• Envirotainer AB v. Doubleday Acquisitions, LLCInstituted
  PTAB · Jun 8, 2022 · IPR2022-00292 · APJ Eric C Jeschke · IPR · Institution

  The Board instituted IPR on claims 19–21, 23, 26–31, 33, 35–37, and 41 on all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “The mere fact that the additional prior art references relied on by Petitioner (i.e., Ekerot, Kuhn, Loeffler, and Sinclair) pertain to one or more of the same fields to which the art cited in prosecution also pertains is not sufficient alone to satisfy the first part of the Advanced Bionics framework by showing that these additional references are “substantially the same” as art previously presented to the Office. See Prelim. Resp. 45–46. Indeed, the prior art cited in petitions for inter partes review and the art cited during prosecution of the challenged patent will likely always relate to the same subject matter as that in the claims at issue. On these facts, we conclude that Petitioner bases at least the first three asserted grounds (Kuhn; Loeffler and Kuhn; Sinclair and Kuhn) on prior art and arguments that are not the same or substantially the same as the prior art or arguments before the Examiner. When considering the Petition as a whole, we find that it does not sufficiently implicate the concerns addressed by § 325(d) to warrant discretionary denial. Because the first part of the framework in Advanced Bionics is not met, we need not reach “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8–9.” slip op. at 12

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the 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. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 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.”).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art “would have at least a Bachelor’s degree in mechanical or structural engineering, or a related field, and two years of experience designing structures with comparable mechanical and/or structural elements to the subject matter of the ’855 Patent.” Pet. 10 (citing Jobin Decl. ¶¶ 22–25). Petitioner also states that “[a]dditional experience may compensate for less education.” Id. (citing Jobin Decl. ¶¶ 22–25). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record at this stage of the proceeding, including the prior art. See Prelim. Resp. 10; GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 14

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

    “same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. Neither Petitioner nor Patent Owner proposes express constructions for any claim terms. See Pet. 8. At this stage of the proceeding and based on the current record, we do not discern a need to construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 7,263,855
• MG Freesites Ltd. v. Scorpcast, LLCAll claims unpatentable
  PTAB · Apr 15, 2022 · IPR2020-01697 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 9–11, 14–17, 20–22, and 24–26 are unpatentable: Sterner anticipates several claims, and Sterner with Ahanger renders claims 11 and 22 obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’780 patent would have had the following education and experience: “a Bachelor’s degree in Electrical Engineering, Computer Engineering, or Computer Science (or the equivalent degree) plus approximately two years of work experience with technologies relating to 7 Geer, III et al., U.S. Patent Application Publication No. 2011/0112915 A1, published May 12, 2001 (Ex. 1005) (“Geer”). 8 Fink et al., U.S. Patent Application Publication No. 2009/0300475 A1, published Dec. 3, 2009 (Ex. 1006) (“Fink”). content annotation and/or content sharing among multiple users.” Pet. 17. Petitioner adds that “[m]ore education can supplement work experience and vice versa.” Id. (citing Ex. 1002 ¶¶ 1–21). Patent Owner does not dispute this level of skill. PO Resp. 10. We adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 11

  • Prior constructionPrior construction not adoptedDecided for patent owner

    “We recognize that our construction of “scrubber area” is different from the Consolidated EDTX Litigation. But as explained above, the ’780 patent describes non-scrubbing functionality in the scrubber area, e.g., user accessible controls 1004, 1006, and 1017. Moreover, we are constrained by our record, which differs from that of the Consolidated EDTX Litigation. For one, Petitioner is not a party to that litigation, and has provided persuasive arguments and evidence related to claim construction of this term in the instant proceeding. And, further, the cross-examination testimony of Patent Owner’s expert, Dr. Valerdi, was also not available in the Consolidated EDTX Litigation. Thus, while, pursuant to 37 C.F.R. § 42.100(b), we have considered the Consolidated EDTX Litigation’s Claim Construction Memorandum Order and Opinion, we determine that on our particular record, which differs from that before the EDTX, that the intrinsic and extrinsic evidence does not require all of the scrubber area to provide scrubbing functionality. To do otherwise would limit claims 15 and 25 to specific disclosed embodiments, which we decline to do based on the particular record in the instant proceeding.” slip op. at 20

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

    “same as that recited in claim 15. Claim 25 requires “the scrubber area comprising a slider tool that enables a user to scrub forwards through the first video by dragging the slider tool.” Ex. 1001, 48:62–67. We note, as the EDTX has done, that claim 25 uses an open-ended “comprising” transition that indicates the scrubber area may include more than the slider tool. Id.; see also Ex. 2090, 23. We further note that claim 25 does not itself expressly indicate what other components/features the scrubber area may include. Ex. 1001, 48:62–67. In this regard, the Specification of the ’780 patent teaches that at state 2012, the identified video reviews are provided for display on the user terminal, organized in categories, with selected representative item review frames displayed in the scrubber area (e.g., on the scrubber or adjacent to the scrubber). The entire scrubber area, or a subset thereof, including the representative frame, may be a hot spot, wherein if the user clicks anywhere in the hotspot, the corresponding item review is played back. Thus, optionally, the searching user does not have to manually manipulate the scrubber control to the desired item review start location. Ex. 1001, 31:61–32:4 (emphases added). Additionally, with reference to Figure 10, the ’780 patent teaches that tags 1016 of items “may be displayed in the scrubber area 1002.” Id. at 28:66–29:1 (emphasis added). Further, “[i]n certain embodiments, a viewer may click on or otherwise select a given product image . . . or tag in the scrubber area . . . and the video player will jump to the corresponding item review.” Id. at 29:1–4. With respect to the above disclosure, we observe that the ’780 patent teaches that the entire scrubber area “may” be a hot spot for clicking a particular time for playback, and that in “certain embodiments” a viewer can click on a tag in the scrubber area to “jump to the corresponding item review.” We read these teachings to be permissive rather than proscriptive, without requiring all components in the scrubber area to have scrubbing functionality. See id. Our reading is consistent and supported by the Specification. For example, with reference to Figure 10, the ’780 patent teaches that tags 1016 “may be displayed in the scrubber area 1002.” Ex. 1001, 28:66–29:1. However, as shown in Figure 10, tag 1016 is located on the same bar as user accessible controls 1004, 1006, 1017. Id. at 28:21– 29. The ’780 patent teaches that these other controls, e.g., 1004, 1006, 1017, “may be provided via which a viewer of the video review can purchase the item being reviewed, poll their friends regarding the item being reviewed (as similarly described elsewhere herein) . . . and share the review (e.g., via instant message, email, posting on a social network page, or otherwise).” Id. at 28:21–29. Although tag 1016 may arguably include scrubbing functionality, the other controls 1006, 1017 that are located in the same area do not have that same scrubbing functionality. Id. Moreover, scrubber area 1002 in Figure 10 appears as a contiguous rectangle that includes a volume control and “full screen” area to click, both without scrubbing functionality.9 Id. at Fig. 10. In this way, we understand the Specification to teach that the scrubber area more broadly includes an area adjacent to the scrubber bar that may not have scrubbing functionality. See Ex. 1001, 2:43–48. Consequently, we do not construe the plain and ordinary meaning of “scrubber area” to require scrubbing functionality in the area adjacent to the scrubber bar.” slip op. at 17

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

    “(3) Discussion Consistent with Petitioner’s arguments, we find that Sterner discloses a VEE including cue point editor screen 600 that further comprises video frame 602 configured to display video data, where the video frame includes comment area 606. Ex. 1004 ¶ 169. Sterner further teaches that comment area 606 may appear on the screen when a client places a mouse pointer over cue point location indicator 616. Id. Additionally, Sterner provides that [i]n other examples, the text information in or associated with the comment area 606 may be indexable, searchable, or selectable (e.g. able to be copied to a text file); it may be related to video data, cue point information, or user data. Id. (emphasis added). Further, Sterner teaches that the information in comment area 606 may include interactive elements, like hyperlinks or GUI elements. Id. Based on this disclosure, we do not read Sterner so narrowly as to restrict the information in comment area 606 to selection only by copying text information to a text file. Sterner itself does not teach that the selection of text must be done only by copying the text. Indeed, Sterner expressly uses “e.g.,” which indicates that the copying of text, is one example of how the text information may be selected, indexed, or searched. Ex. 1004 ¶ 169. Moreover, Sterner teaches that comment area 606 includes interactive elements like hyperlinks or GUI elements, which allow the client to, among other things, navigate to a different location. Id. This described functionality of comment area 606 is at odds with Patent Owner’s suggestion that selection can occur solely by copying text. See PO Resp. 13. Additionally, we disagree with Patent Owner’s position that Sterner only teaches that hyperlinks or GUI elements can be included in comment area 606 in addition to, or instead of, the first image and/or first text that was received from a first user device. See PO Resp. 14; Sur-reply 16. Sterner teaches that “comment area 606 may display text, images, videos, or other information describing or adding to the footage seen in the video footage area 604.” Ex. 1004 ¶ 168. In the next paragraph, Sterner expressly states that the information in comment area 606 includes GUI elements or hyperlinks that may be related to cue point information. Id. ¶ 169. Consistent with this disclosure, we observe once more that Sterner teaches that cue point information includes “any useful information” such as icons, associated images, text, and GUI information. Id. ¶¶ 128, 169. Thus, taken as a whole, we do not read Sterner to teach that comment area 606 includes” slip op. at 47

  Patent outcomesUS 9,965,780 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,965,780
• Brunswick Corporation v. Volvo Penta Of The Americas, LLCAll claims unpatentable
  PTAB · Apr 13, 2022 · IPR2020-01512 · APJ Eric C Jeschke · IPR · Final written decision

  Claims 1–18 are unpatentable: claims 1–3, 11–13, 15, 17, and 18 as anticipated by Kiekhaefer, and claims 4 and 7 as obvious over Kiekhaefer and Stechauner.

  RulingsFinal written decision

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

    “3. The Claims Are Limited to “Stern Drives” Patent Owner argues that independent claims 1, 8, and 18 are limited” slip op. at 10

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

    “102(a) Kiekhaefer 15, 17, 18 18” slip op. at 118

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “presumption of nexus as to the Forward Drive. As noted by Petitioner (Pet. Reply 16 n.4), the Federal Circuit has made clear that the coextensiveness requirement is separate from the requirement that the product or process embodies the claims. See Fox Factory, 944 F.3d at 1377 (“We reject [the patent owner’s] attempt to reduce the coextensiveness requirement to an inquiry into whether the patent claims broadly cover the product that is the subject of the evidence of secondary considerations.”). Here, Patent Owner concludes that the “Forward Drive is a commercial embodiment of the ’692 Patent and coextensive with the claims” and cites to one paragraph of one of Dr. Winkel’s Declarations. PO Resp. 52 (citing 3d Winkel Decl. ¶ 51). Even assuming that this reliance on Dr. Winkel’s Declaration is not improper incorporation by reference (Pet. Reply 16 n.4 (citing 37 C.F.R. § 42.6(a)(3)), Dr. Winkel (via his Appendix C) addresses why the Forward Drive embodies the claims, but does not even mention, let alone provide testimony supporting Patent Owner’s conclusion regarding, the separate coextensiveness requirement. See 3d Winkel Decl. ¶ 51.” slip op. at 66

  Patent outcomesUS 9,630,692 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,630,692
• Edwards Lifesciences Corporation / Edwards Lifesciences LLC v. Colibri Heart Valve LLCAll claims unpatentable
  PTAB · Mar 24, 2022 · IPR2020-01649 · APJ James A Tartal · IPR · Final written decision

  Claims 1–5 are unpatentable as obvious over Bessler with Leonhardt and Klint, and Bessler with Teitelbaum and Klint; anticipation by Paniagua was not shown.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “A [person of ordinary skill in the art] as of January 4, 2002 ‘would have had a minimum of either a medical degree and experience working as an interventional cardiologist or a Bachelor’s degree in bioengineering or mechanical engineering (or a related field) and approximately two years of professional experience in the field of percutaneously, transluminally implantable cardiac prosthetic devices. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.’ Resp. 2 (quoting IPR2020-01454, Paper 1, 23); Ex. 2019 ¶¶ 21, 22. According to Patent Owner, Petitioner’s proposed definition does not allow for the “differentiation among those who possess ordinary skill in the art versus those who possess extraordinary skill in the art.” Resp. 2–3 (citing” slip op. at 15

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “one of extraordinary skill in the art,” because at his deposition “he testified that in forming his opinions, he applied all of his experience up until January 4, 2002.” Resp. 3 (citing Ex. 2020, 20:5–14). According to Patent Owner the “agreed upon definition of a person of ordinary skill required “two years of experience,” and in 2002 Dr. Goldberg had “been practicing in the relevant field for approximately 17 years.” Id. We find Patent Owner’s argument unpersuasive, because it misrepresents Dr. Goldberg’s testimony, as follows: Q. Did you apply all of the qualifications and experience that you set forth in your declaration up until January 4th, 2002, in reaching the opinions you set forth in your declaration, other than the Paniagua opinions? A. The phrasing of the question is slightly confusing, but I believe that what you're asking is, did I consider the perspective of somebody whose knowledge -- a person skilled in the art’s knowledge was January 4th, 2002, and before. And hopefully, I answered your question correctly, but if not, it was due to my misunderstanding.” slip op. at 8

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

    “related district court proceedings construing “‘flares at both ends in a trumpet-like configuration’ to mean ‘having, at each end, a widening that resembles the bell of a conventional musical trumpet.’” Resp. 12 (citing Ex. 2025, 46; Ex. 2026; Ex. 2019 ¶¶ 66, 67). We discern no dispute over the meaning of “flares at both ends in a trumpet-like configuration” that requires an express construction. See Reply 23–30. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Cir. 1999)).” slip op. at 17

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

    “Thus, in light of Applicants’ repeated statements during prosecution that the prosthetic heart valve cannot be collapsed onto a pusher member that terminates proximally to the valve, Petitioners’ proposed construction must fail. Petitioners’ construction of “collapsed onto” to mean “collapsed in contact with” specifically includes “collapsed onto” a pusher member that terminates proximally to the valve as in Bessler, which the prosecution history makes clear is not the meaning of “collapsed onto.” Id. at 17 (citing Ex. 2019 ¶¶ 75–77). In its Reply, Petitioner argues that Figure 8 of the ’739 patent is “inconsistent with the [S]pecification.” Reply 19. We disagree because Figure 8 is part of the Specification. Petitioner further argues that Figure 8 mislabels the distal end as the “proximal end” of the catheter, and, therefore, the entire figure should be “disregarded” because of such “obvious errors.” Id. at 21–23. Petitioner has shown no sufficient basis to “disregard” Figure 8, much less that Figure 8 is determinative of whether “onto” means “in contact with,” as Petitioner alleges. See Sur-reply 12–15. Likewise, Petitioner’s argument that Patent Owner “imposes an unsupported temporal limitation on ‘collapsed onto’” when Patent Owner addressed Klint provides no support for Petitioner’s proposed construction of “onto.” Reply 22–23. Consistent with our Decision on Institution, we determine on the full record that Petitioner fails to show sufficiently that “onto” means “in contact with.” See Inst. Dec. 23–27. Accordingly, a “delivery system . . . wherein the prosthetic heart valve is collapsed onto the pusher member” does not encompass a delivery system with a prosthetic heart valve only shown to be “in contact with” a pusher member. We find no further express construction” slip op. at 22

  Patent outcomesUS 9,125,739 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,125,739
• Sage Products, LLC v. Purewick CorporationAll claims unpatentable
  PTAB · Feb 14, 2022 · IPR2020-01426 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 3–8, and 17–19 are unpatentable as anticipated by Mahnensmith; the Board also found them obvious over Kuntz 166, DesMarais, and ordinary skill.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). To establish anticipation, “all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that “a POSITA would be a clinical practitioner with an advanced medical degree, or an individual having a bachelor’s degree in engineering, knowledgeable in the field of normal micturition (voiding) and with experience in the field of urine management and incontinence care including devices for urine collection and management.” Pet. 14 (citing Ex. 1002 ¶ 23). Patent Owner argues that a POSITA “would have had a bachelor’s degree in engineering (e.g., chemical or material sciences), or an advanced medical degree, and at least 1–2 years of experience in designing products related to the biomedical application of material and chemical sciences.” PO Resp. 8 (citing Ex. 2060 ¶ 8). We agree with Petitioner that the ’508 patent does not involve advances in “material or chemical sciences”; rather, it describes a vacuum urine collector using “moisture-wicking article,” which the patent describes as including paper towel, gauze, felt, and similar materials, secured over a perforated container using, e.g., elastic bands, clips, and snaps. Ex. 1001, Abstract, 4:1–15; Ex. 1017 ¶ 5. The ’508 patent does not focus on “principles of adhesion and cohesion” and “hydrophobic and hydrophilic materials,” as Patent Owner alleges. See PO Resp. 9–10. Instead, we agree with Petitioner that knowledge of urine collection devices is what is necessary, rather than the more generalized field of “biomedical application of material and chemical sciences.” Ex. 1017 ¶¶ 5–7. Accordingly, 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 in 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). We note, however, that we reach the same decision under either definition of a person of ordinary skill in the art.” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Here, we find the testimony of Dr. Newman of why pad 112 of Mahnensmith cannot have an uncovered opening credible, well-reasoned, and entitled to significant weight. See Ex. 1017 ¶¶ 64–68. We note that In an anticipation analysis, the dispositive question is whether a skilled artisan would “reasonably understand or infer” from a prior art reference that every claim limitation is disclosed in that single reference. Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003). Expert testimony may shed light on what a skilled artisan would reasonably understand or infer from a prior art reference. Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336, 1345 (Fed. Cir. 2018). Acoustic Tech., Inc. v. Itron Networked Sols., Inc., 949 F.3d 1366, 1373 (Fed. Cir. 2020). Dr. Newman explains that Mr. Jezzi fails to adequately account for what Figure 4 depicting pad 112 would have disclosed to a person of ordinary skill in the art. Ex. 1017 ¶ 64. Moreover, Dr. Newman explains that a person of ordinary skill would understand that Mahnensmith’s pad 112 cannot have uncovered openings because Mahnensmith states that its moisture-wicking article is “removably affixed to the outermost face of permeable layer 116 by use of double-stick tape located around the perimeter of the porous sheet member 136…” (Ex. 1004 at ¶30.) If there is an exposed opening at the perimeter, as Mr. Jezzi claims, that would mean that the double-sided tape would cover it, so it is not an “opening.” A POSA would not assemble a vacuum-assisted urine collection device like Mahnensmith’s just to cover its vacuum openings with tape, as that would defeat the purpose of having any inlet openings there in the first place. Moreover, the opening(s) would make it difficult for the tape to stay secure in that location. Ex. 1017 ¶ 67. In addition, Dr. Newman testifies” slip op. at 36

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

    “In an anticipation analysis, the dispositive question is whether a skilled artisan would “reasonably understand or infer” from a prior art reference that every claim limitation is disclosed in that single reference. Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003). Expert testimony may shed light on what a skilled artisan would reasonably understand or infer from a prior art reference. Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336, 1345 (Fed. Cir. 2018). Acoustic Tech., Inc. v. Itron Networked Sols., Inc., 949 F.3d 1366, 1373 (Fed. Cir. 2020).” slip op. at 36

  Patent outcomesUS 8,287,508 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,287,508
• Nespresso USA, Inc. v. K-Fee System GMHBInstitution denied
  PTAB · Jan 18, 2022 · IPR2021-01222 · APJ James J Mayberry · IPR · Institution

  The Board denied institution under § 325(d), finding substantially the same prior art or arguments had been presented to the Office and no material examiner error was shown.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “stated in the Petition, standing alone, supports a finding of material examiner error, that argument is not developed adequately and, therefore, is unpersuasive on this record. Pet. 84–85. Petitioner bears the burden of showing that the Office erred, for example, by “misapprehending or overlooking specific teachings of the relevant prior art whose teachings impact patentability of the challenged claims.” Advanced Bionics, Paper 6 at 8. Where “the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under” Becton, Dickinson factors (e) and (f). Advanced Bionics, Paper 6 at 10. As explained above, when assessing factor (e), we consider whether Petitioner “point[s] out sufficiently how the examiner erred in its evaluation of the asserted prior art.” Supra 8. When assessing factor (f), in turn, we look for some explanation of how or why “the extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments.” Id. Petitioner addresses neither of those issues adequately, if at all. Pet. 81–85; Prelim. Reply 5–10. The closest Petitioner comes to addressing those issues is by observing, “the obviousness analysis” in the Petition “is supported by expert testimony, which the Examiner did not have.” Pet. 85. That observation is undeveloped by further analysis and, therefore, is ineffective to show that the Examiner materially erred by failing to discuss the same prior art combinations advanced in the Petition, or that “additional evidence and facts presented in the Petition warrant reconsideration of the prior art” previously presented to the Office. Becton, Dickinson, Paper 8 at 18.” slip op. at 26

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

    “institute review. See also 37 C.F.R. § 42.4(a) (2021) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons set forth below, upon considering the Petition, Preliminary Response, Preliminary Reply, Preliminary Sur-reply, and evidence of record, we exercise discretion under 35 U.S.C. § 325(d) and do not institute an inter partes review.” slip op. at 2

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for patent owner

    “namely, whether the claimed invention is entitled to a priority date of July 22, 2010, based on certain German priority documents, thereby disqualifying Jarisch as prior art under 35 U.S.C. § 102(e). See Pet. 15–18 (discussing priority to the German applications), 22–23 (asserting Jarisch as prior art under § 102(e)), 85 (arguing that the examiner did not consider Jarisch because of an error in priority); Ex. 1002–176, Part 1, 278. Pet. 15–18 (arguing that the challenged claims are not entitled to priority based on the German priority documents), 85 (arguing the examiner applied an incorrect priority date, based on the German priority documents, to antedate Jarisch); Prelim. Resp. 4–6, 16–22; Prelim. Reply 8–10; Prelim. Sur-reply 7–10. Petitioner focuses only on whether the examiner erred in assessing that argument. Pet. 85. Petitioner does not, and cannot, submit that the Office never considered the issue during patent prosecution, at least with respect to applications in the priority chain of the ’177 patent. The Office, in fact, expressly considered whether “Jarisch is not prior art” because the challenged claims are “entitled to a priority date of 22 July 2010” based on the German priority documents. Ex. 1002–176, Part 1, 278 (prosecution history for the grandparent application). The Office also expressly responded to Patent Owner’s argument on that point as follows: “This urging is not deemed persuasive.” Id. This issue represents a second, significant argument previously presented to the Office.” slip op. at 20

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “B. Discretionary Denial under 35 U.S.C. § 314(a) Patent Owner also argues that we should exercise our discretion under 35 U.S.C. § 314(a) in light of parallel district court litigation involving the parties and the ’177 patent. Prelim. Resp. 36–44; Prelim. Sur-reply 1–4. Because we exercise our discretion under § 325(d) and deny the Petition, we do not reach this issue.” slip op. at 28

  § 102 anticipationDiscretionary denial
  Patents in suitUS 10,858,177
• Nespresso USA, Inc. v. K-Fee System GmbHInstitution denied
  PTAB · Jan 18, 2022 · IPR2021-01221 · APJ Grace Karaffa Obermann · IPR · Institution

  The Board denied institution of IPR on claims 1–15 under § 325(d), finding substantially the same prior art or arguments had been presented to the Office and no material Examiner error was shown.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “the same prior art or arguments asserted in the Petition and, if so, we resolve whether Petitioner shows sufficiently that the Examiner erred in a manner material to the patentability of the challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”).” slip op. at 10

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

    “challenged claims and (2) that the claimed invention, including the feature relating to barcode location, would not have been obvious over the combination of prior art references applied by the Examiner, including Jarisch. Id. at 393–404. Where both alternatives were before the Examiner, it is not at all clear that “the Examiner applied an incorrect priority date” or otherwise accepted that Jarisch does not qualify as prior art. Pet. 85.” slip op. at 23

  § 102 anticipationDiscretionary denial
  Patents in suitUS 10,858,176
• Schlumberger Technology Corporation v. Dynaenergetics Europe GmbHInstitution denied
  PTAB · Dec 14, 2021 · PGR2021-00089 · APJ Frances L Ippolito · PGR · Institution

  The Board denied institution on all claims because the petition did not show a reasonable likelihood that any challenged claim was unpatentable.

  RulingsInstitution decision

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

    “We are authorized to institute a post-grant review where a petition demonstrates that it is more likely than not that at least one challenged patent claim is unpatentable. See 35 U.S.C. § 324. We are never compelled to institute a review, however, because institution is discretionary. Id.; cf. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that under § 314(a), “the PTO is permitted, but never compelled, to institute an IPR proceeding”). As in an IPR proceeding, we deny post-grant review, for example, where a petition fails to identify “with particularity” the challenges or evidence supporting them. Cf. Harmonic, 815 F.3d at 1363; 35 U.S.C. § 322(a)(3); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3)). For the reasons discussed below, we deny the institution of post-grant review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art (“POSITA”) “would be expected to have at least a Bachelor’s of Science degree in Mechanical or Electrical Engineering and at least two years of industry experience related to assembling, operating, and/or designing perforating tools.” Pet. 10 (citing Parrott Decl. ¶ 28). Patent Owner “believes that Petitioner’s definition suggests that a field technician who merely assembles guns could be a POSITA, which is incorrect,” and instead proposes “a POSITA would be expected to have a Bachelor’s of Science degree in Mechanical or Electrical Engineering and at least two (2) years of industry experience related to designing perforating gun systems.” Prelim. Resp. 35–36 (citing Ex. 2001 ¶ 52). For the purposes of institution, we do not see a material difference between the parties’ proposed definitions. Nonetheless, because Petitioner’s proposed definition of the level of ordinary skill in the art appears consistent with the record, including the prior art, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner for purposes of this Decision. See GPAC Inc., 57 F.3d at 1579.” slip op. at 7

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

    “D. Claim Construction We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.200(b) (2020). This standard requires that we construe claims “in accordance with the ordinary and customary meaning of such claim[s] as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an AIA trial proceeding). Patent Owner proposes constructions for “shaped charge receptacle” and “retention mechanism extending from a portion of the body.” Prelim. Resp. 36–38; see also PO Sur-reply 1–5. In its Reply, Petitioner disputes Patent Owner’s proposed constructions. Pet. Reply 2–3. For purposes of this Decision, we determine that no claim term requires explicit construction. See Vivid Techs., 200 F.3d at 803 (construing explicitly only those claim terms in controversy and only to the extent necessary to resolve the controversy).” slip op. at 8

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

    “In addition, we determine that Petitioner has not sufficiently explained its alternative argument based on the “simple substitution of the circular openings (for inserting the shaped charges) in Vann for the circular openings with tabs in Von Kaenel.” Pet. 90 (citing Parrott Decl. ¶ 485). As an initial matter, Petitioner’s proposed substitution lacks sufficient clarity because it remains unclear which of Vann’s structures remain in the resulting combination. By emphasizing substitution of the “circular openings” alone in Vann, Petitioner suggests that Vann’s tabs 62 remain without explaining why the tabs are necessary if Von Kaenel’s tabs retain the shaped charges. See id. As discussed, Vann requires that the plurality of charge holders are placed in tandem and jointly cooperate together to make up a charge carrier 48. Ex. 1009, 5:50–56. To do so, tabs 62 formed by extended lateral edges 56, 58 are aligned in an overhanging relationship relative to the central lateral face 70 of the two adjacent charge holders. Id. at 6:61–64, Fig. 5. If the proposed combination employs Von Kaenel’s tabs to retain the charges, preserving the overhanging relationship of Vann’s tabs 62 to retain the charges would appear superfluous, and if Petitioner proposes retaining Vann’s tabs 62 but removing the overhanging relationship, Petitioner does not describe such a structure. In either case, a substitution of Vann’s circular openings alone while Vann’s tabs 62 remain in the resulting combination lacks adequate specificity and support. For completeness, we assess Petitioner’s argument based on the assumption that Petitioner proposes removing Vann’s tabs 62 entirely from the proposed combination. Per this theory, a POSITA would have simply substituted Von Kaenel’s side locking tabs 610 for Vann’s tabs 62 because a POSITA would have recognized the advantages of having the retention mechanisms be a part of the body in order reduce the number of tools and assembly required, to allow for differing offsets, as well as to simplify manufacturing, as discussed in each of Vann, Brooks, and Von Kaenel. Pet. 89–90 (emphasis added) (citing Parrott Decl. ¶ 484; Ex. 1013, Abstract, 2:60–3:16, 5:20–41, 8:41–58; Ex. 1009, 1:18–21, 2:22–29, 1:66–67, 1:41– 43, 3:63–68, 4:14–24; Ex. 1010, 9:48–53, 1:52–64). However, Petitioner has not explained sufficiently how this substitution would “simplify manufacturing” for Vann’s specific stacked formation. Indeed, Vann’s charge carrier is formed by a plurality of charge holders that jointly cooperate in tandem, which includes the cooperation of extended lateral edges that overhang the central lateral face of adjacent charge holders. See Ex. 1009, 6:61–64; Fig. 5. Substitution of Vann’s tabs 62 with Von Kaenel’s side locking tabs 610 would affect Vann’s tandem construction if tabs 62 are removed. See Pet. 80–95. More importantly, Petitioner has failed to explain adequately why a POSITA would have sought to make this combination to simplify manufacturing or reduce assembly given Vann’s specific charge carrier design, which is dependent on the overhanging relationship between separate, stacked charge holders. Id. Further, Mr. Parrott’s testimony is not helpful on this point. In paragraph 485 (cited by Petitioner), Mr. Parrott states that Von Kaenel’s tabs (retention mechanisms) would have been applied with ease to Vann’s perforating gun apparatus, which would have yielded predictable results. A POSITA would have recognized the combination as a simple substitution of the circular openings for inserting the shaped charges in Vann for the circular openings with tabs in Von Kaenel, and a POSITA would have had a reasonable expectation of success. Parrott Decl. ¶ 485 (emphases added). Like the Petition, these statements by Mr. Parrott are conclusory and do not explain the basis for his conclusions. See id. Looking elsewhere, paragraph 484 mirrors statements and citations in the Petition, which as discussed, are insufficient. Id. ¶ 484. And although paragraph 483 articulates the advantages of using “Von Kaenel’s superior teachings in order to better achieve the goal of reliably securing and positioning the shaped charges,” Mr. Parrott neglects to explain the proposed substitution in the context of Vann’s specific charge carrier design that relies on the overhanging edges/tabs of the charge holders for the in tandem assembly and construction. Id. ¶ 483 (citing Ex. 1013, Fig. 6B, 8:59–67). The Supreme Court has made clear that we apply “an expansive and flexible approach” to the question of obviousness. KSR, 550 U.S. at 415. Whether a patent claiming the combination of prior art elements would have been obvious is determined by whether the improvement is more than the predictable use of prior art elements according to their established functions. Id. at 417. Reaching this conclusion, however, requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. Id. Here, Petitioner has failed to make the threshold showing for the” slip op. at 21

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,844,696
• Samsung Electronics Co., Ltd. / Taiwan Semiconductor Manufacturing Co. Ltd. v. Arbor Global Strategies LLCAll claims unpatentable
  PTAB · Nov 24, 2021 · IPR2021-00391 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1, 3, 5–9, 11, 13–17, 19–22, 25, 26, 28, and 29 are unpatentable as anticipated by Alexander or obvious over the stated prior-art combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We adopt Petitioner’s proposed level of ordinary skill in the art as we did in the Institution Decision, which comports with the teachings of the ’035 patent and the asserted prior art. See Inst. Dec. 19. Patent Owner’s proposed level is slightly lower than Petitioner’s but it overlaps with Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed level, the outcome would remain the same. C.” slip op. at 9

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

    “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). Under the same standard applied by district courts, claim terms acquire their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Based on the current record, no terms require explicit construction. See, e.g., 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))). D.” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “does not support Patent Owner’s argument about “undue experimentation” with respect to how to combine the teachings of Koyanagi and Alexander to arrive at the claimed processor module. In the passage containing the quoted testimony that Patent Owner relies upon, Dr. Shanfield testifies as follows: You have obviously got to have a circuit in mind that you're wanting to create a system-level circuit, a module-level circuit; and so you’re going to need to consider which connections you want a TSV connecting to something below. So you don't just slap it together without worrying about what connects to what. On the other hand, the putting together of the -- in Bertin, he describes the putting together of these chips and how that can be done in detail. And that piece of it is -- I guess you could characterize that as something that comes with the process and in itself isn’t something you think specifically about every one of 50,000 connections. They’re all done by the process that he gives an example of. Ex. 2014, 82:4–19.13 Dr. Shanfield’s testimony indicates that artisans of ordinary skill readily would have been able to connect different die circuits together “obviously” with “a circuit in mind . . . to create a system-level circuit, [or] a module-level circuit . . . consider[ing] which [TSV] connections [she] 13 Bertin (Ex. 1009) is employed in the ground discussed below. See infra § II.G. want[s].” See id. As Petitioner similarly argues, “[n]othing in Dr. Shanfield’s testimony, however, suggests that Petitioner ‘slap[ped] together’ Koyanagi and Alexander.” Reply 14; Ex. 1030 ¶ 79 (testifying that Patent Owner quotes his testimony “out of context” and that “at the system or circuit design level, each TSV is an interconnection between specific circuits”).” slip op. at 34

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

    “Initially, Alexander, a prior art reference, carries a presumption of enablement. Antor Media, 689 F.3d at 1287–1288; Amgen, 314 F.3d at 1355. Patent Owner argues that the presumption does not apply because “for a non-patent publication, such as Alexander, to be presumptively enabling, it must have been “cited by an examiner . . . barring any showing to the contrary by a patent applicant or patentee.” PO Resp. 13 (quoting Antor Media, 689 F.3d at 1288. Patent Owner also argues that “[w]hile it is true that a ‘[e]nablement of an anticipatory reference may be demonstrated by a later reference,’ the Federal Circuit has made clear that the later reference ‘must show that the claimed subject matter was in possession of the public more than one year prior to the applicant’s filing date.’” Id. at 16 (quoting Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1379 (Fed. Cir. 2001)).8 Petitioner argues that Patent Owner “mispresents the law.” As Petitioner argues, ‘[a] prior art printed publication does not need to have been ‘cited by an examiner’ to be presumed enabling.” Reply 5. In Corephotonics, 2021 WL 2577597, at *4 (nonprecedential), in the context of AIA trial proceedings, the court held that “regardless of the forum, prior art patents and publications enjoy a presumption of enablement, and the patentee/applicant has the burden to prove nonenablement for such prior art” and that “[i]t was error for the Board to suggest otherwise.” The 1995 publication date of Alexander antedates the’035 patent’s effective filing date of December 5, 2001 by more than six years. See Ex. 1006, 1 (“0-7803-2702-1/95 $ 4.00 © IEEE-1995”); PO Resp. 4 (specifying “December 5, 2001” as “the earliest effective filing date of the ’035 Patent”); Inst Dec. 20–25 (finding the publication date of Alexander is 8 The “more than one year prior to the applicant’s filing date” requirement arises from “anticipation under 35 U.S.C. § 102(b).” See Bristol-Myers Squibb, 246 F.3d at 1379.” slip op. at 14

  Patent outcomesUS RE42,035 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
• Samsung Electronics Co., Ltd. / Taiwan Semiconductor Manufacturing Co. Ltd. v. Arbor Global Strategies LLCAll claims unpatentable
  PTAB · Nov 24, 2021 · IPR2020-01020 · APJ Karl D Easthom · IPR · Final written decision

  The Board held claims 1, 5, and 7 anticipated by Alexander, and all challenged claims unpatentable as obvious over the stated combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner contends that “a person of ordinary skill in the art . . . would have had a Bachelor’s degree in Electrical Engineering or a related and either (1) two or more years of industry experience; and/or (2) an advanced degree in Electrical Engineering or related field.” PO Resp. 4–5 (citing Ex. 2015 ¶ 33). We adopt Petitioner’s proposed level of ordinary skill in the art as we did in the Institution Decision, which comports with the teachings of the ’035 patent and the asserted prior art. See Inst. Dec. 19. Patent Owner’s proposed level is slightly lower than Petitioner’s but it overlaps with Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed level, the outcome would remain the same. C.” slip op. at 8

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

    “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). Under the same standard applied by district courts, claim terms acquire their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Based on the current record, no terms require explicit construction. See, e.g., 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))). D.” slip op. at 9

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

    “In other words, contrary to Patent Owner’s arguments, Alexander need not enable “wafer-thinning technology,” because challenged claims 1, 5, and 7 at issue here do not require that technology. Even so, the ’035 patent admits the “wafer-thinning technology” was known and “developed by Tru-Sci Technologies” prior to the invention. See Ex. 1001, 2:20–30; Prelim. Resp. 18–19 (citing Ex. 1001, 2:20–30; Ex. 2008); Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1379 (Fed. Cir. 2001) (“Enablement of an anticipatory reference may be demonstrated by a later reference”). Accordingly, an artisan of ordinary skill reading Alexander 9 Patent Owner does not challenge this preliminary finding in its Response. After a full review of the record, we incorporate and adopt this finding as supported by a preponderance of the evidence. would have considered Alexander enabled for such known technology at the time of the invention.10” slip op. at 16

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

    “Contrary to these arguments, claim 9 does not recite or require a “stacked die hybrid,” “buffer cells,” any improvements in FPGA reconfiguration times, or a “3D IC.” Claim 9 recites a “reconfigurable computer system” in the preamble, but it does not even recite how the “memory” and “processor” functionally or structurally relate to the “first and second integrated circuit die elements” of the “processor module.” As indicated above, Alexander carries a presumption of enablement as a prior art reference. See Antor Media, 689 F.3d at 1288; Amgen, 314 F.3d at 1355. Alexander employs multi-chip module fabrication techniques “to establish electrical contacts between the interconnect substrate and pads on individual dies.” Ex. 1006, 4. As to obviousness, Petitioner relies on known systems that include a microprocessor, FPGA, and memory. Pet. 22–23 (citing “APA Figure 1”). Petitioner persuasively shows that an artisan of ordinary skill readily could have connected the known FPGA module in a processor and memory system as a substitute for a prior art FPGA, with the system performing as predicted, as evidenced by the block diagram wiring connections in admitted prior art Figure 1 of the ’035 patent, in order to save space and increase processing speed with a reasonable expectation of success. See Pet. 10–11, 21–25 (citing Ex. 1002 ¶¶ 85–93). Patent Owner also alleges thermal issues in Alexander render the claimed combination “inoperable.” PO Resp. 25–28. Again, however, Patent Owner relies on a module or stack of a “3D FPGA with other power hungry components, such as logic dies including microprocessors” to support its arguments. Id. at 27. This argument mischaracterizes the breadth of claims 9, 13, and 15, which do not require a stack that includes a 3D FPGA stack with a microprocessor and memory in that stack, as Petitioner shows and as outlined above. Based on the foregoing discussion, Petitioner shows persuasively that” slip op. at 25

  Patent outcomesUS RE42,035 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham

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.