• Supercell OY v. Gree, Inc.Rehearing denied
  PTAB · May 10, 2019 · PGR2018-00008 · APJ Michael W Kim · PGR · Rehearing

  The Board denied Supercell's rehearing request, leaving claims 1, 8, and 10–12 unpatentable under § 101 and claims 2–7 and 9 not shown unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Even assuming that the Board did overlook or misapprehend that the Petition articulated that “in a multi-player environment” was subsumed within “creating and applying a template of positions of one or more game contents,” we note that the aforementioned portion of the Petition also identifies, as additional details, “wherein a second player can also create and apply templates within the game space.” Neither the Petition nor the Request explains why these additional details should be considered a part of the claimed concept. Furthermore, delving into the merits of those latter additional details, we were, and continue to be, unpersuaded that a second player, that can both “create” and “apply” a template, is accounted for adequately in the Petition. Specifically, even if we were to agree the Petition accounts for a second player “applying” a template “in a multi-player environment” (see Req. 5, citing Pet. 6), the Petition makes no mention of the second player being able to also create the template. As discussed in the Final Written Decision, Petitioner did not provide sufficient evidence or analysis that a second player able to also create and apply templates is included in the claimed concept of “creating and applying a template of positions of one or more game contents.” Final Dec. 43. We could not have overlooked or misapprehended something not presented adequately in the Petition.” slip op. at 5

  None
  Patents in suitUS 9,597,594
• Toyota Motor Corp. v. GE Hybrid Technologies, LLCRehearing denied
  PTAB · May 9, 2019 · IPR2019-00015 · APJ Lynne H Browne · IPR · Rehearing

  The Board denied rehearing, leaving institution denied for claims 1–16 because the petition did not adequately explain why the prior art would be modified to meet the vehicle-control limitation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. PRINCIPLES OF LAW A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2

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

    “pertaining to a vehicle control unit. Pet. 20, 24; Ex. 1002 ¶ 55. The Petition and the Miller Declaration provide evidence that Sugimoto discloses control device 60, and that one skilled in the art would have considered Sugimoto’s control device 60 to be a vehicle control unit, as required by each of claims 1 and 5. Id. The Petition and the Miller Declaration also provide evidence that Sugimoto’s control device 60 controls a switch. Pet. 17–19; Ex. 1002 ¶ 50. Such evidence alone, however, does not provide sufficient reasoning, with adequate rational underpinnings, for modifying Fassnacht’s process to include a vehicle control unit that is allowed to turn on a first switch when the vehicle is below a first threshold temperature. Rather, as we explained in our Decision, “[t]he allegations in the Petition rely on an assumption that mere inclusion of a vehicle control unit as part of Fassnacht’s method would result in the claimed method.” Dec. 13 (citing Pet. 20, 22–24). Further, even though we did not specifically cite paragraphs 52–53, 61–62, and 103–109 of the Miller Declaration in our Decision, we did not overlook or misapprehend them. These paragraphs provide detailed explanations of how Sugimoto’s control device 60 could have been incorporated in to Fassnacht’s vehicle, but these descriptions also start from the assumption that merely including Sugimoto’s control unit 16 in Fassnacht’s process would have resulted in the claimed method. Neither the Petition nor the Miller Declaration explain why one skilled in the art would modify Fassnacht’s process to include the step of allowing the vehicle control unit to turn on a switch when such a step is unnecessary to Fassnact’s process. In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014) (“[T]he mere capability of pulling the handles is not the inquiry that the Board should have made; it should have determined whether it would have been obvious to modify the prior art apparatus to arrive at the claimed rowing machine.”).” slip op. at 3

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

    “pertaining to a vehicle control unit. Pet. 20, 24; Ex. 1002 ¶ 55. The Petition and the Miller Declaration provide evidence that Sugimoto discloses control device 60, and that one skilled in the art would have considered Sugimoto’s control device 60 to be a vehicle control unit, as required by each of claims 1 and 5. Id. The Petition and the Miller Declaration also provide evidence that Sugimoto’s control device 60 controls a switch. Pet. 17–19; Ex. 1002 ¶ 50. Such evidence alone, however, does not provide sufficient reasoning, with adequate rational underpinnings, for modifying Fassnacht’s process to include a vehicle control unit that is allowed to turn on a first switch when the vehicle is below a first threshold temperature. Rather, as we explained in our Decision, “[t]he allegations in the Petition rely on an assumption that mere inclusion of a vehicle control unit as part of Fassnacht’s method would result in the claimed method.” Dec. 13 (citing Pet. 20, 22–24). Further, even though we did not specifically cite paragraphs 52–53, 61–62, and 103–109 of the Miller Declaration in our Decision, we did not overlook or misapprehend them. These paragraphs provide detailed explanations of how Sugimoto’s control device 60 could have been incorporated in to Fassnacht’s vehicle, but these descriptions also start from the assumption that merely including Sugimoto’s control unit 16 in Fassnacht’s process would have resulted in the claimed method. Neither the Petition nor the Miller Declaration explain why one skilled in the art would modify Fassnacht’s process to include the step of allowing the vehicle control unit to turn on a switch when such a step is unnecessary to Fassnact’s process. In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014) (“[T]he mere capability of pulling the handles is not the inquiry that the Board should have made; it should have determined whether it would have been obvious to modify the prior art apparatus to arrive at the claimed rowing machine.”).” slip op. at 3

  § 103 obviousness
  Patents in suitUS 8,409,052
• Vestas-American Wind Technology, Inc. / Vestas Wind Systems A/S v. General Electric Co.Rehearing denied
  PTAB · Apr 11, 2019 · IPR2018-01563 · APJ Michael W Kim · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving institution on all challenged claims and grounds unchanged because the petitions differed in their use of EON and the § 325(d) analysis remained unchanged.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “outset, we acknowledge that we did misapprehend or overlook some aspects identified by Patent Owner. Ultimately, however, Patent Owner’s assertions are unpersuasive, because while they certainly highlight the similarities between the two proceedings, they do not address adequately the differences. It is those differences that did, and once again, carry the day, even when we reweigh our previous determination in light of our acknowledged errors.” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “on EON is for substantively the same claim limitation, i.e., the recited “uninterruptible power supply.” Compare Pet. 46–48; -01029 Pet. 28–29. The issue, however, are the portions of these petitions that precede those identified by Patent Owner. In the cited portion of -01029 Petition, the only other reference identified is Cousineau. -01029 Pet. 28–29. Neither petition relies on Cousineau for the “uninterruptible power supply.” Accordingly, in the -01029 Petition, we could come to no conclusion other than Petitioner was relying on EON alone for the “uninterruptible power supply.” And it was on that basis that we agreed with Patent Owner that the Office had already considered, and rejected, that position during reexamination. Req. 12.” slip op. at 4

  • Other 314aDenied

    “In the present case, GE respectfully suggests that an expanded panel is appropriate to secure and maintain uniformity of the Board’s decisions where the same panel has taken inconsistent positions with respect to the same reference (EON), used in the same manner, to challenge the same patent (the ’985 patent), in cases IPR2018-01029 and IPR2018-01563, involving the same parties. The panel came to its conclusion in the DI -01029 following a reasoned and complete Becton, Dickinson analysis, then reaffirmed that conclusion in the -01029 Rehearing Decision, recognizing the reliance on the same art and the same or substantially the same argument that was presented previously to the office. The consistent conclusion of exercising the Board’s discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review is also appropriate here. Req. 14–15. The Chief Judge has considered Patent Owner’s request for an expanded panel, but has determined that an expanded panel is not warranted.” slip op. at 8

  Discretionary denial
  Patents in suitUS 6,921,985
• Miami International Holdings, Inc. / Miami International Securities Exchange, LLC et al. v. Nasdaq Ise, LLCRehearing granted
  PTAB · Feb 15, 2019 · CBM2018-00021 · APJ Kristi L R Sawert · CBM · Rehearing

  The Board granted rehearing on the ethics rules and granted Interrogatories 4 and 5 and Document Request 2, while denying rehearing on the remaining specified discovery requests.

  RulingsRehearing decision

  • RehearingRehearing, grantedRehearing, deniedGranted in part

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision, we review the” slip op. at 2

  • Additional discoveryAdditional discovery, grantedGranted in part

    “Upon reconsideration, we agree with Patent Owner that the timing of Dr. Hendershott’s preparation and the editing of common paragraphs 18–36 is unclear on the current record. For example, Dr. Hendershott testified that he could not remember whether Fish suggested that he provide a history of Wall Street and the exchanges, which are embodied in paragraphs 18–36. See Ex. 1062, 53:14–19. Dr. Hendershott also testified that he received from Fish versions of his declaration containing edits, but did not remember whether any of those edits were substantive in nature. See id. at 51:19–25, 52:8–22. Dr. Hendershott also did not review the edits to his declarations and thus was arguably not prepared to testify as to the circumstances surrounding the creation and editing of the common paragraphs. See id. at 58:2–8. Thus, we grant Interrogatories 4 and 5 and Discovery Request 2, as relevant information only in the possession of Fish and Reed Smith (Bloomberg Factor 3). We deny Document Request 3, however, because we remain unpersuaded that it is relevant to showing that confidential information could have found its way from Fish to Reed Smith. Ord. 11. In particular, Document Request 3 relates to information flowing from Reed Smith to Dr. Hendershott, and is therefore not relevant to whether Fish used or revealed information to Reed Smith relating to its prosecution of the Nasdaq patents.” slip op. at 12

  None
  Patents in suitUS 6,618,707
• Coastal Industries, Inc. v. Shower Enclosures America, Inc.Some claims unpatentable
  PTAB · Nov 19, 2018 · IPR2017-00573 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–3, 5, 7–9, 11–14, and 16–26 are unpatentable; claims 4, 6, 10, and 15 are not shown unpatentable. Substitute claims 33 and 34 are granted.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “invention. Pet. 26. Patent Owner sets forth many assertions related to the level of ordinary skill in the art at the time of the invention. PO Resp. 3–14, 20–30; PO Supp. Resp. 15–20. Petitioner responds to those assertions. Pet. Reply 2–4, 9–18; Pet. Supp. Reply 15–16. While we will address each of those assertions, as a substantive matter, Petitioner asserts that “PO does not dispute the definition of a PHOSITA, offer a contrary definition, explain how a different definition might affect the Board’s analysis, nor contest the Board’s specific interpretation of the prior art references to put the PHOSITA determination at issue.” Pet. Reply 16–18; Pet. Supp. Reply 15– 16. We agree with that assessment. Moreover, we note that the level of ordinary skill in the art is often reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Accordingly, as an initial matter, we address Petitioner’s unopposed substantive assertion with respect to the level of ordinary skill in the art at the time of the invention.” slip op. at 7

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

    “1. “track members” Independent claims 1, 12, 19, and 22 each recite “track members.”” slip op. at 28

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “B. Patentability of Substitute Claims 33 and 34 Petitioner asserts that various claim limitations are disclosed in the” slip op. at 100

  • ExcludeMotion to exclude, deniedDenied

    “701, 702 and 37 C.F.R. § 42.65(a). Specifically, Patent Owner asserts that Mr. Poenariu’s testimony is entirely based on his finding as to the level of ordinary skill in the art, and because Mr. Poenariu did not articulate a sufficient factual basis for his conclusion as to the level of ordinary skill in the art, his entire testimony us unreliable and should be excluded. PO Mot. 5–6. Petitioner responds that Mr. Poenariu discloses more than a sufficient amount of underlying facts on which to base his testimony, and, thus, Patent Owner’s assertions go to weight and not admissibility. Pet. Opp. 6–9. We agree with Petitioner.” slip op. at 105

  Patent outcomesUS 7,174,944 mixed
  Claim constructioncites Phillips · KSR
  Patents in suitUS 7,174,944
• Motorola Mobility LLC v. Intellectual Ventures II LLCRehearing denied
  PTAB · Nov 16, 2018 · IPR2014-00504 · APJ Patrick R Scanlon · IPR · Rehearing

  The Board denied Patent Owner’s request for rehearing of the SAS Order, leaving review instituted on all challenged claims and all grounds in the Petition.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). In particular, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)New argument disregardedDenied

    “overlooked express statutory requirements that the Board was obligated to assess before considering the Petition for re-institution.” Reh. Req. 10 (citing 35 U.S.C. § 312(a)). Specifically, Patent Owner argues “the Petition fails to meet the particularity requirement [of 35 U.S.C. § 312(a)(3)] at least with respect to the multiple grounds identified on pages 47–59 of the Petition” because of the “vague formulation” (i.e., Veeck in view of Kellerer, Boehm, and/or Mitchell). Id. at 12. Patent Owner, however, does not identify where this “matter was previously addressed in a motion, an opposition, or a reply,” as required by 37 C.F.R. § 42.71(d). We could not have misapprehended or overlooked something that was not presented previously. A Request for Rehearing is not an opportunity to raise new arguments against a petition. To the extent Patent Owner believes the grounds newly instituted in the SAS Order lack sufficient particularity under 35 U.S.C. § 312(a)(3), it can make such arguments in its supplemental briefing.” slip op. at 10

  • Director reviewOther

    “The standard operating procedure exemplifies some of the reasons for which the Chief Judge may expand a panel. PTAB SOP 1, 15 (§ III.M). For example, the Chief Judge may expand a panel “where appropriate, to secure and maintain uniformity of the Board’s decisions, e.g., in related cases ordinarily involving different three judge panels.” Id. (§ III.M.1). In this case, the acting-Chief Judge has considered Patent Owner’s suggestion for an expanded panel, but has determined that an expanded panel is not warranted.” slip op. at 12

  None
  Patents in suitUS 7,382,771
• Google Inc. v. Intellectual Ventures II LLCRehearing denied
  PTAB · Nov 16, 2018 · IPR2014-00787 · APJ Patrick R Scanlon · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving in place the SAS Order instituting review on all challenged claims and all petition grounds.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). In particular, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3

  • Other 314aDecided for petitioner

    “Our governing statutes and regulations do not provide for parties to request, or panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412. The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party. PTAB SOP 1, 15; see also Apple Inc. v. Rensselaer Polytechnic Inst., Case IPR2014- 00319, slip op. at 2 n.1 (PTAB Dec. 12, 2014) (Paper 20) (expanded panel) (per curiam). The standard operating procedure exemplifies some of the reasons for which the Chief Judge may expand a panel. PTAB SOP 1, 15 (§ III.M). For example, the Chief Judge may expand a panel “where appropriate, to secure and maintain uniformity of the Board’s decisions, e.g., in related cases ordinarily involving different three judge panels.” Id. (§ III.M.1). In this case, the acting-Chief Judge has considered Patent Owner’s suggestion for an expanded panel, but has determined that an expanded panel is not warranted.” slip op. at 11

  Discretionary denial
  Patents in suitUS 6,121,960
• Supercell OY v. Gree, Inc.Rehearing denied
  PTAB · Oct 26, 2018 · PGR2018-00039 · APJ Lynne H Browne · PGR · Rehearing

  The Board denied GREE’s rehearing request, finding no abuse of discretion in instituting PGR of claims 1–8 based on the § 101 challenge.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “limitations. For example, as noted by Patent Owner, the full quotation is “[i]n a conventional battle game, however, during one battle, the user needs to select a command to determine the action of the player character many times . . . .” Ex. 1001, 1:41–43 (emphasis added). And by modeling that behavior in the future, the number of user operations are reduced. Accordingly, while we acknowledge that it is plausible, during trial, that Patent Owner will be able to show that such a disclosure is insufficient evidentiary support for “a second mode for executing the battle with fewer user operations received from the communication terminal than in the first mode,” we disagree that it has no factual bearing on the above limitation.” slip op. at 4

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

    “not rest solely on our determination that the claim elements or combinations of elements analyzed on pages 32–39 of the Petition were well-understood, routine, and conventional to a skilled artisan in the field. Rather, our Decision was also based on the sufficiency of Petitioner’s arguments in totality with respect to the second step of Alice, for example, that for some limitations, “the claimed improvements identified by Patent Owner do not improve the technological field. Rather, they improve game play for the user.” Dec. 17. Further, as we explained, “the claims recite the use of conventional computer activity to determine the outcome of the procedure. Such claims ‘defining a desirable information-based result and not limited to inventive means of achieving the result, fail under § 101’” and that “claim 1 merely indicates that these steps are performed by a server without further details.” Dec. 12–13 (citing Elec. Power Group 830 F.3d 1351; Ex. 1001, 19:52–20:11. While that analysis does concern the first step of Alice, it, nevertheless, does have some bearing on the second step as well.” slip op. at 4

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptNot reached

    “not rest solely on our determination that the claim elements or combinations of elements analyzed on pages 32–39 of the Petition were well-understood, routine, and conventional to a skilled artisan in the field. Rather, our Decision was also based on the sufficiency of Petitioner’s arguments in totality with respect to the second step of Alice, for example, that for some limitations, “the claimed improvements identified by Patent Owner do not improve the technological field. Rather, they improve game play for the user.” Dec. 17. Further, as we explained, “the claims recite the use of conventional computer activity to determine the outcome of the procedure. Such claims ‘defining a desirable information-based result and not limited to inventive means of achieving the result, fail under § 101’” and that “claim 1 merely indicates that these steps are performed by a server without further details.” Dec. 12–13 (citing Elec. Power Group 830 F.3d 1351; Ex. 1001, 19:52–20:11. While that analysis does concern the first step of Alice, it, nevertheless, does have some bearing on the second step as well.” slip op. at 4

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “address Patent Owner’s countervailing evidence with respect to the above limitations, in particular, paragraphs 24 and 28–34 of Mr. Zyda’s Declaration. Req. 8–9. While we acknowledge that it was not expressly referenced in our Decision, it was taken into account and determined that, while it is worthy of some weight, Petitioner’s evidence and analysis presented a sufficient factual dispute for which trial is warranted. Given the Petition’s adequate analysis, at this stage of the proceeding, about the generic nature of the components recited in the ’308 patent and the lack of inventive means for achieving the results claimed (Pet. 32–39), we are unpersuaded that our Decision granting institution was an abuse of discretion.” slip op. at 5

  § 101 eligibilitycites Berkheimer
  Patents in suitUS 9,669,308
• Marker Volkl USA, Inc. v. Kneebinding, Inc.All claims unpatentable
  PTAB · Oct 15, 2018 · IPR2017-01265 · APJ Matthew S Meyers · IPR · Final written decision

  Claims 1 and 4–9 are unpatentable as anticipated by DE ’298 and obvious over Boussemart and DE ’298.

  RulingsFinal written decision

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

    “Id. at 14.3 Petitioner disagrees with Patent Owner’s assertions, arguing that the ’867 patent’s claim language and Specification establish that the two elements “are inextricably linked.” Pet. Reply 1–9. Although we are not in complete agreement with either parties’ construction, we, nevertheless, agree generally with Petitioner, for the reasons set forth below, that the “lateral release assembly” and “upper heel housing” recited by claim 1 should not be construed as being separate functional parts of the upper heel assembly that separate and isolate lateral and vertical release forces, respectively. We begin our analysis with the express claim language. Specifically, claim 1 recites in part “a lower heel assembly attached to the ski” and “an upper heel assembly coupled to the lower heel assembly and having a lateral release assembly for applying lateral securing pressure to the ski boot, the upper heel assembly comprising an upper heel housing that is configured to compress the heel portion of the ski boot downward.” Ex. 1001, 11:36– 12:2. Thus, from the claim itself, we know that (1) the “upper heel assembly” is coupled to the “lower heel assembly” and, thus, attached to the ski; (2) this associated upper/lower heel assembly has a “lateral release assembly”; (3) the lateral release assembly is for “applying lateral securing pressure to the ski boot”; and (4) the upper heel assembly “is configured to compress the heel portion of the ski boot downward.” However, none of this claim language requires that the “lateral release assembly” and “upper heel housing” must be treated as separate functional parts of the upper heel assembly that separate and isolate lateral and vertical release forces,” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Regarding the level of skill in the art, Petitioner asserts: a POSA in the February 18, 2003 timeframe would be an individual with a Bachelor’s degree in mechanical engineering or related technology and three to five years of experience in either the design, fabrication, or manufacture of ski bindings and related equipment, research concerning ski bindings and related equipment, or the development of standards concerning ski bindings or related equipment, in addition to ten years or more of personal experience using ski bindings. Pet. 14–15 (citing Ex. 1006 ¶ 32). In response, “Patent Owner agrees with Petitioner’s definition of a person of ordinary skill in the art (‘POSITA’) for purposes of the ’867 patent.” PO Resp. 3 (citing Pet. 14–15). Having considered the evidence, we find that Petitioner’s articulation of the level of ordinary skill is correct. We also note that the cited references often reflect the appropriate level of skill at the time of the claimed invention, and that the references cited here appear to reflect the level agreed to by the parties. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [can] reflect the appropriate level of skill in the art”).” slip op. at 11

  • BurdenUnpatentable

    “Patent Owner responds that DE ’298 does not disclose an “upper heel assembly” that compresses the heel portion of the ski boot downward. PO Resp. 25–30. Patent Owner argues that “the disclosure of DE ’298 makes clear that the hold-down member 13 and heel holder 25 only resist upward motion by the ski boot heel – they do not ‘compress the heel portion of the ski boot downward’ by providing downward force on the heel.” PO Resp. 26. To support its position, Patent Owner provides an annotated copy of the annotated copy of Figure 2, provided by Petitioner and designated “Fig. Q” in the Petition. See Pet. 41. More particularly, Patent Owner annotated Petitioner’s “Fig. Q,” to show “a gap (circled in purple) between the top edge of the ski boot sole (which Petitioner added; the original figure in DE ’298 does not show the boot) and the bottom edge of arms 26 of heel holder 25.” PO Resp. 27–30 (citing Ex. 2001 ¶ 62). Figure 2, annotated, depicts the DE ’298 releasing/retaining device of a releasing ski binding. And, because there is a “gap” between the ski boot, superimposed by Petitioner in Fig. Q (see, e.g., Pet. 41), and arms 26 of heel holder 25, Patent Owner argues that DE ’298 “cannot provide downward force as the arms 26 do not touch the ski boot heel.” PO Resp. 28 (citing Ex. 2001 ¶ 63).4 Therefore, although Patent Owner acknowledges that DE ’298 discloses that its hold-down member “hold[s] the shoe down ‘against upwardly pivoting’” (PO Resp. 26–27 (citing Ex. 1004, 4), Patent Owner argues that merely “[o]pposing upward motion does not compress the ski boot downward as required by the challenged claims.” 5 PO Resp. 28. 4 The cited portions of Dr. Dodge’s Declaration largely mirror the language set forth in the corresponding portion of the Patent Owner Response. 5 Patent Owner submits that “[t]he plain and ordinary meaning of the term ‘compress’ means ‘to squeeze or press together’, or ‘to make smaller as if by squeezing.’” PO Resp. 28 (citing Ex. 2003). Petitioner responds that Patent Owner’s reading of DE ’298 is strained, that other portions of the reference make clear that DE ’298 discloses an “upper heel assembly” that does in fact compress the heel downward, and that any purported “gap” in the drawing is a red herring that does not comport with basic physics. Pet. Reply 15–18.” slip op. at 16

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

    “Patent Owner responds that DE ’298 does not disclose an “upper heel assembly” that compresses the heel portion of the ski boot downward. PO Resp. 25–30. Patent Owner argues that “the disclosure of DE ’298 makes clear that the hold-down member 13 and heel holder 25 only resist upward motion by the ski boot heel – they do not ‘compress the heel portion of the ski boot downward’ by providing downward force on the heel.” PO Resp. 26. To support its position, Patent Owner provides an annotated copy of the annotated copy of Figure 2, provided by Petitioner and designated “Fig. Q” in the Petition. See Pet. 41. More particularly, Patent Owner annotated Petitioner’s “Fig. Q,” to show “a gap (circled in purple) between the top edge of the ski boot sole (which Petitioner added; the original figure in DE ’298 does not show the boot) and the bottom edge of arms 26 of heel holder 25.” PO Resp. 27–30 (citing Ex. 2001 ¶ 62). Figure 2, annotated, depicts the DE ’298 releasing/retaining device of a releasing ski binding. And, because there is a “gap” between the ski boot, superimposed by Petitioner in Fig. Q (see, e.g., Pet. 41), and arms 26 of heel holder 25, Patent Owner argues that DE ’298 “cannot provide downward force as the arms 26 do not touch the ski boot heel.” PO Resp. 28 (citing Ex. 2001 ¶ 63).4 Therefore, although Patent Owner acknowledges that DE ’298 discloses that its hold-down member “hold[s] the shoe down ‘against upwardly pivoting’” (PO Resp. 26–27 (citing Ex. 1004, 4), Patent Owner argues that merely “[o]pposing upward motion does not compress the ski boot downward as required by the challenged claims.” 5 PO Resp. 28. 4 The cited portions of Dr. Dodge’s Declaration largely mirror the language set forth in the corresponding portion of the Patent Owner Response. 5 Patent Owner submits that “[t]he plain and ordinary meaning of the term ‘compress’ means ‘to squeeze or press together’, or ‘to make smaller as if by squeezing.’” PO Resp. 28 (citing Ex. 2003). Petitioner responds that Patent Owner’s reading of DE ’298 is strained, that other portions of the reference make clear that DE ’298 discloses an “upper heel assembly” that does in fact compress the heel downward, and that any purported “gap” in the drawing is a red herring that does not comport with basic physics. Pet. Reply 15–18.” slip op. at 16

  Patent outcomesUS 8,955,867 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,955,867
• Telebrands Corp. v. Tinnus Enterprises, LLCNo claims unpatentable
  PTAB · Oct 10, 2018 · PGR2017-00015 · APJ Kevin W Cherry · PGR · Final written decision

  The Board held claims 1–4 not unpatentable: the obviousness grounds failed to establish the claimed elastic fastener limitation, and claim 3 was not shown indefinite or lacking written-description support.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We agree with Petitioner and determine that a POSA would have been a person having a general knowledge about, and experience with, expandable containers, including, without limitation, balloons, and at least an associate’s degree in mechanical engineering, or the equivalent. This level of skill is consistent with the types of problems and solutions described in the ’612 patent and cited prior art. For example, the ’612 patent describes a fluid inflatable system that uses elastic valve 20A (e.g., mechanical gasket, O-ring, etc.) for sealing fluid inside multiple containers (e.g., water balloons). See Ex. 1001, 1:22–24, 3:10–16. In any event, none of the issues in this case turn on the definition of a POSA, and the prior art of record provides ample evidence of the level of skill in the art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill was best determined by the references of record); see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown”’) (internal citation omitted).” slip op. at 13

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

    “1. Terms Construed in the Institution Decision We construed the term “elastic fastener” in our Decision on Institution, which is set forth in the following table. Inst. Dec. 14. Claim Term Construction in Institution Decision elastic fastener “an elastic element for attaching things together” Neither party disputes the language of this construction. See generally Prelim Resp. 17; Reply. We adopt them for this Final Written Decision. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015) (quoting Rodale Press, Inc. v. FTC, 407 F.2d 1252, 1256–57 (D.C. Cir. 1968)) (“‘an agency may not change theories in midstream without giving respondents reasonable notice of the change’ and ‘the opportunity to present argument under the new theory.’”)” slip op. at 14

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteNot shown unpatentable

    “While the terms “unfilled state” and “filled state” describe the fullness for a container, we do not agree with Petitioner that the claim language requires determining the precise amount of fluid for each state. Section 112(b) requires that we read claim terms in the context of the surrounding claim language, not in isolation. Telebrands, 733 F. App’x at 1020. When we look at the entire claim phrase—“regardless whether the first and second ones of the plurality of containers are in a filled state or an unfilled state”— the plain language is clear that regardless of whether the balloons are in either state, the “at least first and second ones of the plurality of containers are disposed sufficiently close to each other such that they press against each other.” In other words, the exact volume of fluid or water needed to reach a “filled state” does not need to be determined in order to understand the metes and bounds of the claim so as to understand how to avoid infringement. We are further persuaded because this is consistent with the district court’s construction of this term. See Ex. 1023, 19–20.” slip op. at 17

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable

    “Based upon our review of the specification, and consideration of the arguments and evidence presented, Petitioner’s position is not persuasive. We agree with Patent Owner that Petitioner has failed to show that the ’612 patent does not provide such adequate guidance to a person of ordinary skill in the art. On its face, Figure 1 of the ’612 patent (reproduced below) shows containers 18 in contact or pressing against one another with the reasonable clarity required by Vas–Cath Inc. Figure 1 of the ’612 patent is reproduced above. Although the ’612 patent describes, as Petitioner notes, that tubes 16 can be different lengths, we are not persuaded that the ’612 patent’s disclosure of an embodiment with different tube lengths detracts from the concurrent disclosure in Figure 1 of an embodiment, where it is difficult to describe containers 18 as being not in contact with each other. Additionally, we agree with Patent Owner that Petitioner has failed to show adequately that a person of ordinary skill would not have understood the ’612 patent as describing the containers in Figure 1 as pressing against one another in an unfilled state. The ’612 patent indicates Figure 1 shows elastic valve 20A in an open configuration when container 18A is attached to tube 16A to allow container 18A to fill with fluid. Ex. 1001, 3:14–18. In this open configuration, container 18A is to be filled with fluid, after which, “it may be removed from tube 16A, whereupon elastic valve 20A closes, thereby closing the neck of container 18A and sealing the fluid inside.” Id. at 3:18–21 (emphasis omitted). The ’612 patent refers to Figure 1 to describe an embodiment where elastic valve 20A is in an open configuration to fill a container that has not been filled (i.e., unfilled) and removed from tube 16A. Thus, we are persuaded that, at least, Figure 1 and this accompanying description of Figure 1 in the ’612 patent provides sufficient written description for the recited limitation that “at least first and second ones of the plurality of containers are disposed sufficiently close to each other such that they press against each other . . . in a filled state or an unfilled state.”” slip op. at 21

  Patent outcomesUS 9,527,612 not shown unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 9,527,612

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.