- Dynaenergetics Europe GmbH / Dynaenergetics US, Inc. v. Qinetiq LimitedNo claims unpatentablePTAB · Apr 11, 2024 · PGR2023-00003 · APJ William A Capp · PGR · Final written decision
The Board held claims 1–5 not unpatentable; Petitioner failed to prove its asserted §101, §102, §103, and §112 grounds, including indefiniteness and written-description challenges.
RulingsFinal written decision- BurdenNot shown unpatentable
“prevail, Petitioner bears the burden to demonstrate that the challenged claims are unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). The standard of proof is preponderance of the evidence. 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d). We have jurisdiction under 35 U.S.C. § 6.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill Petitioner’s expert, Mr. Serra testifies that he is familiar with the” slip op. at 45
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“process of claim 1. The first principal decision is the selection of a known liner design from a library that is made at the beginning of the design process. The second principal decision is made at the conclusion of the design process where a “final liner design” emerges after hole shapes produced by modified liners converge toward the desired hole shape. A person of ordinary skill in the art, having read claim 1 in context, would understand that the term “optimized” in the claim refers to the hole shape of the known liner design that is selected from among the known liner designs in the library during the selection step of the claim. A person of ordinary skill in the art would similarly understand that the design that is chosen in the initial selection process is “optimized” with respect to the population of known liner designs in the library as opposed to being “optimized” relative to liner designs produced during the later varying and modelling steps of the design process.” slip op. at 26
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable
“Accordingly, Petitioner has not shown that claims 1–5 of the ’039” slip op. at 22
Patent outcomesUS 11,215,039 not shown unpatentableClaim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Bilski · Phillips · Markman · NautilusPatents in suitUS 11,215,039 - PTAB · Apr 13, 2023 · PGR2023-00003 · APJ William A Capp · PGR · Institution
The Board instituted PGR on claims 1–5 after finding claim 1 more likely than not anticipated by Davison.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner alleges that Davison discloses each limitation of claim 1. Pet. 54–61. Petitioner recites each individual element of claim 1 in a subheading and then, beneath each such subheading, offers allegations as to how such recited element is satisfied by Davison. Id. Petitioner’s allegations are supported by citations to Davison and to Mr. Serra’s declaration (Ex. 1003). Id. Petitioner’s allegations are further supported by annotated drawings from Davison. Pet. 58. Having reviewed the Petition, the Davison reference, and Mr. Serra’s declaration, and further in light of the fact that QinetiQ has not filed a preliminary response in opposition to the Petition, it appears to us that Petitioner’s allegations have sufficient evidentiary support to warrant exercise of our discretion to institute a trial. Indeed, on this record, the steps of Davison’s iterative process quoted above sufficiently track the steps of the claimed process that no further explanation is required at this stage of the proceeding. IV. CONCLUSION Petitioner has shown that is more likely than not the that claim 1 is anticipated by Davison. Under prevailing law, a determination that any one claim is more likely than not unpatentable permits institution of a trial on all challenged claims. SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348, 1356 (2018). We have not, however, made a final determination with respect to the patentability of any challenged claim or the construction of any claim term.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Petitioner alleges that Davison discloses each limitation of claim 1. Pet. 54–61. Petitioner recites each individual element of claim 1 in a subheading and then, beneath each such subheading, offers allegations as to how such recited element is satisfied by Davison. Id. Petitioner’s allegations are supported by citations to Davison and to Mr. Serra’s declaration (Ex. 1003). Id. Petitioner’s allegations are further supported by annotated drawings from Davison. Pet. 58. Having reviewed the Petition, the Davison reference, and Mr. Serra’s declaration, and further in light of the fact that QinetiQ has not filed a preliminary response in opposition to the Petition, it appears to us that Petitioner’s allegations have sufficient evidentiary support to warrant exercise of our discretion to institute a trial. Indeed, on this record, the steps of Davison’s iterative process quoted above sufficiently track the steps of the claimed process that no further explanation is required at this stage of the proceeding. IV. CONCLUSION Petitioner has shown that is more likely than not the that claim 1 is anticipated by Davison. Under prevailing law, a determination that any one claim is more likely than not unpatentable permits institution of a trial on all challenged claims. SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348, 1356 (2018). We have not, however, made a final determination with respect to the patentability of any challenged claim or the construction of any claim term.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“In view of the foregoing and for purposes of this preliminary stage of the proceeding, we will construe the “optimized” term as relating to a hole shape associated with a known liner design that most closely approximates the desired hole shape in some objectively discernable manner when compared to hole shapes that are associated with other liner designs that are maintained in a library. Converge toward the desired hole shape” slip op. at 7
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other
“1 QinetiQ has filed a motion to dismiss the Petition. Paper 6. Dynaenergetics opposes the motion. Paper 7. We dispose of the motion to dismiss in a separate order issued substantially contemporaneously herewith.” slip op. at 2
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 11,215,039 - Universal Remote Control, Inc. v. Universal Electronics, Inc.No claims unpatentablePTAB · Dec 10, 2015 · IPR2014-01146 · APJ William A Capp · IPR · Final written decision
Claims 13–15 were not shown unpatentable because Dubil does not disclose the claimed configuration stored in and accessed by the entertainment device.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“As between the foregoing two possibilities, we think the latter construction is the correct one. The claims indicate that a configuration of the entertainment device is a construct that can be “downloaded” from a computer. Id., claim 13. It is also a construct that can be “access[ed] and use[d]” in association with a controlling device activity key commend value. Id. These attributes are more consistent with a set of executable instructions and data that is stored in memory than a physical state or configuration of the entertainment device after it has been configured. Id. at 6:38 (“finalized and stored”); 6:41 (“stored and associated”). In view of the foregoing we construe configuration of the entertainment device in claims 13 and 14 as referring to information stored in memory in the entertainment device that can be accessed and used to configure the entertainment device.” slip op. at 16
- ExcludeMotion to exclude, grantedGranted
“The admissibility of evidence in an IPR proceeding generally is governed by the Federal Rules of Evidence. See 37 C.F.R. § 42.62(a), Office Patent Trial Practice Guide, 77 Fed. Reg. 48758. Under Federal Rule of Evidence 611(c), leading questions should not be used on the direct examination of a witness except as may be necessary to develop the witness’ testimony. “A leading question is one that suggests to the witness the answer desired by the examiner.” McCormick, EVIDENCE § 6 (7th ed. 2013). Questions that begin, “Isn’t it true that” or “Don’t you agree that” typically suggest the answer and are leading. Other types of questions, such as questions that call merely for a yes or no answer or that ask the witness to choose between alternatives posed by the questioner, may or may not be leading, depending on the context in which the question is asked, the tone of voice employed, and the body language or conduct of counsel. See, e.g., United States v. Warf, 529 F.2d 1170, 1174 (5th Cir. 1976) (prosecutor improperly led witness to make identification by pointing at the accused).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“We are not persuaded by Petitioner’s argument or evidence. Petitioner’s conclusion does not follow logically and necessarily from Petitioner’s underlying premises. The system configuration described by Petitioner just as easily could be accomplished by sending on/off commands to the various input and output components so that the desired input device is powered on and the non-desired input device is powered off. The same can be said of the output devices. Thus, the entertainment system, as a whole, can be configured by sending power on/off commands to various devices and then passively routing the input and output signals through the VCR. Petitioner cites to no explicit disclosure in Dubil where the VCR actively switches between a plurality of inputs and a plurality outputs. We have reviewed Dubil and find no such explicit disclosure. Neither do we find that Dubil discloses active switching of the VCR inherently. While it may be possible that the VCR could switch between sources and destinations, we are not persuaded that such functionality is necessarily present in Dubil for it to operate. Inherency may not be established by probabilities or possibilities. See Agilent Tech., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed. Cir. 2009). The mere fact that a certain thing may result from a given set of circumstances is not sufficient. Id. Furthermore, Dubil cannot associate a remote control activity key command value with a configuration of the entertainment device unless Dubil first possesses a configuration of the entertainment device within the meaning of claim 13. We are not persuaded that Dubil discloses a “configuration of the entertainment device” as we have construed the term. Petitioner’s evidence and argument focuses on Dubil’s entertainment system as a whole. However, “configuration of the entertainment device,” as it is used in claim 13, refers to a set of executable instructions and data stored in memory in the entertainment device that is first downloaded from a personal computer and is then accessed and used after the entertainment device receives a signal from the remote control that contains a command value that is associated with such configuration. Petitioner provides no persuasive evidence that Dubil’s VCR has memory that stores executable instructions and data in the form of a “configuration of the entertainment device” that is downloaded from a computer and is accessed and used as claimed.” slip op. at 22
- BurdenNot shown unpatentable
“Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). Inasmuch as Dubil fails to disclose all elements of claim 13, we find that Petitioner has failed to establish, by a preponderance of the evidence, that Dubil anticipates claim 13. slip op. at 26
Patent outcomesUS 8,243,207 not shown unpatentableClaim construction§ 102 anticipationPatents in suitUS 8,243,207 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLCAll claims unpatentablePTAB · Dec 9, 2015 · IPR2014-00921 · APJ Josiah C Cocks · IPR · Final written decision
Claims 23, 24, 60, and 61 are unpatentable as obvious over Robertson and Ungerboeck; claims 23 and 60 were not shown anticipated by Palicot.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“It is clear from the record evidence before us that, in the context of the ’783 patent, a connection between two components is not one that is considered properly as “direct” if there is an interleaver between those components. We understand that an “interleaver” is a structure that provides extensive reordering of data. For instance, record evidence characterizes a particular interleaver as a “pseudorandom block scrambler” that reads out data “in a specified permuted order.” Ex. 1009, 29. Indeed, the ’783 patent itself characterizes an interleaver as a “pseudo-random block scrambler” that operates to output data “in a specified (fixed) random order.” Ex. 1001, 5:57–61. In that respect, it is further understood from the ’783 patent that there are extensive considerations that go into the design of interleavers and the effect that a given interleaver has on the configuration, order, and characteristics of data. See id. at 9:53–13:54. Thus, the operations of an interleaver appear to constitute complex data reordering schemes where the “pseudorandom” scrambling of data is, at least in some cases, the desired goal. As noted above, in the context of an inter partes review, the Board construes claim terms based on their broadest reasonable construction that is consistent with the underlying specification. Here, with that guidance in mind, we do not discern that Intellectual Ventures’s position that the claim terms in question should be construed narrowly to prohibit any intervening structure that performs any type of operation that may be regarded as manipulating data or changing the order of data in some aspect, regardless of the nature or extent of the data reordering. To that end, while the reordering operations provided by an interleaver are not encompassed by “directly” connecting elements, we are not satisfied that Intellectual Ventures has provided a suitable evidentiary basis for its position that any intervening data reordering, of any kind, is the benchmark for evaluating whether structures are directly connected to one another. It also is clear from the Specification of the ’783 patent, and as we observed in our Decision instituting trial (Inst. Dec. 12–13), that a direct connection does not prohibit some intervening structures, such as the intervening presence of a switch. In considering the totality of the record before us, we do not discern that there is cause to deviate from the construction we initially adopted for “directly coupled”/“signal directly from” as a part of the Decision to institute trial. Accordingly, for purposes of this Final Written Decision, we maintain the understanding that components that are “directly” coupled to one another, or which receive signals “directly” from one another, excludes the presence of an interleaver between those components, but does not prohibit any and all intervening structures, such as a switch.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for patent owner
“Thus, the declarants are largely in agreement as to the level of ordinary skill in the art, but for a slight difference of opinion as to the extent of education. While Mr. Lanning and Dr. Xiong take the view that a person of ordinary skill “would have at least a Bachelors or Masters level college degree in Electrical Engineering, Computer Science, Computer Engineering or equivalent training and experience,” Dr. Cimini opines that only a Bachelor’s degree would be insufficient. Dr. Cimini advanced that opinion on the theory that one with only a Bachelor’s degree would lack an appropriate “mathematical foundation.” On the record before us, it is not apparent that the possession of a Master’s degree as compared with possession of a Bachelor’s degree establishes a dividing line between a person who is of ordinary skill in the art, and a person who is not. Dr. Cimini does not explain persuasively why a person with a Bachelor’s degree in the noted areas, coupled for instance, with the noted “academic or industry experience” would lack the requisite “mathematical foundation.” To that end, we are cognizant of the level of ordinary skill to which all declarants have testified, but do not understand the record as establishing that a Master’s degree, to the exclusion of other equivalent experience, is a strict requirement of a skilled artisan in the pertinent field.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“contends that Robertson discloses all the features of claims 23 and 60 (Pet. 49–54) with the exception of those features directed to “multilevel modulation” (id. at 53). In that regard, Ericsson contends that Robertson is directed to “binary modulation” rather than “multilevel modulation,” but points to Ungerboeck as disclosing multilevel modulation. Id. Referencing the declaration testimony of Mr. Mark Lanning (Ex. 1003), Ericsson contends the following: As noted by Mr. Lanning, it would have been obvious to one of ordinary skill in the art to combine Robertson and Ungerboeck to replace the binary modulation in Roberton’s coding system with multilevel modulation taught by Ungerboeck because it would yield the predictable result–that more data bits correspond to a modulated symbol, thereby enhancing bandwidth efficiency. Id. at 53–54. To that end, we understand that Ericsson proposes, and Mr. Lanning testifies (Ex. 1003 ¶ 230), that one of ordinary skill in the art would have had reason to substitute Ungerboeck’s multilevel 8-PSK modulator for Robertson’s binary modulator so as to enhance bandwidth efficiency.” slip op. at 18
- Expert testimonyPatent owner expert discountedDecided for patent owner
“ordinary skill in the art, but for a slight difference of opinion as to the extent of education. While Mr. Lanning and Dr. Xiong take the view that a person of ordinary skill “would have at least a Bachelors or Masters level college degree in Electrical Engineering, Computer Science, Computer Engineering or equivalent training and experience,” Dr. Cimini opines that only a Bachelor’s degree would be insufficient. Dr. Cimini advanced that opinion on the theory that one with only a Bachelor’s degree would lack an appropriate “mathematical foundation.” On the record before us, it is not apparent that the possession of a Master’s degree as compared with possession of a Bachelor’s degree establishes a dividing line between a person who is of ordinary skill in the art, and a person who is not. Dr. Cimini does not explain persuasively why a person with a Bachelor’s degree in the noted areas, coupled for instance, with the noted “academic or industry experience” would lack the requisite “mathematical foundation.” To that end, we are cognizant of the level of ordinary skill to which all declarants have testified, but do not understand the record as establishing that a Master’s degree, to the exclusion of other equivalent experience, is a strict requirement of a skilled artisan in the pertinent field.” slip op. at 16
Patent outcomesUS 6,023,783 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,023,783 - Google Inc. v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Dec 7, 2015 · IPR2014-01031 · APJ William A Capp · IPR · Final written decision
Claims 1–8 and 21–27 are unpatentable: claims 1–6, 8, and 21–26 are anticipated by Pierzga, and the remaining claims are obvious over the stated combinations.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Rule 901 of the Federal Rules of Evidence provides that the requirement of admissibility is satisfied by evidence sufficient to support a finding that the material in question is what its proponent claims. The burden of proof for authentication is “slight.” Lexington Ins. Co. v. W. Penn. Hosp, 423 F.3d 318, 329 (3d Cir. 2005). Rule 901(b) lists nine examples of authentication techniques, the list of examples is not intended to be exclusive. United States v. Simpson, 152 F.3d 1241, 1249–50 (10th Cir. 1998). Rule 901(a) merely prescribes that a proponent produce sufficient evidence of authenticity to support a prima facie case that the item is genuine. Rickets v. City of Hartford, 74 F.3d 1397, 1409–11 (2d Cir. 1996). Courts maintain that a bona fide dispute as to the authenticity of evidence generally should be decided by the trier of fact. See id. Conflicting evidence of authenticity goes to weight, not admissibility, as long as some reasonable person could believe that the item is what it is claimed to be. Id. at 1411. In light of Dr. Madisetti’s testimony based on his personal experience and observation of the author/publisher and the reliability of the dates of publication that appear on the face of its publications, we find that Google has a laid a sufficient foundation for admission of Exhibit 1003 over Intellectual Ventures’s objection. Exhibit 1003 is not hearsay as it is not offered for its truth, but merely for what it states. We DENY Intellectual Ventures’s motion to exclude Exhibit 1003 and Exhibit 1019.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Rule 901 of the Federal Rules of Evidence provides that the requirement of admissibility is satisfied by evidence sufficient to support a finding that the material in question is what its proponent claims. The burden of proof for authentication is “slight.” Lexington Ins. Co. v. W. Penn. Hosp, 423 F.3d 318, 329 (3d Cir. 2005). Rule 901(b) lists nine examples of authentication techniques, the list of examples is not intended to be exclusive. United States v. Simpson, 152 F.3d 1241, 1249–50 (10th Cir. 1998). Rule 901(a) merely prescribes that a proponent produce sufficient evidence of authenticity to support a prima facie case that the item is genuine. Rickets v. City of Hartford, 74 F.3d 1397, 1409–11 (2d Cir. 1996). Courts maintain that a bona fide dispute as to the authenticity of evidence generally should be decided by the trier of fact. See id. Conflicting evidence of authenticity goes to weight, not admissibility, as long as some reasonable person could believe that the item is what it is claimed to be. Id. at 1411. In light of Dr. Madisetti’s testimony based on his personal experience and observation of the author/publisher and the reliability of the dates of publication that appear on the face of its publications, we find that Google has a laid a sufficient foundation for admission of Exhibit 1003 over Intellectual Ventures’s objection. Exhibit 1003 is not hearsay as it is not offered for its truth, but merely for what it states. We DENY Intellectual Ventures’s motion to exclude Exhibit 1003 and Exhibit 1019.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“alternative depending on the context of its use. Pet. 13–14 (“Skilled persons would . . . understand that either of these definitions applies”). Google further argues that the ’353 patent uses “bandwidth” as synonymous with data rate. Id. Google’s position that the ’353 patent uses bandwidth as synonymous with data rate is contradicted by the prosecution history evidence discussed above where the claims were amended essentially to substitute “bandwidth” for “chip rate” to distinguish over Boer’s disclosure of variable data rates. Thus, the intrinsic record supports a meaning of “bandwidth” that more closely conforms to definition number 1 above. We agree with Intellectual Ventures that, in the context of the ’353 patent, “bandwidth” does not mean “data rate” or “data transfer rate.” In view of the foregoing, we retain the same construction for “bandwidth” that we adopted for purposes of the Decision to Institute. Thus, for purposes of this Final Written Decision, we construe “bandwidth” to mean “a frequency range.” For purposes of clarification, we will provide the following example: a band of frequencies with a lower cut-off frequency of 10 MHz and an upper cut-off frequency of 40 MHz has a “bandwidth” of 30 MHz. 2. indication of operating bandwidth (claims 1, 21)” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“A person of ordinary skill in the art reading the Specification of the ’353 patent, as a whole, would understand that the “operating bandwidth” of claims 1 and 21 is the frequency range or bandwidth that is used for the transport channel. The person of ordinary skill in the art would also understand that the operating bandwidth is coordinated between the transmitter and the receiver using logic and filtering so that the frequency range that the transmitter uses to transmit the data portion of the signal is compatible with the frequency range that the receiver uses to receive the data. See Ex. 1001, claims 21, 22. In other words, the system operates at a range of frequencies, i.e., the “operating bandwidth,” that enables the receiver to receive what the transmitter has transmitted. Intellectual Ventures’s proposed construction merely substitutes the word “identification” in lieu of “indication” and then inserts the word “particular” as a modifier to “operating bandwidth.” Substituting “identification” for “indication” does nothing to clarify the meaning of this phrase. Furthermore, we do not agree with Intellectual Ventures that interjection of the word “particular” into the construction contributes anything meaningful to an understanding of the term. Thus, for purposes of this Decision, it is sufficient to construe “indication of an operating bandwidth” to mean that the first signal portion contains sufficient information so that when it is received, the receiver is able to configure itself to receive the data portion of the signal (or “further signal portion” or “transport channel”) at approximately the same frequency range or bandwidth at which it will be transmitted by the transmitter.11 11 In further regard to Intellectual Ventures’s contention that the bandwidth indication must be “particular,” we express no opinion as to whether the receiver must be set to the exact same lower cut-off frequency and upper cut-off frequency as the transmitter as a slightly narrower or broader transmitter or receiver bandwidth may still be adequate to transmit and receive the information contained in the signal and thus function as an “operating bandwidth.” The key consideration is that the receiver is able to receive the data that the transmitter transmits.” slip op. at 22
Patent outcomesUS 7,848,353 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,848,353 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLCNo claims unpatentablePTAB · Oct 22, 2015 · IPR2014-00963 · APJ David C Mckone · IPR · Final written decision
Claims 1–16 were not shown unpatentable because the ’480 patent did not disclose frequency hopping and the proposed obviousness combination lacked a reasonable expectation of success.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“In the Decision to Institute, in light of an agreement between the parties, we preliminarily determined that “broadband transceiver,” recited in claim 1, means “a transceiver that covers a substantial portion of the bandwidth available to the wireless service provider who is operating the basestation,” with the clarification that such a transceiver does not include a set of single-frequency transceivers. Dec. 10. Neither party contests this construction. On the complete record, we maintain this construction. We further determined that no other claim term required express construction. Dec. 10. Neither party proposes a construction of any other term and we find it unnecessary to construe any other term to resolve the dispute between the parties.” slip op. at 8
- Skill levelSkill level board ownDecided for petitioner
“1. Level of Skill in the Art Petitioner contends that a person of ordinary skill in the art would have had at least a B.S. degree in Electrical Engineering, Computer Engineering, or the like, and at least three years of additional academic or industry experience. Pet. 11 (citing Ex. 1003 (Stark Decl.) ¶ 45). Dr. Wells “generally agree[s] with Dr. Stark in paragraph 45 of his declaration.” Ex. 2007 ¶ 20. We adopt the parties agreed statement of the level of skill of a person of ordinary skill in the art.” slip op. at 21
- Expert testimonyPetitioner expert discountedMixed
“Dr. Stark’s testimony also is not supported by the description in the ’480 patent. In one example, Dr. Stark testifies that: For the case of the receiver side (dehopping) as shown is Fig. 3, the same logical channel would “hop” onto different RF channels each successive GSM TDMA frame. This would mean that for a particular TDMA frame, a given logical channel, e.g., channel 1 on slot 1, would be at a particular RF channel such as indicated by location “27” in the table in Fig. 3. But in the next TDMA frame, the same logical channel, would be placed onto a different RF channel, e.g., location “2” in the table in Fig. 3. By the controller supplying a new mapping signal (table) every TDMA frame, the samples from the correct RF channel for the associated logical channel could be placed onto the TDM bus for processing by the corresponding DSP 18. Ex. 1022 ¶ 17. This is inconsistent with the description in the ’480 patent. Locations “27” and “2” in DP RAM Enable 202 merely indicate whether data can be asserted into time slots 27 and 2. Ex. 1006, 9:46–10:3. Changing the mapping in DP RAM Enable 202 to enable slot “2” and disable slot “27,” without additional changes elsewhere in the system, would not result in different RF channels being switched to the same logical channel. In this example, and the others cited above, Dr. Stark repeatedly testifies that simply re-programming DP RAM Enable 202 will change the mapping of physical RF channels and logical channels. Nevertheless, as Patent Owner argues (PO Resp. 26–27), the ’480 patent does not support that testimony. Because Dr. Stark’s testimony is inconsistent with the description in the ’480 patent, we give his testimony little weight.5” slip op. at 28
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“(Ex. 1006, 5:4–17) describes a basestation’s exchange of RF signals with mobile subscriber terminals. Specifically, the passage is directed to the modulation of voice and data channels over RF carrier signals: “The RF carrier signals are modulated with voice and/or data (channel) signals which are to be coupled to the public switched telephone network (PSTN) by the basestation 10.” Ex. 1006, 5:6–9 (emphasis added). In that context, the ’480 patent explains that “[t]he particular modulation in use[] may be any one of a number of different wireless (air interface) standards such as the well known Advanced Mobile Phone Service (AMPS), time division multiple access (TDMA) such as IS-54B, code division multiple access (CDMA) such as IS-95, frequency hopping standards such as the European Groupe Speciale Mobile (GSM).” Id. at 5:9–17 (emphases added). We find that this passage states, at most, that the system described in the ’480 patent supports the modulation specified by the GSM standard. Petitioner admitted at the hearing that frequency hopping is not a modulation scheme and that GSM specifies the same modulation scheme whether or not frequency hopping is used. Tr. 62:17–63:23. The passage of column 5, lines 9–17, of the ’480 patent is consistent with the system of the ’480 patent being programmed to support the modulation scheme of GSM, without supporting the optional frequency hopping functionality. While GSM is referred to as a “frequency hopping standard[],” the frequency hopping functionality is inapposite to the modulation being discussed in the passage. Tr. 63:17–22 (“JUDGE McKONE: And you can use the same modulation regardless of whether you are using frequency hopping or not, is that right? MR. SPEARS: Exactly. Yeah, it’s the same slot. It’s the same framing. It’s the same TDMA frames. It is all the same.”). We find that the ’480 patent does not state, explicitly or implicitly, that the described system implements the optional frequency hopping functionality of GSM. We recognize that Dr. Stark testifies that “a [person of ordinary skill in the art] would have understood that explicit reference to GSM to include reference to the constituent part of the GSM standard that specifies frequency hopping, i.e., GSM 05.02, and thus a [person of ordinary skill in the art] would understand that the ʼ480 Patent discloses this limitation as described below.” Ex. 1003 ¶ 90. Dr. Stark’s testimony, however, relies on his assumption that frequency hopping is a type of modulation. Id. As noted above, Petitioner has conceded that frequency hopping is not a type of modulation. Accordingly, we do not credit Dr. Stark’s testimony on this point. At the hearing, Petitioner argued that “there is no reason to say you are doing frequency hopping unless you are frequency hopping.” Tr. 63:22– 23. We are not persuaded. The ’480 patent does not state that its system is “doing frequency hopping.” Rather, it characterizes GSM as a “frequency hopping standard[].” While this characterization may be relevant to obviousness (discussed below), it is not a statement explicitly showing that the system of the ’480 patent implements frequency hopping.” slip op. at 17
Patent outcomesUS 6,952,408 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 6,952,408 - Seoul Semiconductor Co., Ltd / North America Seoul Semiconductor Inc. v. Sharp Kabushiki KaishaAll claims unpatentablePTAB · Oct 15, 2015 · IPR2014-00879 · APJ Jeremy M Plenzler · IPR · Final written decision
Claims 1–3 and 5–7 are unpatentable: claims 1, 3, and 7 are anticipated by Yoon; claims 2–3 and 5–6 are obvious over the listed combinations.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner has not articulated a persuasive reason for giving Dr. Sasian’s Declaration, as a whole, little or no weight in our analysis. It is generally understood that some attorney involvement in the preparation of an expert report or declaration is permissible as long as the expert substantially participated in the preparation thereof, such that it cannot be considered to be “ghost written” by an attorney. See Manning v. Crockett, No. 95C3117, 1999 WL 342715, at *3 (N.D. Ill. May 18, 1999); see also Trigon Ins. Co. v. United States, 204 F.R.D. 277, 293 (E.D. Va. 2001) (discussing the decision in Manning). Patent Owner has not demonstrated persuasively that Dr. Sasian’s declaration was “ghost written.” Long Term Capital Holdings v. United States, No. 01-CV-1290, 2003 WL 21269586, at *4 (D. Conn. May 6, 2003). We may determine the appropriate weight to be accorded the evidence presented, including expert opinion, based on the disclosure of the underlying facts or data, upon which that opinion is based. Thus, we decline to make a determination about Dr. Sasian’s opinion, as a whole. Rather, in our analysis, we consider, as they arise, relevant portions of Dr. Sasian’s testimony and determine the appropriate weight to accord that particular testimony.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“the broadest reasonable interpretation in light of the ’679 patent Specification. See 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–80 (Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA,” and “the standard was properly adopted by PTO regulation.”). Applying that standard, we interpret the claim terms of the ’679 patent according to their ordinary and customary meaning in the context of the patent’s written description. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The only limitation construed expressly in our Decision to Institute is “A2<1/√nଶെ1, where n is a refraction index of a material forming the light flux controlling member; and A2=ΔR2/(R2Δα2), where ΔR2 is an increment of R2 and Δα2 is an increment of α2.” Dec. 7. Neither party disputes that construction, nor are we apprised of any other reason to change our construction of that limitation. We determine that no other term requires an express construction in order to conduct properly our analysis of the applied art.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Drawings and pictures can anticipate claims if they clearly show the structure which is claimed. See Mraz, 455 F.2d at 1072. When the reference is a utility patent, it does not matter that the feature shown is unintended or unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. Aslanian, 590 F.2d at 914 (“a drawing in a utility patent can be cited against the claims of a utility patent application even though the feature shown in the drawing was unintended or unexplained in the specification of the reference”). Regardless of the language used in paragraph 165 of Yoon, there is no dispute that Figure 14 of Yoon discloses curved central surface 16 as being concave when viewed from light emitting chip 15 (i.e., extending into Yoon’s base 14, similar to the ’679 patent’s light-incoming surface extending into bottom surface 2c). See Tr. 26:18–20 (At oral hearing, Patent Owner’s counsel agreed that “figure [14] shows a concave curve for 16 . . . 16 is definitely concave.”). Moreover, we are persuaded that the additional description of Yoon’s” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Based on our review of the argument and evidence supporting Petitioner’s challenge to claims 2 and 3 (see Pet. 32–36 (citing, e.g., Ex. 1006, 5–6, 13–15, Figs. 1, 4; Ex. 1002 ¶ 65)), we are persuaded that Petitioner has established, by a preponderance of the evidence, that the subject matter of those claims would have been obvious over the combination of Yoon and Wanninger.” slip op. at 18
Patent outcomesUS 7,798,679 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,798,679 - Edmund Optics, Inc. v. Semrock, Inc.No claims unpatentablePTAB · Sep 16, 2015 · IPR2014-00599 · APJ William A Capp · IPR · Final written decision
Claims 33–36, 39–41, 44, and 45 were not shown unpatentable: MacLeod did not enable claim 33 for anticipation, and Edmund did not establish obviousness over MacLeod.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“After considering claim 33 in view of the specification, as a whole, we are not persuaded that the intrinsic record requires a departure from the plain and ordinary meaning of “multi-layer, thin-film, laser-line filters.” The standard for finding claim scope disavowal is exacting. See GE Lighting Solutions, LLC v. Agilight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). It is not enough that the only embodiments, or all of the embodiments, contain a particular limitation. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012). Mere criticism of a particular embodiment encompassed in the plain meaning of a claim term is not sufficient to rise to the level of clear disavowal. See Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009). Furthermore, even where a particular structure makes it “particularly difficult” to obtain certain benefits of the claimed invention, this does not rise to the level of disavowal of the structure. See Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1315 (Fed. Cir. 2010). It is the claims that define the metes and bounds of the patentee’s invention. See Phillips, 415 F.3d at 1313. Thus, the patentee is free to choose a broad term and expect to obtain the full scope of its plain and ordinary meaning unless the patentee explicitly redefines the term or disavows its full scope. See Thorner, 669 F.3d at 1366. Each claim does not need to cover every feature disclosed in a specification. See Ventana Med. Sys., Inc. v. Biogenex Labs, Inc., 473 F.3d 1173, 1182 (Fed. Cir. 2006). When a claim addresses only some of the features disclosed in the specification, it is improper to limit the claim to other, unclaimed features.” slip op. at 14
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“The MacLeod Treatise is a non-patent, printed publication. Edmund relies on In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012), for the proposition that a non-patent, printed publication is presumptively enabled for purposes of an anticipation analysis. Paper 69, 1. Semrock distinguishes Antor Media as being restricted to the context of patent prosecution. Paper 68, 3. The Court, in Antor Media, explained the underlying rationale for permitting a presumption of enablement during patent prosecution. [A]n examiner, who has no access to experts or laboratories, is not in a position to test each piece of prior art for enablement in citing it, and requiring him to do so would be onerous, if not impossible. An examiner, therefore, is not required to anticipate every possible response to a rejection, including showing that a cited reference is enabling. Consistent with the statutory frame-work and our precedent, we therefore hold that, during patent prosecution, an examiner is entitled to reject claims as anticipated by a prior art publication or patent without conducting an inquiry into whether or not that prior art reference is enabling. As long as an examiner makes a proper prima facie case of anticipation by giving adequate notice under § 132, the burden shifts to the applicant to submit rebuttal evidence of nonenablement. Antor Media, 689 F.3d at 1289. In the case of Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313 (Fed. Cir. 2003), the Federal Circuit held that an accused infringer should be entitled to have a district court presume the enablement of unclaimed material in a prior art patent asserted against a patentee. Id. at 1355. In dicta, the Amgen Court stated that its reasoning “might” also apply to prior art printed publications. We note that by logical extension, our reasoning here might also apply to prior art printed publications as well, but as Sugimoto is a patent we need not and do not so decide today. See id. (emphasis added). Thus, the Amgen Court did not reach that issue in its decision. See id. District Courts are split on this issue. We note that at least one district court decision has held that a district court should presume that a prior art printed publication is enabled. See Robocast, Inc. v. Apple Inc., 39 F. Supp. 3d 552, 565 (D. Del. 2014). Other district courts maintain otherwise. See e.g., CA, Inc. v. Simple.com., Inc., 780 F. Supp. 2d 196, 250 (E.D.N.Y. 2009); Matsushita Elec. Indus. Co. v. Samsung Electronics Co., 2006 WL 1794768, *5 (D.N.J. June 26, 2006).” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“G. Ultimate Determination of Enablement A patent claim “cannot be anticipated by a prior art reference if the allegedly anticipatory [disclosure] cited as prior art [is] not enabled.” In re NTP, Inc., 654 F.3d 1279, 1301 (Fed. Cir. 2011). Although anticipation is a question of fact, whether a prior art reference is enabling is a question of law with underlying factual inquiries. Id. The standard for what constitutes proper enablement of a prior art reference for purposes of anticipation under section 102 differs from the enablement standard for a patent application under section 112. See Verizon Services Corp., v. Cox Fibernet Virginia, Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010). Anticipation does not require the actual creation or reduction to practice of the prior art subject matter; anticipation requires only an enabling disclosure. See Schering Corp., v. Geneva Pharma, Inc., 339 F.3d 1373, 1380 (Fed. Cir. 2003); citing In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985). Nevertheless, we determine that the MacLeod Treatise does not enable claim 33. Claim 33 is directed to optical performance parameters. There is no dispute that multi-layer, thin-film, laser-line filters comprised of alternating layers of ZnS and Cryolite were known in the prior art. Thus, Semrock distinguishes its invention over prior art soft-coated filters on the basis of optical performance, not on the basis of using the basic structure of alternating layers of refractive materials with Fabry-Perot cavities. Upon consideration of the various Wands factors, including the absence of any working examples that demonstrate that Edmund’s theoretical calculations are capable of realization, we conclude that Semrock has carried its burden of showing that the MacLeod Treatise does not enable claim 33.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“By waiting and filing its expert declaration after Semrock filed its Patent Owner Response, Edmund effectively precluded Semrock from addressing Professor MacLeod’s Exhibit 1029 declaration in its Response. This also effectively precluded Semrock’s expert, Dr. Rancourt, from responding to Professor MacLeod’s belated testimony in his declaration that was filed in support of Semrock’s Response. We will not countenance such tactics. See Murphy v. Village of Hoffman Estates, 1999 U.S. Dist. LEXIS 3320, at *5–6 (N.D. Ill. 1999) (“[I]t is established beyond peradventure that it is improper to sandbag one’s opponent by raising new matter in reply.”). A Reply that belatedly presents evidence will not be considered. Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767. Edmund’s original Petition asserted a ground of unpatentability over the ZnS/Cryolite of Figure 7.26 of the MacLeod Treatise. If Edmund wanted to present a ground of unpatentability over the ZnS/Cryolite embodiment of Figure 7.26 in combination with a tantala/silica embodiment, Edmund should have presented evidence as to how and why a person of ordinary skill in the art would have combined the two embodiments to achieve the invention of claim 33 contemporaneous with the filing of its original Petition. See KSR, 550 U.S. at 418 (requiring articulated reasoning with rationale underpinning as to how or why a person of ordinary skill in the art would have combined or modified the teachings of the prior art). Presenting such evidence and argument for the first time in a Reply is untimely.” slip op. at 43
Patent outcomesUS 7,119,960 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,119,960 - Edmund Optics, Inc. v. Semrock, Inc.No claims unpatentablePTAB · Sep 9, 2015 · IPR2014-00583 · APJ William A Capp · IPR · Final written decision
Claim 1 was not shown unpatentable because Starke does not disclose the expected deposition time for an entire layer required by the Board’s construction.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“From this disclosure, we conclude that the ti referred to in line 10 of column 10 is the same ti referred to in connection with layers that are not optically monitored. If, as Edmund contends, ti represents an estimated remaining time until deposition is terminated and is calculated repeatedly and intermittently reset during deposition, the time represented by ti becomes a moving target and the time represented by 95% of ti becomes increasingly smaller until it approaches and becomes essentially equal to the “new deposition time” identified in line 11 as the time difference between a hypothetical continually recalculated ti and a “new deposition time” approaches zero. See Ex. 1001, 10:11. We think the better interpretation is that the ti identified in line 11 is a different and distinct time from the “new deposition duration” identified later in the same line of the specification. In other words, for optically monitored layers, ti is calculated one time at or before commencement of deposition of an optically monitored layer. Another time, represented by 95% of ti is then calculated one time such that it becomes a fixed moment in time for initiation of a calculation of a “new deposition duration.” Thus, based on our review of the specification, the term “expected deposition time ti” has the same meaning for layers that are optically monitored and layers that are not optically monitored. In view of the foregoing, we construe “expected deposition time ti of the layer” to mean a time based upon the designed (“theoretical”) thickness di and deposition rate ri where the designed thickness di represents the thickness of an entire layer, not a portion thereof. 2. “measuring during deposition for a period less than ti, a measured” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Edmund’s position on whether Starke calculates an “expected deposition time ti” is predicated on the Board adopting Edmund’s proposed claim construction. We do not adopt that construction. Starke’s system depends on taking optical monitoring transmission measurements after deposition has commenced. Edmund fails to identify any disclosure in Starke that a data processor calculates an expected deposition time ti based on the design thickness of an entire layer. Thus, Starke does not satisfy the limitation directed to calculating an “expected deposition time ti” as we have construed that limitation. “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). Inasmuch as Starke fails to disclose all elements of claim 1, we find that Edmund has failed to establish, by a preponderance of the evidence, that Starke anticipates claim 1.” slip op. at 16
- Expert testimonyPetitioner expert discountedPatent owner expert discountedOther
“At the outset, we have considered the claim construction testimony of both Patent Owner’s Declarant, Dr. Rancourt, and Petitioner’s Declarant, Professor MacLeod. We note, however, that “conclusory, unsupported assertions by experts as to the definition of a claim term are not useful to a court.” Phillips, 415 F.3d at 1318.2 In the instant case, the experts’ testimony does little more than repeat, without citation to additional evidence, the conclusory arguments of their respective counsel. Thus, we focus primarily on the intrinsic record to construe the term at issue. Id. (“extrinsic evidence in general is less reliable than the patent and its prosecution history in determining how to read claim terms”).” slip op. at 7
- ExcludeMotion to exclude, deniedDenied
“its own expert, Professor MacLeod, in a different, but related, inter partes review. Edmund argues that it is improper to take cross-examination testimony obtained in one case and then use it another case. Edmund also argues that the cross-examination exceeds the scope of direction examination. Paper 45. The testimony in question goes to an issue of claim construction. We have previously explained that our claim construction in this case is based primarily on the intrinsic record and that the parties’ proffered expert testimony is neither needed nor helpful in assisting our claim construction efforts.3 Nevertheless, we DENY Edmund’s motion to exclude Professor MacLeod’s Exhibit 2008 deposition testimony, but afford the testimony little weight.” slip op. at 17
Patent outcomesUS 7,068,430 not shown unpatentableClaim construction§ 102 anticipationcites PhillipsPatents in suitUS 7,068,430 - Greene’S Energy Group, LLC v. Oil States Energy Services, LLCAll claims unpatentablePTAB · May 1, 2015 · IPR2014-00216 · APJ James A Tartal · IPR · Final written decision
Claims 1 and 22 are unpatentable as anticipated by Dallas ’118; the motion to amend with substitute claims 28 and 29 is denied.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“member for connection to a wellhead of the well, and a locking member for detachably engaging the base member. Claim 22 contains a similar requirement. We agree with Petitioner that bottom flange 22 of Dallas ’118 corresponds to the base member of a first lockdown mechanism, and that bolts through the bores in lower flange 22 correspond to a locking member, as claimed in the ’053 patent. See Pet. 42. Claim 1 further requires a second lockdown mechanism having a range of adjustment adequate to ensure that the mandrel can be moved into the operative position, and locked down in the operative position while the first lockdown mechanism is in the lockdown position. Claim 22 contains a similar requirement. We agree with Petitioner that the hydraulic cylinder mechanism of Dallas ’118, which ensures a fluid tight seal between annular seal 78 and bit guide 84 by maintaining a pressure of about 1000 psi in upper chamber 36, corresponds to the recited second lockdown mechanism. See Pet. 36, 44.” slip op. at 18
- 112 supportMotion to amend, deniedDenied
“The determination of whether there is written description support turns on whether the original disclosure of the application relied upon reasonably conveys to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The proposed substitute claims introduce the term “wellhead assembly,” a term that does not appear in the ’418 application or the ’053 patent. Patent Owner’s string citation to various disclosures, none of which identify a “wellhead assembly,” is insufficient to demonstrate written description support absent some explanation. The same is true with regard to the proposed addition of language requiring both an apparatus for securing the mandrel “within a tubing head spool of a wellhead assembly” and a setting tool “arranged to insert a bottom end of the mandrel through the wellhead.” A string citation does not explain how the original disclosure of the application relied upon reasonably conveys to a person the features intended to be encompassed by the proposed substitute claims. In particular, we cannot discern from Patent Owner’s conclusory discussion how the original disclosure describes both securing the mandrel within the wellhead assembly and inserting the mandrel through the wellhead, particularly where Patent Owner further argues a distinction between inserting a mandrel “into” a wellhead as opposed to “through” a wellhead. See PO Reply. 1–2. Accordingly, we conclude Patent Owner has not satisfied its burden of showing written description support for the proposed substitute claims 28 and 29.” slip op. at 26
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“patentable distinction of each proposed substitute claim over the prior art. See 37 C.F.R. § 42.20(c). This includes providing a construction of new claim terms sufficient to support the distinction of the proposed substitute claim over the prior art. Patent Owner introduces the new claim terms “wellhead assembly” and “setting tool” in the proposed substitute claims, but provides no express construction of either term. Absent any discussion of what is encompassed by the recited “wellhead assembly,” it is unclear how the term differs from the use of “wellhead,” alone, elsewhere in the claim. This is particularly problematic, as discussed above, when attempting to discern what is claimed as a setting tool “arranged to insert a bottom end of the mandrel through the wellhead,” relative to the claimed apparatus for securing a mandrel “above the casing of the well and within a tubing head spool of a wellhead assembly.” In its Motion to Amend, Patent Owner also does not provide a construction for “setting tool.” We note that Patent Owner was aware that the district court had previously suggested the term “setting tool” was “ambiguous.” District Court Markman Order, Ex. 2008, 15. In reply to Petitioner’s opposition to the Motion, Patent Owner argues that “the defining characteristics of the ‘setting tool’” are set out in the claim language as: (1) “arranged to insert a bottom end of the mandrel through the wellhead,” and, (2) “separate from” the first and second lockdown mechanisms and thus “removable.” PO Reply 1. Patent Owner proceeds to dispute the construction of “setting tool” proposed by Petitioner’s Declarant, Mr. Perkin, but fails to offer any express construction of the term itself. Petitioner’s Declarant, Mr. Perkin, defined “setting tool” as “any device that is used to align the mandrel with the wellhead so that the mandrel can be inserted without interference.” Perkin Decl., Ex. 1014 ¶ 44. Patent Owner’s Declarant, Mr. Wooley, testified that “setting tool” is “usually the name given to a device for inserting some sort of tool.” Ex. 1011, 61:17–21. Absent a clear explanation of what is claimed, Patent Owner’s assertion that a particular reference does not teach “any kind of setting tool” is conclusory and not persuasive. See Mot. 9. Patent Owner has not provided a sufficient construction of the term “setting tool” by merely pointing to other claim language or by disputing Petitioner’s proposed construction. By failing to articulate adequately a construction of “setting tool” or “wellhead assembly,” Patent Owner has not satisfied its burden of showing a patentable distinction of each proposed substitute claim over the prior art. 3. Conclusion We conclude Patent Owner has not come forward with sufficient evidence to establish proposed substitute claims 28 and 29 have adequate written description support. We further conclude Patent Owner has not supported sufficiently the distinction of the proposed substitute claims 28 and 29 over the prior art by failing to provide adequately the necessary construction of the proposed amendments to claims 1 and 22. For these reasons, we deny Patent Owner’s Motion to Amend.” slip op. at 27
Patent outcomesUS 6,179,053 unpatentable§ 102 anticipationPatents in suitUS 6,179,053
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.