- Fitbit, Inc. v. Bodymedia, Inc.Institution deniedPTAB · Sep 8, 2016 · IPR2016-00707 · APJ Trevor M Jefferson · IPR · Institution
The Board denied institution because Fitbit did not show a reasonable likelihood that claims 1–29 would have been obvious over Mault 470 and Mault 089, which were not shown to be prior art.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Petitioner asserts that the broadest reasonable construction of “contextual data of the individual” as recited in the claim limitation 1(b)(i) is “data relating to an individual’s activity state environment, surrounding, or location.” Pet. 17. Petitioner asserts that this construction was applied in the related ITC proceeding. Id. (citing Ex. 1015, 17–22, 33). Patent Owner does not contest this proposed construction. For purposes of this Decision, we adopt Petitioner’s proposed construction for “contextual data of the individual.”” slip op. at 6
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“of the claimed subject matter without explaining what the parent application conveys to those skilled in the art. See Pet. 9–10 (discussing whether June 2000 applications contain “equivalent description” of claim 1 limitations); Ex. 1003 ¶ 32 (addressing whether “equivalent description” exits in the parent applications). Contrary to Petitioner’s application of the “equivalent description,” the test for sufficiency of support in a parent application is not “the presence or absence of literal support in the [parent application] for the claim language,” In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983), but instead is whether the disclosure of the application relied upon reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter, Vas-Cath Inc., 935 F.2d at 1563–64; see Yorkey v. Diab, 605 F.3d 1297, 1303 (Fed. Cir. 2010) (quoting In re Kaslow, 707 F.2d at 1375). In the present case, Petitioner relies on conclusory statements that [t]he June 2000 applications do not contain an equivalent description of a processing unit configured to provide feedback for an individual’s weight-loss goal by performing each of the steps recited in subparts b.(i)–(v) of claim 1 in sufficient detail such that one of skill in the art can clearly conclude the applicant invented the claimed invention.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“Based on the foregoing, we find that Petitioner has not shown that Mault 470 and Mault 089 are prior art, and, thus, there is not a reasonable likelihood that Petitioner would prevail in showing that claims 1–29 would have been obvious under 35 U.S.C. § 103 over Mault 470 and Mault 089.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)
“Mault 470 and Mault 089 are prior art, and, thus, there is not a reasonable likelihood that Petitioner would prevail in showing that claims 1–29 would have been obvious under 35 U.S.C. § 103 over Mault 470 and Mault 089. III. CONCLUSION For the foregoing reasons, we determine that the Petition fails to establish a reasonable likelihood of prevailing on the asserted ground that claims 1–29 would have been unpatentable as obvious under 35 U.S.C. § 103 over Mault 470 and Mault 089.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 8,398,546 - Sony Computer Entertainment America LLC / Microsoft Corporation Inc. v. Adc Technology Inc.All claims unpatentablePTAB · Jul 1, 2016 · CBM2015-00026 · APJ Michael P Tierney · CBM · Final written decision
Claims 8–14 are unpatentable under §103 as obvious over the instituted prior-art combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“D. Level of Ordinary Skill in the Art Petitioner’s declarant, Mr. Garry E. Kitchen, testifies that, based on his experience in the commercial software art, a person of ordinary skill in the art at the time of the invention would have had a Bachelor of Science degree in electrical engineering, computer engineering, computer science or a related engineering discipline or equivalent experience or education. Declaration of Garry Kitchen, Ex. 1011 ¶ 33. Patent Owner does not dispute this recitation of the level of ordinary skill in the art. We adopt the level of ordinary skill in the art identified by Mr. Kitchen as it is consistent with the prior art of record. See also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“Petitioner provides specific constructions for each of the interference means appearing in the dependent claims. Pet. 22–24. Patent Owner disagrees that the dependent claims recitation of interference means requires “additional functional limitations piled on top of the disclosed structure.” PO Resp. 7. Specifically, Patent Owner contends that there is only one construction of interference means, namely that which Petitioner provided with respect to the interference means of claim 8. Petitioner disagrees with Patent Owner and contends that the four dependent claims themselves recite specific functions and must further limit the claim from which they depend. Reply 7. We determine that it is unnecessary to determine whether Patent Owner or Petitioner is correct as to the specific construction of the interference means recited in claims 11, 12, 13, and 14 as the claims are unpatentable under either construction. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Program, Data and Combination of Program and Data Claim 8 contains the recitation “the program, the data, and a combination of the program and data together.” Petitioner contends that the term should mean “the program and/or the data.” Pet. 28; Reply 9. Petitioner, however, contends that Patent Owner was silent as to the meaning of the term during ex parte reexamination. Pet. 29. Patent Owner generally contends that the claim recitation is definite and requires operations to be performed either on “a program, or on data, or on a combination of the program and data.” PO Resp. 8. We adopt Patent Owner’s construction (operations are performed either on “a program, or on data, or on a combination of the program and data”) as it is consistent with the plain and ordinary meaning of the term and appears to be substantially the same as Petitioner’s construction. Reply, 9–10, Ex. 1011, ¶ 54.” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“The obviousness-type double patenting rejection does not demonstrate that the earlier filed ’995 patent described the invention, with all its claimed limitations. First, the rejection was based on obviousness, not anticipation. See Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). (“One shows that one is ‘in possession’ of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious.”). Second, the Examiner’s identification of “common subject matter” consists merely of that which appears in the preamble of challenged claim 8. Although the Examiner stated that there was no apparent reason why the present claims were not presented in the earlier application, Mr. Kitchen presents credible testimony that the clock means limitation “for keeping a predetermined time period after said executing means starts execution of the program or data processing,” did not appear in the earlier filed applications and written description support for it was added in the continuation-in-part ’784 application via new Figure 12. Ex. 1011 ¶¶ 46–47 and 49; compare Ex. 1001, Figures 1–14, with Ex. 1014, Figures 1–11. Based on the evidence of record, we credit Mr. Kitchen’s testimony as it is consistent with the evidence of record and hold that Petitioner has established that claims 8–14 are limited to the July 2, 1998, filing date of the ’784 application, which resulted in the issuance of the ’520 patent.” slip op. at 15
Patent outcomesUS 6,193,520 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 6,193,520 - NRT Technology Corp. / NRT Technologies, Inc. v. Everi Payments, Inc.Institution deniedPTAB · Jan 22, 2016 · CBM2015-00167 · APJ Michael J Fitzpatrick · CBM · Institution
The Board denied institution because Petitioner did not show any challenged claim was more likely than not unpatentable under § 101, Akel, or grounds relying on Reeder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We may not institute a CBM patent review “unless the Director[2] determines that the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a).3 Based on our review of the record, we conclude that Petitioner is less likely than not to prevail with respect to all of the challenged claims. Accordingly, we deny the Petition to institute a CBM patent review, as set forth below.” slip op. at 2
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 not directed to exceptionNot shown unpatentable
“As Patent Owner points out, Petitioner has oversimplified the challenged claims. Prelim. Resp. 31. The challenged claims are not directed simply to the idea of providing money to an account holder or using trial-and-error until success is achieved. Rather, the claims are directed to particular methods of providing money to an account holder using an ATM via a POS transaction after an ATM transaction has failed. See Alice, 134 S. Ct. at 2354 (“Applications of such concepts to a new and useful end . . . remain eligible for patent protection.”) (internal quotation marks and brackets omitted). Further, Petitioner’s analysis omits any consideration of the elements of the claims as ordered combinations to determine whether the additional elements transform the nature of the claims into a patent-eligible application. It was Petitioner’s burden to do so. Petitioner has not shown that the claims are more likely than not patent-ineligible. Alice, 134 S. Ct. at 2354 (“an invention is not rendered ineligible for patent simply because it involves an abstract concept”).” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“It is a petitioner’s burden to explain how a challenged claim should be construed and how, being so construed, it is unpatentable. 37 C.F.R. § 42.204(b)(3)–(4). Petitioner does not propose an express construction for “personal identification number” and does not show that its plain and ordinary meaning would include a password. Further, claim 1 requires entering a PIN into the terminal. In the context of the specification and surrounding claim language, this step is part of the claimed “method of providing money or an item of value to an account-holder.” The teaching on which Petitioner relies, however, relates to a system operator’s back-end access of the Akel system. See Ex. 1006, 6:58–62 (“Each system operator requires a password to access the system . . . .”) (emphasis added). Elsewhere, Akel describes a “customer” (distinct from a system operator) as using a kiosk to obtain cash. Id. at 2:56–3:11. But, Akel does not describe entering a password into a terminal, let alone a PIN, as part of that process. Thus, even if Akel’s password fell within the scope of the recited PIN, the Petition would still fail to show how its use by an operator “to access the system” (see Ex. 1006, 258–60) meets the recited “entering a personal identification number into the terminal” as part of the claimed “method of providing money or an item of value to an account-holder.” Petitioner has not shown that Akel teaches “entering a personal identification number into the terminal.” Accordingly, Petitioner has not shown that claim 1, or dependent claims 2–8, are more likely than not anticipated by Akel.” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“The invention date of the ’792 patent is no later than its filing date, which is January 5, 1998. Although the Reeder application was filed, and thus privately known to Mr. Reeder, before the ’792 filing date, such private knowledge is not within the scope of § 102(a). See, e.g., Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 139 (Fed. Cir. 1986) (“The statutory language, ‘known or used by others in this country’ (35 U.S.C. § 102(a)), means knowledge or use which is accessible to the public.”). Reeder was 8 The AIA took effect on March 18, 2013. Because the application from which the ’792 patent issued was filed before that date, our citations to 35 U.S.C. § 102 are to its pre-AIA version. eventually patented of course but not until after the filing date of the ’792 patent. For these reasons, Reeder is not prior art under 35 U.S.C. § 102(a), which is the only provision under which the Petition asserted Reeder. Reeder presumptively is prior art to the ’792 patent under a different subsection of the statute, namely § 102(e). However, a reference that is prior art under only § 102(e) may not be asserted in a CBM patent review. Under the AIA, a Petition for a CBM patent review may challenge novelty or non-obviousness of a claim only on the basis of: (i) prior art that is described by section 102(a) . . . ; or (ii) prior art that— (I) discloses the invention more than 1 year before the date of the application for patent in the United States; and (II) would be described by section 102(a) . . . if the disclosure had been made by another before the invention thereof by the applicant for patent. AIA § 18(a)(1)(C). Because Petitioner has not shown that Reeder is prior art that may be asserted in a Petition for a CBM patent review, all of the grounds that rely on Reeder are denied.” slip op. at 15
§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites AlicePatents in suitUS 6,081,792 - Euro-Pro Operating LLC v. Acorne Enterprises, LLCAll claims unpatentablePTAB · Jul 9, 2015 · IPR2014-00351 · APJ Scott A Daniels · IPR · Final written decision
Claims 1, 13, and 14 are unpatentable as obvious over Hlava, Hlava and Nachumsohn, and Nachumsohn and Vallorani; the motion to amend is denied.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“Decision to Institute, in which we determined that the following claim terms invoke section 112, ¶ 6 because they specify a function but no structure for performing that function. Inst. Dec. 7.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“not provided an articulated reasoning with rational underpinnings to support obviousness of claim 1 over Nachumsohn. PO Resp. 35–38. Patent Owner specifically contends that simply using a double pole triple (or four) throw switch to selectively energize the wrap-around and bottom heat elements “cannot reasonably be accomplished by a person of ordinary skill in the art following the teachings of the Nachumsohn invention.” Id. at 38. This argument is not persuasive for at least two reasons. First, a person of ordinary skill in the art is not limited to the teachings of Nachumsohn. One of ordinary skill can use his or her ordinary skill, creativity, and common sense to make the necessary adjustments and further modifications to result in a properly functioning device. See KSR, 550 U.S. at 418 (“[T]he [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). Second, Petitioner showed that one of ordinary skill in the art would have been motivated to include such a function controlling means “to provide variable cooking modes” that constitute the many different cooking phases, such as, baking, searing, scalloping, stewing discussed in Nachumsohn. Pet. 38 (citing Ex. 1004, pg. 1, col. 1, ll. 15–19). Petitioner reasoned that these cooking modes could be achieved by enabling multiple heating elements to be selectively energized, and that electromechanical rotary switches—such as a double pole triple throw switch, which would have enabled Nachumsohn’s bottom and side heating elements to be energized to provide cooking modes via the bottom heating element only, the side heating element only, or both heating elements; and such as a double pole four throw switch, which would have included an “off” setting (where neither heating element is energized) and enabled Nachumsohn’s bottom and side heating elements to be energized to provide cooking modes via the bottom heating element only, the side heating element only, or both heating elements—were known means of accomplishing same. Pet. 38–39 (citing Ex. 1017 ¶¶ 22, 36–39). Petitioner’s reasoning is supported by evidence from Nachumsohn that different modes of heating and cooking food were contemplated by those of skill in the cooking arts, and that modifying Nachumsohn’s circuit with a double pole triple (or four) throw switch to selectively energize, either, or both heating elements to achieve these modes “would have been routine for one of ordinary skill in the art at the time [the] ’262 patent was filed.” Id. Therefore, Petitioner has presented an articulated reasoning with rational underpinning based on Nachumsohn.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“localized thermal stresses and cracking that would be caused by the proposed new bottom heating device.” PO Resp. 22 (citing Ex. 1003, 4:23– 34). However, teaching away requires a reference to actually criticize, discredit, or otherwise discourage investigation into the claimed solution. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The concern addressed by Hlava is that localized hot spots can compromise stoneware inserts, and therefore sensors are used to discriminate between a stoneware insert, and a metallic insert better suited to higher heat settings. Ex. 1003, 4:23–41. The passages in Hlava referred to by Patent Owner state that “when stoneware insert 16 is placed within housing 12, the maximum heat output permitted by heating device 30 is limited to prevent thermal shock and cracking of the stoneware.” Id. at 4:46–49. Patent Owner’s argument fails to explain why one of ordinary skill in the art would have been discouraged from providing a bottom heating element even though Hlava specifically states that metallic inserts were available that could handle higher heat stress. See id. at 4:49– 52. Indeed, Patent Owner’s argument fails to explain why such a bottom heating element could not be regulated in temperature just like Hlava’s heating device 30, for any type of insert in such a deep well cooking apparatus including a stoneware insert. Patent Owner’s further contention that Hlava’s insert discriminating sensor 36 somehow dissuades one of skill in the art from using a bottom heating element is also unavailing. See PO Resp. 23–25. Even if a bottom heating element shifted, or added to Hlava, theoretically could “result in localized thermal stresses and cracking of the stoneware insert 16,” (id. at 25) Hlava expressly teaches how to avoid such a result with sensor 36 to limit the maximum heating temperature of the heating elements. See Ex. 1003, 4:46–49. Patent Owner’s conclusory argument, that shifting heating element 30c' to the bottom of Hlava’s cooker would “destroy the intent, purpose or function” of Hlava’s invention, does not explain persuasively why the temperature of a bottom heating element, either shifted or added to Hlava’s cooker, would not also be limited by operation of sensor 36, for instance when a stoneware insert is used in the cooker. For the above reasons, we conclude that a preponderance of the evidence demonstrates that claim 1 is unpatentable based on Hlava and the admitted prior art.” slip op. at 16
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“under § 103 only when it is analogous to the claimed invention. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citing Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011)); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). A reference is considered analogous prior art: (1) if the reference is from the same field of endeavor as the claimed subjected matter, regardless of the problem addressed, or (2) if “the reference still is reasonably pertinent to the particular problem with which the inventor is involved,” even though the reference is not within the field of the inventor’s endeavor. Bigio, 381 F.3d at 1325. The “field of endeavor” test asks if the structure and function of the prior art is such that it would be considered by a person of ordinary skill in the art, because of the similarity to the structure and function of the claimed invention as disclosed in the application. Id. at 1325–27.” slip op. at 32
Patent outcomesUS 6,515,262 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 6,515,262 - Euro-Pro Operating LLC v. Acorne Enterprises, LLCAll claims unpatentablePTAB · Jul 9, 2015 · IPR2014-00352 · APJ Scott A Daniels · IPR · Final written decision
Claims 1 and 12 are unpatentable as obvious over the stated prior-art combinations; the Patent Owner’s contingent motion to amend is denied.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“Decision to Institute, in which we determined that the following claim terms invoke section 112 ¶ 6 because they specify a function but no structure for performing that function. Inst. Dec. 7. Construed Term(s) Claim Construction Temperature The function of this means-plus-function term we controlling means determined to be “regulating the temperature of said heating elements,” and the structure to include “a temperature control switch as shown in Figures 1A–3, and its equivalents, which can be manipulated from outside the housing of the deep well cooker.” Inst. Dec. 6–7. Function controlling We determined the function for this means-plus- means function limitation we found to be “enabling [the] bottom heating element and [the] wrap-around heating element to be selectively energized to provide variable cooking modes,” and the corresponding structure we determined to be “the device, and its equivalents, as reflected in Figures 1A–3 of the ’392 patent mounted in the outer housing of the deep well cooker and manipulated separately from the temperature control means by a user, and as represented in the specification, can pass current individually to either the bottom heater or wrap-around heater, or in combination to both.” Inst. Dec. 7.” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“and education as an electrical engineer with 50 years of product development and design experience including electric cooking devices. Ex. 1019¶¶ 3–14. Mr. Sherwood’s testimony is offered by Petitioner, not as expert testimony on the specific legal criteria of obviousness, but as evidence of what one of ordinary skill in the art of electric cooker design would have understood at the time of the filing of the ’392 patent. Id. ¶ 22. Mr. Sherwood’s legal principal statements are informative as to his understanding of obviousness, but not expert testimony as to the specific legal elements and requirements for obviousness. Id. ¶¶ 20–21. Mr. Sherwood’s opinions and testimony as they relate specifically to the prior art, and his knowledge of one of ordinary skill in the art at the time of 1 Fed. R. Evid. 702. Testimony by Expert Witnesses A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if: (a) the expert’s scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product of reliable principles and methods; and (d) the expert has reliably applied the principles and methods to the facts of the case. filing of the ’392 patent, comport with the legal requirements for obviousness as explained to him by Petitioner’s counsel. See Ex. 1019 ¶ 20. Obviousness is a mixed question of law and fact and it is not necessary that an expert be a “legal” expert on the question of obviousness. See Soverain Software LLC, v. Newegg Inc., 705 F.3d 1333, 1341 (Fed. Cir. 2013) (“precedent does not require ‘expert’ opinions on matters of law”). Also, we are persuaded that Mr. Sherwood’s testimony was undertaken with consideration as to the level of ordinary skill in the art within the 2000-2001 time frame of the alleged invention and filing of the ’392 patent. Although Mr. Sherwood did not state, explicitly, what the level of one of ordinary skill in the art would have been at the time of filing of the ’392 patent, it is reasonable to determine that a professional engineer having a master’s degree in electrical engineering and 50 years of electronic product design experience including extensive experience in the design of cooking appliances and electronic temperature control systems including slow cookers and crockpots, is qualified to testify as to what would have been known by, and obvious, to one of ordinary skill in the art at the time of the filing of the ’392 patent. Ex. 1019 ¶ 8. Mr. Sherwood specifically states that his opinions are “based on my personal knowledge, experience, and the materials I have reviewed, as to how someone of ordinary skill in the field of cooking appliances would understand the challenged claims of . . .the ’262 patent and the ’392 patent as of at least July 2001.” Id. ¶ 22. We determine that Mr. Sherwood’s opinions and testimony are entitled to weight, as they embrace the requirement of one of skill in the art at the time of filing of the ’392 patent, and are adequately supported by his professional experience and skill in the field of electronic cooking appliance design.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Patent Owner’s first argument is not persuasive because the fact that an element of claim 1, namely the bottom heating element, is missing from the Hlava reference is essentially the basis upon which Petitioner has asserted that claim 1 is obvious, as opposed to anticipated. See Pet. 24. Moreover, we are aware of no case law, nor has Patent Owner directed us to any, that all the features of a claim must be found in a prior art reference to properly support an obviousness analysis, or that the absence of a feature in the reference, “mitigates,” against a finding of obviousness. See 35 U.S.C § 103, see also In re O'Farrell, 853 F.2d 894, 902 (Fed. Cir. 1988) (claimed invention would have been obvious over single reference or combination of references). We are also not persuaded by Patent Owner’s contention that Petitioner has failed to present an articulated reasoning with rational underpinnings in support of its obviousness positions. Petitioner has asserted several reasons why one of ordinary skill in the art would shift, or add a bottom heating element to Hlava, one reason being that: it was known in the prior art to use a bottom heating element in addition to a side heating element to facilitate heat distribution in roasting (see Nachumsohn at page 2, column 1, lines 61–71 (discussing properly proportioned heat for browning a roast, which is part of roasting)), and because roasting is a function for which Hlava’s heating element 30c' was designed. Pet. 24–25 (citing Ex. 1004, 8:17–22). Petitioner additionally asserts that although Hlava does not disclose expressly a bottom heating element, Hlava teaches that heating elements for other cooking situations, besides those shown in the reference itself, are contemplated: “the actual number of elements and wattage values could be varied in order to obtain the desired heating profile” . . . to accommodate “a wide variety of cooking situations,” [] which an extra heating element would have helped to accomplish by expanding the heating profiles of the Hlava cooking apparatus. Pet. 27 (citing Ex. 1004, 1:53–64, 5:48–56). Petitioner has supported its reasoning with evidence from the prior art references, such as Hlava and Nachumsohn, which teach that it was well known in the art to use bottom heating elements in deep well cooking apparatus for particular cooking operations. Pet. 25–26 (citing Ex. 1004, 4:11–19, 8:17–22, Fig. 5). Indeed, Petitioner points to the Background section of the ’392 patent itself, discussing certain prior art cooking devices having bottom heating elements. Pet. 7–8, 25 (citing Ex. 1001, 1:21–60). Mr. Sherwood testifies persuasively that shifting or adding a bottom heating element to Hlava was well within the ordinary skill in the art, and “would have yielded the predictable result of quicker heating of the bottom of Hlava’s cooking insert and/or would have resulted in providing Hlava’s cooking apparatus 10 associated with FIG. 9 with additional cooking modes.” Ex. 1019 ¶¶ 27–29. In view of such reasons and evidence, we are satisfied that Petitioner’s explanations constitute articulated reasoning with rational evidentiary underpinnings sufficient to justify the legal conclusion of obviousness.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Patent Owner next argues that Hlava teaches away from a bottom heating element because Hlava’s “stoneware insert 16 could not resist the localized thermal stresses and cracking that would be caused by the proposed new bottom heating device.” PO Resp. 22 (citing Ex. 1004, 4:23– 34). However, teaching away requires a reference to actually criticize, discredit, or otherwise discourage investigation into the claimed solution. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The concern addressed by Hlava is that localized hot spots can compromise stoneware inserts, and therefore sensors are used to discriminate between a stoneware insert, and a metallic insert better suited to higher heat settings. Ex. 1004, 4:23–41. The passages in Hlava referred to by Patent Owner state that “when stoneware insert 16 is placed within housing 12, the maximum heat output permitted by heating device 30 is limited to prevent thermal shock and cracking of the stoneware.” Id. at 4:46–49. Patent Owner’s argument fails to explain why one of ordinary skill in the art would have been discouraged from providing a bottom heating element even though Hlava specifically states that metallic inserts were available that could handle higher heat stress. See id. at 4:49– 52. Indeed, Patent Owner’s argument fails to explain why such a bottom heating element could not be regulated in temperature just like Hlava’s heating device 30, for any type of insert in such a deep well cooking apparatus including a stoneware insert. Patent Owner’s further contention that Hlava’s insert discriminating sensor 36 somehow dissuades one of skill in the art from using a bottom heating element is also unavailing. See PO Resp. 23–25. Even if a bottom heating element shifted, or added to Hlava, theoretically could “result in localized thermal stresses and cracking of the stoneware insert 16” (id. at 26), Hlava expressly teaches how to avoid such a result with sensor 36 to limit the maximum heating temperature of the heating elements. See Ex. 1004, 4:46–49. Patent Owner’s conclusory argument, that shifting heating element 30c' to the bottom of Hlava’s cooker would “destroy the intent, purpose or function” of Hlava’s invention, does not explain persuasively why the temperature of a bottom heating element, either shifted or added to Hlava’s cooker, would not also be limited by operation of sensor 36, for instance when a stoneware insert is used in the cooker. For the above reasons, we conclude that a preponderance of the evidence demonstrates that claim 1 is unpatentable based on Hlava and the admitted prior art.” slip op. at 16
Patent outcomesUS 6,624,392 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 6,624,392 - PTAB · May 20, 2014 · IPR2013-00124 · APJ Lora M Green · IPR · Final written decision
The Board granted cancellation of claims 1-26 and allowed substitute claims 27-44, but denied substitute claim 45 as unpatentable over Behan.
RulingsFinal written decision- ScopeMotion to amend, grantedGranted
“patent claims. 35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii).” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“partes review must set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended.”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundMixed
“In order to establish a prima facie case of obviousness based on structural similarity, the prior art must provide a reason to make the claimed compound, and there must also be “„adequate support in the prior art‟ for the 7 P.E.A. Teal et al., (Z)-11-Hexadecen-1-ol: A Behavioral Modifying Chemical Present in the Pheromone Gland of Female Heliothis Zea (Lepidoptera:Noctuidae), 116 CAN. ENTOMOLOGY 777-79 (1984). Ex. 2003. 8 Yih-Shen Hwang et al., Structure-Activity Relationship of Unsaturated Fatty Acids as Mosquito Ovipositional Repellents, 10 J. OF CHEM. ECOLOGY 145-51 (1984). Ex. 2004. change in structure.” Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1356 (Fed. Cir. 2007) (quoting In re Grabiak, 769 F.2d 729, 731-32 (Fed. Cir. 1985)). The United States Court of Appeals for the Federal Circuit noted that the test for obviousness of a compound based on structural similarity is in accordance with the legal principles enunciated by the Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), specifically, that it is important to identify “„a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does‟ in an obviousness determination.” Takeda, 492 F.3d at 1356-57 (quoting KSR, 550 U.S. at 418). Thus, “in cases involving new chemical compounds, it remains necessary to identify some reason that would have led a chemist to modify a known compound in a particular manner to establish prima facie obviousness of a new claimed compound.” Takeda, 492 F.3d at 1357.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundDecided for petitioner
“We acknowledge that McMahon and the Zhang Declaration are evidence that the ordinary artisan would not have had a reasonable expectation that, because a compound is known to repel mosquitoes, such as Aedes aegypti, the compound would also repel ticks, such as Amblyomma variegatum. Claim 45, however, encompasses the use of isolongifolanone when R1 is a hydrogen atom and R2 is an oxygen atom, which is the same compound specifically taught by Behan. See Pet. 7-8 (showing the structure of isolongifolanone, and discussing how it is encompassed by the chemical formula set forth in claim 1). As discussed above, Behan teaches the use of isolongifolanone to repel mosquitoes or cockroaches. Patent Owner provides no evidence that ticks and mites would not be present on the same objects or areas where mosquitoes and cockroaches are found, which are the insects addressed by Behan. Thus, by applying the isolongifolanone taught by Behan to an object or airspace for the purpose of repelling mosquitoes or cockroaches, one would also inherently repel ticks and mites. “It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); see also Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1377-78 (Fed. Cir. 2005) (noting that the realization of a new benefit of an old process does not render that process patentable); Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368, 1376 (Fed. Cir. 2001) (stating in the context of a claimed process that was drawn to the same use comprising the same steps of the prior art, “[n]ewly discovered results of known processes directed to the same purpose are not patentable because such results are inherent.”). We, therefore, conclude that the preponderance of the evidence does not support the patentability of proposed claim 45.” slip op. at 17
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 7,579,016 - Munchkin, Inc. / Toys “r” US, Inc. v. Luv N’ Care, Ltd.All claims unpatentablePTAB · Apr 21, 2014 · IPR2013-00072 · APJ Michael J Fitzpatrick · IPR · Final written decision
The sole claim is unpatentable as obvious over Hakim ’225 and Hakim ’604; the motion to amend is denied because it would enlarge claim scope.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“The test for sufficiency of the written description, which is the same for either a design or a utility patent, has been expressed as “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. (quoting Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). In the context of design patents, the drawings provide the written description of the invention. Thus, when an issue of priority arises under § 120 in the context of design patent prosecution, one looks to the drawings of the earlier application for disclosure of the subject matter claimed in the later application. Owens, 710 F.3d at 1366 (citations omitted).” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“likelihood that the claim of the ’465 patent would have been obvious over each of Hakim ’225 and Hakim ’604. Dec. on Pet. 23. In response, Patent Owner does not argue that the claim is patentably distinct from those references. PO Resp. 6-7; Tr. 31:10-17. Rather, Patent Owner argues that the references are not prior art. PO Resp. 6-7; Tr. 31:10-17.” slip op. at 5
- ScopeMotion to amend, deniedDenied
“Owner relies on this distinction, between infringement of design patents and that of utility patents, to argue that the proposed amended claim is not broader than the issued claim because, to “an ordinary observer,” the designs are “substantially the same.” PO Reply 4 (emphasis added). However, Patent Owner does not direct us to, and we are not aware of, any authority that has applied the “ordinary observer” test—first enunciated as a test for infringement in Gorham Manufacturing Co. v. White, 81 U.S. 511 (1871) and adopted as the sole test for design patent infringement in Egyptian Goddess, 543 F.3d at 678—to compare the scope of two claims. The scope of the issued claim and the proposed amended claim are defined by the respective drawings. See id. at 679 (design patents typically are claimed as shown in the drawings). Those drawings differ with respect to the spout tip and the vent. Specifically, the proposed amended claim is broader than the issued claim because it is broader with respect to racetrackshaped spout tips and raised rim vents, even though it may be narrower with respect to egg-shaped spout tips and vents without raised rims. See In re Rogoff, 261 F.2d 601, 603 (CCPA 1958) (“[A] claim is broadened if it is broader in any respect than the original claim, even though it may be narrowed in other respects.”). In other words, a drinking cup, having the racetrack-shaped spout tip and raised rim vent of the proposed amended claim, could infringe the proposed amended claim based on its overall design, yet not infringe the issued claim. See Thermalloy, Inc. v. Aavid Eng’g, Inc., 121 F.3d 691, 692 (Fed. Cir. 1997) (“A new claim enlarges if it includes within its scope any subject matter that would not have infringed the original patent.”). Therefore, the proposed amended claim would enlarge the claimed subject matter in violation of 35 U.S.C. § 316(d)(3) and 37 C.F.R. § 42.121(a)(2)(ii).” slip op. at 14
Patent outcomesUS D617,465 unpatentable§ 103 obviousness§ 112 disclosure
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.