• Apple Inc. v. Virnetx Inc.All claims unpatentable
  PTAB · May 11, 2015 · IPR2014-00237 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–11, 14–25, and 28–30 are unpatentable: Beser anticipates claims 1, 3–11, 14–23, 25, and 28–30, and Beser with RFC 2401 renders all challenged claims obvious.

  RulingsFinal written decision

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

    “Notwithstanding Patent Owner’s arguments that security requires encryption, the ’697 patent Specification states that “[a] tremendous variety of methods have been proposed and implemented to provide security and anonymity for communications over the Internet.” Ex. 1001, 1:35–37 (emphasis added). The ’697 patent Specification also describes data security and anonymity as counterpart safeguards against eavesdropping that may occur while two computer terminals communicate over the Internet. See id. at 1:38–54. Security, in one context, may refer to protection of the data itself, to preserve the secrecy of its contents, while anonymity refers to preventing an eavesdropper from discovering the identity of a participating terminal. See id. at 1:40–56. Further according to the ’697 patent Specification, the concept of security generally includes “two security issues,” address (anonymity) and data security, with “a desire[] for the communications to be secure, that is, immune to eavesdropping.” Id. at 1:42–43, 54–56.” slip op. at 5

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

    “link” as required by claims 1 and 16. PO Resp. 49–52. As set forth above, according to Cisco and the claim construction, a secure communication link does not require encryption. Petitioner contends that even if a secure communication link requires encryption, Beser discloses at least some encryption for initial IP packets, and, in any case, also discloses anonymity. The record supports Petitioner on both theories, as we find above in Section II.A. (citing, e.g., Ex. 1009, 9:29–35, 11:22–25, 12:15–19 –16, Abstract). For example, regarding encryption, “[t]he IP 58 packets may require encryption or authentication to ensure that the unique identifier cannot be read on the public network 12.” Ex. 1009, 11:22–25. Patent Owner maintains that this encryption in Beser only occurs “in initiating the tunnel, not after the tunnel is established.” PO Resp. 49. Given our claim construction and the holding of Cisco we need not decide if initial encryption of address packets of Beser is sufficient to satisfy claims 1 and 16, or if Beser otherwise discloses more encryption, because claims 1 and 16 do not require any encryption.” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Petitioner replies by noting that Patent Owner’s declarant, Dr. Monrose, agreed, during his deposition, that “the implementation challenges that Beser identifies in using encryption can easily be navigated.” Pet. Reply 15 (citing Ex. 1083, 206:20–208:6). At the cited deposition passage, during questioning about teaching away in Beser, Dr. Monrose agrees that sending voice data with lower resolution would have been “conceivable” (Ex. 1083, 208:6), and that using a more powerful computer would constitute “one possible way” (id. at 207:7) to implement Beser’s system and use encryption. Therefore, as Petitioner contends, Dr. Monrose effectively concedes that Beser does not teach away from encryption when performed in higher power computers that do not accumulate a large number of packets at a node buffer––i.e., video or audio packets that capture a relatively lower resolution of voice or audio than other multimedia may capture. See Pet. Reply 15. In general, Beser’s system hides addresses on the public network, which “may increase the security of communication without an increased computational burden.” Ex. 1009, 3:5–9 (emphases added). Hiding, in packets, “private addresses” is a form of tunneling that provides anonymity. See Ex. 1009, Abstract (“hiding the identity”), 12:16–19 (negotiating the private addresses “through . . . device 30 to further ensure the anonymity of the telephony devices (24, 26)”). By “increasing” security without an increased computational burden, Beser’s tunnel techniques at least suggest adding a layer of security to known security methods––for example, by adding Beser’s anonymity method to the encryption of voice or audio data. Beser also describes prior art systems that encrypt data, hide addresses by encapsulating and encrypting them in the payloads of packets, or otherwise hide addresses by translating them. See Ex. 1009, 1:40–2:40.8 Beser describes potential hacking concerns due to accumulating a large number of packets at a source so that a hacker “may” be able to decrypt the packets and obtain source information. PO Resp. 57; Ex. 1009, 1:57, 54–58. However, as Dr. Monrose concedes and as Petitioner argues, lower resolution of audio or video data redounds to a lower accumulation of data packets. In addition, Beser does not describe a hacker problem as occurring when a scheme like Beser’s hides or encapsulates private address information inside a packet–a tunneling technique. Rather, in relation to Beser’s description of a prior art VPN (discussed further below), Beser only describes power concerns, instead of hacker concerns: “The tunneled IP packets . . . may need to be encrypted before the encapsulation in order to hide the source IP address. Once again, due to computer power limitations, this form of tunneling may be inappropriate for the transmission of multimedia or VoIP packets.” Ex. 1009, 2:12–17 (emphases added). 8 As discussed above, Beser specifically discloses encrypting at least some IP packets, although Patent Owner contends that this occurs only at tunnel initialization. See Ex. 1009, 11:22–25; PO Resp. 52–53 (citing Ex. 2025 ¶¶ 58).” slip op. at 38

  Patent outcomesUS 8,504,697 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,504,697
• Medtronic, Inc. v. Nuvasive, Inc.Some claims unpatentable
  PTAB · Feb 11, 2015 · IPR2013-00507 · APJ Stephen C Siu · IPR · Final written decision

  Claims 1–5, 10, 11, 14–17, and 19–28 are unpatentable as obvious over Frey and Michelson; claim 18 was not shown unpatentable.

  RulingsFinal written decision

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

    “Thus, it would have been obvious to one of ordinary skill in the art to have provided an implant with a length of greater than 40 mm (e.g., 42 mm) and at least 2.5 times the width, as recited in claim 1.” slip op. at 9

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

    “the capability for posterolateral TLIF procedure.” PO Resp. 30. However, Frey discloses “spinal surgery from a unilateral posterior approach, a lateral approach, an oblique approach, and through laparoscopic or endoscopic instruments from any of a variety of angles or approaches to the spine.” Ex. 1003 ¶ 184. Given that Frey discloses spinal surgery performed “from any of a variety of angles or approaches,” and not just from the posterolateral approach, we are not persuaded by Patent Owner that the “intended purpose” of Frey is to perform spinal surgery from a posterolateral approach, specifically. Rather, Frey discloses that “spinal discs may be displaced or damaged” and “may result in nerve damage, pain, numbness, muscle weakness, and even paralysis.” Ex. 1003 ¶ 3. According to Frey, these issues are addressed by “surgical correction of a collapsed disc space” by “discectomy . . . often followed by restoration of normal disc space height and bony fusion of the adjacent vertebrae to maintain the disc space height.” Id. Hence, the “intended purpose” of the implant of Frey, as explicitly disclosed by Frey, is to correct surgically a collapsed disc space, to restore normal disc space height, and to provide bony fusion of the adjacent vertebrae. We disagree with Patent Owner that incorporating Michelson, which discloses an implant that “engage[s] more of the adjacent vertebrae,” (Ex. 1105, 3:49–50) would have rendered the resulting implant inoperable for Frey’s intended purpose of surgically correcting a collapsed disc space or providing bony fusion of the adjacent vertebrae. Even if the “intended purpose” of Frey is to practice a “TLIF procedure,” as Patent Owner contends, we are not persuaded by Patent Owner’s argument that an implant measuring greater than 40 mm in length would be inoperable in a “TLIF procedure.” As Petitioner explains, U.S. Patent No. 7,815,682 (the ’682 patent) demonstrates that when performing “Transforaminal lumbar interbody fusion (TLIF) procedures,” one of ordinary skill in the art may employ a spinal implant with “a length ranging between 20 and 45 mm.” Pet. Resp. 6 (citing, Ex. 1028, 1:37–38; 4:45). The ’682 patent does not disclose that the use of a spinal implant measuring up to 45 mm in length would render the “TLIF procedure” inoperable.” slip op. at 6

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

    “We recognize that evidence of secondary considerations must always be considered en route to the determination of obviousness, but its existence alone does not control the conclusion of obviousness. Richardson-Vicks v. Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. 1997). The weight given to evidence of secondary considerations is dependent upon whether there is a nexus between the merits of the claimed invention and the evidence offered. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983). Even assuming that NuVasive’s CoRoent XL implant experienced “commercial success,” as Patent Owner asserts, Patent Owner has not demonstrated sufficiently that there is a nexus between the merits of the claimed invention and the evidence offered. For example, Patent Owner argues that NuVasive “pioneered the market for lateral, trans-psoas interbody fusion surgeries,” (PO Resp. 44) but fails to demonstrate sufficiently that any of the disputed claims recite “lateral, trans-psoas interbody fusion surgeries.” We are not persuaded by Patent Owner’s arguments.” slip op. at 11

  • ExcludeOther

    “C. Motion to Exclude In its Motion to Exclude, Patent Owner seeks to exclude the Declaration of Loic Josse (Ex. 1116, “Josse Declaration”). We did not rely on the Josse Declaration in this decision. Therefore, Patent Owner’s motion to exclude is dismissed as moot.” slip op. at 12

  Patent outcomesUS 8,187,334 mixed
  § 103 obviousness
  Patents in suitUS 8,187,334
• Medtronic, Inc. v. Nuvasive, Inc.Some claims unpatentable
  PTAB · Feb 11, 2015 · IPR2013-00508 · APJ Stephen C Siu · IPR · Final written decision

  Claims 1–5, 10, 11, 14–17, and 19–28 are unpatentable under §103; claim 18 was not shown unpatentable because the cited art did not establish its required dimensions.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “Thus, it would have been obvious to one of ordinary skill in the art to have provided an implant with a length of greater than 40 mm (e.g., 42 mm) and at least 2.5 times the width, as recited in claim 1.” slip op. at 7

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

    “We recognize that evidence of secondary considerations must always be considered en route to the determination of obviousness, but its existence alone does not control the conclusion of obviousness. Richardson-Vicks v. Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. 1997). The weight given to evidence of secondary considerations is dependent upon whether there is a nexus between the merits of the claimed invention and the evidence offered. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983). Even assuming that NuVasive’s CoRoent XL implant experienced “commercial success,” as Patent Owner asserts, Patent Owner has not demonstrated sufficiently that there is a nexus between the merits of the claimed invention and the evidence offered. For example, Patent Owner argues that NuVasive “pioneered the market for lateral, trans-psoas interbody fusion surgeries,” (PO Resp. 59) but fails to demonstrate sufficiently that any of the disputed claims recite “lateral, trans-psoas interbody fusion surgeries.” We are not persuaded by Patent Owner’s arguments.” slip op. at 17

  • ExcludeOther

    “C. Motion to Exclude In its Motion to Exclude, Patent Owner seeks to exclude the Declaration of Loic Josse (Ex. 1116, “Josse Declaration”). We did not rely on the Josse Declaration in this decision. Therefore, Patent Owner’s motion to exclude is dismissed as moot.” slip op. at 17

  Patent outcomesUS 8,187,334 mixed
  § 103 obviousness
  Patents in suitUS 8,187,334
• Medtronic, Inc. v. Nuvasive, Inc.All claims unpatentable
  PTAB · Feb 11, 2015 · IPR2013-00506 · APJ Lora M Green · IPR · Final written decision

  Claims 1–14, 19, 20, and 23–27 are unpatentable under § 103(a) over the identified combinations of SVS, Baccelli, Michelson, and Telamon.

  RulingsFinal written decision

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

    “specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Claim terms also are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). If an inventor acts as his or her own lexicographer, the definition must be set forth in the specification with reasonable clarity, deliberateness, and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). In the Institution Decision, we “interpret[ed] the claim language consistently with its plain and ordinary meaning, when read in view of the Specification.” See, e.g., Dec. Inst. 6. The parties appear to agree on the interpretation of the claim terms, and we see no reason to depart from our interpretation in the Institution Decision.” slip op. at 6

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

    “be inappropriate or at least unnecessary in the medial plane for PLIF [posterior lumbar interbody fusion] implants.” Id. at 34 (citing Ex. 2020 ¶¶ 45, 98–99, and 102). We are not persuaded by Patent Owner’s argument, because the question is whether it would have been obvious to one of ordinary skill in the art to combine the cited references, and not whether any specific implants on the market contain a radiopaque marker in a central region.” slip op. at 10

  • Obviousness (§103) › KSR rationalesDecided for petitioner

    “not find Patent Owner’s contentions persuasive SVS discloses that “[t]he Vertebral Spacer is a vertebral body replacement device intended for use in the thoracolumbar spine (T1-L5) to replace a collapsed, damaged, or unstable vertebral body due to tumor or trauma (i.e., fracture).” Ex. 1106, 1. Hence, the “intended purpose” of the implant of SVS is to replace components within vertebrae. Telamon discloses a process of inserting an implant into an intervertebral space to achieve “decompression of the neural elements” and “satisfactory immobilization of the grafted interspace.” Ex. 1108, 9. Hence, the “intended purpose” of the implant of Telamon is to achieve immobilization of the grafted interspace (and/or decompression of neural elements). We disagree with Patent Owner that Michelson, which discloses an implant that “engage[s] more of the adjacent vertebrae,” and, thus, “permits greater stability” (Ex. 1105, 3:49–51) would have “fully eliminated” the purpose of the SVS or Telamon implants of replacing collapsed, damaged, or unstable intervertebral components or immobilizing the interspace. Instead, the intended purpose of Michelson (a spinal fusion implant) appears to be the same as the intended purpose of either of SVS or Telamon, i.e., to achieve immobilization of the grafted interspace.” slip op. at 17

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

    “Evidence of commercial success, or other secondary considerations, is only significant if there is a nexus between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech. Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). “For objective evidence to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). In order to establish a proper nexus, the patent owner must offer proof that the sales were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter. See Microsoft v. Proxyconn, Inc., Case IPR2012-00026, slip op. at 4 (PTAB Mar. 8, 2013) (Paper 32). slip op. at 20

  Patent outcomesUS 8,361,156 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,361,156
• Pny Technologies, Inc. v. Phison Electronics Corp.All claims unpatentable
  PTAB · Feb 4, 2015 · IPR2014-00150 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–21 are unpatentable: claims 1, 3–9, and 11–21 as obvious over Elbaz and Deng; claims 2 and 10 as obvious over Elbaz, Deng, and Admitted Art.

  RulingsFinal written decision

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

    “persuaded that construing “concave” as only “curving inwards from a housing” does not conform to the ordinary meaning of the term. We stated in the second Decision to Institute that a recess “cannot act as a prop, . . . [t]he portion that acts as a prop is the portion that extends inwardly from the housing,” and “that ‘concave’ need not require the formation of a recess.” 2nd Dec. 7. We are now persuaded that construing “concave” such that a convex protrusion that acts as a prop, without a concave portion, impermissibly “reads out” the concave aspect of “concave prop.” We also are persuaded that there is not sufficient evidence in the instant record that shows that Phison acted as its own lexicographer, redefining the term “concave prop.”” slip op. at 6

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

    “We have determined previously that Minneman does not disclose that the captivating indentations are curving or that it would have been inherent for them to have curvature based on their formation process. Paper 16, 3. The rationale for altering the stand-offs of Minneman to have curvature comes from the curved protrusions disclosed in Takahashi. 1st Dec. 13. We have acknowledged as well that protrusions in Takahashi do not disclose a recess as a part thereof. Id. Based on our construction of “concave prop,” we are not persuaded that one of ordinary skill in the art would have modified Minneman’s stand-offs to be curved and have recesses based on the disclosure of Takahashi.” slip op. at 11

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Ex. 2008 ¶¶ 44–48. Although Mr. Visser argues that the “guiding means 515 could loosely receive the module, allowing some movement of the module 5 between the guiding means 515 and between the guiding means 16 515 and means for raising 516, yet still provide guidance to the module 5,” (Ex. 2008 ¶ 48), for example, we do not find this testimony persuasive. Although the Elbaz drawings and specification do not provide tolerances or dimensions, we are persuaded that one of ordinary skill in the art would have arrived at the conclusion that the module was received in the adaptor through the guiding means and the raising means and maintained securely such that vertical movement would not occur. Further, Mr. Visser acknowledges that the guiding means and the raising means act to properly position the module (Ex. 1008, 133:8–19), so that those aspects of the adaptor would need to at least touch and come in contact with the module. As such, we are not persuaded by Mr. Visser’s testimony that one of ordinary skill in the art would not have understood that the module in Elbaz would have been inserted and secured in position through the guiding means and the raising means.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Phison provides no evidence of the relative costs of PCBAs and chip cards, such that an increase in manufacturing costs has not been demonstrated. Although the use of a PCBA may require shielding and not provide the same attack resistance, such disadvantages may be offset by the lower relative cost of the PCBA. We also do not agree that Elbaz teaches away, as a reference must criticize, discredit, or otherwise discourage the solution claimed to constitute a teaching away. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The preferences and objectives of Elbaz are not teachings that disparage or discourage the use of alternate electronic components.” slip op. at 19

  Patent outcomesUS 7,518,879 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,518,879
• Pny Technologies, Inc. v. Phison Electronics Corp.All claims unpatentable
  PTAB · Feb 4, 2015 · IPR2013-00472 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–21 are unpatentable under § 103: claims 1, 3–9, and 11–21 over Elbaz and Deng, and claims 2 and 10 over Elbaz, Deng, and Admitted Art.

  RulingsFinal written decision

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

    “persuaded that construing “concave” as only “curving inwards from a housing” does not conform to the ordinary meaning of the term. We stated in the second Decision to Institute that a recess “cannot act as a prop, . . . [t]he portion that acts as a prop is the portion that extends inwardly from the housing,” and “that ‘concave’ need not require the formation of a recess.” 2nd Dec. 7. We are now persuaded that construing “concave” such that a convex protrusion that acts as a prop, without a concave portion, impermissibly “reads out” the concave aspect of “concave prop.” We also are persuaded that there is not sufficient evidence in the instant record that shows that Phison acted as its own lexicographer, redefining the term “concave prop.” PNY argues that the ’879 Patent fails to describe the term “concave” as including a recess and that Phison should not be allowed “to impart the ‘recess’ limitation into its construction of concave.” Reply 2. We do not agree that including the recess aspect can only be proper if explicitly recited in the Specification. The plain, ordinary meaning of “concave,” in the context of the claim language, includes the meaning of having a recess, thus, one of ordinary skill in the art would have included that aspect in any” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “require the inclusion of shielding elements, and would increase manufacturing costs. Id. Phison also takes exception to our characterization that “Elbaz provides a preference for the use of an integrated circuit chip card [that] does not rise to the level of teaching away.” 2nd Dec. 15. We do not agree. Phison provides no evidence of the relative costs of PCBAs and chip cards, such that an increase in manufacturing costs has not been demonstrated. Although the use of a PCBA may require shielding and not provide the same attack resistance, such disadvantages may be offset by the lower relative cost of the PCBA. We also do not agree that Elbaz teaches away, as a reference must criticize, discredit, or otherwise discourage the solution claimed to constitute a teaching away. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The preferences and objectives of Elbaz are not teachings that disparage or discourage the use of alternate electronic components.” slip op. at 19

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

    “We have determined previously that Minneman does not disclose that the captivating indentations are curving or that it would have been inherent for them to have curvature based on their formation process. Paper 16, 3. The rationale for altering the stand-offs of Minneman to have curvature comes from the curved protrusions disclosed in Takahashi. 1st Dec. 13. We have acknowledged as well that protrusions in Takahashi do not disclose a recess as a part thereof. Id. Based on our construction of “concave prop,” we are not persuaded that one of ordinary skill in the art would have modified Minneman’s stand-offs to be curved and have recesses based on the disclosure of Takahashi.” slip op. at 11

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “his deposition that the “props” of Minneman could be shaped so that they are concave, and that this is clear evidence that one of ordinary skill in the art would have viewed shaping the structures of Minneman so that they are concave as an obvious design choice. Reply 8; Ex. 1008, 90:11–16, 98:23– 99:1. Mr. Visser’s testimony is not persuasive, however, because he merely acknowledges that Minneman’s stand-offs could be formed by forming a recess in the housing, and that they could be curved in shape. This does not address why the combination would have props which are concave with a 11 recess when Takahashi’s elements are solid and it is not clear that Minneman’s stand-offs have a recess. We find neither statement by Mr. Visser to be persuasive.” slip op. at 11

  Patent outcomesUS 7,518,879 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,518,879
• Cardiocom, LLC v. Robert Bosch Healthcare Systems, Inc.All claims unpatentable
  PTAB · Jan 15, 2015 · IPR2013-00449 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1–5 are unpatentable under § 103: claim 1 over Crawford and Tallman; claims 2–5 over Crawford, Tallman, and Goodman.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “ordinary skill in the art at the time of the ’420 patent (October 16, 1996, when the parent application of the ’420 patent was filed), and neither party contends that the minor differences between those definitions impact the obviousness analysis. Petitioner’s declarant, Robert T. Stone, Ph.D., testifies that a person of ordinary skill would have had (1) “a bachelor’s degree in Electrical Engineering or Computer Science, or its equivalent, and at least 2 years of experience with the design and programming of patient monitoring systems,” and (2) “at least 1 year of experience with the design or programming of networked systems.” Ex. 1008 ¶ 22; see Pet. 6; Ex. 1022 ¶¶ 19–21. Patent Owner’s declarant, Dr. David, agrees with the first portion of Dr. Stone’s definition, but disagrees as to the second portion, testifying that a person of ordinary skill would not have had experience with the design or programming of networked systems. Ex. 2010 ¶ 24. Based on our review of the ’420 patent, the types of problems and solutions described in the ’420 patent and cited prior art, and the testimony of the parties’ declarants, we conclude that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering or computer science (or its equivalent), and at least two years of experience with the design and programming of patient monitoring systems. See, e.g., Ex. 1001, col. 1, l. 23–col. 2, l. 67 (describing prior art medical monitoring systems that collected data from remote monitoring devices, and stating that the ’420 patent describes “computer systems for managing healthcare”); Ex. 1008 ¶¶ 1–5 (background of Dr. Stone); Ex. 2010 ¶¶ 1–9 (background of Dr. David). We do not include a requirement of one year of experience with the design or programming of networked systems. Although the challenged claims recite “transmitting a communication” to a patient via “electronic mail message” or “telephone message,” the Specification describes such communications only at a high level of generality. See, e.g., Ex. 1001, col. 4, ll. 50–52 (“Clinic server 12 is coupled to a modem M1 for connecting server 12 to a communication network 34, preferably a public telephone network or similar data transmission network.”); col. 8, ll. 53–55 (“mail server application 16 transmits each message 78 through network 34 to the corresponding patient”). A person of ordinary skill in the art would have had at least two years of experience with the design and programming of patient monitoring systems, and, therefore, would have had at least some familiarity with the use of networked systems (e.g., to communicate with monitored patients), but may not have had one year of specific experience designing or programming the underlying networked systems that enable electronic mail or telephone message communication with patients.” slip op. at 13

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

    “2. “Data Point” The parties do not propose any specific interpretations for the term “data point” in claim 1. In attempting to distinguish one of the prior art references at issue (Crawford), however, Patent Owner argues that each “data point” in claim 1 must be “separate” from its corresponding “icon,” and that the “data point distribution” in the recited chart must be “dynamic” (i.e., data points change location over time). PO Resp. 36–38. Petitioner disagrees with both assertions. Reply 9–11. We conclude that interpretation of “data point” is necessary to resolve the dispute.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “analogous art to the ’420 patent. “A reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “A reference is reasonably pertinent if . . . it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) (citation and internal quotation marks omitted).” slip op. at 18

  Patent outcomesUS 7,840,420 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,840,420
• Cardiocom, LLC v. Robert Bosch Healthcare Systems, Inc.All claims unpatentable
  PTAB · Jan 15, 2015 · IPR2013-00431 · APJ Stephen C Siu · IPR · Final written decision

  Claims 1–6 and 8–15 are unpatentable over Goodman and Wahlquist; claims 7 and 16 are unpatentable over Goodman, Wahlquist, and Lyons under § 103(a).

  RulingsFinal written decision

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “of the ’186 patent.” PO Resp. 33. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “A reference is reasonably pertinent if . . . it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011).” slip op. at 23

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

    “the combination of the known system of Goodman and the known system of Wahlquist would have entailed [no] more than a combination of known systems to perform their known functions to achieve a predictable result. . . . “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Dec. on Inst. 13 (quoting KSR, 550 U.S. at 416). Patent Owner does not demonstrate persuasively that the combination of Goodman and Wahlquist would have entailed any more than combining familiar elements to achieve a predictable result. Therefore, we are not persuaded by Patent Owner’s argument.” slip op. at 28

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Patent Owner does not demonstrate persuasively that “Wahlquist’s system is a computer diagnosis system in which a help desk representative seeks to eliminate communications with a user.” Id. at 34 (citing Ex. 1003, 3:14–20; Ex. 2006 ¶¶ 122–123). Rather, Wahlquist discloses a system and method in which “a user calls the customer service help desk” who “is then asked to identify the general nature of the problem.” Ex. 1003, 2:7–16. The representative then “instructs the user” as to what actions to take. Id. at 2:6– 7, 15–16, 26. One of ordinary skill in the art would have understood that a user calling a help desk and identifying a problem to the representative, as well as the representative instructing the user, would have constituted “communication” between the user and the representative. The system of Wahlquist depends on “communications with a user” because without such “communication,” the representative would not be apprised of the user’s issues and would be unable to instruct the user as to the proper action to take. In addition, in Wahlquist, an application “created by the representative” “establishes communications with the user’s system” and “downloads the case and script files to the user’s computer.” Ex. 1003, 2:32, 36–40. One of ordinary skill in the art would have understood that establishing a “communication” with a user’s system and downloading script files to the user’s computer via the “communication” would have constituted a “communication” between devices. While Patent Owner argues that Wahlquist “eliminates communication with the user,” Patent Owner does not explain sufficiently how such a system that relies on “communication” actually “eliminates communication with the user.” PO Resp. 35.” slip op. at 26

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

    “Stone) performed an obviousness analysis improperly by “us[ing] the claims of the Bosch patents as a template to try and fit combinations of references into the claims” and “improperly used the teachings of the Bosch specifications to identify the goals and motivations for combining the prior art.” PO Resp. 18 (citing Ex. 2061, 314:5–20; 256:25–257:11; 313:1–20). Hence, Patent Owner argues that Dr. Stone’s analysis is based improperly on hindsight reasoning. However, “[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Patent Owner does not indicate how Dr. Stone’s analysis relies on knowledge that was beyond the level of ordinary skill in the art at the time the claimed invention was made. For example, Dr. Stone relies on Goodman’s disclosure of “a personal health network comprising a host computer which is in communication with one or more patient nodes over a communication link” and on Wahlquist’s disclosure of “an application on the help desk computer that is used to select” tests for a user’s computer. Ex. 1007 ¶ 121. We do not see, and Patent Owner does not assert or demonstrate persuasively, how either of these disclosures (neither of which was gleaned only from the ’186 patent specification) would have been beyond the level of ordinary skill in the art.” slip op. at 29

  Patent outcomesUS 7,921,186 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,921,186
• Cardiocom, LLC v. Robert Bosch Healthcare Systems, Inc.All claims unpatentable
  PTAB · Jan 15, 2015 · IPR2013-00451 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1, 2, and 5–10 are unpatentable under §103 over Cohen and Wahlquist, and over Cohen, Wahlquist, and Jacobs.

  RulingsFinal written decision

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

    “The Board interprets claims using the “broadest reasonable construction in light of the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b). We presume that claim terms have their ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning that the term would have to a person of ordinary skill in the art in question.”) (citation and internal quotation marks omitted).” slip op. at 6

  • Skill levelSkill level board ownOther

    “Petitioner asserts that the level of ordinary skill in the art has the following education and experience: Bachelor’s degree in Electrical Engineering or Computer Science, or its equivalent, and at least 2 years of experience with the design and programming of patient monitoring systems and at least 1 year of experience with the design or programming of networked systems. Ex. 1008 ¶ 22. Patent Owner’s declarant, Dr. David, disagrees with the above assertion in that a person of ordinary skill in the art would not have the 1 year of experience with the design and programming of networked systems. Ex. 2009 ¶ 26. The disagreement appears to be immaterial to the arguments presented by Patent Owner, however, because Dr. David declares that this additional experience would not affect his opinions. Id. Accordingly, we need not determine which of the alleged education and experience proffered by the parties is correct. We determine the obviousness issues guided by the evidence of the level of ordinary skill in the art presented by the references themselves. See Okajima, 261 F.3d at 1355. From the Cohen reference, which Patent Owner agrees is in the field of endeavor of the invention in question (Tr. 29:2130:2), we understand that the level of ordinary skill in the art, at a minimum, requires some amount of experience with the configuration of telecommunications hardware systems, such as telephone and personal computer systems, for communicating with a central monitoring system, which is computer-implemented technology. See Ex. 1002, 3:1724; see also 3:4357 (describing the features of the computer-implemented technology at-issue in Cohen: computer processor and software, telecommunication lines, voice signal interpretation, database and report generation, voice generation, speech recognition, speech and digit recognizer, printer, and local area network (LAN)). With this level of ordinary skill in mind, we now turn to the analysis of the differences between the asserted prior art references and the subject matter recited in the claims-at-issue.” slip op. at 8

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “endeavor nor reasonably pertinent to the problems addressed by the ’469 patent. PO Resp. 21. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “A reference is reasonably pertinent if . . . it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011).” slip op. at 15

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

    “First, an obviousness “analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. It is, therefore, unpersuasive for Patent Owner to argue that Petitioner’s proffered rationales for the combination fail because neither Cohen nor Wahlquist teaches explicitly that they could be combined with other teachings. See PO Resp. 31, 3738 (arguing the lack of evidence that Cohen is “incomplete” and that nothing in Wahlquist would teach the combination).6 Further, Patent Owner narrowly focuses on Wahlquist being directed solely to eliminating slow and unsatisfactory communications with users. PO Resp. 31. As stated above in the analogous art analysis, Wahlquist is directed to more than just eliminating communications with users. The alleged “elimination” is not supported by a thorough reading of Wahlquist. We find, instead, that Wahlquist teaches prompting users with keystrokes during the diagnosis of their computer, a process that, from the standpoint of the user, is greatly simplified compared to the prior art systems described by Wahlquist, and consistent with the problems described in Cohen and the ’469 patent of simplifying user interactions with user devices.” slip op. at 19

  Patent outcomesUS 7,587,469 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,587,469
• Nuvasive, Inc. v. Warsaw Orthopedic, Inc.All claims unpatentable
  PTAB · Dec 17, 2014 · IPR2013-00395 · APJ Lora M Green · IPR · Final written decision

  Claims 1–6 are unpatentable under § 103(a) over both Senter and Brantigan ’035, and Michelson ’037, Wagner, and Brantigan ’035.

  RulingsFinal written decision

  • Skill levelOther

    “A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). The level of ordinary skill in the art usually is evidenced by the references themselves. 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).” slip op. at 11

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

    “As demonstrated by the embodiment shown in Figure 14, reproduced above, however, there may be more than a single bearing surface. The claim language only requires that those bearing surfaces be convex. We agree, therefore, with Petitioner that the claim language does not require that the convexity be along the entire length of the implant. Moreover, independent claims 1 and 4 only require that the “upper and lower bearing surfaces . . . being convex along the entire length of said upper and lower bearing surfaces.” There is nothing in the claim language that requires that the convexity conform to the anatomic endplates of the adjacent vertebrae. The Specification does not provide a definition of convexity as conforming to the anatomic endplates of the adjacent vertebrae with reasonable clarity, deliberateness, and precision. We decline, therefore, to construe the convexity of the bearing surfaces as requiring that the convexity conform to the anatomic endplates of the adjacent vertebrae. Thus, we construe “upper and lower bearing surfaces” as requiring that the bearing surface itself must be convex along the entire length of the bearing surface, but as the implant may have more than one upper bearing surface, as well as more than one lower bearing surface, the convexity need not be along the entire length of the implant. Moreover, the convexity need not conform to the anatomic endplates of the adjacent vertebrae.” slip op. at 10

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

    “Evidence of commercial success, or other secondary considerations, is only significant if there is a nexus between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech. Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006). “For objective evidence to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). In order to establish a proper nexus, the patent owner must offer proof that the sales were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter. See Microsoft v. Proxyconn, Inc., IPR2012-00026, slip op. at 4 (PTAB Mar. 8, 2013) (Paper 32). Patent Owner, however, has not attempted to establish a nexus between the claims of the ’696 and the CLYDESDALE® Spinal System. Thus, Patent Owner’s arguments and evidence as to commercial success are entitled to little or no weight. slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “Moreover, as taught by Brantigan ’035, the sharp apexes of the nubs bite into the vertebrae bone, and, thus, once the implant is in the proper position, it will not shift from that position. Ex. 1005, 21:1–5. We, thus, credit Dr. Brantigan’s testimony that the ratchetings would not propel an implant forward, but would resist forward movement of the implant, as well as back-out of the implant, after implantation. Ex. 1017 ¶ 18. Thus, we agree with Petitioner that Senter does not teach away from the combination with Brantigan ’035.” slip op. at 19

  Patent outcomesUS 8,444,696 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,444,696

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.