- Shenzhen Buxiang Network Technology Co., Ltd. v. Sun Pleasure Co. LimitedNo claims unpatentablePTAB · Apr 11, 2022 · IPR2021-00080 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1–9 were not shown unpatentable because Metzger lacked the claimed fluid passage, and Wu was not prior art based on the claims’ earlier reduction to practice.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the testimony of Mr. Kuchel, Petitioner submits that a person of ordinary skill in the art “would have either (i) a bachelor’s degree in mechanical engineering, or an equivalent field, or (ii) would have an associate degree in mechanical engineering, or an equivalent field, and two years of practical experience in inflatable product design.” Pet. 16 (citing Ex. 1002 ¶ 26). In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 9. In its Response, Patent Owner makes arguments that rely on Petitioner’s proposed level of ordinary skill in the art, but does not dispute Petitioner’s definition. See PO Resp. 35, 39–53 (citing Ex. 2014 ¶ 66). Based on our review of the complete record, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes claim constructions for the terms “substantially below” and “substantially inwardly” recited in claims 1 and 6. Pet. 40–41. In the Decision on Institution, we determined that it was not necessary to construe the terms at that stage of the proceeding. Dec. Inst. 9–10 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). Patent Owner contends “the claim terms ‘substantially below’ and ‘substantially inwardly’ are sufficiently clear on their face to preclude any need for claim construction,” but proposes claim constructions that differ somewhat from Petitioner’s proposed constructions in the event the Board determines that these terms require claim construction. PO Resp. 13, 15–16. Patent Owner also proposes a claim construction for the term “upper tubular periphery” recited in claims 1 and 6 that Petitioner opposes. Id. at 17–19; Pet. Reply 7–10. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec, 868 F.3d at 1017. Because the outcome of our decision does not depend on either parties’ construction of the terms “substantially below,” “substantially inwardly,” or “upper tubular periphery,” we need not construe these terms to resolve the issues in dispute in this proceeding.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Metzger’s gaps define fluid passages located between adjacent side support beams 25 (i.e., “internal walls”) and are not formed in any of the side support beams. We are not directed to any written description in Metzger indicating that the gaps are formed in a side support beam.7 Instead, Figures 5 and 6 of Metzger depict the gaps as being defined between four distinct side support beams 25. Furthermore, as Patent Owner points out, Mr. Kuchel appears to agree that there are no passages formed through the side support beams 25 of Figures 5 and 6. Ex. 2003, 107:12–108:9, 108:17–108:21. For these reasons, we determine that Metzger’s gaps are not formed through an internal wall, as required by claim 1. In the Reply, Petitioner asserts that, even if Metzger discloses four discrete, spaced-apart beams or walls, “the gaps or slices between walls are apertures in a structure through which air can pass.” Pet. Reply 15 (emphasis added). This argument is not persuasive because claim 1 recites that the fluid passage is formed through the internal wall (which Petitioner asserts is met by Metzger’s side support beam 25), not just any structure. Petitioner’s general assertion that air passes through “a structure” fails to establish that the gaps are formed in a side support beam.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Specifically, Petitioner argues that one of ordinary skill in the art would have understood from Metzger “that an air passage would be necessary to bypass the side support beam 25 and inflate the upper tubular periphery for the air mattress to function as intended.” Id. (citing Ex. 1002 ¶ 200). According to Petitioner, because Metzger discloses only a single air inlet valve, an ordinarily skilled artisan would have understood that providing openings, or fluid passages, through the side support beam 25, in lieu of or in addition to the gaps between the side support beam 25, would have been a simple solution to adequately inflate the peripheral frame of the mattress defined by the side support beam(s) 25. Id. at 74–75 (citing Ex. 1002 ¶ 200). Petitioner thus presents two alternate theories for modifying Metzger: (1) providing fluid passages in at least one side support beam 25 in addition to the gaps, and (2) providing fluid passages in lieu of the gaps. In support of the first theory, Petitioner only argues that providing fluid passages in the side support beams, in addition to the gaps between the ends of the side support beams, would have allowed the peripheral frame to inflate more freely. Id. at 75 (citing Ex. 1002 ¶ 201). In its Response, Patent Owner contends that “Petitioner is just wrong.” PO Resp. 45 (citing Ex. 2001 ¶¶ 146–149). Dr. Letton testifies that pumps used to inflate air mattresses are low flow and low pressure and generally inflate an air mattress to a maximum pressure of around 1 psi. Ex. 2001 ¶ 147. Dr. Letton further testifies that, with Metzger’s design, the” slip op. at 28
Patent outcomesUS 7,353,555 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,353,555 - Med-El Elektromedizinische Geräte Ges.M.B.H. v. Sonova AGAll claims unpatentablePTAB · Mar 31, 2022 · IPR2021-00023 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1, 2, 7, 8, and 14 are unpatentable over Meier; claims 5, 10, and 11 are unpatentable over Meier and Kenigsberg.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“porous cover element for acoustic aperture SE, Meier’s disclosure is not so limited. Id. at 3:18–21. For example, Meier describes “cover elements for vents.” Id. at 4:66; see Ex. 2011, 73:1–5 (Dr. Giacomin’s similar testimony). Petitioner, relying on the testimony of Dr. Giacomin, explains that “[b]ased on the disclosure of Meier, the cover element covers the air vent in a manner similar to how the cover elements are shown covering the acoustic input or output apertures, e.g., the cover element is assembled with the housing such that crevices are formed between these two components.” Pet. 26–27; see also id. at 21 (same); Ex. 1002 ¶¶ 42, 44–46, 52, 60–61. Dr. Giacomin testifies that even when a nonporous cover element is used, the cover element needs to be coated with a hydrophobic coating to prevent water from entering the vents, i.e., crevices. Ex. 2011, 73:1–23. Dr. Giacomin’s testimony below illustrates Petitioner’s position.” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“materials science.” Pet. 17–18 (citing Ex. 1002 ¶ 20). Patent Owner does not propose its own definition or dispute Petitioner’s proposed definition except to assert that “other disciplines including electrical engineering should be included.” PO Resp. 8–9. In light of the record before us, we determine that Petitioner’s proposed definition is consistent with the prior art of record and apply it for this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings on ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). We also include disciplines, including electrical engineering, as Patent Owner proposes. Accordingly, the definition for a person of ordinary skill in the art, applied herein, “would have had, as of December 2003, the equivalent of a Bachelor of Science degree in chemical engineering, mechanical engineering, electrical engineering, physics, or a related discipline and at least two years of related experience, preferably with a working understanding of plastics manufacturing, chemistry, and/or materials science.”” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Only terms that are in controversy need to be construed, and then 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) (applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We agree with Patent Owner that this term need not be expressly construed because, as explained below, Petitioner has sufficiently shown the cited art discloses a “coating” regardless of whether we adopt Petitioner’s proposed construction.” slip op. at 11
- Prior constructionPrior construction adoptedDecided for patent owner
“Petitioner has not persuasively explained why we should depart from the construction for “hydrophobic” adopted in the district court. Nor has Petitioner persuasively explained why here different constructions should apply in different forums. See Tr. 6:16–7:9, 32:3–9. Pursuant to 37 C.F.R. § 42.100(b), we have considered the district court construction of the term “hydrophobic,” which is consistent with the record evidence, and adopt it as our own. Therefore, we construe “hydrophobic” to mean “having resistance to water penetration wherein the contact angle between the water droplet with the surface exceeds 90 degrees.”” slip op. at 15
Patent outcomesUS 7,267,847 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,267,847 - PTAB · Mar 17, 2022 · IPR2021-01593 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–18 across all asserted grounds, finding a reasonable likelihood of success on the anticipation grounds and the Shiomi–Stephens obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Although the parties and the district court have invested some effort in the ’186 and ’188 proceedings, we find the investment at this stage relatively minor, especially considering the tasks not yet completed in the district court proceeding. Patent Owner does not dispute Petitioner’s assertion that no depositions yet have occurred. Pet. 10; Prelim. Resp. 1–5. Although some pretrial activity has been completed, much more remains, including the deadline for amended pleadings, fact discovery, submission of expert reports, expert discovery, and a number of other pretrial activities. Ex. 3001, 4–5. Additionally, Patent Owner does not dispute Petitioner’s position that it promptly filed the Petition. Prelim. Resp. 4. On the whole, this factor weighs against exercising discretion to deny institution.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and the associated evidence, for the reasons described below, we institute inter partes review of all the challenged claims on all the grounds set forth in the Petition.” slip op. at 2
- BurdenInstituted
“the Petition must explain clearly its bases for asserting unpatentability of the challenged claims. A proper petition “identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claims is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a). We require that a petition include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). We also require that a petition “specify where each of the elements of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Petitioner’s challenge of claims 1–10, 13, and 15–18 as allegedly obvious over Shiomi fails to meet these requirements. The Petition neither identifies any difference between the teachings of Shiomi and the challenged claims, nor identifies any specific allegedly obvious modification of Shiomi’s teachings. Thus, Petitioner’s presentation of its challenge of claims 1–10, 13, and 15–18 as allegedly obvious over Shiomi stymies a proper obviousness analysis, which requires ascertaining the “differences between the prior art and the claims at issue.” Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Nevertheless, because we institute a trial on other grounds, we institute a trial on this ground as well. See 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). See also SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 35
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“At this stage, we find Petitioner has shown sufficiently that Childs discloses claim 1’s recitation of “determining a transfer mode between synchronous and asynchronous, wherein a configuration register specifies said transfer mode between synchronous and asynchronous.” (3) “determining whether said transfer mode is write or read” Petitioner argues that “Childs discloses determining whether the transfer mode is a read or write mode.” Pet. 19. Petitioner cites Childs disclosure of various signals with output registers 34 and output enable registers 48. Id. at 19–20. For example, Petitioner contends that “[t]hrough the state of the write enable signal (W*) and output enable signal (OE2), Childs determines whether the transfer is a read or write operation.” Id. at 20. At this stage, we find Petitioner has shown sufficiently that Childs discloses claim 1’s recitation of “determining whether said transfer mode is write or read.” (4) “transferring data according to said determined mode” Addressing this claim language, the Petition contends that Childs discloses transferring data according to said determined mode. For example, Childs describes a synchronous read cycle at Col. 4:27–48 (“during a read cycle of memory 20. . .”), and a synchronous write cycle at Col. 4:49–Col. 5:5 (“during a write cycle…”). Further, an example of transferring data according to the asynchronous mode is described at Col. 8:28–45 (“In the asynchronous mode. . .”). In both synchronous and asynchronous modes, data is transferred as data signal Q from output register 34. See Ex. 1008 (Childs) at Col. 4:15–19; Ex. 1011 (Ayazi Decl.) at ¶¶ 107.” slip op. at 24
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 6,791,898 - PTAB · Mar 17, 2022 · PGR2021-00109 · APJ Stephen E Belisle · PGR · Institution
Instituted post-grant review of claims 1–23 on all grounds; petitioner showed that claims 1–12, 15–17, and 21–23 were more likely than not unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324(c) (2018); 37 C.F.R. § 42.4(a) (2021). We may not institute a post-grant review “unless . . . it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). When instituting post-grant review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.208(a).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“pertinence of Timony’s disclosure or of the combined teachings of Gilb ’792/Bundy and Timony/Bundy (and Tsukamoto/Bundy), and did not issue a rejection based on such disclosure or combined teachings, and that this constitutes Examiner error. As discussed below in Section III, we determine that Petitioner has established that it is more likely than not that at least claims 1–12, 15–17, and 21–23 of the ’867 patent are unpatentable. Accordingly, Becton Dickinson factor (e) weighs against exercising discretion to deny institution under § 325(d).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“Owner’s arguments as supported by the above-cited evidence, and find Patent Owner’s proffered construction reasonable. Accordingly, for purposes of institution, we construe the limitation “each extension flange lying in an extension flange plane” to mean “for each extension flange an extension flange plane is within the extent of the extension flange from the channel-shaped portion to the connection portion.”” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“we are persuaded that Petitioner’s cited evidence provides sufficient rational reasons for purposes of institution to combine Tsukamoto and Bundy with a reasonable expectation of success, and sufficiently supports Petitioner’s contention that independent claim 1 is unpatentable as obvious over the combination of Tsukamoto and Bundy. Accordingly, at this stage of the proceeding, we are persuaded that Petitioner has shown that it is more likely” slip op. at 85
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham · NautilusPatents in suitUS 11,021,867 - 3shape A/S / 3shape Inc. v. Align Technology, Inc.Institution deniedPTAB · Jan 26, 2022 · IPR2021-01241 · APJ Elizabeth M Roesel · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable under any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the information presented in the Petition and the Preliminary Response, we determine that the reasonable likelihood standard is not met. Accordingly, we deny institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“For purposes of the Preliminary Response, Patent Owner does not dispute Petitioner’s definition of a POSA. See, generally Prelim. Resp. We find that Petitioner’s definition of a POSA is consistent with the scope and content of the ’936 Patent and the asserted prior art, and we apply this definition for purposes of this Decision.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that the claim language provides a temporal relationship between “first scan data” and “second scan data.” We determine that, in claims 1 and 9, “first scan data” pertains to an earlier scan than “second scan data,” and “second scan data” includes surface data of a physically changed portion of the intra-oral cavity, where the physical change occurs after the first scan and before the second scan. Our interpretation is based on the plain language of claims 1 and 9, which recite that “second scan data” includes “surface data of a physically changed portion of the patient’s intraoral cavity.” The claim language as a whole makes clear that a physical change occurs between the first scan and the second scan. Petitioner implicitly agrees with this interpretation by characterizing its arguments as showing that “a dentist or orthodontist makes a physical change to the tooth between scans.” Pet. 12 (emphasis added). In other words, claims 1 and 9 require the following order of steps: first scan, physical change, second scan.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“For the reasons discussed above, we determine that claim 1 requires a temporal relationship between “first scan data” and “second scan data.” More specifically, we determine that “first scan data” pertains to an earlier scan than “second scan data,” and “second scan data” includes surface data of a physically changed portion of the intra-oral cavity, where the physical change occurs after the first scan and before the second scan. Petitioner contends that “Rubbert’s original scan of the patient’s teeth (without brackets) satisfies the ‘second’ scan data limitation, and the monitoring scan of the patient’s teeth (with brackets) satisfies the ‘first’ scan data limitation, with the teeth without brackets being a ‘physically changed portion’ relative to the teeth with brackets.” Pet. 28. Petitioner’s contention does not satisfy our claim construction for “first scan data” and “second scan data.” Although Petitioner contends that “first scan data” is disclosed by Rubbert’s “monitoring scan of the patient’s teeth (with brackets)” (id.), Petitioner does not show that Rubbert’s monitoring scan is an earlier scan than the one that produces “second scan data.” Instead, Petitioner contends that “second scan data” is disclosed by Rubbert’s earlier scan—an original scan of the patient’s teeth without brackets retrieved from a stored patient record. Pet. 26–28. The temporal relationship between “first scan data” and “second scan data,” as identified by Petitioner in Rubbert, is the reverse of the temporal relationship required by claim 1. According to Petitioner’s contentions, Rubbert’s “second scan data” pertains to an earlier scan than “first scan data.” As properly construed, claim 1 requires the opposite. Furthermore, Petitioner does not show that Rubbert discloses “surface data of a physically changed portion of the patient’s intra-oral cavity,” as recited in claim 1. Petitioner contends that Rubbert discloses this limitation “because the second scan data (without a bracket) is a physically changed portion in the oral cavity relative to the first scan data (with a bracket).” Pet. 28. Petitioner’s contention does not satisfy our claim construction. Petitioner does not identify any disclosure in Rubbert of a physical change that takes place after the alleged first scan (with a bracket) and before the alleged second scan (without a bracket). Rubbert does not disclose physically removing a bracket from the patient’s tooth and then rescanning the tooth after removal of the bracket. Petitioner does not assert otherwise. Although Petitioner asserts that “installing a bracket” is a “physical” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,791,936 - Avery Dennison Rfid Company / Avery Dennison Retail Information Services LLC v. Evrythng LimitedInstitutedPTAB · Jan 25, 2022 · IPR2021-01259 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–29, finding a reasonable likelihood of success on the Lim anticipation and Fitzpatrick–Herzig obviousness grounds, among others.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Determination on Discretion to Institute We consider the above factors and take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. After considering the factors outlined in the precedential order in Fintiv, we decline to exercise our discretion to deny institution under § 314(a).” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’321 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision on Institution, we adopt Petitioner’s proposed level of ordinary skill in the art. This level of skill comports with the teachings of the ’321 patent and the asserted prior art.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“and “rules database” (recited in claims 1, 22, and 29). Pet. 18–23. Patent Owner does not address these proposed constructions and specifically notes its belief that, for the purposes of institution, no claim construction is necessary. Prelim. Resp. 6–7. After considering the parties positions and the record at this time, for the purposes of institution, we determine no claim construction is required. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,794,321 - Nested Bean, Inc. v. Big Beings USA Pty Ltd And LB Online & Export Pty Ltd D/B/A Love To Dream Online And ExportsSome claims unpatentablePTAB · Jan 24, 2022 · IPR2020-01234 · APJ Kevin W Cherry · IPR · Final written decision
Claims 2–16 are unpatentable; claims 1, 17, and 18 were not shown unpatentable, principally because the cited combinations did not establish claim 1’s arm-retention limitation.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Generally, a preamble is not limiting.” Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1292 (Fed. Cir. 2015). Whether a preamble is limiting is “determined on the facts of each case in light of the overall form of the claim, and the invention as described in the specification and illuminated in the prosecution history.” Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1572–73 (Fed. Cir. 1996). A preamble limits the claimed invention if it recites essential structure or steps, or if it is “necessary to give life, meaning, and vitality” to the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). A preamble is not limiting, for example, if the patentee “defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). And, a preamble is generally not limiting unless there is “clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art.” Id. A preamble can be limiting if it recites “additional structure or steps underscored as important by the specification,” is “essential to understand limitations or terms in the claim body,” or provides necessary structure absent from the claim body. Id. at 808–09. We agree with Petitioner that the preamble is not a limitation. The term “swaddling suit” is merely a descriptive name for the apparatus that is covered by the claims. IMS Tech, Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000) (Terms in the preamble are not limiting if they “merely give[] a descriptive name to the set of limitations in the body of the claim that completely set forth the invention.”). It is well-established that “[a]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir 1990). For example, in Cochlear Bone Anchored Solutions AB v. Oticon Med. AB, the Federal Circuit held that a statement of intended purpose in the preamble—“for rehabilitation of unilateral hearing loss”—was not limiting, because the claimed apparatus was fully structurally claimed in the body of the claim, and its structure would allow it to function identically whether or not used for its stated intended purpose. See 958 F.3d 1348, 1355 (Fed. Cir. 2020). We find that this is the case here. The bodies of claims 1 and 2 recite structurally complete inventions, which would function identically whether or not they are used for its stated intended purpose. Indeed, if the term “swaddling suit” were replaced by the word “garment,” it would not change the nature of the claim. This interpretation is consistent with the Specification that The invention has been developed primarily for use as a means for swaddling infants for safe sleeping. However, it will be appreciated that the invention is not restricted to this particular use. Ex. 1001, 1:7–10; see also id. at 11:6–11 (the alleged invention “is not restricted to these particular fields of use and it is not limited to particular embodiments or applications described herein”). slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“meaning. But we further agree with Patent Owner that the plain and ordinary meaning for that term is simply “to hold or to keep.” See Ex. 2022. Petitioner’s argument that the Specification uses “retain” to mean that the wing portions are closed, as opposed to having open ends like sleeves reads retain out of context. The portion of the Specification identified by Petitioner states The ends of the wing portions 140 may be open, allowing the hands to extend through the opening end as shown in FIG. 5E. Alternatively, the ends of the wing portions 140 may be closed so that the hands are retained within the wing portions 140 as shown in FIGs. 5C and D. Ex. 1001, 10:3–7 (emphasis added). We do not read this passage as creating a special meaning for “retained,” as Petitioner suggests. Reply 7–8. Petitioner focuses on the portion of this statement that “the ends of the wing portions . . . may be closed so that the hands are retained. . .” to argue that the Specification uses the term “retained” to mean “closed.” However, this argument ignores the end of the sentence that “the ends of the wing portions . . . may be closed so that the hands are retained within the wing portions.” When considered in its full context, we agree with Patent Owner that this passage is consistent with Patent Owner’s construction. See Sur-Reply 11. Indeed, the passage simply uses “retained” in its ordinary sense—i.e., “the ends of the wing portions 140 are closed so that the hands are [held or kept] within the wing portions.” Accordingly, we determine that “retain” has its plain and ordinary meaning, i.e., “to hold or retain.”” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill would have had either formal or informal training in fashion or clothing design with at least 1 year of experience. A person of ordinary skill in the art would likely have had experience designing, producing, or working with clothing for infants, either in a formal or informal setting, including as a new parent or expected parent. Pet. 22–23. Patent Owner does not dispute this definition of a person of ordinary skill. See generally PO Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill as it appears to be consistent with the level of skill reflected by the specification and in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art). E. OVERVIEW OF THE PRIOR ART” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“limitations of claims 1 and 2, including: (a) “a swaddling suit,” (of limitations [1P] and [2P] above), (b) “wing portions extending laterally from a bodice portion” (limitations [1E] and [2E] above), (c) “wing portions” that have “a wing tip at an uppermost portion of each of the wing portions that is positioned above a level of the neck hole of said suit” (limitations [1F] and [2F]), and (d) “wing portions” that “retain an infant’s arm and hand in a hand-raised and elbow-bent position” (limitation [1G]) and “wing portions” that “retain an infant’s arm” (limitation [2G]). PO Resp. 14–29. On the full record and as we explain in detail below, we agree with Patent Owner that Parks fails to disclose “wing portions” that “retain an infant’s arm and hand in a hand-raised and elbow-bent position” (limitation [1G]). iii. Undisputed Limitations With respect to the undisputed limitations, we have reviewed the record and determine that Petitioner has shown by a preponderance of the evidence that Parks discloses limitations [1A]–[1D], [1H], [2A]–[2D], and [2H]. We consider the arguments regarding the disputed limitations below.” slip op. at 28
Patent outcomesUS 9,179,711 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,179,711 - Phillips 66 v. Magēmā Technology, LLCInstitution deniedPTAB · Jan 21, 2022 · IPR2021-01173 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Weiss-based grounds teach or suggest the claimed residual marine fuel oil.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“D. Discretionary Denial Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution under Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Paper 15 (PTAB May 13, 2020) (precedential). Prelim. Resp. 12–31. Petitioner disagrees. Pet. 6–12. Because we deny institution based on the merits of Petitioner’s unpatentability arguments, we need not decide whether to exercise discretion to deny institution.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine we need not expressly construe any terms of the challenged claims at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“feedstock HMFO and the product HMFO of the challenged claims, as Petitioner argues it does, Petitioner must show that Weiss ’974 teaches or suggests four facts: (1) the pre-hydrotreatment HSFO is a residual petroleum 10 Petitioner defines “HSFO” as being a “high-sulfur HMFO” and “LSFO” as being a “low-sulfur HMFO.” Pet. 1. product, (2) the pre-hydrotreatment HSFO is ISO-8217-compliant, (3) the post-hydrotreatment LSFO is a residual petroleum product, and (4) the posthydrotreatment LSFO is ISO-8217-compliant. Petitioner does not show all four of these facts sufficiently to demonstrate a reasonable likelihood of prevailing in showing that the challenged claims are anticipated by Weiss ’974 or obvious over the combination of Weiss ’974 and Weiss ’515.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,584,287 - 3shape A/S / 3shape Inc. v. Align Technology, Inc.Institution deniedPTAB · Jan 11, 2022 · IPR2021-01120 · APJ Neil T Powell · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 were obvious over Babayoff ’529 and Atiya.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“2. Summary Regarding Obviousness Challenge Because Patent Owner’s arguments and evidence persuasively rebut Petitioner’s assertion that the Ancestral Applications do not provide written description support for the challenged claims, Petitioner has not shown adequately that Babayoff ’529 is prior art to the challenged claims. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 would have been obvious over Babayoff ’529 and Atiya. III. CONCLUSION For the foregoing reasons, we determine that the information presented in the record does not establish there is a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim of the patent ’151 patent. Accordingly, we do not institute an inter partes review. IV. ORDER For the reasons given, it is: ORDERED that the Petition is denied; and FURTHER ORDERED that no inter partes review is instituted.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill is supported by expert testimony and appears consistent with the technology at issue, for purposes of this Decision, we apply Petitioner’s definition of a person of ordinary skill in the art.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In response, Patent Owner objects that “Petitioners’ interpretation of the claims as requiring the use of unfiltered white light to determine depth data is plainly at odds with the claims themselves.” Prelim. Resp. 4. Patent Owner argues that “[t]his interpretation leads to a contradiction between the independent and dependent claims: the same light illuminating the intraoral structure would have to be simultaneously filtered (as recited in the dependent claims) and unfiltered (as Petitioners presume to be required by the independent claims).” Id. Patent Owner also suggests the possibility that the Petition’s arguments mean “the independent claims encompass using unfiltered white light to obtain depth data.” Id. at 7. We do understand the Petition’s arguments to mean that the independent claims encompass using unfiltered white light to illuminate an intraoral structure, not that the independent claims require using white light to illuminate an intraoral structure. And we agree with that understanding of the independent claims’ scope. Consistent with Patent Owner’s explanation, if we construed the independent claims to require using unfiltered white light to illuminate an intraoral structure, that would conflict directly with the dependent claims’ express requirement to use colored filters.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“2. Summary Regarding Obviousness Challenge Because Patent Owner’s arguments and evidence persuasively rebut Petitioner’s assertion that the Ancestral Applications do not provide written description support for the challenged claims, Petitioner has not shown adequately that Babayoff ’529 is prior art to the challenged claims. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 would have been obvious over Babayoff ’529 and Atiya.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 10,750,151 - Tomofun, LLC v. Doggyphone LLCRehearing deniedPTAB · Dec 10, 2021 · IPR2021-00260 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Petitioner did not show the Board overlooked or misapprehended its arguments or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). “Substantial evidence is ‘such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.’” OSI Pharm., LLC v. Apotex” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Claim(s) Ground 35 U.S.C. § Reference(s)/Basis Challenged 1 7 102(b) Alasaarela1 2 8 103(a) Alasaarela 3 7–9 102(b) Beccaria2 4 7–9 103(a) Carelli,3 Beccaria 5 7–9 103(a) Bloksberg,4 Beccaria Pet. 4. Petitioner asserts that Alasaarela discloses the audio signal limitation for Grounds 1 and 2. Id. at 23–24, 31. Petitioner asserts that Beccaria discloses the audio signal limitation for Ground 3, and Carelli discloses the audio signal limitation for Ground 4. Id. at 36–37, 48. For Ground 5, Petitioner asserts that Bloksberg discloses the audio signal limitation. Id. at 60.” slip op. at 3
- BurdenDecided for patent owner
“As such, the Petition does not indicate with sufficient particularity that Petitioner relies on the Examiner’s finding as a basis for asserting that Bloksberg discloses the audio signal limitation and, thus, does not satisfy Petitioner’s burden on this point. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio- Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). Because the Petition did not indicate clearly that it was relying on the Examiner’s finding, we could not have misapprehended or overlooked such a position. In addition, Patent Owner was not afforded a fair opportunity to dispute any reliance on the Examiner’s finding or the reasoning underlying the finding.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We disagree with Petitioner’s characterization of Ground 3 as being based on obviousness. Rather, the Petition clearly asserts for Ground 3 that “Claims 7-9 are anticipated under 35 U.S.C. § 102 by Beccaria[].” Pet. 4; see also id. at 32 (“Ground 3 – Claims 7–9 Are Unpatentable As Anticipated By Beccaria[]”). Petitioner’s Ground 3 analysis of claim 7 relies on Beccaria disclosing each limitation, including the audio signal limitation. Id. at 32–40. Petitioner’s Rehearing Request does not direct us to any portion of the Petition for Ground 3 that asserts any claim limitation would have been obvious over Beccaria, alone or in combination with another reference. Accordingly, we are not persuaded that we misapprehended Petitioner’s argument with respect to Beccaria.” slip op. at 9
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,723,813
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.