• Allstate Insurance Company v. Atos, LLCSome claims unpatentable
  PTAB · Jan 24, 2023 · IPR2021-01209 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1–4, 6, and 9–25 are unpatentable; claims 5, 7, and 8 are not shown unpatentable, based on anticipation by Kim and obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art The level of ordinary skill in the art is “a prism or lens” through which” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “C. Claim Construction In inter partes reviews, we interpret claims under the same standard” slip op. at 10

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

    “Accordingly, Petitioner fails to establish that Kim discloses “determining that the individual is a driver of the vehicle based at least in part on acceleration, forces, velocity, the at least one location point, and time.”” slip op. at 46

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

    “nexus and therefore fails to establish that any alleged evidence of objective indicia supports a finding of non-obviousness. Accordingly, we give Patent Owner’s reliance on objective indicia of non-obviousness no weight in our obviousness analysis.” slip op. at 65

  Patent outcomesUS 9,152,609 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,152,609
• Unified Patents, LLC v. Robocast, Inc.Institution denied
  PTAB · Jan 20, 2023 · IPR2022-01125 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable over Henley or Shoham and Richardson.

  RulingsInstitution decision

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

    “establish anticipation under 35 U.S.C. § 102, 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). While the elements must be arranged in the same way as is recited in the claim, “the reference need not satisfy an ipsissimis verbis test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990). Identity of terminology between the anticipatory prior art reference and the claim is not required. Prior art references must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for petitioner

    “used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Certain terms recited in the challenged claims were construed during prior litigation of the ’451 patent, i.e., the parent of the challenged ’932 patent. Ex. 1011 (claim construction order in cases involving Microsoft and Apple); Ex. 2009, 5 (clarification of certain claim constructions on summary judgment). Patent Owner advocates that we adopt such prior constructions in this proceeding, and Petitioner “does not dispute” such constructions. Pet. 10–13; Prelim. Resp. 6–8. We have reviewed the court’s claim-construction order, and adopt its construction of the following terms for purposes of this Decision. First, we construe “node,” which is recited in multiple claims, as “an identifier of a resource that includes an address to the resource and the duration for which the resource’s content is to be presented by default.” See Ex. 1011, 16–17; Pet. 12; Prelim. Resp. 7. Second, we construe “show structure of nodes,” which is recited in challenged independent claims 1 and 22, as well as in challenged dependent claim 4, as “a structure that is arranged for the display of content by specifying one or more paths through a plurality of nodes. The show structure of nodes specifies the duration of any display,” but there is no durational requirement separate from the construction of “node.” See Ex. 1011, 2–13; Pet. 11–12; Prelim. Resp. 7. Third, we construe “interactively variable duration information,” which is recited in challenged independent claim 1, as well as challenged dependent claims 2 and 26, as “a parameter specifying how long a content is to be displayed by default before a subsequent content is displayed, where the viewer of the content can change the parameter.” Ex. 1011, 22–23; Pet. 13; Prelim. Resp. 7.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, or a related subject and two or more years of experience working with computer networks and the accessing and presentation of networked resources to users in the 1996 timeframe.” Pet. 10 (citing Ex. 1012 ¶ 51). Petitioner adds that “[t]his description is approximate, and a higher level of education or specific skill might make up for less experience and vice-versa.” Id. Patent Owner proposes that a person of ordinary skill in the art “would have the equivalent of a four-year degree from an accredited institution (usually denoted as a B.S. degree) in computer science, computer engineering or the equivalent, and experience with, or exposure to, topics in computer networking, multimedia, and web systems. A person of ordinary skill in the art would also have approximately 3-5 years of professional experience with these topics.” Prelim. Resp. 6. In addition, Patent Owner say that “[a]dditional graduate education could substitute for professional experience, while significant experience in the field might substitute for formal education.” Id. (citing Ex. 2005 ¶ 28). Both parties support their proposals with testimony by their respective experts. See Ex. 1012 ¶ 51; Ex. 2005 ¶ 28. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by 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

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “distinction. See Ex. 2005 ¶ 30 (“Henley discloses a ‘video optimized stream server system 10,’ also referred to as ‘media streamer,’ for use by broadcasters to deliver content to end users, or viewers.”). In particular, Dr. Almeroth observes that, in Figure 1 of Henley, reproduced above, system controller 64 is illustrated graphically as connected to multiple user controls 65, but is shown connected only to a single display 66. Id. ¶ 31. This structure, in combination with Henley’s description of the drawing, leads Dr. Almeroth to conclude that user control 65 “corresponds to a ‘set top box[]’” for an end user, and that system controller 64 corresponds to a separate “‘user interface’ for the operator.” Id. Specifically, Dr. Almeroth points to Henley’s description of system controller 64 as “respond[ing] to inputs from user control set top boxes 65 to cause commands to be generated that enable media streamer 10 to access a requested video presentation.” Id.; Ex. 1013, 8:30–32 (emphasis added). Dr. Almeroth also notes Henley’s explanation that “[s]ystem controller 64 is further provided with a user interface and display facility 66 which enables a user to input commands, such as by hard or soft buttons, and other data to enable an identification of video presentations, the scheduling of video presentations, and control over the playing of a video presentation.” Ex. 2005 ¶ 31; Ex. 1013, 8:33–38. These disclosures by Henley support Dr. Almeroth’s conclusion that “[t]his ‘user interface and display facility 66’ is for an operator—not an end user.” See Ex. 2005 ¶ 31. Dr. Almeroth provides additional reasoning to support this conclusion. For example, Henley explains that “[s]ystem controller 64 responds to inputs from user control set top boxes 65 to cause commands to be generated that enable media streamer 10 to access a requested video presentation.” Ex. 1013, 8:30–32. In light of this, because an end user would interact with the set-top box shown as user control 65, Dr. Almeroth reasons that “it would make no sense” for display 66 to be for the end user. Ex. 2005 ¶ 32. We agree with this reasoning. In addition, Dr. Almeroth observes that Henley describes two types of interfaces for media streamer 10, a command line interface and a graphical user interface. Id. ¶ 33 (citing Ex. 1013, 18:47–50). Because the command line interface can be used for “batch” functionality, Dr. Almeroth reasons, and we agree, that the command line interface is for broadcast operators, rather than for end users. Id. With respect to the graphical user interface shown in Figure 8, reproduced above, Dr. Almeroth further reasons that a person of skill in the art would understand that it relates to operator controls, rather than end-user controls, because Henley specifically describes it as showing keys “used to operate the media streamer.” Id. ¶ 34; Ex. 1013, 4:5– 6. In other words, according to Dr. Almeroth, “[t]he graphical user interface corresponds to the command line interface.” Ex. 2005 ¶ 34. Dr. Almeroth’s reasoning is compelling. Notably, Figure 8 shows “Batch” button 130 and “Import/Export” button 132 to “move video data into and out of the media streamer.” See Ex. 1013, 19:20–22, 19:30–31. As Dr. Almeroth testifies, these are not functions that a person of ordinary skill in the art would understand to be available for end users, but are appropriate for broadcast operators: “None of these commands are consistent with those that would be available to an end user of, e.g., a set top box or pay-per-view system.” Ex. 2005 ¶ 35. In light of this compelling testimony, we agree with Patent Owner and find that “Henley . . . does not describe . . . the end user’s interface or controls.” See Prelim. Resp. 22.” slip op. at 24

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,965,932
• Unified Patents, LLC v. Ak Meeting IP LLCInstituted
  PTAB · Jan 9, 2023 · IPR2022-01142 · APJ Ryan H Flax · IPR · Institution

  Instituted IPR of claims 1–14 on all asserted grounds: anticipation by or obviousness over Roy or Chang, and obviousness over Simonoff and Naef.

  RulingsInstitution decision

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

    “institute trial in an inter partes review. We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314. After reviewing the parties’ submissions, we conclude Petitioner demonstrates a reasonable likelihood it would prevail in showing that claims of the ’124 patent are unpatentable under the presented grounds. Therefore, we institute inter partes review of all challenged claims (1–14) under the grounds raised in the Petition, pursuant to 35 U.S.C. § 314. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 7 (citing Ex. 1003 ¶¶ 28–30).9 Patent Owner states 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.” Prelim. Resp. 5. Patent Owner adds that “[t]he expert witnesses of the parties are persons of (at least) ordinary skill in the art of the ’124 Patent and its claims.” Id. We accept Petitioner’s proposed 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)). B.” slip op. at 17

  • Expert testimonyPetitioner expert creditedOther

    “In re Merck for this point). And, further, when considering obviousness, the prior art must be considered for all of its teachings, including unpreferred embodiments. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). With this precedent in mind, we restate that Simonoff’s disclosure appears to fully include Naef’s disclosure. Ex. 1006, 3:24–29. Further, both references apparently identify the existence and general functionality of central-server systems for remote computer collaboration where the server is in charge of updating all networked computers’ displays, even if Naef’s disclosed invention is not such a system, but instead puts a client computer in control. See generally Ex. 1006; Ex. 1007. Finally, Petitioner’s witness, Dr. Terveen, testifies that the person of ordinary skill in the art would have had good reason to “improve Simonoff’s similar collaboration system” by having its server return update/annotation messages back to the source client along with the other clients during its “multi-casting,” as suggested by Naef, because this would “avoid[] conflicts between user inputs and [would] allow[] the source client to see the edits as the other clients would see them. Ex. 1003 ¶73 (citing Ex. 1015, 12:56–67; Ex. 1008, 45; Ex. 1006, 24:22–27). At this stage of the proceedings, we credit Dr. Terveen’s testimony and find Petitioner’s position reasonable. We are not persuaded by Patent Owner’s arguments or evidence at this stage (we are not entirely sure what qualifies Mr. Sunatori’s as a reliable witness at this point) so as to dissuade us from instituting trial on this ground.” slip op. at 52

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

    “Owner’s positions on claim construction, both identifying that claim construction is unnecessary and then proposing the above-indicated claim construction. Prelim. Reply 1. Petitioner argues that neither the disputed claim language itself nor the Specification supports Patent Owner’s proposed claim construction because the claims simply state “that the output message includes information defining the content to be shared, not the input message itself or a copy of it.” Id. Petitioner cites two portions of the ’124 patent’s written description that contradict Patent Owner’s narrow definition of the claim language––the first indicating that input messages and output messages may be in different formats and have different data and that the output messages can be generated once the input messages are read (Ex. 1001, 14:27–33), and the second indicating that the output messages could combine multiple input messages, and that output messages represent input messages that themselves represent computer input such as a mouse drag (id.at 33:1–9). We agree with Petitioner that the record does not support narrowing the meaning of the disputed claim language as argued by Patent Owner and, based on the present record, we do not expressly construe this claim language.” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,963,124
• Allstate Insurance Company v. Atos, LLCSome claims unpatentable
  PTAB · Jan 9, 2023 · IPR2021-01118 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1–5, 7, 8, 10–16, and 18 are unpatentable; claims 6, 9, and 17 were not shown unpatentable, because the asserted prior art did not establish all limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art The level of skill in the art is “a prism or lens” through which we view” slip op. at 9

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

    “2. Discussion Petitioner argues that Kim discloses every limitation of claim 1, and” slip op. at 23

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

    “2. Discussion We begin our analysis by addressing Patent Owner’s asserted objective indicia of non-obviousness, and then turn to the merits of Petitioner’s specific obviousness challenges before us.” slip op. at 52

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

    “the combination of Kim and Baker discloses “comparing the at least one current geographic location to the first geographic location; setting the location of the individual to the individual is in an outside of the vehicle location, when a distance between the at least one current and the first geographic locations exceeds a predetermined threshold.” Accordingly, we determine that Petitioner has not established by a preponderance of the evidence that claim 6 would have been obvious based on Kim and Baker.” slip op. at 90

  Patent outcomesUS 8,527,140 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,527,140
• Edwards Lifesciences Corporation / Edwards Lifesciences LLC v. Cardiovalve Ltd.No claims unpatentable
  PTAB · Dec 6, 2022 · IPR2021-01051 · APJ John G New · IPR · Final written decision

  The Board granted the non-contingent motion to amend, canceling claims 1–10 and replacing them with claims 11–20, which Petitioner failed to prove unpatentable over Goldfarb ’267.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “We conclude that Petitioner’s arguments are insufficient to meet its burden of showing, by a preponderance of the evidence, that Goldfarb ’267 anticipates, or renders obvious, the limitation of proposed substitute claim 11 reciting “advancing the end of the first-clip arm and the end of the second-clip arm out of the delivery tube before advancing the support portion out of the delivery tube” merely requires advancing the ends of the clip arms out of the delivery tube “before advancing the support portion out of the delivery tube.” Moreover, Petitioner’s arguments are not persuasive with respect to proposed substitute dependent claims 12–20 due to their dependence from, and incorporation of, the limitations of proposed substitute claim 11. See Supp. Mot. Amend. 1, Reply Supp. Mot. Amend. 1. We therefore conclude that these proposed substitute claims are similarly neither anticipated by, nor obvious over, Goldfarb ’267. III. CONCLUSION We GRANT Patent Owner’s non-contingent Motion to Amend and Supplemental Motion to Amend, canceling original claims 1–10 and replacing them with substitute claims 11–20. Additionally, for the foregoing reasons, and after having analyzed the entirety of the record and assigning appropriate weight to the cited supporting evidence, we determine that Petitioner has failed to establish, by a preponderance of the evidence, that proposed substitute claims 11–20 are unpatentable.” slip op. at 57

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Having weighed the evidence and Petitioner’s argument, we adopt Petitioner’s definition of a person of ordinary skill in the art as: (1) a mechanical or biomedical engineer with at least three years of experience in designing or developing medical devices who would, where necessary or desired, work or consult with others including a physician to develop such a medical device; or (2) an interventional cardiologist or cardiac surgeon with at least three years of experience developing and/or using medical devices in the heart, and who would, where necessary, work or consult with others including an engineer to develop such a medical device. See Pet. 15–16.” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Vesely. Ex. 1003. We have reviewed the credentials of Dr. Vesely and consider him qualified to provide the opinions for which his testimony has 4 Goldfarb et al. (US 7,563,267 B2, July 21, 2009) (“Goldfarb ’267”) (Ex. 1005). 5 Petitioner refers to Goldfarb’s ’267 disclosure of a further alternative at Ex. 1005 col. 27 ll. 57–60 as Embodiment A. See Pet. 19. We understand the asserted Embodiment A to encompass the description that extends to Ex. 1005 col. 28, l. 9. See Pet. 24–48. 6 Goldfarb et al. (US 7,635,329 B2, December 22, 2009) (“Goldfarb ’329”) Ex. 1006. 7 Ex. 1005 cols. 17–23, ll. 66–29, Figs. 9–16; see Pet. 21–22. been submitted. See id. ¶¶ 1–9; see also Ex. 1004 (Dr. Vesely’s curriculum vitae).” slip op. at 10

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

    “is described in Goldfarb ’267 as plainly a single, unitary structure and, as such, each portion argued as separate elements by Petitioner (i.e., male element (yellow), female element (green), coupling member 19 (blue) and flexible arms 19A and 19B (dark blue)) together form a solid, single component. Thus, all of the “elements” described by Petitioner as being “separate” are in fact a single unit that: (1) bears the weight of the fixation device during delivery; (2) absorbs and transfer the axial and rotational forces imposed by the shaft 12; and (3) holds the device in the correct orientation. Petitioner points to no disclosure of Goldfarb ’267 that suggests these elements act independently or separately to perform the functions of the unitary component, nor can we discern any such disclosure. We therefore find that Petitioner’s argument that only the “male element” portion of coupling member 19 constitutes the “support portion” recited in proposed substitute claim 11 is an arbitrary and unduly restrictive interpretation of the reference’s disclosure. This is particularly true given that Petitioner points to no portion of the male element of coupling member 19 performing a supporting function that is not shared by the other elements of coupling member 19. We conclude that the better understanding of the reference is that the entirety of coupling member 19 (including flexible arms 10A and 19B11) constitutes an analogous support portion, as recited by substitute claim 11, because it provides a unitary structure that performs the supporting functions enumerated by Petitioner.” slip op. at 41

  Patent outcomesUS 10,702,385 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 10,702,385
• Alcon Inc. / Alcon Vision, LLC et al. v. Amo Development, LLCAll claims unpatentable
  PTAB · Dec 1, 2022 · IPR2021-00849 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–14 are unpatentable under § 103 over the Swinger-based grounds; the Board did not reach the Blumenkranz-based grounds.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Both parties present compelling evidence that those of skill in the art would include individuals with experience in ophthalmology, as well as in the research, manufacture, and design of medical optics or medical lasers. Pet. 26; PO Resp. 10. The evidence of record also demonstrates that few individuals actually had such experience. Rather, teams of individuals with different expertise and various academic degrees would work together to design laser surgery systems intended to make incisions in the lens of the eye. Accordingly, we find that the person of ordinary skill in the art would have been an ophthalmic surgeon or someone with a Ph.D., M.S., or B.S. degree in physics, biomedical engineering, or a related science such as optical engineering, with experience in researching, manufacturing, or designing medical optics or medical lasers (e.g., Ph.D. or five or more years to compensate for lesser degrees). Such individuals would have worked in collaboration with one another to fill any necessary gaps in knowledge (e.g., the engineer would consult the medical doctor on clinical issues or physiology and the medical doctor would consult the engineer on technical issues). This definition marries the two proposed by the parties.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “device to obtain “a qualitatively novel and previously unachievable quantitative description of the eye in respect of diagnostics and therapeutics” and providing this information as a data record to introduce the optimal ablation pattern to a patient’s eye. Ex. 1020 ¶¶ 38–39, 46. As Patent Owner notes, Benedikt does not describe the laser system that obtains the “data record” and introduces the optimal ablation pattern to a patient’s eye. PO Resp. 48. Benedikt also does not expressly state that a controller generates the incision pattern, as opposed to the incision pattern being generated by a surgeon or technician. Id. at 49. That said, Benedikt discloses using programs and data to generate the optimal ablation pattern and to automate laser surgery. Ex. 1020 ¶¶ 39, 46. When viewed as a whole, we credit the testimony of Dr. Lubatschowski that one of ordinary its data record to a controller that is programmed to generate optimal incision patterns for the cornea of a patient’s eye. Ex. 1001 ¶¶ 472–473 (citing Ex. 1020 ¶¶ 36, 39, 42); Pet. 56. In view of the foregoing, we find persuasive Petitioner’s argument that the combination of Swinger, Weikert, Benedikt, and Kurtz teaches or suggests a controller programmed to use OCT signals (in addition to signals from a profilometer) to determine an incision pattern for the cornea of a patient’s eye, as recited in independent claim 1.” slip op. at 24

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

    “Both parties provide a construction for the term “cataract incision.” Pet. 7–9; PO Resp. 12–13. Upon review of the parties’ arguments and supporting evidence, and in view of the fact that neither party contests that Weikert discloses a cataract incision under either party’s proposed construction of that term, we determine that no claim terms require express construction for purposes of this Final Written Decision. See 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) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “A petition must “identify with particularity the grounds for institution and evidence supporting such grounds,” including “the prior art relied upon and evidence that it qualifies as such.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential) (citing 35 U.S.C. § 312(a)). The Petition identifies the grounds for institution and the evidence supporting such grounds, and presents evidence that Weikert qualifies as prior art under 35 U.S.C. § 102(b). Pet. 5–6, 28–29. For example, Petitioner and Dr. Lubatschowski assert that CATARACT AND REFRACTIVE SURGERY “is a quarterly review” slip op. at 12

  Patent outcomesUS 10,709,548 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,709,548
• Alcon Inc. / Alcon Vision, LLC et al. v. Amo Development, LLCAll claims unpatentable
  PTAB · Dec 1, 2022 · IPR2021-00846 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–12 are unpatentable as obvious over Swinger, Weikert, and Benedikt (claims 1–8), and with L’Esperance added (claims 9–12).

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Both parties present compelling evidence that those of skill in the art would include individuals with experience in ophthalmology, as well as in the research, manufacture, and design of medical optics or medical lasers. Pet. 25; PO Resp. 8. The evidence of record also demonstrates that few individuals actually had such experience. Rather, teams of individuals with design laser surgery systems intended to make incisions in the lens of the eye. Accordingly, we find that the person of ordinary skill in the art would have been an ophthalmic surgeon or someone with a Ph.D., M.S., or B.S. degree in physics, biomedical engineering, or a related science such as optical engineering, with experience in researching, manufacturing, or designing medical optics or medical lasers (e.g., Ph.D. or five or more years to compensate for lesser degrees). Such individuals would have worked in collaboration with one another to fill any necessary gaps in knowledge (e.g., the engineer would consult the medical doctor on clinical issues or physiology and the medical doctor would consult the engineer on technical issues). This definition marries the two proposed by the parties.” slip op. at 10

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

    “Petitioner provides constructions for the terms “cataract incision” and “a delivery system for delivering the laser beam to the target tissue to form a cataract incision.” Pet. 7–9. Patent Owner provides a construction for the term “cataract incision.” PO Resp. 10–11. Upon review of the parties’ arguments and supporting evidence, including the fact that neither party disputes that Weikert expressly discloses cataract incisions under either parties’ interpretation of that term, we determine that no claim terms require express construction for purposes of this Final Written Decision. See 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) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 12

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “A petition must “identify with particularity the grounds for institution and evidence supporting such grounds,” including “the prior art relied upon and evidence that it qualifies as such.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential) (citing 35 U.S.C. § 312(a)). The Petition identifies the grounds for institution and the evidence supporting such grounds, and presents evidence that Weikert qualifies as prior art under 35 U.S.C. § 102(b). Pet. 5–6, 27–28. For example, Petitioner and Dr. Lubatschowski assert that CATARACT AND REFRACTIVE SURGERY “is a quarterly review series comprising chapters written by well-known specialists,” and that Weikert was included in the 2005 edition of CATARACT AND REFRACTIVE SURGERY as Chapter 14: Refractive Keratotomy: Does it Have a Future Role in Refractive Surgery? Ex. 1001 ¶ 73; Pet. 5–6, 27–28.” slip op. at 13

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

    “Benedikt describes its combined topometer/OCT imaging device as providing a “previously unattainable comprehensive topometerical/topographical illustration of the cornea” and discloses using this comprehensive data to automate corneal laser surgery. Ex. 1020 ¶¶ 39, 46; Pet. 55–56. In contrast to the comprehensive illustration of the cornea provided by Benedikt’s system, Petitioner demonstrates that HeNe beams are limited to visualizing the surface of eye tissue at a single point. Ex. 1070 ¶¶ 32–34; Pet. Reply 23; Ex. 1073, 254:2–14; Ex. 1001 ¶¶ 29–31. As Petitioner proposes to use the system of Swinger to make incisions in the cornea, which Benedikt’s system can image comprehensively, we find persuasive Petitioner’s argument that one of ordinary skill in the art would have found it beneficial to implement Benedikt’s imaging device to aid Swinger’s corneal surgery procedure(s). (2)” slip op. at 25

  Patent outcomesUS 10,376,356 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,376,356
• Google LLC v. Parus Holdings, Inc.Instituted
  PTAB · Nov 7, 2022 · IPR2022-00805 · APJ Patrick M Boucher · IPR · Institution

  The Board instituted IPR on claims 1–26, finding a reasonable likelihood of prevailing on the Wise–Dasan obviousness grounds and the Wise–Dasan–Uppaluru ground for claim 26.

  RulingsInstitution decision

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

    “Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant the Petition and institute an inter partes review. The Board has not made a final determination regarding the patentability of any claim.” slip op. at 2

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “testimony—“throughout the Petition”—for the understanding of a person of ordinary skill in the art as “baseless” because “the expert declaration does nothing more than repeat the unsupported attorney argument in the Petition.” Prelim. Resp. 28. Although we agree with Patent Owner’s general characterization that Mr. Lipoff largely repeats most of the Petition verbatim and that such testimony is of less probative value than more elaborative testimony, we disagree with Patent Owner’s implication that we should therefore summarily discount Mr. Lipoff’s testimony. See id. (“This type of copy-and-paste analysis has no probative value and is therefore unhelpful.”).” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have had a Bachelor’s degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing.” Pet. 6–7. Petitioner adds that “[m]ore education could substitute for less experience, and vice versa.” Id. Mr. Lipoff supports this articulation, and Patent Owner does not propose any different articulation. See Ex. 1002 ¶ 77. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Mr. Lipoff, we adopt it for purposes of this Decision. 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 11

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

    “On the record before us, we do not find it necessary to construe any term for purposes of this Decision. 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 12

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,769,314
• Alcon Inc. / Alcon Vision, LLC et al. v. Amo Development, LLCAll claims unpatentable
  PTAB · Nov 4, 2022 · IPR2021-00843 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–17 are unpatentable under §103 over the asserted combinations of prior art.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Both parties present compelling evidence that those of skill in the art would include individuals with experience in ophthalmology, as well as in the research, manufacture, and design of medical optics or medical lasers. Pet. 28; PO Resp. 8. The evidence of record also demonstrates that few individuals actually had such experience. Rather, teams of individuals with different expertise and various academic degrees would work together to design laser surgery systems intended to make incisions in the lens of the eye. Accordingly, we find that the person of ordinary skill in the art would have been an ophthalmic surgeon or someone with a Ph.D., M.S., or B.S. degree in physics, biomedical engineering, or a related science such as optical engineering, with experience in researching, manufacturing, or designing medical optics or medical lasers (e.g., Ph.D. or five or more years to compensate for lesser degrees). These individuals would have worked in collaboration with one another to fill any necessary gaps in knowledge (e.g., the engineer would consult the medical doctor on clinical issues or” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “[C]lear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.” Catalina Mkt’g Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808–09 (Fed. Cir. 2002). Here, and as discussed in further detail below, the Examiner expressly allowed the claims, in part, due to an Examiner’s Amendment changing “scanning system” to “cataract surgery scanning system.” Ex. 1006, 13, 15, 18. This reliance on the preamble to help define the claimed invention transforms this portion of the preamble into a limitation. See Catalina Mkt’g, 289 F.3d. at 808. slip op. at 13

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

    “(4) Analysis As discussed above, the intrinsic record of the ’023 patent, that is, the claims, written description, and prosecution history, suggests that a “cataract surgery scanning system” is one that is capable of performing at least one incision related to cataract surgery. This may include cataract and relaxation incisions in the cornea, limbus, or sclera, or incisions in the lens or lens capsule. Accordingly, we construe the claim term “cataract surgery scanning system” to require that the system be designed to, or capable of, performing at least one step of cataract surgery, such as creating an incision in the cornea or other exterior tissues to allow access for surgical instruments, correcting for astigmatism, creating an opening in the anterior lens capsule, or fragmenting the lens. See Pet. 20 (Petitioner describing the steps of a “typical cataract surgery”).” slip op. at 20

  • Prior constructionPrior construction adoptedDecided for patent owner

    “In the Institution Decision, after reviewing the claims, written description, and prosecution history, we construed the claim phrase “cataract incision therein that provides access to an eye chamber of the patient’s eye, the incision . . . only partially extending through the target tissue” to require “a partially penetrating cataract incision that, when completed by the surgeon or another individual, allows access for lens removal instrumentation.” Dec. 13–14. Patent Owner agrees with this construction (PO Resp. 13) and Petitioner does not expressly dispute the construction in its Reply. Accordingly, for the reasons set forth in the Institution Decision, we adopt this construction for purposes of this Final Written Decision.” slip op. at 21

  Patent outcomesUS 9,233,023 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,233,023
• Alcon Inc. / Alcon Vision, LLC et al. v. Amo Development, LLCAll claims unpatentable
  PTAB · Nov 4, 2022 · IPR2021-00845 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–17 and 20–26 are unpatentable, including as obvious over Kurtz, Swinger, and Weikert and, for specified claims, over Blumenkranz, Kurtz, Weikert, and Benedikt.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Both parties present compelling evidence that those of skill in the art would include individuals with experience in ophthalmology, as well as in the research, manufacture, and design of medical optics or medical lasers. Pet. 24–25; PO Resp. 10. The evidence of record also demonstrates that few individuals actually had such experience. Rather, teams of individuals with different expertise and various academic degrees would work together to design laser surgery systems intended to make incisions in the cornea, limbus, sclera, or lens of the eye. Thus, we find that the person of ordinary skill in the art would have been an ophthalmic surgeon or someone with a Ph.D., M.S., or B.S. degree in physics, biomedical engineering, or a related science, such as optical engineering, and having experience in researching, manufacturing, or designing medical optics or medical lasers (e.g., 5 years of experience for a Ph.D. or more to compensate for lesser degrees). We further find that such persons would have worked in collaboration with one another to fill any necessary gaps in knowledge (e.g., the engineer would consult the medical doctor on clinical issues or physiology and the medical doctor would consult” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “[C]lear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.” Catalina Mkt’g Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808–09 (Fed. Cir. 2002). Here, and as discussed in further detail below, the Examiner expressly allowed the claims, in part, due to an Examiner’s Amendment changing “[a] method” to “[a] cataract surgery method.” Ex. 1009, 16. This reliance on the preamble to define the claimed invention transforms this portion of the preamble into a limitation. See Catalina Mkt’g, 289 F.3d. at 808. slip op. at 14

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

    “In view of the foregoing, we understand that the addition of the term “cataract surgery method” was intended to make clear that the claimed method is used to make specific incisions related to cataract surgery, and not merely incisions “whose purpose is to reshape the cornea,” as disclosed for example in Bille. Id. at 64. We do not find that the prosecution history suggests that the term “cataract surgery method” requires that the method be used to form the claimed incisions in the cornea, limbus, or sclera, as well as unclaimed incisions in the lens or lens capsule. d) Analysis As discussed above, the intrinsic record of the ’024 patent, that is, the claims, written description, and prosecution history, suggests that a “cataract surgery method” is one that is used to create at least one incision related to cataract surgery. This may include cataract and relaxation incisions in the cornea, limbus, or sclera, or incision in the lens or lens capsule. require that the method be used to perform at least one incision related to cataract surgery, such as the expressly claimed cataract and relaxation incisions. Pet. 18–19 (Petitioner describing the steps of a “typical cataract surgery”).” slip op. at 20

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner

    “A petition must “identify with particularity the grounds for institution and evidence supporting such grounds,” including “the prior art relied upon and evidence that it qualifies as such.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential) (citing 35 U.S.C. § 312(a)). The Petition identifies the grounds for institution and the evidence supporting such grounds, and presents evidence that Weikert qualifies as prior art under 35 U.S.C. § 102(b). Pet. 5, 26. For example, Petitioner and Dr. Lubatschowski assert that CATARACT AND REFRACTIVE SURGERY “is a quarterly review series comprising chapters written by well-known specialists,” and that Weikert was included in the 2005 edition of CATARACT AND REFRACTIVE SURGERY as Chapter 14: Refractive Keratotomy: Does it Have a Future Role in Refractive Surgery? Ex. 1001 ¶ 73. In addition, Hulu contemplates additional evidence being admitted in a reply to a patent owner preliminary response, as long as that evidence is responsive to the prior briefing. Hulu, Paper 29 at 14. In this case, Petitioner’s evidence submitted in its Reply is responsive to arguments made in prior briefs (i.e., Patent Owner’s Preliminary Response and Response), and simply confirms what was asserted in the Petition and Dr. Lubatschowski’s declaration, i.e., that Weikert is Chapter 14 of CATARACT AND REFRACTIVE SURGERY and the document bears a copyright date of 2005 (or, as asserted by Dr. Lubatschowski, is a “2005 edition”). Ex. 1060, 5, 12; Pet. 5, 26–27; Ex. 1001 ¶ 73. In addition, this evidence indicates that CATARACT AND REFRACTIVE SURGERY was published by document that would be expected to be made publicly accessible. See Ex. 1001 ¶ 73 (asserting that CATARACT AND REFRACTIVE SURGERY “is a quarterly review series comprising chapters written by well-known specialists”); Ex. 1019, 220, 224, 227, 228, 230, 232 (providing a “Summary for the Clinician” at the end of several sub-chapters); Ex. 1060, 4–5. The information presented in the Petition, as confirmed by the Preliminary Reply evidence submitted by Petitioner, sufficiently demonstrates that Weikert is prior art to the ’024 patent.” slip op. at 22

  Patent outcomesUS 9,233,024 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,233,024

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.