- PTAB · Apr 12, 2023 · IPR2022-01528 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR of claims 15–19 on all petitioned grounds, finding a reasonable likelihood that Yong anticipates claim 15.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons set forth below, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 15‒19 based on the grounds set forth in the Petition.” slip op. at 2
- Parallel petitionsDenied
“We do not agree with Patent Owner’s argument that Petitioner’s parallel filing of four petitions warrants denying all four petitions. Prelim. Resp. 7 (“Petitioner’s abuse of process in filing four petitions justifies discretionary denial of all of the petitions.”). Accordingly, given that Petitioner ranks the instant Petition “1,” we decline to deny institution in this proceeding. Additionally, under the circumstances presented, where Patent Owner does not dispute Petitioner’s observation that the ’435 patent has very long claims, we conclude it is not unreasonable for Petitioner to file multiple petitions. In our view, even if it were accurate, Patent Owner’s argument that the claims’ “narrowness” reflects quality examination does not detract from Petitioner’s argument that the length of the claims warrants more than one petition. Prelim. Resp. 6.” slip op. at 33
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Weighing the arguments and evidence, we determine that Petitioner has met its burden under 35 U.S.C. § 314 of demonstrating a reasonable likelihood that Yong qualifies as prior art. Hulu at 13. As Petitioner asserts, the KIPO logo and the multiple instances of publication number 10-2007-0087811 on Yong’s first page provide some evidence of authenticity. Ex. 1009, 1; Reply to Prelim. Resp. 3.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner contends that [a] person having ordinary skill in the art (“POSITA”) as of the claimed priority date would have had a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field or equivalent coursework or experience, and one to two years of experience with mobile device applications and retail POS systems. (Shamos ¶ 34.) More education can supplement practical experience and vice versa. (Id.) Pet. 12. Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art. Prelim. Resp. 18. For purposes of deciding whether Petitioner has demonstrated a reasonable likelihood of prevailing, we adopt Petitioner’s definition of a person of ordinary skill in the art, which we find consistent with the ’435 patent and the asserted prior art.” slip op. at 11
Claim construction§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 10,803,435 - PTAB · Apr 11, 2023 · IPR2022-01564 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR on claims 1–14 and all asserted grounds, finding a reasonable likelihood that Keith anticipates at least claims 1 and 10.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons set forth below, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1‒14 based on the grounds set forth in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“Under the circumstances presented, where the priority date of the challenged claims is disputed, we conclude it is not unreasonable for Petitioner to present separate challenges, one of which relies on references that are prior art only if the challenged claims are not entitled to Patent Owner’s claimed priority date, which has yet to be finally determined. See TPG 59 (stating that “a dispute about priority date requiring arguments under multiple prior art references” can be a potential reason for the Board to institute trial on multiple petitions challenging the same patent). Thus, on the present record, we decline to exercise our discretion to deny institution of this Petition on the basis of Petitioner filing multiple petitions.” slip op. at 46
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field or equivalent coursework or experience, and one to two years of experience with mobile device applications and retail POS systems,” also noting that “[m]ore education can supplement practical experience and vice versa.” Pet. 20–21 (citing Ex. 1002 ¶ 34). Patent Owner, at this stage of the proceeding, does not dispute Petitioner’s definition of the person of ordinary skill in the art. Prelim. Resp. 18. For the purposes of this Decision, we apply Petitioner’s proffered level of skill in the art because it appears consistent with the problems addressed in the ’435 patent and the prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that an express construction of this or any other claim term is not necessary for purposes of this Decision. 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 13
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 10,803,435 - Yantai Jereh Petroleum Equipment & Technologies Co., Ltd v. BJ Energy Solutions, LLCSome claims unpatentablePTAB · Feb 6, 2023 · PGR2021-00102 · APJ Patrick R Scanlon · PGR · Final written decision
Claims 5 and 9 are unpatentable as indefinite under §112(b); the Board did not find claims 1–4, 6–8, and 10–28 unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the record before us, particularly the ’459 patent’s description and Dr. Adnan’s testimony, we agree with Petitioner that the ordinary level of skill in the art does not require the high level of specialized knowledge of control systems suggested by Patent Owner. Moreover, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we apply Petitioner’s definition, although our conclusions with respect to obviousness would be the same if we were to apply Patent Owner’s definition.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Based on the full record, we are not persuaded that Mr. Marscher is unqualified to serve as an expert in this proceeding. As noted above, a person of ordinary skill in the art is not required to have been a fracturing operator. Patent Owner’s proposed definition does not even require experience as a fracturing operator. See PO Resp. 22. Furthermore, Mr. Marscher testifies that he has extensive experience developing pumps for fracturing applications. Ex. 2027, 6:24–8:7. Mr. Marscher also testifies that he has experience with control systems relating to pumps and pumps units. Id. at 212:19–23. This testimony, as well as his declaration and curriculum vitae, show that Mr. Marscher has extensive education and experience in relevant fields. Ex. 1003 ¶¶ 8–17; Ex. 1004. Accordingly, we are not persuaded that Mr. Marscher’s qualifications or experience provide reason to discount the weight associated with Mr. Marscher’s testimony.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“is the pump unit’s highest HHP output and one of ordinary skill in the art would have understood this value is the pump unit’s output power in intermittent duty. Pet. Reply 2 (citing Ex. 1003 ¶¶ 71–72, 123–124; Pet. 9– 10; Ex. 1036, 64:17–67:13, 119:17–120:11, 124:7–24, 198:9–200:9, 221:8– 222:15). However, even if Petitioner is correct that the “maximum power output value” is near or equivalent to a pump unit’s output power in intermittent duty, we are still not persuaded that the term “maximum intermittent power” should be tied to the “maximum power output value,” in conflict with the definition provided in the Specification. Petitioner also argues that Patent Owner’s proposed construction is indefinite. Pet. Reply 3. For the reasons discussed below (see supra § II.I.1), we determine that Petitioner has not shown by a preponderance of the evidence that the term “maximum intermittent power,” as defined in the Specification, is indefinite. Thus, based on the complete record before us, we maintain our prior construction of “maximum intermittent power” for this Final Written Decision.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“5. Additional Terms We determine that we need not expressly construe any other claim terms to resolve the parties’ disputes because doing so would have no effect on the analysis below. See Nidec, 868 F.3d at 1017; see also 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 15
Patent outcomesUS 10,907,459 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 10,907,459 - Yantai Jereh Petroleum Equipment & Technologies Co., Ltd v. BJ Energy Solutions, LLCNo claims unpatentablePTAB · Feb 6, 2023 · PGR2021-00103 · APJ Patrick R Scanlon · PGR · Final written decision
Claims 1–28 were not shown unpatentable on any asserted ground; the Board found the prior art failed to establish key limitations and rejected the enablement and indefiniteness challenges.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In reply, Petitioner argues that the ’764 patent’s control system is not complex as there are no detailed algorithms, logic, or software. Pet. Reply 4. Instead, the control system merely raises or lowers power of the pumps in accordance with the demand HHP of the job design. Id. (citing Ex. 1036, 97:15–98:18, 98:21–99:25, 100:1–101:25, 102:2–7, 115:4–9, 115:24–116:4, 116:17–22; Ex. 1001, 5:2–6, 6:36–7:7, 10:4–64). According to Petitioner, this “rudimentary control concept” does not necessitate the higher skill level proposed by Patent Owner. Id. Petitioner further notes that Dr. Adnan testifies that “a mechanical engineer who has worked in the industry developing programming and control systems could fall within this definition,” and the person of ordinary skill in the art “is ‘just a specifier.’” Id. (quoting Ex. 2003 ¶ 22; Ex. 1036, 161:21–164:18). Based on our review of the record before us, particularly the ’764 patent’s description and Dr. Adnan’s testimony, we agree with Petitioner that the ordinary level of skill in the art does not require the high level of specialized knowledge of control systems suggested by Patent Owner. Moreover, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we apply Petitioner’s definition, although our conclusions with respect to obviousness would be the same if we were to apply Patent Owner’s definition.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Based on the full record, we are not persuaded that Mr. Marscher is unqualified to serve as an expert in this proceeding. As noted above, a person of ordinary skill in the art is not required to have been a fracturing operator. Patent Owner’s proposed definition does not even require experience as a fracturing operator. See PO Resp. 20–21. Furthermore, Mr. Marscher testifies that he has extensive experience developing pumps for fracturing applications. Ex. 2027, 6:24–8:7. Mr. Marscher also testifies that he has experience with control systems relating to pumps and pumps units. Id. at 212:19–23. This testimony, as well as his declaration and curriculum vitae, show that Mr. Marscher has extensive education and experience in relevant fields. Ex. 1003 ¶¶ 8–17; Ex. 1004. Accordingly, we are not persuaded that Mr. Marscher’s qualifications or experience provide reason to discount the weight associated with Mr. Marscher’s testimony.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In its Reply, Petitioner argues that the maximum power output value is the pump unit’s highest HHP output and one of ordinary skill in the art would have understood this value is the pump unit’s output power in intermittent duty. Pet. Reply 2–3 (citing Ex. 1003 ¶¶ 71–72, 123–124; Pet. 9–10; Ex. 1036, 64:17–67:13, 119:17–120:11, 124:7–24, 198:9–200:9, 221:8–222:15). However, even if Petitioner is correct that the “maximum power output value” is near or equivalent to a pump unit’s output power in intermittent duty, we are still not persuaded that the term “maximum intermittent power” should be tied to the “maximum power output value,” in conflict with the definition provided in the Specification. Petitioner also argues that Patent Owner’s proposed construction is indefinite. Pet. Reply 3. For the reasons discussed below (see supra § II.I.1), we determine that Petitioner has not shown by a preponderance of the evidence that the term “maximum intermittent power,” as defined in the Specification, is indefinite. Thus, based on the complete record before us, we maintain our prior construction of “maximum intermittent power” for this Final Written Decision.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“3. Additional Terms We determine that we need not expressly construe any other claim terms to resolve the parties’ disputes because doing so would have no effect on the analysis below. 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 13
Patent outcomesUS 10,815,764 not shown unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,815,764 - Apple Inc. v. Rfcyber Corp.InstitutedPTAB · Jan 23, 2023 · IPR2022-01256 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR of claims 1–11 based on the § 103 ground over Buhot, GPC, and Zhu, 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
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, 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 ’724 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., claims 1–11) of the ’724 patent, based on the ground asserted in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that an ordinarily skilled artisan for the ’724 patent “would have had at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least one year of experience in the field of mobile payment technology. Additional pertinent education might substitute for the requisite experience and vice versa.” Pet. 6–7 (citing Ex. 1007 (Smith Decl.) ¶¶ 34–35). Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art,” but only for its Preliminary Response. Prelim. Resp. 9. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’724 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“earlier applications, in particular Application No. 11/534,653 (“the ’653 application”), which issued as U.S. Patent No. 8,118,218 B2 (“the ’218 patent”). “It is elementary patent law that a patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” PowerOasis, 522 F.3d at 1306; New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002); Lucent Techs., Inc. v. Gateway, Inc., 543 F.3d 710, 718 (Fed. Cir. 2008) (“Patent claims are awarded priority on a claim-by-claim basis based on the disclosure in the priority applications.”). The test for determining compliance with the written description requirement under § 112(a) is whether the original disclosure of the earlier-filed application reasonably would have conveyed to one with ordinary skill in the art that the inventor had possession the claimed subject matter at the time of the earlierfiled application. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). It is well settled that “[e]ntitlement to a filing date does not extend to subject matter which is not disclosed but would be obvious over what is expressly disclosed.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1571−72 (Fed. Cir. 1997). “It is not sufficient for purposes of the written description requirement of § 112 that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose.” Id. Nor could the claimed subject matter have been “envisioned” from the earlier disclosure to establish written description support. Goeddel v. Sugano, 617 F.3d 1350, 1356 (Fed. Cir. 2010). We agree with Petitioner that, on this record, there does not appear to be support for limitation [1(j)] in the ’653 application. Patent Owner identifies the following disclosure from the ’218 patent (the patent that issued from the ’653 application) as supporting limitation [1(j)]: According to one embodiment, a smart card has a preloaded smart card operation system that provides security framework to control the access to the Smart card (e.g., an installation of external applications into the smart card). In order to manage the life cycle of an external application, a card manager module is configured by using the smart card security framework. For instance, a Java based smart card, SmartMX, is preloaded with an operating system JCOP 4.1. The Global Platform 2.1 installed on the SmartMX performs the card manager functionality. Ex. 2001 (’218 patent), 4:47–56. Patent Owner argues that “this description is substantively identical to that on which Apple relies for disclosure of the “emulator device” and “replace out of the emulator device . . . replacing out of the emulator device . . .” limitations. Prelim. Resp. 26. Patent Owner contends that “Apple relies on Buhot’s discussion of an ‘operating system 314 (running on processor 400) for the ‘emulator device’ limitation (Pet. at 31), and relies on Zhu’s alleged teachings regarding a ‘smart card manager . . . which governs the process of loading and unloading applications out of an emulator’ for the ‘replace out of the emulator device . . . replacing out of the emulator device’ limitations.” Id. (citing Pet. 43). Patent Owner asserts that Petitioner “cannot argue with a straight face that its proposed combination discloses” slip op. at 21
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,018,724 - Flowco Production Solutions LLC v. Well Master CorporationInstitution deniedPTAB · Jan 6, 2023 · IPR2022-01386 · APJ James P Calve · IPR · Institution
Institution was denied because the petition did not show a reasonable likelihood of proving claims 1–11, 13, 15, 16, 18–21, 23, and 24 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). 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.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore deny institution of inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. DISCUSSION A. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have at least a bachelor’s degree in physics or an appropriate engineering discipline, as well as at least three years of experience in designing well plungers.” Pet. 5–6. Patent Owner does not dispute Petitioner’s contention. Prelim. Resp. 2; Ex. 2001 ¶ 38. We adopt Petitioner’s proposed level of skill in the art for purposes of this Decision.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“The ’892 patent prosecution history evidences that an unimpeded fluid path does not include valves. During prosecution, Patent Owner amended the independent claims to claim “an unimpeded fluid path” in claims 1 and 23 and “an unimpeded narrow passageway within the fluid path” in claim 18. Ex. 1002, 61–64 (emphasis in original). Patent Owner argued that, The Applicant has amended independent claims 1, 18, and 23 to clarify that the fluid path is unimpeded. The alleged fluid path through the body of the plunger disclosed by Brown identified at page 4 of the Office Action is not unimpeded due to the presence of valves 76 and 102/104. Thus, Brown cannot anticipate claims 1, 2, 4–8, 12, 18, 19 or 23 of the present application. Id. at 66. In response, the Examiner issued a Notice of Allowability but did not provide a Statement of Reasons for Allowance. Id. at 43. “Prosecution disclaimer can arise from both claim amendments and arguments.” Tech. Props. Ltd. v. Huawei Techs. Co., 849 F.3d 1349, 1357 (Fed. Cir. 2017). Here, Patent Owner’s amendments to claim an unimpeded fluid path/passageway and arguments distinguishing Brown’s fluid path as being impeded by valves 76, 102/104 (versus unimpeded as claimed) clearly and unmistakably disclaimed coverage of plungers having bypass valves in the fluid path and narrow passageway through the plunger body.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“b. Motivation to Combine Further, we are persuaded by Patent Owner’s argument that a skilled artisan would not have modified Gray’s bypass valve with Victor’s stopper because their different principles of operation would render Gray’s plunger unsuitable for its intended purpose of providing lift in early stage wells. See Prelim Resp. 35–38 (citing Ex. 2001 ¶¶ 66–75, 103–107, 111). Mr. Cosby testifies that Gray and Victor operate differently so adding a narrow passage of Victor to Gray’s plunger would reduce the ability of Gray’s plunger to work in high pressure wells. Ex. 2001 ¶¶ 103–07; see Ex. 1005 ¶¶ 57, 91, 98, 111–12. The record supports Mr. Cosby’s testimony, and Petitioner’s attorney arguments do not address the arguments and evidence. Pet. 14–15. For this additional reason, Petitioner has failed to show a reasonable likelihood of demonstrating the unpatentability of any of claims 1–11, 13, 15, 16, 18–21, 23, and 24 under Ground 1.” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,627,892 - Medtronic Corevalve LLC / Medtronic, Inc. v. Speyside Medical, LLCAll claims unpatentablePTAB · Aug 16, 2022 · IPR2021-00244 · APJ Kevin W Cherry · IPR · Final written decision
Claims 21 and 22 are unpatentable as obvious over Salahieh and Sands; the Board did not reach the remaining grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”), at the time the ’708 or its parent applications were filed, would have had a minimum of either a medical degree and experience working as an interventional cardiologist or a Bachelor’s degree in bioengineering or mechanical engineering (or a related field) and approximately two years of professional experience in the field of prosthetic cardiovascular implants. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Pet. 23 (citing Ex. 1002 ¶¶ 31–34). For purposes of this Final Written Decision, we maintain our determination from the Institution Decision because neither party disputes that determination, and that level of ordinary skill is consistent with the record. See Resp. 11 (applying Petitioner’s level of ordinary skill).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“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. § 42.100(b). Furthermore, we expressly construe the claims only to the extent necessary to resolve the issues presented in this case. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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))). For purposes of this decision, the parties agree that we do not need to construe any claim terms to resolve their dispute. Resp. 12, 13 n.1; Reply 1 (“The Board need not construe any claim terms as the claims are unpatentable under Grounds 1-2.”). Accordingly, we need not construe expressly any claim terms in this decision. Nidec, 868 F.3d at 1017.” slip op. at 8
- Expert testimonyPatent owner expert discountedDecided for petitioner
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“petitioner’s grounds of unpatentability. A petitioner bears the burden of proving that a non-patent reference qualifies as a printed publication. Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (“As petitioner, Blizzard had the burden to prove Lin is a printed publication.”); Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 11 (PTAB Dec. 20, 2019) (precedential) (“To prevail in a final written decision in an inter partes review, the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication.”). The determination of whether a reference is a “printed publication” “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Whether a document qualifies as a printed publication is a legal conclusion based on underlying factual determinations. Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018). We do not reach Patent Owner’s arguments regarding the McCarthy declaration because we find Petitioner’s other evidence and arguments demonstrate by a preponderance of the evidence that Sands was publicly available.8 Our analysis focuses on the indicia of availability on Sands and Dr. Drasler’s testimony, as outlined below.” slip op. at 11
Patent outcomesUS 9,603,708 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,603,708 - Godbersen-Smith Construction Company D/B/A/ Gomaco Corporation v. Guntert & Zimmerman Const. Div., Inc.All claims unpatentablePTAB · Jun 9, 2022 · IPR2021-00136 · APJ James J Mayberry · IPR · Final written decision
Claims 1–15 are unpatentable: claims 1–3, 5–7, 14, and 15 over CIII and Rio; claim 4 over CIII, Rio, and Widdrington; claims 9–13 over CIII, Rio, and Smolders; and claim 8 over CIII, Rio, and …
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Whether a document qualifies as a printed publication is a legal conclusion based on underlying factual determinations. Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018). slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Petitioner’s contentions Petitioner contends that a person having ordinary skill in the art” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“(f) Conclusion-motivation to combine and reasonable expectation of success In conclusion, for the reasons discussed above, we find that Petitioner has demonstrated, by a preponderance of the evidence, that a person having ordinary skill in the art would have had reasons to combine Rio’s and CIII’s teachings and would have had a reasonable expectation of success in the combination. We also find that Petitioner’s reasons are adequately supported with rational underpinnings. See KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 82
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Inc., No. 2020-1350, 2022 WL 499843 (Fed. Cir. Feb. 18, 2022), is instructive. The Federal Circuit held that the Board properly found that the objective indicia evidence “says nothing to suggest non-obviousness of one of the two types of systems and methods within the claims’ coverage,” where one of the embodiments within the scope of the claims was found in the prior art. Zaxcom, Inc., 2022 WL 499843, *2. Accordingly, because there was no long-felt unsolved need for an embodiment covered by the claims, Patent Owner does not demonstrate a nexus between the claimed invention and a long-felt need.” slip op. at 89
Patent outcomesUS 9,908,571 unpatentable§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 9,908,571 - Godbersen-Smith Construction Company D/B/A/ Gomaco Corporation v. Guntert & Zimmerman Const. Div., Inc.All claims unpatentablePTAB · May 19, 2022 · IPR2021-00050 · APJ James J Mayberry · IPR · Final written decision
Claims 1–13 are unpatentable: claims 1 and 7 over Swisher and Rio; claims 2–6 and 12–13 over Swisher, Rio, and CIII; claims 4 and 13 also over Widdrington; and claims 8–11 over Guntert, with or …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill Public accessibility of a reference centers on whether the reference is disseminated or otherwise made available to persons having ordinary skill in the art. See Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1355–56 (Fed. Cir. 2018). As such, we start by defining the level of ordinary skill. 1. Petitioner’s contentions Petitioner contends that a person having ordinary skill in the art “would have had at least a four-year degree in mechanical engineering or a closely related field and at least two years of experience designing, developing, or operating heavy machinery, including their components and control systems.” Pet. 12 (referencing Ex. 1002 (Declaration of Dr. William Singhose) ¶ 22). Petitioner also contends that “[a]dditional education could substitute for professional experience and significant work experience—such as working with, servicing, or operating heavy machinery in the field— could substitute for formal education.” Id. at 12–13. Other than providing his understanding of the types of information considered in determining the level of ordinary skill, Dr. Singhose does not provide any additional support for this definition. See Ex. 1002 ¶¶ 21–22. 2. Patent Owner’s response Patent Owner contends that the level of ordinary skill in the art is a person having “a Bachelor’s degree in mechanical engineering, or a related field, and approximately two years of experience designing or developing heavy machinery, including their components and/or control systems.” PO Resp. 12 (referencing Ex. 2030 (Declaration of Dr. Carl Nelson) ¶ 21). Like Dr. Singhose, Dr. Nelson provides his understanding of the types of information considered in determining the level of ordinary skill, but does not provide any additional support for this definition. See Ex. 2030 ¶¶ 19–21.” slip op. at 18
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Whether a document qualifies as a printed publication is a legal conclusion based on underlying factual determinations. Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018). slip op. at 27
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“C. Ground 1: Claims 1 and 7 as anticipated by Swisher Petitioner contends that Swisher anticipates claims 1 and 7. Pet. 6, 18–33. We address Petitioner’s contentions with respect to how Swisher discloses the subject matter of independent claim 1, below.18 1. Independent claim 1” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“(3) Conclusion-reasonable expectation of success We find, on the complete trail record, that Petitioner has demonstrated, by a preponderance of the evidence, that a person having ordinary skill in the art would have had reasons to combine Rio’s teaching directed to its actuators, sensors, and control system with Swisher’s control system, with a reasonable expectation of success. We weigh heavily Rio’s own disclosure on using a rotary actuator in conjunction with a jacking column. We also agree with Patent Owner’s declarant, Dr. Nelson, that any problem that may be encountered in combining the teachings of Swisher and Rio is the type a mechanical engineer may encounter with many types of machines and mechanisms, and the physics and math involved in solving these problems are the same. Cf. Ex. 1157, 13:11–16:13. d) Conclusion-motivation to combine In conclusion, we find that Petitioner has demonstrated, by a preponderance of the evidence, that a person having ordinary skill in the art would have had reasons to combine Rio’s and Swisher’s teachings and would have had a reasonable expectation of success in the combination. We also find that Petitioner’s reasons are adequately supported with rational underpinnings. See KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 69
Patent outcomesUS 9,708,020 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,708,020 - Godbersen-Smith Construction Company D/B/A/ Gomaco Corporation v. Guntert & Zimmerman Const. Div., Inc.All claims unpatentablePTAB · May 19, 2022 · IPR2020-01698 · APJ James J Mayberry · IPR · Final written decision
The Board held claims 1–20 unpatentable: claims 1–11, 13–17, 19, and 20 over CIII and Rio; claim 18 over CIII, Rio, and Smolders; and claims 11–12 over CIII, Rio, and Widdrington.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“the level of ordinary skill. That is, our conclusion of public accessibility of CIII does not depend on the actual dissemination of the manual to customers. We find, independent of this actual dissemination, a person having ordinary skill in the art, exercising reasonable diligence, could have accessed CIII prior to the earliest filing date of the ’749 patent, by locating a dealer or user of the underlying machine, and requesting a copy. See, e.g., Ex. 1012 ¶¶ 3, 13; Ex. 1164 ¶ 6. The lack of any restrictions on disseminating the manual supports a finding that this approach would have been successful. See, e.g., Ex. 1012 ¶¶ 3, 26; Ex. 1164 ¶ 6.” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“4. Analysis and Conclusion – Level of Ordinary Skill The level of skill in the art is “a prism or lens” through which we view” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“d) Conclusion-motivation to combine In conclusion, we find that Petitioner has demonstrated, by a preponderance of the evidence, that a person having ordinary skill in the art would have had reasons to combine Rio’s and CIII’s teachings and would have had a reasonable expectation of success in the combination. We also find that Petitioner’s reasons are adequately supported with rational underpinnings. See KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 61
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner
“where one of the embodiments within the scope of the claims was found in the prior art. Zaxcom, Inc., 2022 WL 499843, *2. Accordingly, because there was no long-felt unsolved need for an embodiment covered by the claims, Patent Owner does not demonstrate a nexus between the claimed invention and a long-felt need.” slip op. at 86
Patent outcomesUS 10,029,749 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,029,749
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.