- Apple Inc. v. Scramoge Technology Ltd.All claims unpatentablePTAB · Jul 27, 2023 · IPR2022-00351 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1, 2, 5–7, 14–16, 19, and 20 are unpatentable: claims 1, 2, 5, 6, 14–16, 19, and 20 as obvious over Suzuki, and claim 7 as obvious over Suzuki and Park.
RulingsFinal written decision- Skill levelOther
“III. DISCUSSION A. Claim Construction In an inter partes review proceeding, we construe a claim of a patent “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See 37 C.F.R. § 42.100(b) (2021). Applying that standard, we construe the claim in accordance with its ordinary and customary meaning as would have been understood by one of ordinary skill in the art, taking into account the specification and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). 1 The Leahy-Smith America Invents Act (“AIA”) amended 35 U.S.C. § 103, effective March 16, 2013. See Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011). Because the application from which the ’842 patent issued claims the benefit of priority to an application that was filed before this date, the pre-AIA version of § 103 applies. 2 Suzuki, U.S. Patent No. 8,421,574 B2, issued Apr. 16, 2013 (Ex. 1005). 3 Park, U.S. Patent No. 8,922,162 B2, issued Dec. 30, 2014 (Ex. 1006). Petitioner asserts that “no terms require specific construction.” Pet. 10. Patent Owner does not respond. See generally PO Resp. For purposes of this Decision, we conclude that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See 37 C.F.R. § 42.100(b) (2021). Applying that standard, we construe the claim in accordance with its ordinary and customary meaning as would have been understood by one of ordinary skill in the art, taking into account the specification and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). slip op. at 6
- BurdenDecided for patent owner
“Petitioner’s burden to show that [Patent Owner is] not entitled to the Korean date.” Tr. 44:3–4; see also PO Resp. 23 (“Petitioner cannot carry its burden to show that the ’842 patent should not be given its earliest alleged priority date to show that Park is prior art.”). That is not so. There are two distinct burdens of proof, namely, a burden of persuasion and a burden of production. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Petitioner carries “the burden of persuasion to prove unpatentability by a preponderance of the evidence,” and that burden never shifts to Patent Owner. Id. at 1379. The burden of production, however, is a shifting burden, the allocation of which depends on where in the process of trial the issue arises. See id. Here, Petitioner starts with the initial burden of production, which it satisfies by arguing obviousness based on its assertion that Park is prior art, as discussed above. See id. The burden of production then shifts to Patent Owner to argue or produce evidence that Park is not prior art because the challenged claims are entitled to the benefit of a filing date earlier than Park’s effective date of December 6, 2011. See id. at 1380. To shift the burden back to Petitioner, Patent Owner needs to present evidence to support an argument that the specification of the Korean application describes an invention understandable to an ordinarily skilled artisan and that the inventor actually invented the invention claimed in the ’842 patent. See Ariad Pharms., 598 F.3d at 1351; see also Dynamic Drinkware, 800 F.3d at 1378. Patent Owner does not do that here. Notably, Patent Owner does not address at all whether the disclosure of the Korean application provides support for claim 7 of the ’842 patent. See generally PO Resp. Indeed, counsel for Patent Owner admitted at oral argument that he did not know whether the record even contains an English language translation of the Korean application. Tr. 42:25–43:1 (counsel for Patent Owner referring to “the Korean patent application, which I’m not aware of whether or not we have a translation of that”). Without such translation, there can be no “objective inquiry into the four corners of the specification.” See Ariad Pharms., 598 F.3d at 1351. Counsel for Patent Owner further acknowledged that Patent Owner did not meet this burden of production. Tr. 44:7–13. We asked counsel at oral argument, “Well, if we disagree with you and say you have the burden to show support in the Korean application, then you lose on that issue?” Id. at 44:7–9. Counsel responded, “Well, yes, Your Honor. . . . If you disagree with me on that position, yes, that is correct.” Id. at 44:10–13. Because Patent Owner neither argues nor presents evidence that claim 7 is entitled to the benefit of the filing date of the Korean application, we determine that Petitioner shows that Park qualifies as prior art.” slip op. at 37
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for patent owner
“Under 35 U.S.C. § 119, “the claims set forth in a United States application are entitled to the benefit of a foreign priority date if the corresponding foreign application supports the claims in the manner required by section 112, ¶ 1.” In re Gosteli, 872 F.2d 1008, 1010 (Fed. Cir. 1989). Section 112, ¶ 1 contains a written description requirement, which is satisfied here if “the disclosure of the [foreign] application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art,” and, “[b]ased on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id.” slip op. at 36
Patent outcomesUS 10,622,842 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSRPatents in suitUS 10,622,842 - Iapartments, Inc. v. Edst, LLCInstitutedPTAB · Apr 11, 2023 · IPR2022-01468 · APJ Michelle N Wormmeester · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds after finding a reasonable likelihood that claims 1, 2, 5–11, 14, 15, 17, 18, 20, 21, 23, 25, 26, 28, 29, 31, and …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the foregoing reasons, Petitioner has demonstrated on the record before us a reasonable likelihood that it will prevail in showing that claims 1, 2, 5–11, 14, 15, 17, 18, 20, 21, 23, 25, 26, 28, 29, 31, and 33 of the ’273 patent are unpatentable. Although we express concern as to Petitioner’s showing for the Kraus-based grounds and determine that the record would benefit from further briefing on an issue related to Petitioner’s showing for the ground of anticipation by Cahill, we institute trial on all challenged claims and all asserted grounds of unpatentability. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018) (holding that a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 5 (Nov. 2019), available at https://www.uspto.gov/ sites/default/files/documents/tpgnov.pdf (“In instituting a trial, the Board will either (1) institute as to all claims challenged in the petition and on all grounds in the petition, or (2) institute on no claims and deny institution. The Board will not institute on fewer than all claims or all challenges in a petition.”). We have not, however, made a final determination with respect to the patentability of the challenged claims. V. ORDER For the reasons given, it is ORDERED that inter partes review is instituted as to all challenged claims of the ’273 patent, namely, claims 1, 2, 5–11, 14, 15, 17, 18, 20, 21, 23, 25, 26, 28, 29, 31, and 33, based on all grounds presented in the Petition; and” slip op. at 39
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See 37 C.F.R. § 42.100(b). That standard involves construing claims in accordance with 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. §§ 102 and 103, effective March 16, 2013. Because the application from which the ’273 patent was filed before this date, the pre-AIA version of §§ 102 and 103 apply. 2 Cahill, U.S. Publ’n No. 2019/0043289 A1, published Feb. 7, 2019 (Ex. 1005). 3 Deros et al., U.S. Publ’n No. 2018/0110093 A1, published Apr. 19, 2018 (Ex. 1007). 4 Kraus et al., U.S. Publ’n No. 2010/0283579 A1, published Nov. 11, 2010 (Ex. 1006). 5 Ho et al., U.S. Publ’n No. 2021/0319639 A1, published Oct. 14, 2021 (Ex. 1008). 6 Michael McCole, How to Make Nest’s Thermostat Your Smart-Home Hub, WIRED (Feb. 10, 2016, 5:42 AM), https://www.wired.com/2016/02/ iotcookbook-nest/ (Ex. 1013). the ordinary and customary meaning of such claims as would have been understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). Petitioner proposes constructions for the claim terms “offline door lock” and “credential device.” Pet. 34–35. Patent Owner does not respond. See generally Prelim. Resp. For purposes of this Decision, we conclude that no claim term requires express interpretation at this time to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“We disagree with Patent Owner. As discussed above, Petitioner argues that modifying Cahill’s system to use a LoRaWAN protocol as taught by Deros would have been a simple substitution of one communication protocol for another. Pet. 56. Petitioner points to where Cahill teaches considering not only satellite, broadcast radio, and microwave, but also various other communication methods including the well-known protocols Wi-Fi and Ethernet, as options for wired or wireless communications. Ex. 1005 ¶ 43 (cited by Pet. 43). Petitioner also points to where Deros teaches considering Wi-Fi, Ethernet, and LoRa, among various other communication methods, as options for wired or wireless communications. Ex. 1007 ¶ 38 (cited by Pet. 62). This teaching in Deros suggests using various communication methods including Wi-Fi, Ethernet, or LoRa interchangeably, thus supporting Petitioner’s simple substitution argument. A claimed invention that involves “the simple substitution of one known element for another” to “yield a predictable result” is obvious. KSR, 550 U.S. at 416–17. Here, the claimed invention may be obtained by modifying Cahill’s system to use LoRa for communications as taught by Deros. This is the substitution of one known communication protocol for another known communication protocol to obtain a predictable result. That satellite, broadcast radio, and microwave may not be types of protocols, as Patent Owner contends, does not adequately rebut Petitioner’s showing for obviousness. We note Patent Owner’s contention that “Petitioner’s further allegation that a [person of ordinary skill in the art] would have been motivated to use a LoRaWAN in Cahill ‘to improve battery life of the connected smart devices such as smart locks’ is wrong and misguided.” Prelim. Resp. 22–24. Even if this were true, we still find Petitioner’s simple substitution argument sufficient for institution for the reasons given above.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot reached
“We disagree with Patent Owner. As discussed above, Petitioner argues that modifying Cahill’s system to use a LoRaWAN protocol as taught by Deros would have been a simple substitution of one communication protocol for another. Pet. 56. Petitioner points to where Cahill teaches considering not only satellite, broadcast radio, and microwave, but also various other communication methods including the well-known protocols Wi-Fi and Ethernet, as options for wired or wireless communications. Ex. 1005 ¶ 43 (cited by Pet. 43). Petitioner also points to where Deros teaches considering Wi-Fi, Ethernet, and LoRa, among various other communication methods, as options for wired or wireless communications. Ex. 1007 ¶ 38 (cited by Pet. 62). This teaching in Deros suggests using various communication methods including Wi-Fi, Ethernet, or LoRa interchangeably, thus supporting Petitioner’s simple substitution argument. A claimed invention that involves “the simple substitution of one known element for another” to “yield a predictable result” is obvious. KSR, 550 U.S. at 416–17. Here, the claimed invention may be obtained by modifying Cahill’s system to use LoRa for communications as taught by Deros. This is the substitution of one known communication protocol for another known communication protocol to obtain a predictable result. That satellite, broadcast radio, and microwave may not be types of protocols, as Patent Owner contends, does not adequately rebut Petitioner’s showing for obviousness. We note Patent Owner’s contention that “Petitioner’s further allegation that a [person of ordinary skill in the art] would have been motivated to use a LoRaWAN in Cahill ‘to improve battery life of the connected smart devices such as smart locks’ is wrong and misguided.” Prelim. Resp. 22–24. Even if this were true, we still find Petitioner’s simple substitution argument sufficient for institution for the reasons given above.” slip op. at 29
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,825,273 - PTAB · Mar 22, 2023 · IPR2022-01425 · APJ Larry J Hume · IPR · Institution
The Board instituted IPR on claims 1–12 on all asserted grounds: anticipation by Noguchi and obviousness over Noguchi with Kurihara or Oda.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In support of its proposal, Petitioner presents no specific argument or evidence relating to these factors, but instead simply cites Mr. Flasck’s Declaration. See Pet. 4. Mr. Flasck states that he determined the appropriate level of skill in the art based on his consideration of “several factors, including the types of problems encountered in the art, the solutions to those problems, the pace of innovation in the field, the sophistication of the technology, and the education level of active workers in the field,” but also provides no analysis of the relevant factors. Ex. 1003 ¶ 79.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner states “for the purposes of this Petition, the Board does not need to explicitly construe any claim term and there are no known claim construction disputes that affect the outcome of this Petition.” Pet. 10. By not filing a preliminary response, Patent Owner did not address the construction of any claim terms or phrases. See PO Waiver. At this time, we find it unnecessary to address the construction of any claim terms or phrases. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“A single prior art reference that discloses, either expressly or inherently, each limitation of a claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375–76 (Fed. Cir. 2005). To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Further, a “reference must describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art.” Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002). The reference does not need to use the same terminology. Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (A reference anticipates if a person of skill in the art “would at once envisage the claimed arrangement or combination.” (internal quotation marks and citation omitted)). But, an ambiguous reference will not anticipate a claim. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017). The dispositive question for anticipation is whether one skilled in the art would reasonably understand or infer from the reference that every claim element is disclosed. Eli Lilly v. Los Angeles Biomedical Research Inst., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017). slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,593,070 - PTAB · Feb 8, 2023 · IPR2022-01328 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted review of claims 10–18, 31, and 32 under § 103 over Hardin ’665 and Salmre, finding a reasonable likelihood of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has established a reasonable 1 Petitioner’s Preliminary Reply is limited to the issue of discretionary denial pursuant to Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), and, particularly, the effect of Samsung’s stipulation in related litigation, in accordance with Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“Accordingly, for the reasons set forth in IPR2022-01327, Paper 13, we: (1) determine, based on the present record, that the Challenged Claims of the ’387 patent are not entitled to the priority date of the ’094 application, and, therefore, Hardin ’665 is available as prior art to the ’387 patent; (2) determine that, on balance, considering the record presently before us, Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Hardin ’665 and Salmre would have rendered the subject matter of claims 10–18, 31, and 32 of the ’387 patent obvious to one of ordinary skill in the art at the time of the invention; (3) decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a) and Fintiv; and (4) decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 325(d).” slip op. at 17
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedOther
“Accordingly, for the reasons set forth in IPR2022-01327, Paper 13, we: (1) determine, based on the present record, that the Challenged Claims of the ’387 patent are not entitled to the priority date of the ’094 application, and, therefore, Hardin ’665 is available as prior art to the ’387 patent; (2) determine that, on balance, considering the record presently before us, Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Hardin ’665 and Salmre would have rendered the subject matter of claims 10–18, 31, and 32 of the ’387 patent obvious to one of ordinary skill in the art at the time of the invention; (3) decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a) and Fintiv; and (4) decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 325(d).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Accordingly, for the reasons set forth in IPR2022-01327, Paper 13, we: (1) determine, based on the present record, that the Challenged Claims of the ’387 patent are not entitled to the priority date of the ’094 application, and, therefore, Hardin ’665 is available as prior art to the ’387 patent; (2) determine that, on balance, considering the record presently before us, Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Hardin ’665 and Salmre would have rendered the subject matter of claims 10–18, 31, and 32 of the ’387 patent obvious to one of ordinary skill in the art at the time of the invention; (3) decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a) and Fintiv; and (4) decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 325(d).” slip op. at 17
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,049,387 - Unified Patents, LLC v. 2bcom, LLCAll claims unpatentablePTAB · Jan 10, 2023 · IPR2020-00996 · APJ Sharon Fenick · IPR · Final written decision
On rehearing, the Board determined claims 12–17 and 19–21 unpatentable as obvious over the instituted combinations of Bluetooth Profiles and Nüsser, with Cooper added for the second ground.
RulingsFinal written decision- RehearingRehearing, grantedGranted
“We issued a Final Written Decision (Paper 58) and Petitioner timely filed a Request for Rehearing (Paper 59, “Reh’g Req.”) requesting rehearing of that original Final Written Decision. We granted Petitioner’s Request for Rehearing and vacated our original Final Written Decision, indicating that a revised Final Written Decision would be issued. Paper 64. In this revised Final Written Decision, we address all arguments and evidence set forth in the Papers to the extent necessary to resolve the dispute between the parties.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“While not dispositive, Nüsser bears multiple conventional indicia of publication such as a date and indicia of publication by an established publisher (IEEE) which support a finding of public accessibility. Ex. 1006, 1 (cited at Pet. 1 and Pet. Reply 3); id. at 2, 15 (cited at Pet. Reply 3); see Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1376 (Fed. Cir. 2018) (“[a]lthough the [reference]’s date is not dispositive of the date of public accessibility, its date is relevant evidence”); see also VidStream LLC v. Twitter, Inc., 981 F.3d 1060, 1065 (Fed. Cir. 2020) (“When there is an established publisher there is a presumption of public accessibility as of the publication date.”).” slip op. at 19
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“precedent has long recognized the importance of the presence or absence of the word ‘means.’” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). Our focus is on “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Id. “[W]hen a claim term lacks the word ‘means,’ the presumption can be overcome and § 112, para. 6 will apply if . . . the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Id. at 1349 (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). “Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word ‘means’ therefore may invoke § 112, para. 6.” Id. at 1350 (quoting Mass. Inst. of Tech. & Elecs. for Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006)).” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art (“POSITA”) “at the priority date of the ’210 Patent would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject, and one to two years of work experience in wireless communications.” Pet. 14 (citing Ex. 1003 ¶¶ 48–52). “Less experience is necessary with additional education (e.g., a Master’s degree), and likewise, less education is necessary with additional work experience (e.g., 5–6 years).” Id. Patent Owner does not propose a level of ordinary skill or comment on Petitioner’s proposal. We adopt Petitioner’s proposed level of ordinary skill in the art, which comports with the teachings of the ’210 patent and the asserted prior art.” slip op. at 8
Patent outcomesUS 7,127,210 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,127,210 - Apple Inc. v. Scramoge Technology Ltd.InstitutedPTAB · Sep 13, 2022 · IPR2022-00573 · APJ Michelle N Wormmeester · IPR · Institution
The Board instituted IPR on claims 1–22 and 28 on all six asserted grounds, finding a reasonable likelihood of prevailing; it dismissed Apple’s joinder motion as moot.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“In considering proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision, we “will consider the speed with which the district court case may come to trial and be resolved,” and we “will weigh this factor against exercising discretion to deny institution under Fintiv if the median time-to-trial is around the same time or after the projected statutory deadline for [our] final written decision.” Interim Procedure 9. Here, our projected statutory deadline for a final written decision is September 16, 2023. Based on a median time-to-trial of 27.2 months in the Western District of Texas, the expected trial date in the parallel litigation is in January 2024, which is about four months after our projected statutory deadline for a final written decision. This factor thus weighs against exercising discretion to deny the Petition. The remaining Fintiv factors do not sufficiently outweigh our consideration of the proximity of the court’s expected trial date to the Board’s projected statutory deadline for a final written decision to lead us to exercise discretion to deny institution. Accordingly, under the circumstances of this case, we decline to exercise our discretion to deny institution under § 314(a) in view of the parallel litigation.8” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See 37 C.F.R. § 42.100(b) (2019). That standard involves construing claims in accordance with the ordinary and customary meaning of such claims as would have been understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). Petitioner asserts that “no formal construction is ‘necessary to resolve’ the anticipation/obviousness issues raised in this Petition.” Pet. 5–6 (citing Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Patent Owner does not respond. See generally Prelim. Resp. For purposes of this Decision, we conclude that no claim term requires express interpretation at this time to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Petitioner directs us to where Flowerdew states, Two element inductive charging systems typically create a resonance in both the transmitting and the receiving coils for a given frequency. The resonance maximizes the current, and hence the flux density from a given drive voltage, and maximizes the receive voltage for a given intercepted flux. . . . When the number and type of secondary units being charged is variable, the power extracted from the field and the amount of permeable material and its distribution are ill defined and therefore the inductance and loss resistance seen in the resonant system are also ill defined. Changes in the inductance or loss resistance resulting from placement of one or[] more secondary units must be compensated for. Ex. 1007, 12:22–38 (cited by Pet. 54). To compensate for these changes, Flowerdew uses a resonance tuning circuit that varies the frequency of charging coils 312, 314 when secondary unit 304 is placed on the charging surface of primary unit 302, thereby keeping the system resonant. Id. at 12:58–62 (cited by Pet. 54–55). A sense coil near the driven coil provides a feedback signal to a microcontroller that produces the signal to the driver, and software allows for the output frequency to be adjusted to maximize the signal from the sense coil. Id. at 13:24–30 (cited by Pet. 55). Flowerdew explains that “[a]pplication of a variable frequency is predicated on the basis that the high efficiency achieved by driving a resonant system is needed for effective operation.” Id. at 13:30–35 (cited by Pet. 55). Petitioner contends that “Flowerdew thus discloses a microcontroller of the charger 302 (base unit) that monitors a ‘feedback signal’ from the sense coil, and that automatically adjusts an output frequency (at least one characteristic of said time varying electric current) responsive to the ‘feedback signal’ to achieve and maintain operation at the ‘resonant’ frequency of the coupled inductor system,” where “the ‘feedback signal’ from the sense coil constitutes “at least one parameter indicative of an efficiency of power transfer from said base unit to said target unit.’” Pet. 55. According to Petitioner, “the drive frequency is adjusted in response to the ‘feedback signal’ to ‘maximize an efficiency of power transfer’ from the charger 302 (base unit) to the secondary unit 304 (target unit).” Id. at 55–56. Petitioner asserts that “operating at the resonant frequency maximizes power transfer efficiency.” Id. at 56 (citing Ex. 1007, 12:24–26, 13:31–32). Based on Petitioner’s argument and evidence, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that Flowerdew teaches the recited monitoring and adjusting steps of claim 1.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Petitioner contends that “[i]t would have been obvious to implement Flowerdew’s charging circuit according to Jang’s suggested use of electronically-controlled switching elements for switching a DC voltage source to produce a time-varying electric current to apply to a primary inductive element (e.g., primary coils 312 and/or 314).” Pet. 64 (discussing claim 3). As support, Petitioner asserts that “a [person of ordinary skill in the art] would have looked to examples such as Jang for additional details as to how to implement aspects of Flowerdew’s charger 302, including oscillator 310––especially since Flowerdew acknowledges that the description of oscillator 310 in Flowerdew is ‘simplified’ (although Flowerdew expressly teaches that various designs/components can be adopted to implement the charging circuit).” Id. at 65 (discussing claim 3) (citing Ex. 1007, 6:8–13, 15:54–67). Based on Petitioner’s argument and evidence, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that its proposed combination of Flowerdew and Jang teaches the recited switch element of claim 12. We also are persuaded that Petitioner’s proffered reasoning for modifying Flowerdew’s charging system to include Jang’s inverter, namely, to provide a way to implement Flowerdew’s digital driver, is sufficient on this record. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”).” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,825,537 - Dril-Quip, Inc. v. FMC Technologies, Inc.No claims unpatentablePTAB · Aug 1, 2022 · PGR2021-00049 · APJ George R Hoskins · PGR · Final written decision
Claims 1–11, 14, and 15 were not shown unpatentable under § 103 over Maersk or Broussard, due to missing claim limitations and insufficient motivation to modify.
RulingsFinal written decision- Skill levelOther
“Patent Owner contends this person “would have had a Bachelor’s degree in mechanical or petroleum engineering or similar subject matter, and at least approximately two years of work or research experience in subsea oil and gas completion systems related to the analysis, design, development, and/or manufacturing of equipment for subsea completion systems for use in subsea oil and gas wells.” PO Resp. 16; Ex. 2002 ¶ 11. Thus, the parties essentially agree on the level of ordinary skill in the art to be applied in this proceeding. Their agreement is consistent with the level of skill reflected in the ’921 patent and the prior art of record. Further, we would reach the same decision regardless of whether we adopt Petitioner’s or Patent Owner’s formulation. We therefore do not need to delve into any fine distinctions between the two formulations.” slip op. at 9
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“However, Maersk’s other two seal barriers—a ring seal, and a production packer—both appear to be passive barriers. See Ex. 2002 ¶ 60 (annotating Ex. 1019 to identify the ring seal); Ex. 1031 ¶ 33 (stating that passive barriers “include, inter alia . . . packers”). Dr. Hilbert does not explain persuasively why adding a third passive barrier would materially improve the sealing versus Maersk’s three existing barriers, so as to justify the extensive modifications required to re-route the annular fluid through the bore stab. See Ex. 1031 ¶¶ 33–35; id. ¶¶ 13–44 (discussing some of the modifications required). Further, Mr. Parks persuasively testifies, in opposition to Dr. Hilbert’s motivation testimony, that “deeper wells and increased annulus fluid pressure would not have led a [person of ordinary skill in the art] to modify Maersk to provide additional protective barriers.” Ex. 2002 ¶¶ 58, 60–63 (emphasis added). Some of this testimony has already been cited above. Additionally, Mr. Parks notably served on the editorial committee for API 17D. See id. ¶¶ 6, 63. He testifies that a person of ordinary skill in the art would have “recognized that API 17D does not support” Dr. Hilbert’s testimony, “because API 17D’s two-barrier requirement is not dependent on depth or pressure.” Id. ¶ 62 (citing Ex. 1022, 158 (§ 9.2.7)) (emphasis added). In particular: “there are practical considerations underlying the API 17D requirement for two barriers, and the lack of any specification for more than two barriers.” Id. ¶ 63. This testimony is supported by API 17D, which requires a minimum of two seal barriers for any system with a rated working pressure falling within the entire 5000–15000 psi range contemplated by API 17D. See Ex. 1022, 158 (§§ 9.2.7–9.2.8). Mr. Parks further testifies: “Two barriers, appropriately specified for” slip op. at 43
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“1. “production/annulus bore stab” In the Institution Decision, we determined the preamble of claim 1 (“A production/annulus bore stab”) is a limitation to the claim, which was a disputed issue at the time. See Inst. Dec. 16–20. Neither party has objected to our preliminary determination in their post-institution briefs. See, e.g., PO Resp. 15–16; Pet. Reply; Tr. 8:24–9:13. We, therefore, again conclude here that the preamble of claim 1 is a limitation to the claim, for the reasons provided in the Institution Decision.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We start our analysis with the claim language. The claim term in dispute is simply a “cylindrical” outer surface. The parties do not cite, and we do not discern, any other contextual claim language that might elucidate or limit the plain and ordinary meaning of “cylindrical.” Petitioner’s gloss on this term as connoting “an overall cylinder-like shape” is an unpersuasive attempt to broaden the meaning of the plain term “cylindrical.” It also would unhelpfully replace our present inquiry (What is a “cylindrical outer surface”?) with yet another inquiry (What is “an overall cylinder-like shape”?). Turning to the ’921 patent specification, we find that it discloses three different and distinct cylindrical outer surfaces: outermost cylindrical surface 102S, first cylindrical outer surface 102X, and second cylindrical outer surface 102Y. See Ex. 1001, Fig. 6, 3:47–51, 3:65–4:5. The distinctness of these three surfaces can be seen in Figures 5, 6, 8, 9, and 10. Petitioner’s attempt to combine these three distinct outer cylindrical surfaces, into one allegedly cylindrical outer surface (see Petitioner’s yellow annotations to Figure 6, supra), is not supported by the ’921 patent specification, which never describes the entire axial extent of the outer surface of bore stab body 102 as being “cylindrical.”” slip op. at 12
Patent outcomesUS 10,689,921 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,689,921 - Unified Patents, LLC v. 2bcom, LLCNo claims unpatentablePTAB · Nov 30, 2021 · IPR2020-00996 · APJ Sharon Fenick · IPR · Final written decision
Claims 12–17 and 19–21 were not shown unpatentable under either §103 ground because Petitioner failed to prove that Nüsser was publicly accessible prior art.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication.’” Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1355 (Fed. Cir. 2018) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). A reference is considered publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Id. at 1355–56 (quoting In re Wyer, 655 F.2d 221, 226 (CCPA 1981)); see also Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018).” slip op. at 10
- Strike new argumentNew argument disregardedDecided for patent owner
“Because these arguments relate to a print version of the conference proceedings, they amount to new arguments that Petitioner chose not to make in the Petition and are not responsive to Patent Owner’s arguments asserting flaws in Petitioner’s contentions and evidence, which related to whether the digital version of Nüsser, presented here as Exhibit 1006, was available on the critical date. Rather, they raise new issues regarding actual dissemination of or the availability of a print version of the proceedings for the conference. See Acceleration Bay, LLC., 908 F.3d at 775; Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016). New evidence may be submitted to respond to arguments raised in a prior brief or as rebuttal evidence, however, in this case, we do not agree that the new evidence and arguments here are responsive to Patent Owner’s arguments, but rather they appear to take a “new direction with a new approach.” Patent Trial and Appeal Board Consolidated Trial Practice Guide, November 2019 (“CTPG”),6 73–75. Petitioner does not show or assert that the print proceedings contain the same version of Nüsser as that presented as Exhibit 1006. Nor has Petitioner filed a copy of Nüsser from a print version of the proceedings” slip op. at 24
- ExcludeNot reached
“B. Patent Owner’s Motion to Exclude Patent Owner moves to exclude all or part of Exhibits 1006, 1007, 1010, 1012, 1015–1018, 1023–1028, 1036–1040, 1045, and 1046. PO Mot. Exclude 1. Because we ultimately find for Patent Owner without excluding the documents listed in Patent Owner’s Motion, we dismiss as moot Patent Owner’s Motion to Exclude.” slip op. at 26
Patent outcomesUS 7,127,210 not shown unpatentable§ 102 anticipationPatents in suitUS 7,127,210 - Fitbit LLC v. Philips North America LLCSome claims unpatentablePTAB · Oct 4, 2021 · IPR2020-00910 · APJ Norman H Beamer · IPR · Final written decision
Claims 1, 7–10, 13, 15, 16, 22, and 24–26 are unpatentable; claim 14 is not shown unpatentable because the cited grounds do not establish separate data input/output ports.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Although the respective positions are very similar and our analysis would be the same under either Patent Owner’s or Petitioner’s definition of the ordinarily skilled artisan, from our review of the record, we find Patent Owner’s more specific articulation of the relevant experience is appropriate and consistent with the disclosure of the ’233 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Thus, we adopt Patent Owner’s description.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“obviousness challenges, we are not persuaded by Patent Owner’s arguments based on its characterizations of the plain meaning of “security mechanism governing information transmitted between the first personal device and the second device.” The ’233 patent explicitly discloses that the use of passwords or encryption can be used to secure information transmitted between devices. Ex. 1001, 8:12–22, 13:25–67. The use of passwords or security keys certainly provides a form of “governing” of information transmitted between devices. We note that the courts in the Fitbit and Garmin cases have concluded likewise: [Patent Owner’s expert] provides minimal explanation for — and cites to no evidence in support of — his opinion that encryption ‘does not govern or control [the] transmission [of information]’ . . . [and] that opinion appears to conflict with the specification and claims. Ex. 1081, 25. [Patent Owner’s expert’s] conclusory opinion should not be afforded any weight. Ex. 2023, 14. We conclude that it is unnecessary to provide an explicit construction of the phrase at issue, and do not agree with Patent Owner that techniques such as the use of passwords or encryption fall outside of the scope of claim 1.” slip op. at 17
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Other
“directional communications module to transition from the powered-down state to the powered-up state.” Ex. 1001, 16:18–20. Petitioner proposes to construe this portion of the claim pursuant to 35 U.S.C. § 112 ¶ 6, including specifying the disclosed structure corresponding to the recited function as “components capable of providing a magnetic, mechanical, sound or ultrasound, infrared, or radio frequency signal, and structural equivalents thereof.” Pet. 21 (citing Ex. 1001, 14:15–60, 16:16–30; Paradiso Decl. ¶¶ 49–50). Petitioner, however, also states that “[t]he ’233 patent explains that the ‘means for signaling’ can be ‘a mechanical signal, such as throwing a switch or applying pressure to a pad.’” Pet. 83; see Ex. 1001, 14:35–36. Therefore, we are not persuaded that Petitioner’s proposed articulation of the corresponding structure is correct. In our Decision to Institute, we stated that it is sufficient for present purposes to note that the disclosed structure that performs the function recited in claim 26 includes a switch that turns the bi-directional communications module on and off. Dec. 12. Patent Owner agrees that such structure is encompassed by the “means for signaling. . .” of claim 26. PO Resp. 12. We reiterate for purposes of this Decision that it is sufficient to note that the disclosed structure includes a switch as described.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“includes the claimed short-range bi-directional wireless communications module, and explains that this term is meant to “include premises and facility based wireless networks.” Ex. 1001, 5:57–65. Even though wireless communications modules necessarily have inputs and outputs, we preliminarily concluded, based on these disclosures, that the data input/output ports of claim 14 had to be separate from the “short-range bi-directional wireless communications module” of claim 1 — otherwise the requirement of data input/output ports in claim 14 would be superfluous. Dec. 38–39. See Mformation Techs., Inc. v. Research in Motion Ltd., 764 F.3d 1392, 1399 (Fed. Cir. 2014) (favoring a construction that does not render another limitation “superfluous”). Petitioner points out that there is no example disclosed in the ’233 patent that embodies claim 14 — i.e., no example in which two devices communicate with each other, both using a local area wireless LAW 330 module and a Data I/O port 160. Reply 7. Therefore, argues Petitioner, claim 14 should not be construed to cover subject matter not disclosed in the ’233 patent. Reply 9. However, as both Petitioner and Patent Owner point out, the ’233 patent discloses that both the personal medical device PMD 100 shown in Figure 2 and the medical device interface MDI 600 shown in Figure 4C can include both a wireless communication module 300 and data I/O ports 160, which provides support for claim 14, notwithstanding that the specific connections of components required by claim 14 are not explicitly illustrated. Reply 7–8; Sur-Reply 10–11; Ex. 1001, Fig. 2, 3:47–49, 54–55. Moreover, Petitioner admits that the example of Figure 3A, which uses wireless communication modules 300, “does not include a data I/O port like claim 14.” Reply 8 (emphasis added). This admission contradicts Petitioner’s argument that “wireless communications module” and “data input/output port” are two terms that refer to the same structure. Reply 9 (citing Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (“[T]he use of two terms in a claim requires that they connote different meanings, not that they necessarily refer to two different structures”)). Accordingly, we maintain our preliminary conclusion as expressed in the Institution Decision that the data input/output ports of claim 14 are separate from the “short-range bi-directional wireless communications module[s]” of claim 1.” slip op. at 20
Patent outcomesUS 7,088,233 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,088,233 - Fitbit LLC v. Philips North America LLCSome claims unpatentablePTAB · Oct 4, 2021 · IPR2020-00783 · APJ Norman H Beamer · IPR · Final written decision
Claims 1, 7–10, 13, 15, 16, 22, and 24–26 are unpatentable; claim 14 was not shown unpatentable because the references did not disclose separate data input/output ports.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Although the respective positions are very similar and our analysis would be the same under either Patent Owner’s or Petitioner’s definition of the ordinarily skilled artisan, from our review of the record, we find Patent Owner’s more specific articulation of the relevant experience is appropriate and consistent with the disclosure of the ’233 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Thus, we adopt Patent Owner’s description.” slip op. at 12
- Expert testimonyOther
“From our review of the record, including the testimony of Petitioner’s expert Dr. Paradiso, we are persuaded that Petitioner has articulated sufficient reasoning with rational underpinning to support the reliance on the combinations of Jacobsen with Quy for Ground 4, Geva for Ground 5, and Reber for Ground 6. For each ground, Petitioner’s reliance on the tertiary references demonstrates that the particular features disclosed (Bluetooth, GPS, and a power button) were well known and readily incorporated into a Jacobson-type system, and that one of ordinary skill in the art would have been motivated to do so with a reasonable expectation of success. Patent Owner’s arguments are unpersuasive, not sufficiently taking into account that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Instead, the relevant issue is “what the combined teachings of the references would have suggested to those of ordinary skill in the art.” Id. “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). Moreover, as Petitioner points out, the fact that an asserted combination introduces “simultaneous advantages and disadvantages [] does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).” slip op. at 42
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“From our review of the record, including the testimony of Petitioner’s expert Dr. Paradiso, we are persuaded that Petitioner has articulated sufficient reasoning with rational underpinning to support the reliance on the combinations of Jacobsen with Quy for Ground 4, Geva for Ground 5, and Reber for Ground 6. For each ground, Petitioner’s reliance on the tertiary references demonstrates that the particular features disclosed (Bluetooth, GPS, and a power button) were well known and readily incorporated into a Jacobson-type system, and that one of ordinary skill in the art would have been motivated to do so with a reasonable expectation of success. Patent Owner’s arguments are unpersuasive, not sufficiently taking into account that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Instead, the relevant issue is “what the combined teachings of the references would have suggested to those of ordinary skill in the art.” Id. “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). Moreover, as Petitioner points out, the fact that an asserted combination introduces “simultaneous advantages and disadvantages [] does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Accordingly, we are persuaded that Petitioner has proved by a preponderance of the evidence that claim 13 would have been obvious over Jacobsen and Quy, that claims 24 and 25 would have been obvious over Jacobsen and Geva, and that claim 26 would have been obvious over Jacobsen and Reber.” slip op. at 42
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Like for Grounds 4–6, we are persuaded that Petitioner has articulated sufficient reasoning with rational underpinning to support the reliance on the combination of Say and Gabai. Although Gabai is directed to an interactive toy, its disclosure relating to bi-directional wireless communications with a base communication unit is pertinent art— satisfying the criterion that “[a] reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, 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.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)). Accordingly, we are persuaded that Petitioner has proved by a preponderance of the evidence that claims 15, 16, and 22 would have been obvious over Say and Gabai.” slip op. at 44
Patent outcomesUS 7,088,233 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,088,233
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.