- PTAB · Aug 25, 2025 · PGR2025-00028 · APJ George R Hoskins · PGR · Institution
The Board instituted PGR on claims 1–20 and all asserted grounds after finding claim 1 more likely than not unpatentable under § 101.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 324(a), the Director may not authorize a post-grant review unless the information in the petition, if unrebutted, “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we institute a post-grant review as to claims 1–20 of the ’423 patent on all grounds of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art would have had “an educational background of, or practical experience equivalent to, a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately three years of experience with electronic payment systems, vending machine technologies, or distributed network systems,” where “[l]ack of work experience can be remedied by additional education, and vice versa.” Pet. 20 (citing Ex. 1003 ¶¶ 20–26). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. Based on the record presented, including our review of the ’423 patent and the types of problems and solutions described in the ’423 patent and cited 2 Petitioner states that it “takes no position on the proper priority date for the [c]hallenged [c]laims” and “uses the earliest possible priority date claimed, December 18, 2013,” for purposes of its asserted grounds. Pet. 14. prior art, we agree with Petitioner’s definition and apply it for purposes of this Decision. See, e.g., Ex. 1001, 1:42–2:21 (stating that “[t]he present application relates to the field of payment processing systems” and describing the functionality of payment accepting units in the “Background” section).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Interpretation We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.200(b). Petitioner states that, “for purposes of [its] Petition, the Board need not construe any claim terms to resolve the parties’ disputes, and the claims should be given their ordinary and customary meaning.” Pet. 20. Patent Owner agrees that “[n]o constructions are necessary” to decide the issues disputed by the parties. Prelim. Resp. 2–3. We conclude that no express interpretation of any claim term is necessary to determine whether to institute a post-grant review in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted) (emphasis added)).” slip op. at 8
- PTAB / AIA Trials › §315(e) estoppelNot reached
“For the reasons explained below, we conclude, on the merits and based on the current record, that Petitioner has shown that it is more likely than not that claim 1 is unpatentable as claiming patent-ineligible subject matter under 35 U.S.C. § 101. See Pet. 77–84. Accordingly, we need not determine at this time whether collateral estoppel applies based on the Board’s decision in PGR2021-00093. The parties, however, should address the issue in their papers during trial, with citations to relevant authority. In particular, the parties are encouraged to address (1) how the collateral estoppel requirement that the issue be “identical to one decided in the first action” applies in the context of an asserted ground under 35 U.S.C. § 101, and (2) the parties’ apparent disagreement as to whether collateral estoppel may be applied in such circumstances on a “limitation-by-limitation basis.” See Pet. 72, 75 (quoting Google LLC v. Hammond Dev. Int’l, Inc., 54 F.4th 1377, 1381 (Fed. Cir. 2022)); Prelim. Resp. 20–21; see also Kroy IP Holdings, LLC v. Groupon, Inc., – F.4th –, No. 2023-1359, 2025 WL 2178321, at *4 (Fed. Cir. Aug. 1, 2025) (Dyk, J., dissenting) (“In subsequent Board proceedings, it is well established that collateral estoppel applies to claims adjudicated by the Board to be unpatentable and also to ‘related claims that present identical issues of patentability,’ i.e., patentably indistinct claims. . . . ‘It is well established that patent claims need not be identical for collateral estoppel to apply.’” (citing MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373, 1377 (Fed. Cir. 2018); Google, 54 F.4th at 1381)).” slip op. at 12
Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Mayo · Bilski · Berkheimer · Enfish · Electric PowerPatents in suitUS 11,972,423 - PTAB · Aug 25, 2025 · PGR2025-00027 · APJ George R Hoskins · PGR · Institution
The Board instituted PGR of claims 1–20 on all petitioned grounds, finding claim 1 more likely than not ineligible under § 101.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A. Legal Standards — Petitioner’s Burden In a post-grant review, “the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (discussing 35 U.S.C. § 312(a)(3), which is identical to 35 U.S.C. § 322(a)(3) in requiring petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”). This 2 Pub. L. No. 112-29, 125 Stat. 284 (2011). burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’920 patent “would have had an educational background of, or practical experience equivalent to, a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately three years of experience with electronic payment systems, vending machine technologies, or distributed network systems.” Pet. 20; Ex. 1003 ¶¶ 20–26. Further: “Lack of work experience can be remedied by additional education, and vice versa.” Pet. 20; Ex. 1003 ¶ 22. Patent Owner does not oppose Petitioner’s formulation of ordinary skill. See Prelim. Resp. generally. Based on the record presented, including our review of the ’920 patent and the types of problems and solutions described in the ’920 patent and cited prior art, we agree with Petitioner’s definition and apply it for purposes of this Decision. See, e.g., Ex. 1001, 1:42–2:21 (stating “[t]he present application relates to the field of payment processing systems” and describing the functionality of payment accepting units in the “BACKGROUND” section).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues “the Board need not construe any claim terms to resolve the parties’ disputes.” Pet. 20. Patent Owner argues: “No constructions are necessary to deny institution because denial is warranted for numerous reasons that do not depend on claim construction.” Prelim. Resp. 3. However, as discussed below, several of Patent Owner’s arguments seeking to distinguish claim 1 from Low rely on underlying claim construction positions. Except as discussed below in connection with those arguments, we determine no explicit construction is needed to resolve the parties’ controversy as to whether institution should be granted here. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionInstituted
“We determine Petitioner has made a sufficient showing for Step 2A, Prong 1 based on the current record. Petitioner addresses each of limitations [1.2]–[1.14] and explains how they support Petitioner’s contention that the claim, as a whole, is directed to the alleged abstract idea. See Pet. 80–84. For example, Petitioner notes specifically how limitation [1.2], reciting “identifying one or more payment accepting units,” pertains to identifying a merchant, and how limitations [1.6], [1.7], and [1.9] recite user interaction using the mobile device that enables the completion of a purchase. See id. Petitioner thus shows sufficiently how claim 1, by virtue of the limitations reproduced above,5 recites the concept of “identifying a merchant and enabling completion of a purchase from the merchant.” Id. at 80.” slip op. at 21
Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Berkheimer · Enfish · Electric PowerPatents in suitUS 11,966,920 - Fluidmaster, Inc. v. Danco, Inc.InstitutedPTAB · Sep 9, 2024 · IPR2024-00633 · APJ Meredith C Petravick · IPR · Institution
Instituted IPR of claims 1–20 on all asserted grounds; the Board found a reasonable likelihood that claim 1 is unpatentable over Brown and Ho.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, the Reply, the Sur-reply, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’993 patent. Accordingly, we institute an inter partes review of claims 1–20 of the ’993 patent on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“presented to the Office.” Prelim. Resp. 31– 36. In determining whether to deny institution under § 325(d) we use a two-part framework, as follows: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). The Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d). Id. at 9 (referencing Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph)).” slip op. at 8
- BurdenDecided for petitioner
“At this stage of the proceeding, Patent Owner provides no sufficient evidence to rebut Dr. Cameron’s testimony as to what a POSITA would have known from Guoxin and Ho’s drawings and as to the alleged motivations to combine Guoxin and Ho. Based on Petitioner’s evidence and analysis, and taking into account the Preliminary Response, at this stage of the proceeding, we determine that the information in the Petition shows a reasonable likelihood that claim 1 is unpatentable over Guoxin and Ho.” slip op. at 24
- Skill levelSkill level patent owner adoptedDecided for patent owner
“A [person of ordinary skill in the art (“POSITA”)] in the field to which the ’993 Patent is directed would have had at least a Bachelor of Science degree in mechanical engineering or a related field or, as a substitute, at least two years of work or research experience in the design or development of toilet products, parts, and accessories. Prelim. Resp. 16. Petitioner’s declarant Dr. Cameron asserts that: A [POSITA] with respect to the subject matter of the ’993 patent at the time of the priority date, January 27, 2014, would have had an undergraduate degree in mechanical engineering, or other technical training in product design or equivalent work experience. This person would also possess at least one year of experience in developing and/or evaluating mechanical aspects of fluid systems. Ex. 1004 ¶ 29. For purposes of this Decision, we adopt Patent Owner’s proposed definition of a POSITA, as it is consistent with the ’993 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, we see no material difference between the level of skill proposed by Patent Owner and that proposed by Dr. Cameron.” slip op. at 12
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,139,993 - Kiosoft Technologies, LLC / Techtrex, Inc. v. Payrange Inc.Some claims unpatentablePTAB · Oct 26, 2022 · PGR2021-00077 · APJ Meredith C Petravick · PGR · Final written decision
Claim 1 is unpatentable under § 101; claims 2–27 were not shown unpatentable because the other challenges were deficient.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person having ordinary skill in the art would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Electrical Engineering, Computer Science, or a related/equivalent field and at least four years of work experience in identity, transaction, and telecommunication solutions.” slip op. at 12
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“As can be seen from claim 1 above, all of the claimed method steps occur “at the mobile device” and the final step is to enable completion of a cashless transaction. Claim 1 does not recite completing the purchase. The ’833 patent describes that any commercial transaction is completed at the automatic retail machine, not at the mobile device. Ex. 1001, 11:5–9; see also id. at 21:4–11, 22:18–20, 23:53–61, 30:25–27. We, thus, agree with Patent Owner that the claimed method does not require completing or conducting the transaction, but only enabling the completion of the transaction. On this complete record, we are persuaded that the elements italicized above recite the concept of obtaining authorization for a purchase and enabling completion of a cashless transaction, prior to user selection of any items or services. See Pet. 22–23 (arguing that the claimed method “is effectively no different than a person entering a store, the store checking the customer’s available credit (or calling a bank to do so) and when the customer decides on the item, completing the purchase”); Pet. Reply 5–6 (arguing that the claim recites “obtaining payment authorization and performing a financial transaction, the same as a person entering a store, the store checking the customer’s available credit (or calling a bank to do so) and, when the customer decides on the item, allowing the purchase”). In particular, claim 1 recites steps for obtaining authorization prior to user selection of any items or services — steps of identifying the automatic retail machine, obtaining a request from the electronic payment device, sending the request to a server, and obtaining from the server an authorization grant. Claim 1 also recites steps for enabling the completion of a purchase (i.e., cashless transaction) — detecting a trigger condition and sending the authorization grant to the electronic payment device. Our slight revision of the abstract idea from what we previously stated in our Institution Decision does not impact the patentability analysis. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016).” slip op. at 18
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“We are not persuaded. Patent Owner’s arguments rest on the alleged novelty of the abstract idea itself, not the “specific limitation beyond the judicial exception,” i.e., the additional elements. “[A] claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90. “The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diehr, 450 U.S. at 188–89 (emphasis added). Patent Owner and Dr. Shamos do not identify, and we cannot find, anything in the claim suggesting that the mobile device, server, or automated retail device (i.e., the additional elements) are more than generic components. Indeed, the ’833 patent’s specification demonstrates that these elements were well-understood, routine, and conventional to the industry. Ex. 1001, 2:23–29, 37–42, 3:25–38 (explaining that Offer “teaches permitting the cashless utilization of a vending machines via a communications service, such as a cellular telephone;” Khan teaches an application on a user’s “personal trusted device” used to effectuate cashless purchases; and Carlson teaches “a system and a method for using a portable consumer device such as a mobile phone for payments and the like,” the method including prompting a user to select, from his mobile device, a product for purchase at a vending machine, after/if the user is authorized to make the purchase, and sending an authorization response to the vending machine from a “remote payment server”).” slip op. at 26
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At the institution stage, we determined that no claim term required explicit construction. Inst. Dec. 35–37. Petitioner does not challenge our determination or otherwise advance its claim constructions in its Reply. See generally Pet. Reply. Patent Owner does not advance any explicit claim construction. PO Resp. 7–13. Regarding the identifying limitation, Patent Owner indicates that it is “undisputed between the parties that the claims require automatically determining the identity of the specific automatic retail machine based on an electronic transmission received from an electronic payment device of that automatic retail machine.” Id. at 7–8 (emphasis in original, citing Ex. 2018, 3; Ex. 2016 ¶ 68). Patent Owner submits that Petitioner’s constructions for each of the obtaining, authorization, and payment limitations should be rejected “for lacking accordance with the plain meaning of the claim in view of the specification” or “ignor[ing] the plain meaning of the term.” Id. at 9, 12, 13. As to the detecting limitation, Patent Owner argues that certain prior art asserted in the grounds in the Petition fails to teach the term as construed. Id. at 9. We determine that we need not expressly construe these claim terms” slip op. at 33
Patent outcomesUS 10,719,833 mixedClaim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Mayo · Bilski · Phillips · KSR · Graham · NautilusPatents in suitUS 10,719,833 - PTAB · May 12, 2022 · IPR2022-00074 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR on claims 1–13 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, the arguments presented in the Preliminary Response, as well as all other papers and supporting evidence, we determine that Petitioner shows a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we institute inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“warrant exercise of discretion to deny the Petition. Patent Owner cites to our precedential case General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017). Prelim. Resp. 16; Sur-reply 1. Patent Owner’s arguments for exercising discretion to deny institution, however, do not correspond to typically considered factors articulated in General Plastic because, as both parties indicate, this is not a case of follow-on petitions or multiple petitions challenging the ’732 patent. Reply 1; Sur-reply 1. There has only been a single petition for inter partes review filed against the ’732 patent. Patent Owner cites to no other Board decisions with sufficiently similar circumstances where we exercised discretion to deny a Petition under 35 U.S.C. § 314.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). “[T]he Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d).” Id. at 9 (footnote omitted). The non-exclusive Becton, Dickinson factors are:” slip op. at 12
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“arguments are persuasive. First, we are persuaded that the ’732 patent is not entitled to priority to the filing date of the ’085 application and the ’689 application because the ’085 application and the ’689 application do not share any common inventors with the ’732 patent. See 35 U.S.C. § 120 (2018) (“which names an inventor or joint inventor in the previously filed application”); 37 C.F.R. § 1.78(d)(1) (“Each prior-filed application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor.”). The ’732 patent names Jared Oehring, Brandon N. Hinderliter, and Arthur Baron as inventors. Ex. 1001, code (72). The ’085 application and the ’689 application name Joel N. Broussard, Jeff McPherson, and Robert Kurtz as inventors. Ex. 1013, code (72); Ex. 1027, code (72). We have reviewed the ’085 application and the ’689 application and determine, on this record, that the applications fail to include sufficient written description as required by 35 U.S.C. § 120 for the following limitations recited by independent claims 1 and 8: “a weight monitoring system,” (Ex. 1001, 9:63, claim 1); “a proppant dispensing system . . . selectively activated by the information handling system,” (id. at 10:1–3, claim 1); “sensing an amount of proppant” (id. at 10:44, claim 8); “comparing the amount of proppant,” (id. at 10:46 claim 8); and “regulating a flow of proppant from the proppant storage container” (id. at 10:49, claim 8).” slip op. at 5
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,254,732 - PTAB · Feb 17, 2022 · IPR2021-01315 · APJ Lynne H Browne · IPR · Institution
The Board instituted IPR on claims 1–19 and all petition grounds, finding a reasonable likelihood that the challenged claims are unpatentable.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherDenied
“We are not persuaded by Patent Owner that the circumstances here warrant exercise of discretion to deny the Petition. Patent Owner cites to our precedential case General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017). Prelim. Sur-reply 1–2. Patent Owner’s arguments for exercising discretion to deny institution, however, do not correspond to typically considered factors articulated in General Plastic because, as both parties indicate, this is not a case of followon petitions or multiple petitions challenging the ’500 patent. Prelim. Reply 3; Prelim. Sur-reply 1. There has only been a single petition for inter partes review filed against the ’500 patent. Prelim. Reply 3. Patent Owner cites to no other Board decisions with sufficiently similar circumstances where we exercised discretion to deny a Petition under 35 U.S.C. § 314. Patent Owner contends that we should exercise the Director’s discretion to deny institution for a number of reasons, for example, because Petitioner’s challenges to Patent Owner’s patents are allegedly “an attempt to weaponize the IPR process, and impose increased costs and leverage on USWS’s valuable technology in an attempt to overtake this sector of the market.” Prelim. Resp. 15. We have considered all of Patent Owner’s allegations and are not persuaded that exercising discretion is warranted. Patent Owner’s allegations are not supported by sufficient evidence and, to the contrary, it is undisputed that Patent Owner has asserted seven of its patents against Petitioner in district court litigation. Petitioner expresses reasonable concern that Patent Owner may initiate additional district court litigation regarding its as yet unasserted patents. See Prelim. Reply 2.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Although Broussard was presented to the Office, we find that the first part of the Advanced Bionics framework is not satisfied, because the Petition does not assert Broussard alone. Rather, Broussard is asserted in combination with Kaarstad in every ground set forth in the Petition. Pet. 14. Kaarstand was not presented to the Office during prosecution. Pet. 14. Patent Owner asserts that Kaarstad is cumulative of Seiver and Kristensen; on the record before us, we agree with Petitioner that it is not. Prelim. Resp. 27–30, Prelim. Reply 5. Specifically, we agree with Petitioner that “Kaarstad includes a power distribution network with two switchgear units and a tiebreaker coupled therebetween.” Prelim. Reply 5 (citing Pet. 24–29). We further agree with Petitioner that these elements disclosed in Kaarstad (i.e. two switchgear units and a tiebreaker coupled therebetween) are the same elements that Patent Owner used to overcome the Examiner’s rejection based on Seiver. Prelim. Reply 5; Ex. 1004, 39. In addition, we agree with Petitioner that Kristensen was never relied on by the Examiner during the underlying prosecution, and that Kristensen merely discloses a single switchgear as opposed to the two switchgears and tiebraker required by the claims. Prelim. Reply 5; Ex. 2002, Abst., 7:52. For these reasons, we determine that Kaarstad is not cumulative of Siever or Kristensen. Thus, the first part of the Advanced Bionics framework is not satisfied because the combination of references asserted in the Petition was not presented previously to the Office. Under the circumstances presented here, we determine that exercising discretion to deny the Petition under § 325(d) is unwarranted.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine that Petitioner has demonstrated a reasonable likelihood of prevailing in demonstrating that claims 1–11 and 13–19 of the ’500 patent are obvious over Broussard and Kaarstad.” slip op. at 31
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“arguments are persuasive. Specifically, we are persuaded that the ’500 patent is not entitled to priority to the November 16, 2012, filing date of the ’085 application because the ’500 patent and the ’085 application do not share any common inventors. See U.S.C. § 120 (“which names an inventor or joint inventor in the previously filed application”); 37 C.F.R. § 1.78(d)(1) (“Each prior-filed application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor”). The ’500 patent names Jared Oehring and Brandon N. Hinderliter as inventors. Ex. 1001, code (72). The ’085 application names Joel N. Broussard, Jeff McPherson, and Robert Kurtz as inventors. Ex. 1004, code (72). We have reviewed the ’085 application and determine that the ’085 applications fails to include sufficient written description as required by 35 U.S.C. § 120 for the following limitations of independent claims 1 and 14: “at least two switch gear units” (Ex. 1001, 15:44, claim 1; id. at 16:63, claim 14); and “tie breaker electrically coupled between each of the at least two switchgear units” (id. at 15:48–49, claim 1; id. at 16:66– 67). See generally Ex. 1005. Accordingly, on this record, we are persuaded that the effective filing date of the ’500 patent is April 15, 2016.” slip op. at 7
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,893,500 - PTAB · Feb 16, 2022 · IPR2021-01238 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR on claims 1–14 and all asserted grounds, finding a reasonable likelihood that at least one claim would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute only when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). A decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018). If the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition. See Patent Trial and Appeal Board Consolidated Trial Practice Guide (“CTPG”) 64 (Nov. 2019) (“The Board will not institute on fewer than all claims or all challenges in a petition.”);1 see also AC Techs. S.A. v. Amazon.com, Inc., 912 F.3d 1358, 1364 (Fed. Cir. 2019) (“[I]f the Board institutes an IPR, it must . . . address all grounds of unpatentability raised by the petitioner.”).” slip op. at 2
- Other 314aDenied
“This case is unlike other situations in which the Board has exercised its discretion to deny institution. Instead, Patent Owner asks us to deny institution because Petitioner has filed petitions challenging several of Patent Owner’s patents that are not asserted in district court litigation, arguing that the filing of this many petitions by one petitioner against one patent owner is contrary to the purposes of the AIA. Prelim. Resp. 12–23. Patent Owner’s arguments fail to persuade us to exercise our discretion to deny institution in this case. For each of Patent Owner’s patents, Petitioner has filed only one petition. We do not see this action as being contrary to the purposes of the AIA. See, e.g., Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 16 (PTAB Sept. 6, 2017) (designated precedential) (citing H.R. Rep. No. 112-98, pt. 1, at 48 (2011)) (noting that the AIA is “not to be used as [a] tool[] for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation.”). Moreover, it is undisputed that Patent Owner has asserted seven of its patents against Petitioner in district court litigation, and Petitioner expresses reasonable concern that Patent Owner may initiate additional litigation regarding its asyet unasserted patents. See Prelim. Reply 2. Accordingly, for the foregoing reasons, we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny institution.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Thus, under § 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of [the] challenged claims. Id. at 8.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“In order to claim priority to an early-filed U.S. patent application, the earlier-filed application must disclose the invention claimed in the later-filed application “in the manner provided by section 112(a) (other than the requirement to disclose the best mode)” and the later-filed application must “name[] an inventor or joint inventor in the previously filed application.” 35 U.S.C. § 120. For the reasons discussed below, we agree with Petitioner that, on this preliminary record, the ’882 patent is not entitled to claim priority to the filing date of the ’689 application. Each of the independent claims of the ’882 patent recites a first switch gear positioned between a source of electricity and a transmission line and a second switch gear positioned between the transmission line and an electric motor. Ex. 1001, 8:55–57, 9:19–22. “Switchgear” is “[a] general term covering switching and interrupting devices and their combination with associated control, instrumentation, metering, protective and regulating devices.” Ex. 1029, 7. The ’689 application does not disclose a switch gear. See generally Ex. 1004.2 Nor does the ’689 application disclose any switching or interrupting devices or any transformers. See generally id. Therefore, we agree that, on this preliminary record, the ’689 application does not disclose the invention claimed in the ’882 patent in the manner provided by 35 U.S.C. § 112(a). Additionally, the ’689 application lists Joel N. Broussard, Jeff McPherson, and Robert Kurtz as inventors. Ex. 1004, code (72). The ’882 patent lists Jared Oehring and Brandon Neil Hinderliter as inventors. Ex. 1001, code (72); Ex. 1003, 808. Therefore, we agree that, on this 2 Exhibit 1004 is the publication of the ’689 application. Ex. 1004, code (21). preliminary record, the ’882 patent does not name an inventor or joint inventor of the ’689 application. Accordingly, for the foregoing reasons and on this preliminary record, we agree with Petitioner that the ’882 patent is not entitled to claim priority to the filing date of the ’689 application.” slip op. at 7
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,526,882 - PTAB · Dec 17, 2021 · PGR2021-00093 · APJ Meredith C Petravick · PGR · Institution
The Board instituted PGR on claims 1–25 on all petition grounds after finding the § 101 challenge to claim 1 met the institution threshold.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv sets forth the factors that we weigh in determining whether to exercise our discretion to deny institution of the post-grant patent review proceeding here under 35 U.S.C. § 324(a). See Fintiv, Paper 11, 5–6. These factors are: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. “[T]he Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Because the claims at issue here, in particular claim 1, differ from the March 2015 amended claims of the ’859 patent and the August 2014 amended claims of the ’296 patent (see, e.g., Ex. 1001, 46:59–47:34), we are not persuaded that the cited prosecution history equally applies to the claims here. In particular, we note that claim 1, which we discuss in the analysis below, does not recite a first transceiver corresponding to a short-range communication mode and a second transceiver corresponding to a long-range communication mode, and does not specify whether a first or second transceiver perform certain actions recited in the claim. Id. As Patent Owner points out (Prelim. Resp. 19), claim 1 of the ’614 patent more but claim 1 does not specify whether it is long or short range and merely recites it being used to establish a connection for the exchange of information between a mobile device and a payment accepting unit in some of the claimed steps. Id. Thus, considering Becton, Dickinson factors (a) and (d), we are not persuaded that the same or substantially the same arguments concerning § 101 were previously presented to the Office. Because we determine that the same or substantially the same arguments with respect to § 101 were not previously presented to the Office, we need not address part two of the Advanced Bionics framework with respect to those arguments.” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A [person having ordinary skill in the art (“POSITA”)] would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Electrical Engineering, Computer Science, or a related/equivalent field and at least 3 years of academic or industry experience in electronic payment systems. Pet. 16 (citing Ex. 1003 ¶¶ 5–6). Patent Owner does not dispute Petitioner’s contention in its Preliminary Response. See generally Prelim. Resp. Based on the record before us, we adopt Petitioner’s asserted level of ordinary skill to determine whether it is more likely than not that at least one of the claims challenged in the Petition is unpatentable. This level of skill in the art is consistent with the disclosure of the ’614 patent and the prior art of record. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 22
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionInstituted
“Ex. 1001, 46:61–47:34. Based on the current record, we are persuaded that the limitations above recite the concept of identifying a merchant and making a purchase from the merchant. In particular, claim 1 recites steps for identifying payment accepting units (i.e., a merchant) — limitations 1.2– 1.7.1. Claim 1 also recites steps for conducting the purchase —limitations 1.7.2–1.11. Based on the current record, we find that identifying a merchant and making a purchase from the merchant is a commercial interaction, a sales activity. It falls within the enumerated “[c]ertain methods of organizing human activity” grouping of abstract ideas set forth in MPEP § 2106.04(a)(2).” slip op. at 28
Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Mayo · Bilski · Berkheimer · Phillips · NautilusPatents in suitUS 10,891,614 - Kiosoft Technologies, LLC / Techtrex, Inc. v. Payrange Inc.Institution deniedPTAB · Dec 16, 2021 · PGR2021-00084 · APJ Meredith C Petravick · PGR · Institution
The Board denied institution because Petitioner did not show that any of claims 1–20 was more likely than not unpatentable on the asserted § 112, § 102, or § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“instituted unless “the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”1 After considering the Petition, the Preliminary Response, Reply, Sur- reply and the evidence of record, we determine that Petitioner fails to demonstrate that it is more likely than not that at least one of the claims challenged in the Petition is unpatentable. Accordingly, we do not institute a post-grant review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“We are not persuaded by Petitioner’s arguments because Petitioner’s proposed construction improperly attempts to read a particular embodiment described in the ’608 patent into the claims. It is not proper to read limitations from the ’608 patent into the claims: Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). “[A]lthough the specification often describes very specific embodiments of the invention, [the Federal Circuit has] repeatedly warned against confining the claims to those embodiments.” Phillips, 415 F.3d at 1323. As Mr. Smith points out, the ’608 patent does describe offline- payment operated machine 1500 as an electro-mechanical machine capable of accepting currency (e.g., coins), which is not connected to any networks (e.g., telephone, cellular, or Wi-Fi). Ex. 1005 ¶ 84 (citing Ex. 1002, 39:39– 45). But, the ’608 patent describes offline-payment operated machine 1500 as merely one example of an offline-payment operated machine in some implementations. The ’608 patent states: FIG. 28A illustrates a block diagram of an offline-payment operated machine 1500 in accordance with some implementations. For example, the offline-payment operated machine 1500 (e.g., a form of the machine 120) is an electro-mechanical machine capable of accepting currency (e.g., coins), which is not connected to any networks (e.g., telephone, cellular, or Wi-Fi). For example, the offline-payment operated machine 1500 is a washer or dryer at a laundromat, a parking meter, a car wash payment kiosk, or other offline-payment operated machine that dispenses goods and/or services. Ex. 1002, 39:38–48 (emphases added). The ’608 patent emphasizes that offline-payment operated machine 1500 is merely an example. Id. at 39:52– 56 (“The components of the offline-payment operated machine 1500 in FIG. 28A are examples and one of skill in the art will appreciate that various” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A [person having ordinary skill in the art (“POSITA”)], as of the date of the alleged invention, would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Electrical Engineering, Computer Science, Information Technology, or a related/equivalent field and at least three years of work experience in electronic payment systems, vending machine technologies, or telecommunication solutions. Pet. 29 (citing Ex. 1005 ¶ 52). Patent Owner does not dispute Petitioner’s contention in its Preliminary Response. See generally Prelim. Resp. Based on the record before us, we adopt Petitioner’s asserted level of ordinary skill to determine whether it is more likely than not that at least one of the claims challenged in the Petition is unpatentable. This level of skill in the art is consistent with the disclosure of the ’608 patent and the prior art of record. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“Under 35 U.S.C. § 112(a), “[t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same . . . .” To satisfy the written description requirement, the disclosure must reasonably convey to skilled artisans that the patentee possessed the claimed invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The requirement under § 112 does not demand that the specification recite the claimed invention verbatim. Id. at 1352 (citations omitted). The “claimed subject matter need not be described in haec verba in the specification in order for that specification to satisfy the description requirement.” In re Smith, 481 F.2d 910, 914 (CCPA 1973). “Original claims are part of the original specification and in many cases will satisfy the written description requirement.” Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1297 (Fed. Cir. 2017). We agree with Patent Owner. Petitioner, itself, indicates that the specification of the ’608 patent discloses an interface module counting the electrical pulses generated by a coin receiving switch. The Petition states: “Specifically, the objective inquiry reveals that it is only the ‘first interface module’ that is mentioned as counting one or more electrical pulses generated by the coin receiving switch.” Pet. 32; see also Ex. 1005 ¶ 125 (corresponding testimony of Mr. Smith). In this regard, the ’608 patent states: In FIG. 28A, the first interface module 1522 is configured to sample payment acceptance signals from the microswitch 1502 (e.g., a coin receiving switch) via lead 1532 of the offline-payment operated machine 1500. For example, the payment acceptance signals are indicative of a coin being received by the microswitch 1502 which depress lever 1504. Ex. 1002, 40:35–40. The ’608 patent also describes FIG. 28B as illustrating signals sampled by the first interface module 1522, “[f]or example, the preset sequence of payment acceptance signals indicative of the preset number of coins include pulses (i.e., payment acceptance signals) 1552, 1554, 1556, and 1558.” Id. at 40:50–58; see also id. at 41:59–42:4 (“payment acceptance signals are indicative of a preset number of coins received by the coin receiving switch”); 42:49–55 (describing identifying a count of pulses). The ’608 patent further states: “[T]he terms used for labels (e.g., ‘first,’ ‘second,’ and ‘third’) are meant solely for purposes of designation and not for order or limitation.” Id. at 46:11–14. Claim 19, as originally filed, recited limitation (b), with the coin counting interface module being labeled as the second interface module. Ex. 1003, 283. Given the originally filed claim 19 and the above disclosures of the ’608 patent, Petitioner does not persuade us that the ’608 patent does not reasonably convey to skilled artisans that the patentee did not possess the claimed invention as of the filing date. Petitioner does not show sufficiently that claims 19–20 are more likely than not unpatentable under 35 U.S.C. § 112(a) for lack of written description.” slip op. at 15
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · NautilusPatents in suitUS 10,891,608 - Minerva Surgical, Inc. v. Hologic, Inc.All claims unpatentablePTAB · May 8, 2018 · PGR2017-00002 · APJ Meredith C Petravick · PGR · Final written decision
Claims 1–19 are unpatentable under § 112(a) for lack of written description; Petitioner did not prove lack of enablement.
RulingsFinal written decision- BurdenUnpatentable
“Written Description and the ’506 Application The test for written description is an objective inquiry into the four corners of the specification from the perspective of a POSA. Using this test, the invention must be described in a manner sufficient to demonstrate that the inventor actually invented the claimed invention. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “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.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Written description is a question of fact judged as of the relevant filing date. Falko–Gunter Falkner v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir. 2006). An ipsis verbis disclosure, however, is not necessary to satisfy the written description requirement. Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). The disclosure need only reasonably convey to a POSA that the inventor had possession of the subject matter in question, even if every nuance of the claims is not explicitly described in the specification. Id.; see Ariad, 598 F.3d at 1351.” slip op. at 23
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“Written Description and the ’506 Application The test for written description is an objective inquiry into the four corners of the specification from the perspective of a POSA. Using this test, the invention must be described in a manner sufficient to demonstrate that the inventor actually invented the claimed invention. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “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.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Written description is a question of fact judged as of the relevant filing date. Falko–Gunter Falkner v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir. 2006). An ipsis verbis disclosure, however, is not necessary to satisfy the written description requirement. Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). The disclosure need only reasonably convey to a POSA that the inventor had possession of the subject matter in question, even if every nuance of the claims is not explicitly described in the specification. Id.; see Ariad, 598 F.3d at 1351.” slip op. at 23
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledNot shown unpatentable
“Under 35 U.S.C. § 112(a), enablement is separate and distinct from the written-description requirement. Ariad, 598 F.3d at 1344. “The test of enablement is whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent coupled with information known in the art without undue experimentation.” United States v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988). “[A] patent specification complies with the statute even if a ‘reasonable’ amount of routine experimentation is required in order to practice a claimed invention.” Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371 (Fed. Cir. 1999). Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). These factors, referred to as the Wands factors, include: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breath of the claims. Wands, 858 F.2d at 737. It is Petitioner’s burden to show by a preponderance of the evidence that the claims of the ’989 patent lack enablement. 35 U.S.C. § 326(e). Petitioner’s evidence and argument does not sufficiently establish that the ’989 patent fails to teach those in the art to make and use the claimed invention without undue experimentation. See PO Resp. 58–66. The Petition does not address the Wands factors sufficiently so as to show that undue experimentation is required to make or use the claimed invention. For example, neither the Petition nor Dr. Pearce sufficiently addresses the state of the prior art or the relative skill of those in the art. See Pet. 64–65; Ex. 1002 ¶¶ 145–152; PO Resp. 62. As Patent Owner argues, this is an “omission[] that [is] particularly fatal” to Petitioner’s enablement argument, because Petitioner argues that mechanical expansion and inflation expansion are incompatible and cannot be combined. PO Resp. 62; see Pet. 30–38, 64. Dr. Grundfest, however, testifies that it was well known to combine mechanical and balloon-based expansion in surgical devices. Ex. 2005 ¶¶ 132–136; PO Resp. 56. During cross-examination, Dr. Pearce testified that he “thought about the state-of-the-art in minimally invasive surgery during the 1990s.” Ex. 2003 18:1–14. Dr. Pearce’s testimony is conclusory and does not sufficiently address whether he considered whether it was well known to combine mechanical expansion and inflation expansion in surgical devices. For another example, relying upon the testimony of Dr. Pearce, the Petition asserts that a redesign of the expansion design disclosed in the ’989 patent “would take a substantial amount of time and cost to achieve.” Pet. 65 (citing Ex. 1002 ¶ 149). Likewise, Dr. Pearce testifies, “[s]uch a redesign would take a substantial amount of time and cost to achieve.” Ex. 1002 ¶ 149. Dr. Pearce, however, does not explain sufficiently why combining mechanical expansion and inflation expansion would require a substantial amount of time and cost. See id. For these reasons, we determine that Petitioner has not met its burden of showing by a preponderance of evidence that claims 1–19 are unpatentable under 35 U.S.C. § 112(a) for lack of enablement.” slip op. at 33
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Factors that may be considered in determining level of ordinary skill in the art include: (1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (quoting Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983)). We are not persuaded that Dr. Pearce’s testimony concerning the level of skill in the art is erroneous to the extent it does not explicitly require experience related to devices used for uterine surgical procedures or surgical devices that employ expandable inflation-based and mechanical-based components. Patent Owner’s argument and Dr. Grundfest’s testimony is inconsistent with the ’989 patent, which does not disclose an ablation device or method of using an ablation device that solves problems unique to endometrial ablation or unique to surgical devices that employ expandable inflation-based and mechanical-based components. The ’989 patent does not limit the art to be “the field of minimally invasive surgical and uterine devices” (Ex. 2005 ¶ 60). The ’989 patent states: “The present invention relates generally to the field of apparatuses and methods for ablating or coagulating the interior surfaces of body organs. Specifically, it relates to an apparatus and method for ablating the interior linings of body organs such as the uterus and gallbladder.” Ex. 1001, 1:20–24; see also id. at 2:36–38 (“The present invention is an apparatus and method of ablation and/or coagulating tissue, such as that of the uterus or other organ”).” slip op. at 16
Patent outcomesUS 9,247,989 unpatentable§ 112 disclosurePatents in suitUS 9,247,989
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.