• Axonics, Inc. v. Medtronic, Inc.No claims unpatentable
  PTAB · May 30, 2024 · IPR2020-00712 · APJ James A Tartal · IPR · Remand

  Claims 3–6, 9–12, and 15–18 were not proven unpatentable because the petitioner failed to show the required two inputs in the asserted prior art.

  RulingsRemand decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “The Specification of the ’148 patent states that “an alignment measurement may be made by measuring a value, e.g., current or voltage, associated with, e.g., proportional to, the current passing through [the] rechargeable power source.” Id. at 21:3–6. We therefore find that the Specification expressly identifies “current or voltage” as examples of “a value.” Id. In the FWD, we stated that “[a]lthough the ’148 patent makes clear that ‘a value’ may include, for example ‘voltage,’ we agree with Patent Owner that the two independent limitations should be construed such that the Value Limitation does not render superfluous the Signal Limitation or the Measured Voltage Limitation.” FWD 26. We further determined that “the Value Limitation and the Signal Limitation, as well as the Value Limitation and the Measured Voltage Limitation both require two separate inputs to the external power source.” Id. That determination is not at issue here. See Axonics, 75 F.4th at 1379–80 (stating that Petitioner did “not argue the Board erred in adopting the two-input claim construction”). 2. Additional Claim Terms We find no additional claim term requires express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 22

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. (citation omitted). Petitioner contends that a person of ordinary skill in the art at the time of the invention “would have had at least a bachelor’s degree in electrical the industry working with implantable medical devices such as cardiac pacemakers or defibrillators.” Pet. 8. Patent Owner argues that a person of ordinary skill “would have had at least a bachelor’s degree in a relevant field (e.g., electrical, mechanical, or biomedical engineering) with at least two years of experience with the design of components (e.g., circuitry) for implantable medical devices and associated external devices (e.g., a charging unit),” and that “[m]ore education can substitute for practical experience and vice versa.” PO Resp. 4–5 (citing Ex. 2002 ¶¶ 21–22). Our analysis here, as in the FWD, does not turn on which of the Parties’ competing definitions of ordinary skill is applied. See FWD 16. Moreover, the appropriate level of ordinary skill is not in dispute on remand. Consistent with the FWD and the Decision on Institution, we apply the level of ordinary skill in the art proposed by Petitioner. See Inst. Dec. 11 (stating that “the ’148 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references . . . is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner” (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001))); FWD 16.” slip op. at 18

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “By contrast, in his Rebuttal Declaration, Dr. Mihran disputes Dr. Panescu’s new description of the operation of Schulman, noting that the current through R9 is not increased as a result of the current regulator R8/Q7 turning on, but that “[i]nstead, it is the increase in current through R9 in excess of the desired 40 mA operating current that causes the current regulator R8/Q7 to turn on, which acts to shunt this excess current through Q7, thereby diverting it away from the battery to maintain the desired operating condition during charging.” Ex. 2010 ¶ 6 n.3 (citing Ex. 1005, 5:2–7, 5:15–38, 9:57–68). We credit the testimony of Dr. Mihran, as supported by the cited portions of Schulman, over the unsupported testimony of Dr. Panescu in regard to how Schulman operates to measure current at R9. See id. However, whether Schulman discloses automatically varying the output power of the external power source based on a value associated with current passing through the internal battery, as required by the Value Limitation, is not in dispute. Dr. Mihran, for example, states that “Schulman discloses that the sole input provided to the external power” slip op. at 34

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Patent Owner argues, and we agree, that the measured current through R9 is the only input to the external power source Schulman APO Sur-reply 14–15. Patent Owner further argues, and we further agree, that the voltage across output leads 51 and 52 of Schulman is not an input to the external power source separate from the measured current through R9 in Schulman. See APO Sur-reply 11–16 (citing, e.g., Ex. 1003 ¶ 75; Ex. 2002 ¶ 46; Ex. 1005, 6:35–38; Ex. 2010 ¶¶ 4–7). In support of Patent Owner, Dr. Mihran states that “[t]he voltage between nodes 51 and 52 is never provided to the external power source in Schulman.” Ex. 2010 ¶ 4. According to Dr. Mihran, “Schulman discloses that the sole input provided to the external power source that the external power source uses to automatically regulate its power output is the input that derives from the amount of current flowing through the current sampling resistor R9.” Id. ¶ 5 (emphasis omitted) (citing Ex. 1005, 4:45–53, 6:35–38; Ex. 2002 ¶ 46). Dr. Mihran further states as follows: My understanding of Dr. Panescu’s opinion is that he does not contend that the voltage between nodes 51 and 52 is ever sent to the external power source as an input, and instead simply asserts that if “the voltage across leads 51 and 52 exceeds a predetermined amount,” then the current through R9 increases, which in turn “causes the power supplied by the external power source to decrease.” (Ex. 1012 at ¶16.) This does not represent a separate input, however, because the input derived from the current flowing through the current sampling resistor R9 (i.e. the load modulation frequency of telemetry circuit 12, the components of which “form a free-running multivibrator”) is what Dr. Panescu also identifies as satisfying the first input, “a value associated with said current passing through said internal battery.” (Ex. 1012 at ¶14 (“when the current through the internal battery . . . increases above a predetermined target value, the current regulator turns on, increasing the current through current sampling resistor R9.”) operating conditions may influence the value” of the amount of current flowing through current sampling resistor R9, and the current through R9 is the “only value that is communicated to the external power source,” corresponding to a single input that “cannot satisfy both of the two inputs required by claims 3, 6, 9, 12, 15, and 18 of the ’148 patent.” Id. ¶ 6. Dr. Mihran further states as follows: I understand Dr. Panescu’s opinion to be that, because Schulman discloses that the current through R9 is used by the external charger to automatically vary its output, any “value” that influences the amount of current through resistor R9 is a “separate respective input[] used by the external power source as a basis for automatically varying its power output.” ([Ex. 1012 ¶14].) In other words, Dr. Panescu simply identifies a voltage across two points in the circuit that he claims affects the current through R9 and contends that that voltage satisfies one of the two required separate inputs based on its alleged indirect impact on the output of the external charger. This strained interpretation of the claims renders superfluous the two separate inputs to the external power source required by claims 3, 6, 9, 12, 15, and 18 of the ’148 patent: (1) “a value associated with said current passing through said internal battery” and (2) “a signal proportional to said current passing through said internal battery” (claims 3, 9, and 15) and “measured voltage associated with said current passing through said internal battery” (claims 6, 12, and 18). In any circuit, there may be multiple components (e.g., transistors, switches, diodes, etc.) that can influence the current through a particular resistor. For example, in Schulman the current drawn by the stimulation portion of the implant circuit will influence the amount of current through R9. Dr. Panescu’s interpretation that a voltage or current at these components represents a “separate input” in Schulman is incorrect, because the sole input that is telemetered back to the external charger is the input derived from the amount of current flowing through R9.” slip op. at 35

  Patent outcomesUS 8,738,148 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,738,148
• Axonics, Inc. v. Medtronic, Inc.No claims unpatentable
  PTAB · May 30, 2024 · IPR2020-00680 · APJ James A Tartal · IPR · Remand

  On remand, the Board determined that claims 1, 5, and 9 were not shown unpatentable as anticipated by Schulman, Fischell, or Baumann.

  RulingsRemand decision

  • BurdenNot shown unpatentable

    “consider for purposes of the FWD. We also consider Patent Owner’s Amended Sur-reply, as supported by the Rebuttal Declaration of Dr. Mihran, and the arguments and evidence advanced in the post remand briefs of the Parties. Based on the totality of the record in this case, we determine, for the reasons that follow, that Petitioner does not show by a preponderance of the evidence that any of claims 1, 5, or 9 is anticipated by Schulman, Fischell, or Baumann. A. Principles of Law A claim is anticipated if a single prior art reference either expressly or inherently discloses every limitation of the claim. Orion IP, LLC v. Hyundai Motor Am., 605 F.3d 967, 975 (Fed. Cir. 2010). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (Fed. Cir. 2014) (citing Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003)).” slip op. at 17

  • Skill levelSkill level petitioner adoptedOther

    “B. Level of Ordinary Skill in the Art The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. (citation omitted). of the invention “would have had at least a bachelor’s degree in electrical engineering or an equivalent as well as at least five years of experience in the industry working with implantable medical devices such as cardiac pacemakers or defibrillators.” Pet. 7. Patent Owner argues that a person of ordinary skill “would have had at least a bachelor’s degree in a relevant field (e.g., electrical, mechanical, or biomedical engineering) with at least two years of experience with the design of components (e.g., circuitry) for implantable medical devices and associated external devices (e.g., a charging unit),” and that “[m]ore education can substitute for practical experience and vice versa.” PO Resp. 5 (citing Ex. 2002 ¶¶ 21, 22). Our analysis here, as in the FWD, does not turn on which of the Parties’ competing definitions of ordinary skill is applied. See FWD 16. Moreover, the appropriate level of ordinary skill is not in dispute on remand. Consistent with the FWD and the Decision on Institution, we apply the level of ordinary skill in the art proposed by Petitioner. See Inst. Dec. 11–12 (stating that “the ’758 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner” (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001))); FWD 16.” slip op. at 17

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedOther

    “By contrast, in his Rebuttal Declaration, Dr. Mihran disputes Dr. Panescu’s new description of the operation of Schulman, noting that the current through R9 is not increased as a result of the current regulator R8/Q7 turning on, but that “[i]nstead, it is the increase in current through R9 in excess of the desired 40 mA operating current that causes the current regulator R8/Q7 to turn on, which acts to shunt this excess current through Q7, thereby diverting it away from the battery to maintain the desired operating condition during charging.” Ex. 2010 ¶ 6 n.2 (citing Ex. 1005, 5:2–7, 5:15–38, 9:57–68). We credit the testimony of Dr. Mihran, as supported by the cited portions of Schulman, over the unsupported testimony of Dr. Panescu in regard to how Schulman operates to measure current at R9. See id. However, whether Schulman discloses automatically varying the output power of the external power source based on a measured current, as required by the challenged claims, is not in dispute. Dr. Mihran,” slip op. at 32

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We find that because it is largely unsupported and conclusory, the opinion of Dr. Panescu in his Supplemental Declaration that “Schulman teaches automatically varying the output power of the external power source based on a value, where the value is the voltage across the output leads 51 In his original declaration, Dr. Panescu made clear that, according to Schulman, the output of the external power source was lowered if the charging current, as measured at sampling resistor R9, “exceeds a maximum capacity,” not because of the voltage across output leads 51 and 52. See Ex. 1003 ¶ 127 (quoting Ex. 1005, 7:25–29). Petitioner does not allege that any measurement of voltage across output leads 51 and 52 in Schulman is conveyed to an external power source to automatically vary its power output. Instead, Petitioner’s argument is premised on the notion that if the voltage across leads 51 and 52 exceeds a predetermined amount, then it will affect the current sampled by resistor R9. We also find persuasive Dr. Mihran’s testimony that Petitioner’s strained interpretation renders the Value Limitation superfluous to the Measured Current Limitation because the voltage across leads 51 and 52 was not shown by Petitioner to be a separate input to the external power source. See Ex. 2010 ¶ 7 (explaining that “there may be multiple components (e.g., transistors, switches, diodes, etc.) that can influence the current through a particular resistor,” and that influencing the current measured at R9 does not constitute a separate input to the external charger from the measured current at R9). To be clear, we need not resolve whether the challenged claims require each separate input be separately conveyed to the external power source. Here, the burden to show anticipation is on Petitioner and Petitioner offers no persuasive evidence or explanation to establish by a preponderance of the evidence that a person of ordinary skill in the art would have understood the voltage across output leads 51 and 52 corresponds to “a value” based upon which the external power source “automatically” varies its power output, as required by the challenged claims. Nor does skill in the art would have understood the voltage across leads 51 and 52 in Schulman to be a separate input from the measured current at R9 when, at most, Petitioner alleges the voltage across leads 51 and 52 may, in certain circumstances, have some effect on the measured current at R9, itself. Thus, Petitioner does not show by a preponderance of the evidence that Schulman discloses to a person of ordinary skill in the art two separate inputs to the external power source, as Petitioner conceded is required by the Value Limitation and the Measured Current Limitation.” slip op. at 35

  Patent outcomesUS 8,457,758 not shown unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 8,457,758
• Unified Patents, LLC v. Rosen Technologies LLCAll claims unpatentable
  PTAB · Feb 28, 2024 · IPR2022-01402 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1, 3, 4, 14, and 16–20 are unpatentable as obvious over Geiwitz; claims 19 and 20 are also unpatentable over Geiwitz and Cardio Manual.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF SKILL IN THE ART Petitioner asserts skilled artisans “would have had at least a Bachelor’s degree in Electrical Engineering or a similar degree and at least two years of professional experience,” and would have been “familiar with the circuitry and operation of programmable, touchscreen thermostats having liquid crystal displays.” Pet. 7 (citing Ex. 1003 ¶ 48). Patent Owner does not dispute that definition, and offers that skilled artisans “would have had a bachelor’s degree in electrical engineering or a related field, and at least two years of experience in working with HVAC systems or thermostat systems.” PO Resp. 13–14. We perceive no distinction between how the two definitions might affect our analysis and the parties do not identify any. We adopt Petitioner’s definition, as it is supported by expert testimony.” slip op. at 7

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

    “the touch screen display with graphics (alphanumeric characters and/or icons) on or closely associated with the first virtual button.” Id. at 3:53–56. By using a disjunctive, “or,” the Specification establishes that the legend (e.g., alphanumeric characters) need not be located on the button to which it corresponds. The summary expressly describes that a legend may instead be “closely associated with” the button to which it corresponds. Patent Owner contends that the passage addresses only an “image,” not a “legend.” PO Resp. 8–9. We agree with Petitioner, however, that the “image” in the summary’s passage refers to an image representative of the button, which is separate from “graphics (alphanumeric characters and/or icons)” that are displayed “with” the image. See Pet. Reply 8–9. Thus, the relevant question about the summary’s passage is whether “graphics” corresponds to the claimed “legend.” The specification as a whole shows that a legend refers to graphics (characters or icons) displayed with a virtual button. E.g., Ex. 1001, 8:22–26 (indicating that Figure 8 illustrates “a change of the legend associated with virtual button 116”), 9:29–30 (referring to “legends which may appear with virtual button 116”), 10:37–42 (indicating that Figure 12 illustrates a change in the “legend appearing at button 154”), 10:48–58 (same, as to button 158), 11:8–11 (indicating Figure 13 illustrates changes to button 172’s “numerical legend”). Each time the specification refers to a legend, it does so in connection with alphanumeric characters displayed with the button. Thus, we read the summary’s description of “graphics” as referring to a legend, notwithstanding that it does not expressly do so. With that understanding, the specification directly contradicts Patent Owner’s proposed construction, by disclosing that a legend displayed with a button’s image may be either on or closely associated with the button. Accordingly, we decline to adopt Patent Owner’s asserted construction. The specification’s description somewhat narrows the claim language, discussed above, which does not restrict the legend’s position. Thus, we construe a “legend” as content displayed on or closely associated with a virtual button.” slip op. at 9

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for petitioner

    “2001, filing date of its provision application (US 60/339,511 (Ex. 1005)). Pet. 14. To rely on Geiwitz’s Provisional-application date, Petitioner must show that the Provisional supports at least one of Geiwitz’s claims. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–81 (Fed. Cir. 2015). Petitioner provides a chart indicating where Geiwitz’s Provisional application supports Geiwitz’s claim 1. Pet. 14–15. Patent Owner does not contest Petitioner’s showing, and has therefore forfeited that argument. See In re NuVasive, Inc., 842 F.3d 1376, 1380–81 (Fed. Cir. 2016). We determine that Petitioner has made an adequate showing. Geiwitz’s Provisional describes its system components, including a “System Back Plane” including a “Platform,” which is depicted in Figure 383. Ex. 1005, 7 (“Platform (figure 383)”), 945 (Fig. 383). The Platform includes “Processor module header ports,” which are depicted in Figures 426–431. Id. at 7 (“Processor module header ports (figure 426 – 431)”). The system components further include “System Expansion Modules,” which include a “Processor Module,” depicted in Figures 450– 455. Id. at 9 (“Processor Module (figure 450 – 455)”). The Provisional describes that the Processor Module plugs into the platform and provides “processing power.” Id. at 170. The Provisional’s Figure 383, depicting the “Platform,” indicates a section labeled “SMART CARD.” Id. at 945 (Fig. 383). Figure 428, depicting part of the Processor module header ports, is labeled “Smart Card Connector.” Id. at 1001 (Fig. 428). And Figure 450, depicting the “Processor Module,” shows a circuit board labeled “Smart Systems Technologies.” Id. at 1031 (Fig. 450). In sum, those disclosures in Geiwitz’s Provisional support a claim to a smart card comprising a programmable microprocessor. Thus, Geiwitz is entitled to an effective date as of its Provisional application.” slip op. at 10

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

    “As discussed above, we do not construe “legend” to require the legend appear on a button; instead, the claims encompass a legend that is “closely associated with” a button, as described in the specification. See supra at 7– 10, § II.B. Geiwitz’s disclosures satisfy the claim language as construed, because the asserted legend is indicative of a first control function of the thermostat and appears closely associated with the Mode button. Patent Owner does not otherwise contest Petitioner’s contentions for claim 1. We have reviewed Petitioner’s contentions and conclude they demonstrate the subject matter of claim 1 is obvious over Geiwitz. In that conclusion, we adopt Petitioner’s reasoning as our own. Pet. 13–60. Patent Owner raises the same argument for claims 3, 16, and 19 (PO Resp. 19–21), and we reach the same conclusion as to those claims for the same reasons discussed for claim 1. See Pet. 61–62, 66–76. For the dependent claims, Patent Owner relies on its asserted deficiencies regarding Petitioner’s showing discussed above. PO Resp. 21. As discussed, we do not agree with those asserted deficiencies. We have reviewed Petitioner’s contentions and conclude they demonstrate the subject matter of claims 3, 4, 14, 17, 18, and 20 would have been obvious. In that conclusion, we adopt Petitioner’s reasoning as our own. Pet. 61–66, 71, 76.” slip op. at 13

  Patent outcomesUS 7,156,318 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,156,318
• Unified Patents, LLC v. Ak Meeting IP LLCAll claims unpatentable
  PTAB · Jan 5, 2024 · IPR2022-01142 · APJ Ryan H Flax · IPR · Final written decision

  Claims 1–14 are unpatentable: claims 1 and 8 are anticipated by and obvious over Roy; claims 1–14 are obvious over Simonoff and Naef; and the listed claims are anticipated by and obvious over Chang.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art (“POSA”) would have been a person having, as of the priority date of the ’124 Patent: (1) at least an undergraduate degree in computer science or closely-related field, or similar advanced post-graduate education; and (2) 1–2 years of experience related to multi-user collaboration software. Pet. 7 (citing Ex. 1003 ¶¶ 28–30).10 Patent Owner does not address the level of ordinary skill in the art in its Response, but Patent Owner previously stated in its Preliminary Response that it “adopt[s] Petitioner’s proposed level of ordinary skill in the art because it comports with the technology and claims of the ’124 Patent as well as the asserted prior art.” See generally Resp.; Prelim. Resp. 5. We accept Petitioner’s proposed and unopposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’124 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[]” evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 18

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We conclude, in agreement with Petitioner, that Mr. Landers is not evidenced to have ordinary skill in the art, as such has been defined above in Section II.B of this Decision, because he appears to have neither the requisite education (he is not evidenced to have a degree in computer science or a closely related field) nor experience (he is not evidenced to have experience in multi-user collaboration software). See Ex. 2002 ¶¶ 5–7, Attachment A; see also Hr’g Tr. 23:5–25:2 (Patent Owner, given the opportunity to identify any evidence of record supporting that Mr. Landers has ordinary skill in the art, identified none). There is no argument by Patent Owner to the contrary. For the reasons above, we give no weight to the testimony presented in the Declarations of Mr. Sunatori and Mr. Landers as to the claim construction, anticipation, and obviousness issues discussed below. D.” slip op. at 20

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

    “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner states, “no construction is necessary, as the claims are obvious under any reasonable construction.” Pet. 7. This statement aligns with the testimony of Dr. Terveen. Ex. 1003 ¶ 24 (“Counsel has not instructed me to apply a construction of the claims notwithstanding their ordinary meaning. Therefore, I have applied the meaning of the claim terms of the Challenged Claims that is generally consistent with their ordinary and customary meaning, as a person having ordinary skill in the art would have understood them in the context of the ’124 Patent at the time of the alleged invention.”). Moreover, Petitioner again stated at the final hearing that, “there are no claim construction disputes, at least none explicitly.” Hr’g Tr. 11:21–24. Similarly, Patent Owner states that “[n]o formal claim constructions are necessary because ‘claim terms need only be construed to the extent necessary to resolve the controversy.’” Resp. 4 (quoting Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Therefore, we also do not expressly construe any claim language. slip op. at 21

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

    “Based on the evidence of record, we find that the annotated Roy Figure 4B, above, shows how Roy teaches: (1) user input at a client computer, the user input representing content to be shared, such as game plays, and generating messages defining that content, (2) the content being sent to a server, (3) and the server then outputting related messages to all the networked client computers (including the originating computer) so that (4) shared content (e.g., the game play) is displayed over common content (e.g., a game field) at all networked computers (including the originating computer). The above cited portions of Roy, as explained by Dr. Terveen, disclose a central server architecture for the networking of, and sharing common and user-generated content amongst, client computers, and the inherent latency involved in transmission of messages over such an architecture. See Pet. 10–23; Ex. 1001, 1:60–67, 47:44–48, 49:2–7; Ex. 1003 ¶¶ 47–60; Ex. 1005, Abstract, 1:26–48, 1:53–56, 2:1–6, 3:16–56, 3:66–4:1, 4:6–29, 4:44–54, 5:17–6:14, 7:50–52, Figs. 1, 4B, 5A, 5B; Ex. 1020; Ex. 1021. Moreover, to the extent any claim element is not expressly disclosed in Roy, Petitioner has shown that it would have been obvious because one of ordinary skill in the art would understand that displaying shared content over common content on networked computers, where users are collaborating or playing a game, where changes are made to the common view efficiently so that only changes are messaged as rendering commands rather than re-rendering the entire “game world” would provide the benefit of preserving bandwidth consumption. Pet. 20–21; Ex. 1003 ¶ 58.” slip op. at 47

  Patent outcomesUS 10,963,124 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,963,124
• Apple Inc. v. Alivecor, Inc.Some claims unpatentable
  PTAB · Oct 26, 2023 · IPR2022-00872 · APJ Jeffrey N Fredman · IPR · Final written decision

  Claims 1, 2, 4–8, 10, 12, and 13 are unpatentable as obvious; claims 3, 9, and 11 were not shown unpatentable because the combinations lacked a persuasive reason to record spoken messages simultaneously with ECG …

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner

    “PO Resp. 9. Patent Owner asserts “a POSA would have understood the plain and ordinary meaning of the term ‘acoustic signal’ [is] a signal that is transmitted as a sound wave through the ambient environment.” Id.; Ex. 2003 ¶ 25. Patent Owner therefore asserts a POSA would have understood the claimed “frequency modulated ECG acoustic signal” is a signal that is transmitted as a sound wave through the ambient environment, [and excludes] signals transmitted by electronic or wireless radio means, because claim 1 requires the acoustic signal to be “received from a built-in microphone of the smartphone.” PO Resp. 9; Ex. 2003 ¶ 26. Petitioner responds by asserting that “a POSITA would have understood that acoustic transmission is a form of wireless transmission.” Pet. Reply 24; Ex. 1021, 46:7–47:5 (citing the Jafari Deposition where Dr. Jafari stated “in the event of an acoustic signal, there is no need to connect a wire”) Having considered the entire record, we do not find there is a substantive dispute over the term “acoustic signal” as both Patent Owner and Petitioner agree that acoustic signals include wireless signals transmitted as a sound wave through the environment. We will apply this understanding in our further analysis.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art (“POSITA”) would have had either (1) at least a bachelor of science in electrical engineering, mechanical engineering, or biomedical engineering, or a related discipline, with at least two years of relevant multidisciplinary work experience designing wearable devices and/or sensors for measuring physiological signals or parameters of mammals, or (2) a medical degree and at least five years of relevant work experience designing wearable devices and/or sensors for measuring physiological signals or parameters of mammals.” slip op. at 5

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner

    “interference of sound waves was a known phenomenon at the time of the invention does not demonstrate that the ordinary artisan would have had reason to select particular carrier frequencies for the ECG acoustic signals that avoided human voice frequencies in the absence of any disclosure that such frequencies were known to interfere. Rather, we agree with Patent Owner that this is hindsight reasoning because until the ’882 patent pointed out this concern in the context of claim 1, there is no indication the prior art recognized that human voice interference was an issue.” slip op. at 26

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMixed

    “that Vyshedskiy’s disclosure of a list of preferred carrier frequencies represents a permissible “obvious to try” situation. In KSR, the Supreme Court stated that a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103. KSR, 550 U.S. at 421. And simply because the prior art “discloses a multitude of effective combinations does not render any particular formulation less obvious.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). The instant facts represent a situation where, at the time of invention in 2010, it would have been obvious to try the known carrier frequencies of Vyshedskiy for modulation of the acoustic ECG signal of Albert in the claimed frequency range of 6 kHz to 20 kHz because these carrier frequencies would have been obvious alternatives to try to address Vyshedskiy’s disclosed design need for simultaneous measurement of heart sound auscultation and ECG heart cycle. See Pet. 17 (citing Ex. 1005 ¶¶ 13– 15).” slip op. at 27

  Patent outcomesUS 8,509,882 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,509,882
• Edwards Lifesciences Corporation / Edwards Lifesciences LLC v. Colibri Heart Valve LLCSome claims unpatentable
  PTAB · Oct 11, 2023 · IPR2022-00878 · APJ Lynne H Browne · IPR · Final written decision

  Claims 55–72, 78–80, 83, and 84 are unpatentable over the instituted grounds; Petitioner did not show claim 85 unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in the art would have been a mechanical engineer, medical device engineer, or an interventional cardiologist with a working knowledge of stent-based prostheses for use in a patient’s heart or vasculature to replace and/or repair a diseased valve, intravascular delivery systems for the delivery of such prostheses, and methods associated with the delivery and implantation of such prostheses in a patient. Pet. 31 (citing Ex. 1026 ¶ 27). Patent Owner “does not dispute Petitioner[’s] definition of a person of ordinary skill in the art.” PO Resp. 2. 8 The parties have not directed our attention to any objective evidence of obviousness or non-obviousness. reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “Terms Defined by the ’400 Patent 1. Both parties discuss claim terms (“substantially conical,” “folds,” “biocompatible membrane [that] does not comprise a treated tissue,” “cusp,” “cuff wall,” “frame,” “mobile leaflet layer” or “mobile leaflet,” “proximal,” “non-transverse”, and “plurality of . . . leaflets”) which are defined by the ’400 patent’s explicit definition of these terms or its explicit definition of a related term (e.g., definition of “folding” also defines claim term “folds”). Pet. 26–28; PO Resp. 26–28. Both parties assert that the definitions in the ’400 patent define these claim terms. Id. We agree. For the claim terms defined by the ’400 patent, Patent Owner has acted as its own lexicographer by setting out the definitions of these claims terms in the specification of the ’400 patent. Thorner v. Sony Comput. Ent. Am., LLC, 669 F.3d 1362, 1365 10 We note that throughout its claim construction arguments, Patent Owner refers to the claim construction of the word “attach;” however, the claim term at issue is “attached.” We understand Patent Owner to be referring to this claim term and treat Patent Owner’s arguments as if they refer to the claim term “attached.” discussed in Sections D–F below, we construe these terms in accordance with their definitions set forth in the ’400 patent.” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “f) Conclusion Re Claim Construction For “Attached” We begin our analysis by reiterating that under the Phillips standard, claim terms are generally given their ordinary and customary meaning as would be understood by one with ordinary skill in the art in the context of the specification, the prosecution history, other claims, and even extrinsic evidence including expert and inventor testimony, dictionaries, and learned treatises, although extrinsic evidence is less significant than the intrinsic record. Phillips, 415 F.3d at 1312–17. When a patent owner wishes to employ a definition that is different from the ordinary and customary meaning of a claim term, it may do so by acting as its own lexicographer setting out the definition of that claim term in the specification of its patent. Thorner, 669 F.3d at 1365. As discussed in Section II.C.1 above, Patent Owner has acted as its own lexicographer and defined numerous claim terms in the ’400 patent. See Ex. 1001, 11:41–13:18. Thus, it is readily apparent that when Patent Owner intended to employ a definition of a claim term that differed from the the ordinary and customary meaning of that claim term, Patent Owner provided such a definition. A person of ordinary skill in the art would infer accordance with their ordinary and customary meaning. Having considered the full record before us including the evidence, testimony, and argument in support of the parties’ positions, we agree with Petitioner that the claim term “attached” should be construed in accordance with its ordinary and customary meaning, which the parties agree is “fastened, secured, or joined, directly or indirectly.”12 Pet. Reply 1; PO Resp. 15. We do not find that the context of the ’400 patent further narrows this term such that a person of ordinary skill in the art would have understood “attached” to require attachment “at the same location.” Accordingly, we apply the ordinary and customary meaning of the claim term “attached” in considering the challenges set forth in the Petition discussed below.” slip op. at 22

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

    “testimony, and arguments in support of both parties’ positions, we agree with Petitioner that Melsheimer’s cusps are substantially conical as required by independent claim 55. The definition of “substantially conical” set forth in the ’400 patent does not require that every part of the structure in question resemble a cone. Ex. 1001, 12:47–54. Rather, it requires a structure that “resembles a cone or portion thereof at some point in the practical use of the structure” and a “cross-sectional perimeter or area of the structure in the operationally closed position that decreases moving from the level of the leaflet apposition to the proximal end of the valve.” Id. (emphasis added). Melsheimer discloses receptacles 18 that are cone-shaped. Ex. 1003, Fig. 4A. Although, Melsheimer’s leaflet 16 and receptacle 18 pairs are not entirely cone-shaped, they do still resemble a cone. Further, Melsheimer’s receptacles 18 have the required cross-sectional perimeter. See id. Accordingly, we determine that these pairs (i.e., Melsheimer’s cusps) are “substantially conical” in accordance with the definition set forth in the ’400 patent. Conclusion For Grounds 1–3 Having considered the full record before us including the evidence, testimony, and arguments of both parties, we determine that Petitioner shows by a preponderance of the evidence that claims 55, 56, 58, 59–61, 63, 65, and 66 are anticipated by Melsheimer (Ground 1). We further determine that claims 57, 64, 78, and 79 are unpatentable over Melsheimer alone or in combination with Eberhardt (Ground 2) and that claims 62, 83, and 84 are unpatentable over Melsheimer alone or in combination with Pavcnik (Ground 3).” slip op. at 31

  Patent outcomesUS 9,737,400 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,737,400
• Recor Medical, Inc. / Otsuka Medical Devices Co., Ltd. v. Medtronic Ireland Manufacturing Unlimited Co.No claims unpatentable
  PTAB · Jul 14, 2023 · IPR2022-00431 · APJ Eric C Jeschke · IPR · Final written decision

  Claims 1–4 and 8–12 were not shown unpatentable because Petitioner did not prove the asserted anticipation or obviousness grounds by a preponderance of the evidence.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends, with accompanying declaration testimony, that [t]he level of ordinary skill encompassed a team of people, having a person with a Ph.D. or M.D. and five years of clinical and/or research experience treating diseases of the kidneys and circulatory systems and a person with at least a Bachelor’s degree in biomedical engineering or a related field and at least five years of experience designing catheter-based ablation systems. Pet. 40 (emphasis omitted) (citing Daft Pet. Decl. ¶¶ 64–68). Patent Owner responds that, “[f]or purposes of this proceeding, [Patent Owner] does not object to the definition of a person of ordinary skill in the art (‘POSITA’) proffered by Petitioner[] and adopted by the Board at institution as the result remains the same regardless of the definition—the Challenged Claims are valid.” PO Resp. 16; see also Dec. Inst. 15–17 (adopting, for purposes of institution, Petitioner’s proposed definition of the person of ordinary skill in the art). In addition, however, Patent Owner proposes a different level of ordinary skill in the art “should the Board believe that the difference in definition impacts the outcome” of this proceeding.8 PO Resp. 16. Both Petitioner and Patent Owner discuss how” slip op. at 9

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

    “to transmit ultrasound energy waves to target renal neural fibers” (claim 1, element 1d) and “configured to [perform certain functions] to the target neural fibers” (claims 3, 4, 8, and 9). See Pet. 23–25; PO Resp. 17–22; Pet. Reply 10; PO Sur-reply 1–2. Petitioner asserts that the phrase “configured to” should be construed as “able to.” Pet. 23; see Pet. 23–24 n.5 (discussing how “able to” has the same meaning as “capable of”). Patent Owner responds that “[t]he Board need not reach the construction of this term as Petitioner[’s] arguments fail under either construction, but to the extent a construction is required, ‘configured to’ should be construed as ‘designed to.’” PO Resp. 18. Based on the complete record, we do not discern a need to construe explicitly this phrase because doing so would not change the result of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating 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 11

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

    “the alleged motivation to use the device of Acker in Levin’s renal neuromodulation method. As noted by Patent Owner, after introducing Webster (by patent number), Levin states that “[s]imilar catheter based apparatus can be used to ablate the renal nerve with an intent to treat [Chronic Renal Failure].” Ex. 1004 ¶ 64 (emphasis added) (cited at PO Resp. 39 (discussing how “Levin explicitly qualif[ies] its statement by referring to ‘similar’ (not identical) catheters”)). But neither Petitioner nor its declarants have established that Acker’s ultrasound catheter is in fact “[s]imilar” to that in Webster in a manner that would support the view that one of ordinary skill in the art would have understood that Acker’s catheter could be used to “ablate the renal nerve with an intent to treat [Chronic Renal Failure]” as disclosed in paragraph 64 of Levin—i.e., to perform Levin’s renal neuromodulation method. See id. Dr. Mendelsohn states that Acker’s use of ultrasound-based ablation falls within the “any thermal means” disclosure in Webster (see Ex. 1052, 3:40–42), but Dr. Mendelsohn does not address why Acker’s ultrasound catheter is “[s]imilar” to the catheter in Webster (even after expressly noting the presence of that statement in Levin). See Mendelsohn Decl. ¶ 71 (“Moreover, Webster teaches transvascular nerve ablation using RF thermal ablation or ‘any thermal means’ and Levin teaches catheters similar to Webster’s can be used for renal denervation. Ultrasound ablation disclosed in Acker is a ‘thermal means’ of ablation.”).” slip op. at 21

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “(2) Objective Indicia of Nonobviousness We next turn to Patent Owner’s objective evidence of nonobviousness. Patent Owner alleges (1) unexpected results and skepticism, (2) copying, (3) praise, and (4) long-felt but unsolved need and failure of others. See PO Resp. 60–68; PO Sur-reply 25–27. Petitioner responds. See Pet. Reply 36–37. We have considered the evidence and argument presented by both parties, but do not address the issues in detail. See Alza Corp. v. Mylan Labs., Inc., 391 F.3d 1365, 1373 n.9 (Fed. Cir. 2004) (“Because [patent challenger] has not made a prima facie case of obviousness, we need not address the parties’ assertions regarding the district court’s discussion of secondary considerations.”).” slip op. at 31

  Patent outcomesUS 8,845,629 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,845,629
• Frameless Hardware Company LLC v. C.R. Laurence Co., Inc.Some claims unpatentable
  PTAB · Jul 5, 2023 · IPR2022-00356 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 1, 5, and 7 are unpatentable as anticipated by Sprague ’905, claim 8 is unpatentable as obvious over Sprague ’905 and Trainor, and claim 4 was not shown unpatentable.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “We decline to dismiss or terminate this proceeding on this basis. Patent Owner has not provided us any controlling authority that prevents a petitioner from advancing one construction in the District Court Litigation as an infringement defendant and a different construction as a Petitioner before the Board. Further, we note that 37 C.F.R. § 42.100(b) provides that the Board shall use the same claim construction standard as the courts, not that the Board shall use the same construction. The Board does, however, “consider[]” prior claim constructions by a district court. See 37 C.F.R. § 42.100(b). In any event, the related District Court Litigation here has been stayed; there is no court construction before us, only the parties’ proposals. Sur-sur-sur-reply 5; see Tr. 67:22–68:4 (“JUDGE IPPOLITO: And the related district court proceeding, by my recollection, has been stayed without the claim construction hearing; is that correct? MR. FRANKLIN: That’s correct. It was stayed without a claim construction hearing, without a claim construction order, without a tentative claim construction order, and for that matter, without the briefing on claim construction having been completed.”). Thus, to the extent that Patent Owner contends there is danger of inconsistent results, that danger is mitigated by the stay.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in that art “would have had a bachelor’s degree in mechanical engineering or an equivalent field, plus at least two years of experience working in the field of mechanical design and product testing.” Pet. 7 (citing Ex. 1007 ¶¶ 34–36). Patent Owner does not dispute this level of skill. See generally PO Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 16

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

    “We begin with the claim language. Patent Owner’s proposed construction proffers language that is not expressly recited in the claim. In particular, claim 1 does not recite a “spring.” Ex. 1001, 10:34–56. Nor does a “spring” appear in the other limitations of any claims. Thus, the express claim language does not require more than spring action. Our reading of claim 1 is consistent with the ’413 patent’s Specification that describes the operation of a spring action force clamping member, but does not describe a clamping member with a spring that specifically provides the spring force. In other words, while we agree that the spring action clamping member is recited as providing “spring action,” we are, however, not persuaded that this limitation requires a “spring.” As noted in the Specification, Figures 2 and 3 of the ’413 patent teach that an outwardly directed spring force may be created by U-shaped sections 58 of the spring action clamping member. Ex. 1001, 5:44–47. The ’413 patent further discloses that “[t]he degree of outwardly directed spring force may be varied by varying the bend radius of the U-shaped sections 58.” Id. at 5:47–49. As such, the outwardly directed spring action force is disclosed in these sections as being generated by U-shaped sections of the spring action clamping member interconnecting with walls 60 shown in Figure 2. Id. at 5:44–47. The Specification does not disclose a specific type of spring structure, nor does it define the U-shaped sections of the spring action clamping member interconnecting with walls 60 as a “spring.”” slip op. at 21

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

    “(3) Discussion Based on the complete record, we are persuaded by Petitioner that Sprague ’905 teaches these limitations. To start, as discussed in our claim construction above, we have not adopted Patent Owner’s proposed construction that requires a “spring action clamping member” to include a “spring.” See supra Sect. II.E. Rather, we have construed the plain and ordinary meaning of “spring action clamping member” to be that the “spring action clamping member provides a spring action force.” In this way, we are not persuaded that claim 1 requires a “spring” that requires material and physical dimensions according to Patent Owner’s proposed definition. See Ex. 2022 ¶ 27. This is particularly so when the express claim term is broader, requiring only a spring action force, and the Specification of the ’413 patent does not support Patent Owner’s narrower construction. With this construction in mind, we find Sprague ’905 teaches these contested limitations. In particular, Sprague ’905 discloses that the tightening of screw 206 forces clamp member 204 to move in the driven direction of arrow A shown in Figure 12. Ex. 1003, 6:50–51. Sprague ’905 teaches this forced movement brings clamp member 204 into contact with housing 202 at inclined surfaces that cause arms 208, 210 to move toward each other and “provide clamping force.” Id. at 6:51–57. Moreover, Sprague ’905 further discloses that the rail system is “easier to assemble and disassemble” and “facilitates easy field maintenance and replacement.” Id. at 2:39–42, 2:45–46. We find that this disclosure is consistent with the notion that screw 206 can be untightened to release clamp member 204 and move arms 208, 210 away from each other.” slip op. at 39

  Patent outcomesUS 9,074,413 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,074,413
• Unified Patents, LLC v. Rosen Technologies LLCInstituted
  PTAB · Mar 23, 2023 · IPR2022-01402 · APJ Jason W Melvin · IPR · Institution

  The Board instituted IPR on claims 1, 3, 4, 14, and 16–20, finding a reasonable likelihood of prevailing on obviousness over Geiwitz and, for claims 19–20, Geiwitz and Cardio Manual.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “which Patent Owner asserts the ’318 patent, but that litigation does not involve Petitioner. Ex. 2002 (infringement contentions from Rosen Technologies LLC v. Lennox International Inc., Case No. 3:22-cv-00732 (N.D. Tex.)). As Fintiv notes, the Board generally disfavors discretionary denial when litigation did not involve the petitioner, unless “the issues are the same as, or substantially similar to those already or about to be litigated, or other circumstances weigh against redoing the work of another tribunal.” Fintiv, IPR2020-00019, Paper 11, 13–14. We consider the Fintiv factors. Id. at 6.” slip op. at 7

  • PTAB / AIA Trials › Real party in interest / privityNot reached

    “B. REAL PARTY IN INTEREST Patent Owner asserts that Petitioner fails to name Lennox and Ecobee, the litigation parties, as real parties in interest. Prelim. Resp. 26–27. Because no time bar would apply to either allegedly unnamed real party in interest (see Prelim. Reply 1), we decline to address Patent Owner’s assertions at this stage. See SharkNinja Operating, LLC v. iRobot Corp., IPR2020-00734, Paper 11, 18 (Oct. 6, 2020) (precedential).” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. LEVEL OF SKILL IN THE ART Petitioner asserts skilled artisans “would have had at least a Bachelor’s degree in Electrical Engineering or a similar degree and at least two years of professional experience,” and would have been “familiar with the circuitry and operation of programmable, touchscreen thermostats having liquid crystal displays.” Pet. 7 (citing Ex. 1003 ¶ 48). Patent Owner does not dispute that definition, and offers that skilled artisans “would have had a bachelor’s degree in electrical engineering or a related field, and at least two years of experience in working with HVAC systems or thermostat systems.” Prelim. Resp. 5. We perceive no distinction between how the two definitions might affect our analysis. We adopt Petitioner’s definition, as it is supported by expert testimony.” slip op. at 9

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

    “First, the claim language requires that the control program establish on the liquid crystal display both “a representation of a first virtual button” and “a first legend indicative of a first control function of said thermostat.” Ex. 1001, 13:28–39 (claim 1), 15:1–9 (claim 16), 16:18–26 (claim 19). The claims do not require that the legend is part of the button, or any other specific relationship between the legend and button. Thus, the claim language does not support the construction Patent Owner seeks. Second, the Summary of the Invention states that “an image representative of a first virtual button may be shown on the touch screen display with graphics (alphanumeric characters and/or icons) on or closely associated with the first virtual button.” Id. at 3:53–56. By using a disjunctive, “or,” the Specification establishes that the legend (e.g., 4 Although Patent Owner seeks construction of “a first legend indicative of a first control function,” its proposed construction only addresses “legend,” while maintaining the other claim language. Prelim. Resp. 5–9. We address “legend” in the context of the other claim language and therefore need not address the full phrase. alphanumeric characters) need not be located on the button to which it corresponds. Accordingly, we decline to adopt Patent Owner’s asserted construction at this stage. No other aspect of the challenged claims requires construction for purposes of institution. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 7,156,318
• Logan Outdoor Products, LLC, D/B/A Camp Chef v. Lifetime Products, Inc.Institution denied
  PTAB · Mar 22, 2023 · IPR2022-01467 · APJ Robert L Kinder · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim unpatentable under the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

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

    “Based on the record before us, Petitioner has not shown sufficiently how Dahle’s distinct embodiments would have been combined to teach each limitation of claims 1, 10, and 15. First, Petitioner has not established sufficiently that insert 26, which is capable of burning charcoal or other burnable elements, discloses the claimed “wood pellet heat source.” Ex. 1004 ¶¶ 34, 42. Dahle’s insert 26 is designed to hold charcoal or similar burnable elements, and Petitioner does not explain how the insert discloses a wood pellet heat source. Dr. Stevick testifies that “[p]ellet grills are the types of grill that integrate the use of wood smoking in place of gas burners or charcoal to cook food.” Ex. 1003 ¶ 58 (emphasis added). Dr. Stevick explains that pellet grills may utilize a pellet reservoir that feeds pellets to an auger, which then transports them to a pellet burner, also referred to as a fire pot. Id. ¶ 62; see also Ex. 1001, 2:51–53 (“The wood pellet burner may include a cylindrical structure configured to receive wood pellets from the wood pellet reservoir via an auger.”). But none of this explains why Petitioner believes that Dahle’s insert 26 (depicted below in Figure 3) is a wood pellet burner.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner disagrees with the Petitioner’s statements regarding a person of ordinary skill in the art, but does not provide a proposed alternative. See Prelim. Resp. 14. Patent Owner further notes that the disagreement does not have any bearing on its contentions. Id. The level of ordinary skill in the art can be evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The level of ordinary skill proposed by Petitioner appears to be consistent with that of the references, and we apply Petitioner’s proposed level of ordinary skill for purposes of this Decision.” slip op. at 9

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

    “First, Petitioner has not established sufficiently that insert 26, which is capable of burning charcoal or other burnable elements, discloses the claimed “wood pellet heat source.” Ex. 1004 ¶¶ 34, 42. Dahle’s insert 26 is designed to hold charcoal or similar burnable elements, and Petitioner does not explain how the insert discloses a wood pellet heat source. Dr. Stevick testifies that “[p]ellet grills are the types of grill that integrate the use of wood smoking in place of gas burners or charcoal to cook food.” Ex. 1003 ¶ 58 (emphasis added). Dr. Stevick explains that pellet grills may utilize a pellet reservoir that feeds pellets to an auger, which then transports them to a pellet burner, also referred to as a fire pot. Id. ¶ 62; see also Ex. 1001, 2:51–53 (“The wood pellet burner may include a cylindrical structure configured to receive wood pellets from the wood pellet reservoir via an auger.”). But none of this explains why Petitioner believes that Dahle’s insert 26 (depicted below in Figure 3) is a wood pellet burner.” slip op. at 20

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

    “Petitioner first observes that both references are directed to dual-fuel grilling systems that utilize both gas burners and wood pellet burners. Pet. 93. Even presuming this to be true, it does not provide a rational basis for modifying Sauerwein as proposed on its own; it is merely an observation that the references are analogous art. The mere fact that two references may be analogous art, however, is not adequate to demonstrate motivation to combine, even at this stage of the proceeding. See Johns Manville Corp. v. Knauf Insulation, Inc., IPR2018-00827, Paper 9 at 10–11 (PTAB Oct. 16, 2018) (Decision Denying Institution) (informative) (“Demonstrating that a reference is analogous art or relevant to the field of endeavor of the challenged patent is not sufficient to establish that one of ordinary skill would have had reason to combine its teachings with other prior art in the manner set forth in the claim.”). Petitioner next states that Dahle teaches that dual-fuel source grills can be configured for different purposes. Pet. 93–94. Although we generally agree with this statement, it does not explain why a person of ordinary skill in the art would have considered it obvious to add a burner or shorten Sauerwein’s cooking surface and also move its wood pellet heat source directly below the gas heat source.” slip op. at 30

  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,292,531

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.