the evidence. References to “common sense”—whether to supply a motivation to combine or a missing limitation—cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified. Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016), cert. denied sub nom. Google Inc. v. Arendi S. A. R. L., No. 16-626, 2017 WL 1040877 (U.S. Mar. 20, 2017). Petitioners’ failure to explain the “common sense” on which it relies is problematic. Id. slip op. at 33

  Patent outcomesUS 8,813,269 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,813,269
• Valve Corporation v. Ironburg Inventions Ltd.Rehearing denied
  PTAB · Jan 26, 2018 · IPR2016-00948 · APJ Phillip J Kauffman · IPR · Rehearing

  The Board denied Valve’s rehearing request and maintained its determination that claims 1–11, 13, 16, and 17 were not shown obvious over Enright and Tosaki.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Written Decision (Paper 44, “Decision,” or “Dec.”) in this case. Paper 45 (“Reh’g Req.”). Specifically, Petitioner asks that we: (1) reconsider and adopt the construction of “flexible” proposed in the Petition, (2) consider Section IV.D. of the Petitioner’s Reply, (3) determine that claims 1–11, 13, 16, and 17 are obvious over Enright and Tosaki, and (4) correct three typographical errors.1 Id. at 1.” slip op. at 2

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

    “Petitioner asks that we deviate from the ordinary meaning of “flexible,” yet neither identifies a lexicographical definition nor alleges that the prosecution history warrants such a deviation. See Resp. 1–2, 4–5 (pointing out that Petitioner’s attempt to deviate from ordinary meaning is not well supported); see also Reply 2 (contending that the broadest reasonable interpretation of “flexible” is broader than its ordinary meaning, but not providing a reason for departing from ordinary meaning). Further, Petitioner’s suggestion that the ordinary meaning of a claim term must be expressly stated in the disclosure is incorrect and does not warrant deviation from the ordinary meaning of a term. The proper inquiry, as applied in both our Institution Decision and our Final Written Decision, is whether the ordinary meaning of a claim term is consistent with the specification. See Dec. 36–37; Paper 10, 13–14; In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (the words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification); Resp. 7. Second, Petitioner agrees that “inherently resilient” as claimed means that the elongate member will return to its unbiased position when not under load. Being capable of returning to an unbiased position when not under load of necessity includes being capable of being moved to a biased position under load. In other words, inherent resiliency requires that the elongate member may be moved to a biased position under load and then returns to an unbiased position when not under load. Inherent resiliency and flexibility as claimed are different characteristics. For example, an elongate member formed of hard plastic that could be biased/displaced by a user’s finger to activate a switch mechanism and then return to an unbiased position would be inherently resilient. That same elongate member formed of hard plastic would not itself bend or flex, and therefore would not be flexible as required by claim 1.” slip op. at 4

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

    “correspond to elongate members as claimed, then in the Reply, Petitioner changes the theory to allege that it would have been obvious to modify Enright’s switches to be flexible as claimed. Compare Pet. 34–35 to Pet. Reply 15. We do not consider this contention because Patent Owner was not afforded notice and opportunity to respond to this new theory of unpatentability. See generally Genzyme Therapeutic Prods. Ltd. V. Biomarin Pharm. Inc., 825 F.3d 1360, 1366–1367 (Fed. Cir. 2016) (determining that the Administrative Procedure Act and due process require notice to a party and the opportunity to submit facts and argument); see also Intelligent Bio- Ays. V. Illumina Cambridge, Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim’” [as required by 35 U.S.C. § 312(a)(3)]); 37 C.F.R. § 42.104(b)(2).” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for patent owner

    “In the Petition, Petitioner alleges that Enright’s switches 32, 34 correspond to elongate members as claimed, then in the Reply, Petitioner changes the theory to allege that it would have been obvious to modify Enright’s switches to be flexible as claimed. Compare Pet. 34–35 to Pet. Reply 15. We do not consider this contention because Patent Owner was not afforded notice and opportunity to respond to this new theory of unpatentability. See generally Genzyme Therapeutic Prods. Ltd. V. Biomarin Pharm. Inc., 825 F.3d 1360, 1366–1367 (Fed. Cir. 2016) (determining that the Administrative Procedure Act and due process require notice to a party and the opportunity to submit facts and argument); see also Intelligent Bio- Ays. V. Illumina Cambridge, Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim’” [as required by 35 U.S.C. § 312(a)(3)]); 37 C.F.R. § 42.104(b)(2). 3 Petitioner’s Reply refers to the ground of unpatentability based on Enright, Tosaki, and Oelsch, but Petitioner has not requested that we reconsider that portion of our Final Written Decision. See Pet. Reply 15; Reh’g Req. 1 (seeking reconsideration of the ground of unpatentability based Enright and Tosaki).” slip op. at 9

  Claim construction§ 103 obviousness
  Patents in suitUS 8,641,525
• Pacific Surf Designs, Inc. v. Surf Waves, Ltd.Some claims unpatentable
  PTAB · Jan 17, 2018 · IPR2016-01454 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1–5 and 7–20 are unpatentable; claim 6 was not shown unpatentable, based on the anticipation and obviousness grounds summarized by the Board.

  RulingsFinal written decision

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

    “Although the district court construed “activity section” as Petitioner describes, it also construed “curved sidewall extending substantially upwardly from [an/another] edge of the middle section,” which is part of the activity section, as “upwardly curved wall that the rider may traverse extending from [an/another] edge of the middle section.” Ex. 1013, 12–14. That said, it does not appear that the district court specifically considered whether to include “that the rider may traverse” in its construction. Id. It did, however, identify the issue regarding “activity section” as whether that term should include Petitioner/Defendant’s “additional proposed phrase ‘on 6 At the hearing, Patent Owner argued that the Lochtefeld 530 lacks the claimed sidewall because: the sidewall is “not to be designed [to be traversed]. But more than designed, there’s nothing in this reference that tells you that you should be traversing on it. So it’s more than just designed. There’s nothing in this reference that says you would traverse it.” Tr. 34:15–22. all of which a rider can ride.’” Ex. 1013, 10:1–4. It concluded that such language would be “superfluous and introduce[] ambiguity.” Id. at 10:9–12. We conclude the broadest-reasonable interpretation of “activity section” in light of the Specification does not require that a rider may traverse the entire activity section, including all portions of the sidewalls. Such a construction would be inconsistent with the Specification’s description that sidewalls may curve past vertical, as shown in Figure 12C. Ex. 1002, 4:5–6, Fig. 12C. In this regard, our construction comports with that of the district court. See Ex. 1013, 10:9–12. Beyond that, as discussed below (see infra at 41), whether the claims require that a rider may traverse some portion of the sidewall does not affect our conclusions regarding unpatentability. Thus, we do not further construe the “activity section.”” slip op. at 11

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

    “Regarding the claim phrase “extending substantially upwardly,” Patent Owner’s expert takes the position that curvature must be measured “perpendicular to a tangent along the edge.” See Ex. 1014, 59:3–60:1. Patent Owner relies on its expert to argue that Lochtefeld 589 does not disclose the claimed sidewalls but provides no support for construing “extending substantially upwardly” in such a manner. Patent Owner’s expert does not provide any support for such a construction in his declaration. Instead, he asserts that Lochtefeld 589 discloses sidewalls that extend either downward or horizontally, without explaining how he comes to that conclusion. Ex. 2001 ¶ 23. We will not impose a limiting construction based solely on an expert’s unsupported statements. Without some reason to construe “extending substantially upwardly” as sought by Patent Owner, we consider the ordinary meaning of the phrase within the context of the claims and Specification. The Specification gives a very permissive and general description of the sidewalls. E.g., Ex. 1001, 3:15–22, 3:56–4:6. Thus, the Specification leads us to construe “extending substantially upwardly” as encompassing a sidewall that, at some point, extends above the edge of middle section corresponding to the side wall.” slip op. at 13

  • Prior constructionTerm construed petitioner constructionDecided for petitioner

    “3. “the first curved side” All claims recite that the “second curved sidewall” is opposite “the first curved side.” Although the claims do not provide antecedent basis for “the first curved side,” Petitioner proposes that the term be construed as “the first curved sidewall.” Pet. 20. Petitioner notes that Patent Owner argued in the related district court proceeding that “[i]t is beyond dispute that the claim term ‘the first curved side’ was intended to be ‘the first curved sidewall,’ both to comport with all of the disclosures of the ’016 Patent and also in accordance with proper antecedent basis.” Id. (citing Ex. 1010, 28:13–18). Patent Owner does not address this issue. A district court may “correct an error in a patent by interpretation of the patent where no certificate of correction has been issued . . . only if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims.” Novo Indus., LP v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003). We have applied this same standard in our proceedings. E.g., Apple Inc. v. Achates Reference Publ’g, Inc., Case IPR2013-00080, slip op at 10–12 (PTAB June 3, 2013) (Paper 22). Here, we conclude the claims are properly read such that “first curved side” refers to the “first curved sidewall” and that such correction is not subject to reasonable debate. Neither party has identified how the prosecution history suggests a different interpretation. Thus, we adopt Petitioner’s proposed construction, namely “first curved sidewall.”” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “1. The level of ordinary skill in the art Petitioner asserts that the applicable person of ordinary skill in the art is “a person with skill in designing, manufacturing, or refurbishing surfing simulation water rides.” Pet. 17. Petitioner’s expert declarant applies that definition in his analysis. Ex. 1002 ¶ 17. We adopted that definition in our institution decision and noted that the teachings of the prior art presented in the Petition reflect that level of skill. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Inst. 19. Patent Owner does not challenge Petitioner’s definition of the level of ordinary skill in the art, and we also adopt it here.” slip op. at 30

  Patent outcomesUS 8,088,016 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 8,088,016
• Costco Wholesale Corporation v. Robert Bosch LLCRehearing denied
  PTAB · Nov 20, 2017 · IPR2016-00041 · APJ William V Saindon · IPR · Rehearing

  The Board denied Costco’s rehearing request, leaving claim 6 not unpatentable because the asserted combinations did not explain why a skilled artisan would modify the spoiler as claimed.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. LEGAL STANDARD The Rule governing requests for rehearing provides that “[t]he burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). Further, “[t]he 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.” Id.” slip op. at 2

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

    “determined that Petitioner failed to provide “an explanation for why it would have been obvious to combine the two separate components in Kotlarski ’090 into a single component.” ’823 Final Dec. 22. In its Request, Petitioner asserts that we overlooked the explanation by its expert that “[e]ach part of the ‘binary component’ performs the same function in the same way as the distinct components of Kotlarski ‘090.” Req. Reh’g 10 (citing Ex. 1014 ¶ 74). But pointing out that Kotlarski ’090 and claim 6 of the ’823 patent both have a spoiler for displacing air and claws for retention fails to account for the fact that they are configured to do so in different ways. Claim 6 requires a binary component having portions with different hardness values, where the wind deflection portion and the claws are integrated into a single piece (see, e.g., Ex. 1001, Figs. 1, 2 (depicting the claw as the lower portion of the spoiler, uniform along the length of the wiper)), whereas Kotlarski ’090 has separate retaining clips, longitudinally spaced apart in intervals, that have a similar profile as the wind deflection portion (see, e.g., Ex. 1021, Figs. 5–15 (depicting various embodiments of spoiler/clip combos, with blowouts showing just the separate clips)). This is not a simple matter of making two things one; somehow fusing the clips and wind deflection portion together of Kotlarski ’090 would not meet the requirement of claim 6 where the claw area is harder than the wind deflection portion, because the clips in Kotlarski ’090 are hard from claw to tip (i.e., through the wind deflection portion). See, e.g., Ex. 1021, Figs. 5, 6 (depicting the clip and a cross-section of the clip as made of a uniform material). We emphasize that Kolarski ’090’s clips are separate components from the spoiler, are of uniform hardness (all plastic), and are not harder at the claws. Petitioner’s expert’s testimony that the wind deflection portion and the claws perform the same function in the same way is an oversimplification and does not address this significant distinction. Further, Petitioner has not directed us to, nor do we see, any direct application of the teachings of Kotlarski ’090 for modifying the Prohaska spoiler to have harder claws. The Prohaska spoiler is similar to the spoiler in the ’823 patent, in that the claws are on the spoiler. Kotlarski ’090 is different—it teaches separate clips. It does not teach making the claws of a spoiler harder. To apply the teachings of Kotlarski ’090 to Prohaska’s spoiler in one of the articulated grounds would not satisfy the claims; it would require a further modification than what is shown in Kotlarski ’090 or explained in the Petition in order for the claw portion to be harder than the wind deflection portion. Petitioner argues that Prohaska already teaches a “binary component,” Req. Reh’g 10–12, but this argument is untenable in view of our understanding of the term. See ’823 Final Dec. 22 (explaining that the claim requires a binary component to be made of a single structure having different hardness values). Reviewing the Request, we are not persuaded we misapprehended or overlooked Petitioner’s arguments or evidence regarding the ground asserted against claim 6 of the ’823 patent involving Kotlarski ’090.” slip op. at 4

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “Lastly, Petitioner argues that the ’264 Final Decision, which issued March 30, 2017, and determined claim 3 of the ’264 patent was unpatentable, should be held to have preclusive effect as to claim 6 in our ’823 Final Decision, which issued April 12, 2017.3 Req. Reh’g 13–15. That these two final decisions mailed on separate days is due to mere clerical factors—these trials proceeded concurrently. See Paper 21 (Scheduling Order placing these proceedings on the same schedule). Petitioner’s argument, if persuasive, would result in an inability to rehear certain cases mailed after others, contrary to our Rules. 37 C.F.R. § 42.71(d) (permitting rehearings of decisions, including final decisions). We are not persuaded that the ’264 Final Decision in this instance precludes certain determinations in the ’823 Final Decision. See also generally In re Craig, 411 F.2d 1333, 1336 (CCPA 1969) (where the Board has conceded error in a prior decision, the broad countervailing public policy considerations of granting valid 3 We note that neither decision has been designated as informative and/or precedential. patents preclude the application of res judicata).” slip op. at 7

  § 103 obviousness
  Patents in suitUS 8,099,823

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.