• Albaad Massuot Yitzhak, Ltd. / Albaad USA, Inc. v. Edgewell Personal Care Brands, LLCInstitution denied
  PTAB · Jul 17, 2017 · IPR2017-00693 · APJ Amanda F Wieker · IPR · Institution

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

  RulingsInstitution decision

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

    “We have jurisdiction under 35 U.S.C. § 314(a), which provides that an 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.” See also 37 C.F.R § 42.4(a) (delegating authority to the Board). Taking into account the arguments presented in the Preliminary Response, we conclude that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing claims 1, 2, 4, 7–10, 12, 14–16, 18, 21–23, 25, 27–29, 31, 33–37, and 39 of the ’522 patent are unpatentable. Accordingly, we decline to institute an inter partes review.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “Second, we are not persuaded by Petitioner’s contention that Wada inherently discloses this limitation. Pet. 43. Petitioner has not shown that the tip of Wada’s tampon 3 necessarily possesses a greater density than a region adjacent the tip. See Continental Can, 948 F.2d at 1268 (explaining that the evidence “must make clear that the missing descriptive matter is necessarily present”). To the contrary, both the Petition and the Hull 2 The cited portions of the Hull Declaration closely mirror the Petition. Declaration lack persuasive technical reasoning to explain how or why “compress-molding” Wada’s tampon would necessarily result in a higher density at the tip region, as compared to adjacent regions of the pledget. Pet. 43; Ex. 1036 ¶¶ 116–117; see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Furthermore, the record suggests that compression of a tampon does not necessarily result in a tip with a greater density than adjacent regions. Ex. 1001, 5:45–48. For example, if a tip includes less dense material, compression may result in a tip with the same density as the rest of the pledget. Id. Because Wada does not specify the starting density or distribution of its absorptive fibers, we are not persuaded that compress-molding those fibers would necessarily result in a higher density at the tip region. Although a higher relative density may result, inherency “may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Continental Can, 948 F.2d at 1269 (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).” slip op. at 9

  • BurdenNot shown unpatentable

    “Furthermore, the Petition fails to identify clearly what it contends to be the “tapered tip,” such that its length could be compared to the length of the applicator’s cuts to determine whether this claim limitation is met. For example, the Petition at page 44 states that the “tapered tip is shown to be shorter than the barrel’s insertion tip,” but does not define what portion of Wada’s structure is understood to be the “tapered tip.” Pet. 44. The Hull Declaration similarly fails to identify the tapered tip with particularity. Ex. 1036 ¶ 118. Thus, for these reasons, Petitioner has not established that Wada anticipates independent claims 1, 9, 22, 27, 34, or 39, or claims 2, 4, 7, 8, 10, 12, 14, 23, 25, 28, 29, 31, 33, and 35–37, which depend from independent claims 1, 9, 22, 27, 34, or 39.” slip op. at 12

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

    “We agree with Patent Owner. The Petition states that the claimed relative densities were “well known in the art before 2003,” but does not provide persuasive evidentiary support for this statement. Pet. 78. Indeed, cited paragraphs 95–98 of the Hull Declaration discuss prior art tampons having petals or tapered designs, and prior art tampons formed by compression, but do not discuss prior art tampons having the claimed density. Ex. 1036 ¶¶ 95–98. Cited paragraph 225 asserts that the claimed density was known, but provides no support for this statement, instead merely citing back to paragraphs 95–98. Id. ¶ 225; see In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (explaining that Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements”). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight” and, here, we assign Mr. Hull’s testimony no weight. 37 C.F.R. § 42.65(a).” slip op. at 14

  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,192,522
• Albaad Massuot Yitzhak, Ltd. / Albaad USA, Inc. v. Edgewell Personal Care Brands, LLCInstitution denied
  PTAB · Jul 17, 2017 · IPR2017-00694 · APJ Amanda F Wieker · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–6 unpatentable over the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

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

    “We have jurisdiction under 35 U.S.C. § 314(a), which provides that an 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.” See also 37 C.F.R § 42.4(a) (delegating authority to the Board). Taking into account the arguments presented in the Preliminary Response, we conclude that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail in challenging claims 1–6 of the ’075 patent as unpatentable. Accordingly, we decline to institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner relies on the testimony of its declarant, Mr. Hull, and contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in engineering, and would have had at least four years of experience designing and building prototype tampons and tampon applicators.” Pet. 12 (citing Ex. 1024 ¶ 57). In its Preliminary Response, Patent Owner does not identify the relevant level of skill in the art. See generally Prelim. Resp. Based on our review of the ’075 patent, the types of problems and solutions described in the ’075 patent and cited prior art, and the testimony of Mr. Hull, at this stage of the proceeding, we apply Petitioner’s definition for purposes of this Decision. We also note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Based on the record before us, we need not provide express constructions for any claim terms to resolve the issues in dispute. See 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

    “general matter, dimensions purportedly reflected in patent drawings are unpersuasive, absent a discussion of those dimensions in the written description of the patent’s specification. Indeed, as our reviewing court instructs, “it is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.” See Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) (emphasis added); see also Nystrom v. TREX Co., 424 F.3d 1136, 1149 (Fed. Cir. 2005) (concluding it was error to “not properly apply[] the principles set forth in our prior precedents that arguments based on drawings not explicitly made to scale in issued patents are unavailing”). Petitioner is correct that design patents may serve as prior art for all that they reasonably disclose and suggest to a person of ordinary skill in the art. Pet. 24; In re Aslanian, 590 F.2d 911, 914 (CCPA 1979); In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972). However, the cases cited by Petitioner do not stand for the proposition that design patent figures alone may be relied upon to establish specific, particular, quantitative dimensions. See In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) (“Absent any written description in the specification of quantitative values, arguments based on measurement of a drawing are of little value.”). To the contrary, as the cases discussed above make clear, specific dimensions inferred from patent drawings are unpersuasive if the specification is silent on the issue. Hockerson-Halberstadt, 222 F.3d at 956; Nystrom, 424 F.3d at 1149. In this case, Koch does not indicate that its sole Figure is drawn to scale. See Ex. 1004. To the contrary, Koch indicates that its Figure presents an “isometric illustration.” Id. at Description. Further, Koch’s limited written description lacks any discussion of the claimed dimensions or ratios. See id. As such, we are unpersuaded by Petitioner’s reliance on dimensions measured with a ruler from Koch’s Figure. Petitioner does not identify, and we do not discern, any other support in Koch for the claimed ratios.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,432,075
• Johns Manville Corporation / Johns Manville, Inc. v. Knauf Insulation, Inc. And Knauf Insulation SPRLNo claims unpatentable
  PTAB · May 8, 2017 · IPR2016-00130 · APJ Scott A Daniels · IPR · Final written decision

  The sole claim was not shown unpatentable under the instituted § 103 and § 102 grounds because the brochures did not create the same visual impression or anticipate the claimed design.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDenied

    “The plain language of section 315(e)(1) states that the estoppel applies to grounds a petitioner “reasonably could have raised.” (Emphasis added). The statute is grammatically clear in that the verb phrase or predicate, “reasonably could have raised,” is logically tied to its subject, “petitioner.” The word “reasonably” is not a mandatory word such as, “must,” or “shall.” The word “reasonably” is a qualifier that refers to the discretion applied by a qualified searcher in conducting an adequate search. This is consistent with the legislative history of section 315: The present bill also softens the could-have-raised estoppel that is applied by inter partes review against subsequent civil litigation by adding the modifier ‘reasonably.’ It is possible that courts would have read this limitation into current law’s estoppel. Current law, however, is also amenable to the interpretation that litigants are estopped from raising any issue that it would have been physically possible to raise in the inter partes reexamination, even if only a scorched-earth search around the world would have uncovered the prior art in question. Adding the modifier ‘reasonably’ ensures that could-have-raised estoppel extends only to that prior art which a skilled searcher conducting a diligent search reasonably could have been expected to discover. 157 Cong. Rec. S1360-94 (daily ed. Mar. 8, 2011) at 1375 (stmt. of Sen. Kyl). A reasonable reading of section 315(e)(1) does not mandate estoppel of all prior art in the possession of a petitioner, or prior art which petitioner, e.g. via its employees, may have possessed or known about at some point in time. To the contrary, the prior art estopped is that which “a skilled searcher conducting a diligent search reasonably could have been expected to discover.” Id. Congress easily could have broadened the estoppel provision to extend to “any ground that the petitioner raised or [] could have raised during that inter partes review,” but it did not. See id.” slip op. at 9

  • ExcludeMotion to exclude, deniedDenied

    “We determine that the documents are sufficiently authenticated, first, because the marketing, company contact and product information expressly set out in the brochures, along with the witnesses’ corroborating statements, show sufficiently that Exhibits 1004 and 1005 are what they appear to be, that is, advertising brochures that were printed and produced for dissemination to Johns Manville’s customers and sales personnel for unrestricted distribution to the public. Second, we determine that the dates on the brochures are not merely “archival” dates in Mr. Mota’s files as Knauf contends. See Mot. to Exclude, 4 (citing Apple Inc. v. DSS Technology Management, Inc., IPR2015-00369, slip op. at 6 (PTAB August 12, 2015) (Paper 14)). Mr. Mota and Mr. Graves both explain that it was standard practice at Johns Manville to print these dates on the brochures to indicate a first printing of the brochure. Ex. 2019, 20:23–21:24; Ex. 2020, 39:4–40:2. This testimony is corroborated, at least circumstantially, by the documents themselves where, for example, Exhibit 1005 states “10/00 (Replaces 12/97),” where 12/97 is the date printed on Exhibit 1004 and Exhibit 1005. We agree with Knauf that hearsay is not admissible under Fed. R. Evid. 802. Mot. to Exclude, 2. However, based on the testimony of Mr. Mota and Mr. Graves, we find that the dates printed on the brochures were a common business practice at James Manville. See Ex. 2019, 20:23–21:24; Ex. 2020, 39:4–40:2. These dates, along with the testimony of Mr. Mota and Mr. Graves, are probative of the authenticity of the documents themselves and their existence and purpose at the relevant time period. Knauf has provided no persuasive evidence that either the December 1997 date or the October 2000 dates as printed on the brochures are untrustworthy, or that either Mr. Mota’s or Mr. Graves’s testimony are inconsistent with this assertion. Also, we do not consider Mr. Mota or Mr. Graves’s declarations to be hearsay, as they are not out-of-court statements. In an inter partes review, direct testimony is typically provided via affidavit, with cross-examination taken via deposition. 37 C.F.R. § 42.53(a) and see Ex. 2019, 20:23–21:24; Ex. 2020, 39:4–40:2, 44:15–20. Thus, we determine on the evidence in this proceeding that Exhibits 1004 and 1005 are properly authenticated and not inadmissible hearsay because they have been shown to be commercial product advertising publications under Fed. R. Evid. 803(17) and include customary date information that, based on the sworn testimony of Mr. Graves and Mr. Mota, was made in the regular course of business and is thus subject to the business records exception under Fed. R. Evid. 803(6).” slip op. at 18

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

    “2010, 4). For example, considering the claimed design, we observe a random swirl pattern evident in both the color and black and white images of the claimed design shown above. We find the phrase “variations in a swirl pattern” helpful to objectively describe what we observe as the relative arrangement between the “distinct hues” shown in the photograph. Moreover, both parties have advanced this term in their proposed claim constructions. Compare Pet. 17 with PO Resp. 28. Observing the design as a whole, “swirl pattern” is somewhat less than specific. We agree to an extent with Knauf’s Declarant, Professor Rake, that “swirl pattern” can aptly describe a variety of patterns. Ex. 2012 ¶ 28. Thus, to facilitate a more expressive elocution of this element, we further described the contrast imparted by the “swirl pattern” consistent with the prosecution history of the ’670 patent as having a “cloud-like appearance.” Ex. 1002, 33. Both parties have also included this term in their proposed constructions. Compare Pet. 16 with PO Resp. 28.” slip op. at 28

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “manager who has a technical or engineering background and is familiar with the insulation manufacturing process, but who does not have any specialized training in color, is a designer of ordinary skill. PO Resp. 7–10. This definition has some appeal, mainly because the claimed article of manufacture here is insulation, and it does not appear, based on the testimony of witnesses from both parties, that in the insulation manufacturing process any particular expertise in color of the insulation was generally necessary. Compare Ex. 2004, 3:15–5:7 with Ex. 2008 ¶¶ 14–16. Color, however, is an issue here in this case that involves colored insulation material, specifically because Knauf conceded during prosecution that “color is an integral part of the claimed invention.” Ex. 1002, 13. We agree that a product manager can be “a designer of ordinary skill in the art” as applied to designs because a product manager, in charge of manufacturing insulation, is knowledgeable and sufficiently trained to fabricate such products. PO Resp. 7. That a product manager without certain expertise, such as in color, may be a “designer of ordinary skill” does not explain why such a definition must necessarily exclude another person, with a skill set in color, as a designer of ordinary skill. We find this to be particularly reasonable where an unfamiliar aspect of insulation design, such as color, is a concern. Indeed, James Worden, Knauf’s declarant, confirms that a Product Manager who did not have certain experience, for example with color, would understand that “a color pigment specialist may provide an understanding of coloring various substances.” Ex. 2008 ¶¶ 15–16. Thus, while Dr. Bide’s testimony may not be particularly relevant to all aspects of insulation design, here, where color is an integral part of the design, it is reasonable to include aspects of his particular expertise within the purview of an ordinary designer. See In re Nalbandian, 661 F.2d 1214, 1216 (C.C.P.A. 1981) (“The ‘ordinary designer’ means one who brings certain background and training to the problems of developing designs in a particular field.”) We determine that the designer of ordinary skill in the art for insulation material therefore may be a product manager in the insulation manufacturing industry who has a technical (e.g. engineering) background and, on issues relating to color, may also be a person such as a pigment specialist and/or binder chemist having background and training pertaining to color in development of the insulation design.” slip op. at 40

  Patent outcomesUS D631,670 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
• Johns Manville Corporation / Johns Manville, Inc. v. Knauf Insulation, Inc. And Knauf Insulation SPRLNo claims unpatentable
  PTAB · Jan 11, 2017 · IPR2015-01453 · APJ Scott A Daniels · IPR · Final written decision

  The sole claim was not shown unpatentable: OC PROPINK did not anticipate, and the asserted obviousness combinations did not establish the claimed design’s overall visual appearance.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedMixed

    “Based on this evidence, we determine that the testimony of at least Mr. Fay and Mr. Worden along with the characteristics and circumstances of the document itself are evidence sufficient to establish the authenticity of Exhibit 1003 – OC PROPINK, as a prior art reference. Knauf’s assertion in its Motion to Exclude, that “Mr. Worden had no personal knowledge of Exhibit 1003,” (Paper 40, 6) is also not persuasive because, as discussed above, Mr. Worden found the OC PROPINK promotional material entirely consistent, in his experience, with Owens Corning’s advertising and product promotion practices. Ex. 1024, 31:4–11. When asked if Owens Corning produced product literature such as OC PROPINK for products sold to the public, Mr. Worden replied: we had literature for everything, yes, multiple pieces that some targeted to certain audiences to make sure we were providing them with appropriate features and benefits that would be important to them, whether they were a contractor or homeowner. Id. at 33:8–13. Mr. Worden’s cross-examination testimony, as it is directed to his experience and knowledge as a marketing communication manager for Owens Corning, is neither hearsay, because it is not an out of court statement. Neither is Mr. Worden’s testimony inadmissible hearsay under at least Fed. R. Evid. 803(5)–(6) as it relates to evidence of regularly conducted business matters and promotional publications under Fed. R. Evid. 803(17), with which he was generally familiar in the course of his marketing and communications duties for Owens Corning. We are persuaded by the evidence discussed above that Johns Manville has shown by a preponderance of the evidence that OC PROPINK promotional material would have been publically available in at least 2005 and that Mr. Fay, as part of his investigative research into the products promoted in this document, downloaded OC PROPINK on March 28, 2005. Accordingly, we determine that OC PROPINK qualifies as a publically disseminated printed publication and is prior art to the ’670 patent. Knauf’s Motion to Exclude Exhibits 1003, 1017, 1020, and 1024 is DENIED.” slip op. at 10

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

    “Based on this evidence, we determine that the testimony of at least Mr. Fay and Mr. Worden along with the characteristics and circumstances of the document itself are evidence sufficient to establish the authenticity of Exhibit 1003 – OC PROPINK, as a prior art reference. Knauf’s assertion in its Motion to Exclude, that “Mr. Worden had no personal knowledge of Exhibit 1003,” (Paper 40, 6) is also not persuasive because, as discussed above, Mr. Worden found the OC PROPINK promotional material entirely consistent, in his experience, with Owens Corning’s advertising and product promotion practices. Ex. 1024, 31:4–11. When asked if Owens Corning produced product literature such as OC PROPINK for products sold to the public, Mr. Worden replied: we had literature for everything, yes, multiple pieces that some targeted to certain audiences to make sure we were providing them with appropriate features and benefits that would be important to them, whether they were a contractor or homeowner. Id. at 33:8–13. Mr. Worden’s cross-examination testimony, as it is directed to his experience and knowledge as a marketing communication manager for Owens Corning, is neither hearsay, because it is not an out of court statement. Neither is Mr. Worden’s testimony inadmissible hearsay under at least Fed. R. Evid. 803(5)–(6) as it relates to evidence of regularly conducted business matters and promotional publications under Fed. R. Evid. 803(17), with which he was generally familiar in the course of his marketing and communications duties for Owens Corning. We are persuaded by the evidence discussed above that Johns Manville has shown by a preponderance of the evidence that OC PROPINK promotional material would have been publically available in at least 2005 and that Mr. Fay, as part of his investigative research into the products promoted in this document, downloaded OC PROPINK on March 28, 2005. Accordingly, we determine that OC PROPINK qualifies as a publically disseminated printed publication and is prior art to the ’670 patent. Knauf’s Motion to Exclude Exhibits 1003, 1017, 1020, and 1024 is DENIED.” slip op. at 10

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

    “a case, as to whether or not it is appropriate to provide a verbal construction of the claimed design. See Egyptian Goddess 543 F.3d at 679 (stating that the Board is “not obligated to issue a detailed verbal description of the design if it does not regard verbal elaboration as necessary or helpful.”). It may be preferable not to provide a detailed claim construction in certain cases. However, observing the design in this proceeding as a whole, a claim construction such as “insulation material as shown in the sole figure of the ’670 patent,” would not reasonably provide a substantive factual or evidentiary basis for comparison relative to the prior art. Here, because the single color photograph depicting “insulation material” is, on its face, visually amorphous, lacking clear structure, form, and environment in which to give context to the design, we consider a verbal claim construction helpful to compare the claimed design to the prior art. See Egyptian Goddess, 543 F.3d at 680 (“While it may be unwise to attempt a full description of the claimed design, a court may find it helpful to point out . . . various features of the claimed design as they relate to the accused design and the prior art.”); see also High Point Design, 730 F.3d at 1314 (holding that a district court erred by failing to translate the design into a verbal description for purposes of a non-obviousness analysis). For example, there is a random swirl pattern evident in both the color and black and white images of the claimed design shown above. We find the term “swirl pattern” helpful to objectively describe what we observe as the relative arrangement between the “distinct hues” shown in the photograph. Moreover, both parties have advanced this term in their proposed claim constructions. Compare Pet. 16 with PO Resp. 28. Observing the design as a whole, “swirl pattern” is somewhat less than specific. We agree to an extent, with Knauf’s Declarant, Professor Rake, that “swirl pattern” can aptly describe a variety of patterns. Ex. 2012 ¶ 28. Thus, to facilitate a more expressive elocution of this element, we further described the contrast imparted by the “swirl pattern” consistently with the prosecution history of the ’670 patent as having a “cloud-like appearance.” Ex. 1002, 33. Both parties have also included this term in their proposed constructions. Compare Pet. 16, with PO Resp. 28. We further construed the claimed insulation material to include “a ‘waffle pattern’ as shown and described by the sole figure.” Inst. Dec. 8. We noted in our Institution Decision that in “observing the overall appearance of the design, the ‘waffle pattern’ is visually apparent, although not terribly distinct, in the color photograph.” Id. Neither party substantively disputes our interpretation of this element of the claim. Compare PO Reply 13, with Pet. Resp. 28.” slip op. at 17

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “A designer of ordinary skill in the art of insulation materials is generally someone “who designs articles of the type involved.” See High Point Design, 730 F.3d at 1313 (quoting Durling, 101 F.3d at 103). Knauf proposes the more persuasive definition for an ordinary designer. See PO Resp. 7–9. For one thing, the claimed design is for “insulation material,” not color per se. See Ex. 1001. Furthermore, Knauf’s definition is supported not only by its own witness James Worden, but also Johns Manville’s witnesses. Exs. 2008, ¶¶ 13–16; 2004, 3:24–6:10; 2007, 12:23–13:17. For example, Mark Granger, an employee of Johns Manville, is a mechanical engineer who has been involved in the design of insulation materials for almost 40 years. Ex. 2004 3:24–4:21. Mr. Granger testified during his deposition that an “[e]ngineering background is common,” and that he could not recall ever working with someone with a degree in color science. Id. at 4:22–6:10. However, we do not discount Mr. Worden’s testimony that an ordinary designer of insulation materials may consult “a pigment specialist and/or binder chemist” regarding issues of color. Ex. 2008 ¶ 17. The designer of ordinary skill in the art for insulation material is therefore a product manager in the insulation manufacturing industry who has a technical (e.g. engineering) background and who, on issues relating to color, may consult with a person such as a pigment specialist and/or binder chemist having background and training pertaining to color.” slip op. at 28

  Patent outcomesUS D631,670 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
• International Flavors & Fragrances Inc. v. Zoomessence, Inc.All claims unpatentable
  PTAB · Dec 14, 2016 · IPR2015-01418 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1, 16, 19, and 28–30 are unpatentable: claims 1, 16, and 19 are anticipated by Merritt and also obvious over two combinations; claims 28–30 are obvious over specified combinations.

  RulingsFinal written decision

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

    “Id. at 2:8–14. The Specification describes a similar cooling effect within the drying chamber of the claimed system as follows: “It has been demonstrated that an inlet air temperature of about 40° C. may result in an outlet air temperature of about 32° C. from the drying chamber 107.” Id. at 7:35–37. Based on these disclosures, we understand that drying fluid is hotter at the inlet than it is at the outlet. Accordingly, claims that recite the temperature of drying fluid “at introduction into the drying chamber,” e.g., claims 4 and 5, effectively limit the highest permitted temperature of the drying fluid, which includes “air,” at any point in the drying chamber. Claim 1 recites an upper limit of 100°C on the temperature of one component of the drying fluid, “air,” without limiting the location at which the temperature is measured. We conclude, therefore, that the upper limit of 100°C as recited in claim 1 refers to the temperature of air measured at any location within the drying chamber, including at the outlet. Petitioner proposes that the broadest reasonable interpretation of “the drying fluid comprises air at temperature that is above freezing temperature of the liquid solvent and below 100°C” requires that “at some location within the internal volume of the drying chamber there is air at a temperature that is above the freezing temperature of the liquid solvent and below 100°C.” Pet. 7–8 (citing Ex. 1010 ¶ 46). Based on our review of claims 1–5 and the Specification, we adopt Petitioner’s interpretation.” slip op. at 11

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

    “To establish anticipation, each limitation in a claim must be found in a single prior art reference, arranged as recited in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). While the limitations must be arranged or combined in the same way as in the claim, identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, a reference anticipates a claim “if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.” In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995). Thus, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).” slip op. at 15

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

    “a. Independent Claim 1 Petitioner’s challenge to claim 1 as being obvious in view of the combination of Merritt, Dobry, and Skelbæk, is based largely upon the same comparison of Merritt to the claim. See Pet. 33–37, 41–42. Nevertheless, Petitioner states, and we agree, that “[i]f there is any question about whether low temperature spray drying could be used in the encapsulation of active ingredients in a carrier, Skelbæk teaches the advantages of drying liquid drops under the supply of air having a temperature of 50–120°C.” Pet. 37 (citing Ex. 1008, Abstract, pg. 2–3.). We further agree with the rationale of Petitioner that the advantages that would have been obvious to an ordinarily skilled artisan from using the lower temperature range of Skelbæk with Merritt are “a denser, non-permeable matrix material” and to “retain high levels of flavorant.” Id. (citing Ex. 1010 ¶ 107). In addition to relying on Merritt and Skelbæk, Petitioner cites Dobry’s Figure 1 in its claim chart, which schematically illustrates a conventional spray-drying system.12 See Pet. 41–42. Patent Owner’s principle argument against obviousness over Merritt, Dobry, and Skelbæk is the same as its argument against anticipation by Merritt, i.e., that Merritt includes gas above 100°C as well as below 100°C. We have rejected this argument as a matter of claim interpretation, for the reasons set forth in Part II.D.2.a above. In addition, Patent Owner asserts that Skelbæk may not be relied upon by Petitioner for the teaching of the use of a lower temperature drying fluid in a drying chamber because Skelbæk’s spray drying process yields partially dried material that requires further drying. PO Resp. 46 (citing Ex. 1008, 6:20–24). In particular, Patent Owner points out that Skelbæk uses a fluidized bed to dry further the product leaving Skelbæk’s spray drying process. Id. 12 Dobry’s Figure 1 is virtually identical to Figure 1 in the ’388 patent. Compare Ex. 1007, Fig. 1 with Ex. 1001, Fig. 1. Figure 2 of the ’388 patent is virtually identical to Figure 1 of the ’388 patent, but merely replaces the “process heater” of Figure 1 with a “process dehumidifier.” Compare Ex. 1001, Fig. 2 with id. at Fig. 1.” slip op. at 22

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Patent Owner’s argument is unpersuasive because Watanabe’s use of excipients does not diminish Watanabe’s express suggestion to use a dehumidifier in a spray drying process. Rather, we agree with Petitioner that an ordinarily skilled artisan would have understood that a dehumidifier can be used for dehumidification purposes in spray-drying processes, even when the materials being dried differ. Further, we find that Watanabe, Merritt, and Dobry are all analogous art to the claimed invention (and to one another) inasmuch as they relate to the field of spray drying and the problem of drying. See In re Bigio, 381 F.3d 1320, 1325–26 (Fed. Cir. 2004).” slip op. at 27

  Patent outcomesUS 8,939,388 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,939,388
• J Squared, Inc. D/B/A University Loft Company v. Sauder Manufacturing CompanySome claims unpatentable
  PTAB · Jun 27, 2016 · IPR2015-00774 · APJ Linda E Horner · IPR · Final written decision

  Claims 1, 2, 6–8, 10, and 11 are unpatentable over Mackey and/or Pollack II and Pollack I; claims 4, 5, 9, and 12–14 are not held unpatentable.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “i. Conclusion - Obviousness We have weighed the entirety of the evidence in this proceeding, including J Squared’s evidence of obviousness and Sauder’s evidence of non-obviousness. On balance, we conclude that J Squared has shown by a preponderance of the evidence that the subject matter of claims 1, 2, 6‒8, 10, and 11 would have been obvious over Pollack II and Pollack I, but has not shown that the subject matter of claims 9 and 12‒14 would have been obvious over this prior art. III. CONCLUSIONS For the foregoing reasons, we determine the following: A. J Squared has shown by a preponderance of the evidence that claims 1, 2, 8, 10, and 11 are anticipated under 35 U.S.C. § 102 by Mackey; B. J Squared has not shown by a preponderance of the evidence that claims 4 and 5 are anticipated under 35 U.S.C. § 102 by Mackey; C. J Squared has shown by a preponderance of the evidence that claims 1, 2, 6‒8, 10, and 11 are unpatentable under 35 U.S.C. § 103 as obvious over Pollack II and Pollack I; and D. J Squared has not shown by a preponderance of the evidence that claims 9 and 12‒14 are unpatentable under 35 U.S.C. § 103 as obvious over Pollack II and Pollack I.” slip op. at 64

  • Skill levelSkill level board ownOther

    “considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962‒63 (Fed. Cir. 1986)). The court in GPAC held that the Board did not err in in failing to make a specific finding as to the level of skill in the art and relying instead on the references of record to inform it as to the level of skill in the art. Id.; see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown). J Squared did not proffer a specific level of skill of one of ordinary skill in the art, and relied instead on the prior art to reflect an appropriate level of skill. Tr. 78:15‒20. We find no need for testimony as to the level of skill in the art, as it is demonstrated aptly by the prior art of record. For purpose of this Final Written Decision, we resort to the prior art of record to assess the level of skill of one of ordinary skill in the art. In particular, as discussed below, the prior art explicitly proposes the combination of the teachings of the Pollack references.” slip op. at 37

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

    “Sauder is, in essence, seeking to have the Board rewrite the claim to recite, “A combination consisting of a chair and a stool base portion.” We see no reason to narrow the claim, particularly when the body of the claim itself recites “said combination further comprises an assembly . . . .” Ex. 1001, 10:42. For these reasons, we construe “combination” to include, but not be limited to, a chair and a stool base portion.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “We reconsider our claim interpretation in light of the additional arguments and evidence provided by Sauder in its Patent Owner Response and by J Squared in its Reply. The function called for in this means plus function claim limitation is “releasably engaging said chair to said base portion.” Ex. 1001, 12:4‒5. We think Sauder has the correct interpretation of the functional recitation of claim 12. The focus of the language of claim 12 is on the verb “engaging,” while the adverb “releasably” modifies the verb “engaging” to simply require that the engagement is effected in such a way that it is not permanent. This understanding is consistent with the claim language used in the remainder of this clause, which focuses on releasable engagement of the chair “to” the base portion. We note that during prosecution of claim 12 (application claim 20) of the ’136 patent before the examiner, Sauder amended the claim language “manually operable means for releasably engaging said chair from said base portion” to recite instead “manually operable means for releasably engaging said chair to said base portion,” thereby clearly shifting the focus of this functional language from one of disengagement to engagement. Ex. 1013, 210. Consistent with our interpretation of “engage,” we construe the term “engaging” to mean locked together. The ’136 patent describes the structure corresponding to the function of releasable engagement, i.e., locking together of the chair to the base as being effected by the claw and the latch engaging the underside of the saddle: The claw 142 (illustrated in FIGS. 9, 10, 13 and 14) extends generally downward from the frame lower portion 106, near the second portion 124 of the frame lower portion 106, and is adapted for cooperating releasable engagement with the base 300. More specifically, and as will be discussed in greater detail in subsequent paragraphs herein, the claw 142 will function so as to releasably engage with a saddle 310 of the base 300. . . . More specifically, the clip clamp latch 160 extends generally downward from the frame lower portion 106, near its first portion 122, and is adapted for cooperating releasable engagement with the base 300 and more specifically with the saddle 310 of the base, discussed further below. Ex. 1001, 5:19‒26, 5:58‒62.” slip op. at 24

  Patent outcomesUS 8,585,136 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,585,136
• Terumo BCT, Inc. v. Noble House Group Party Ltd.All claims unpatentable
  PTAB · Jun 24, 2016 · IPR2015-00379 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 6, 14, and 16 are unpatentable under § 103(a) over the SSK Pamphlet and Ishida because their combination renders the claimed sampling apparatus obvious.

  RulingsFinal written decision

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

    “review, we determined that no terms of the claims of the ’921 patent acquired any special meaning. Thus, all terms were afforded their broadest reasonable meaning as would be understood by a person of ordinary skill in the art in light of the Specification. Inst. Dec. 6. We made explicit that meaning for a single claim term: “frangible barrier.” Id. In that regard, we determined that the ordinary meaning of “frangible barrier” is a “seal that impedes the flow of a fluid until physically broken.” Id. Neither party offers an alternative construction for the term “frangible barrier,” and based on the record developed during trial, we do not alter the meaning expressed above.” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “TBCT submits that a person having ordinary skill in the relevant art would be: a medical device designer with a Bachelor of Science degree in engineering, such as mechanical, industrial, biomedical engineering, or an equivalent technical degree with at least 5-7 years of experience in the field; or a person with an advanced degree in bio-medical engineering, with fewer years of experience, but at least some years of experience in the field; or a person who has worked in the field for at least 15 years. (Ex. 1007, ¶¶ 13-17.)” slip op. at 9

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

    “a. The SSK Pamphlet4 The SSK Pamphlet is a document described as being directed to “Bacterial Detection Ancillaries,” and discloses a “SampLok Sampling Kit (SSK)” and a “Platelet transfer kit.” Ex. 1005. A portion of the SSK Pamphlet is reproduced below: 4 In instituting trial, we were satisfied, on the record that was before us, that the SSK Pamphlet constituted prior art. Inst. Dec. 10–11. Noble does not challenge that determination in its Patent Owner Response. Neither does the record, as developed during trial, give reason to revisit that determination in connection with this Final Written Decision. Accordingly, we regard the SSK Pamphlet as prior art to the ’921 patent.” slip op. at 7

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

    “blood collecting or sampling devices are understood in the art as incorporating a clamp assembly operable to close off an inlet tube during the operation of the device, in conjunction with additional tube sealing components. Indeed, the SSK Pamphlet contemplates two such additional seals, namely: (1) a seal at the tube end formed “at manufacture”; and (2) a heat seal applied at some time at the position designated “heat seal location.” In similar fashion, Ishida conveys that, in addition to clamping components such as clamp 33, sealing member 93 is employed for inhibiting flow within blood collecting apparatus 1. Thus, the prior art unmistakably conveys that clamps operating together with additional types of seals were known in blood collecting/sampling devices. Noble’s contradictory position does not reflect appropriate consideration of how a person of ordinary skill in the art would have viewed the teachings of the prior art. In that respect, Noble does not reconcile its position to the contrary with the clear and unambiguous teachings of the prior art.” slip op. at 10

  Patent outcomesUS 8,777,921 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,777,921
• J Squared, Inc. D/B/A University Loft Company v. Sauder Manufacturing CompanyInstitution denied
  PTAB · Jun 9, 2016 · IPR2016-00413 · APJ Linda E Horner · IPR · Institution

  The Board denied institution because Petitioner failed to show a reasonable likelihood that claims 1–21 were unpatentable on any asserted ground.

  RulingsInstitution decision

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

    “III. CONCLUSION For the foregoing reasons, we determine that the information presented in the Petition fails to establish a reasonable likelihood of prevailing in showing that claims 1‒21 are unpatentable. IV. ORDER After due consideration of the record before us, it is: ORDERED that no inter partes review of the ’787 patent is instituted and that all grounds set forth in the Petition challenging the ’787 patent are denied.” slip op. at 31

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

    “reasonable construction of “pedestal” should include a four-legged base for a chair. Pet. 9. Sauder argues that “the term ‘pedestal’ is unambiguously and narrowly defined and distinguished from other types of bases in the [’]787 Patent.” Prelim. Resp. 17 (citing Ex. 1001, 7:9‒19). Sauder further asserts that “a pedestal has a single columnar support.” Id. (citing Ex. 1001, Figs. 2‒4, 22, 23, 7:1‒44, 9:54‒62). The ’787 patent distinguishes a pedestal base from a legged base and a sled base. In particular, the ’787 patent describes that “[o]ne having ordinary skill in the art understands that a broad variety of adaptations of chair bases, including categories of legged, sled, and pedestal, are available to support a chair frame above the supporting surface.” Ex. 1001, 7:13‒17. Based on this description in the specification, we find that one of ordinary skill in the art would understand that a pedestal base does not encompass a chair base that has four downwardly projecting legs. For purposes of institution, we do not need to reach the question of whether a chair having more than one vertical columnar support (e.g., two vertical supports from which base legs extend) qualifies as a pedestal base.” slip op. at 10

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

    “As noted supra, Kassai’s spring-biased latch mechanism is disclosed for attaching a tray table to a child’s high chair. We find no explicit suggestion in Kassai itself to use such a latch mechanism for coupling other parts of a chair, such as a chair and base. Further, J Squared’s articulated reasons to modify Yu’s deck chair, as modified by Clark, to substitute Kassai’s latch mechanism in place of Yu’s bolts, based on simple substitution of one known fastener element for another to obtain predictable results and as a matter of common sense to enable easier, faster or more convenient conversion of the convertible chair, are not supported by adequate evidence to demonstrate a reasonable likelihood of unpatentability. In particular, J Squared has not provided adequate explanation or evidence to persuade us that one having ordinary skill in the art would have been led to use the latch mechanism of Kassai to attach the deck chair to the base of Yu. J Squared provides insufficient evidence or reasoning to show that one of ordinary skill in the art, aware of the safety considerations involved with coupling a chair to a base, would have been motivated to replace the bolts of Yu with such a latch mechanism. See Ex. 1001, 5:48‒54 (describing user safety considerations to ensure that the chair portion will not tilt or rotate backward apart from the base); Ex. 2008, 18‒19 (Mr. Warncke testifying that “vital elements of a well-designed and effective releasable coupling system include safety, error-proofing, and ease of use” and that safety for releasably coupled components “means that when coupled, it cannot be decoupled without intentional manual interaction with the chair”). Further, J Squared provides no declaratory evidence from one having ordinary skill in the art to demonstrate that the modification would have been a matter of common sense or would have led to a predictable result.” slip op. at 18

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

    “The Figures of Higgins show only a side view of the child’s rocker chair portion. Higgins does not describe in the patent the method of construction of the frame and rocker supports, or describe that the rocker supports are “directly beneath and attached to” the undersurface of a seat portion of the chair, as recited in claim 14. We cannot discern with any reasonable likelihood that the rocker supports of Higgins are disposed directly beneath, as opposed to being below, but to the outside of, the undersurface of a seat portion of the chair. Further, J Squared has not provided adequate evidence to demonstrate that the frame structure of Higgins’s chair extends upwardly from the rocker members along and “attached to” the rear surface of the backrest or that the frame structure “structurally join[s]” the seat and backrest portions, as recited in claim 14. Id.; see also Prelim. Resp. 29 (“Higgins[] has no separate frame joining the seat and backrest”). For these reasons, J Squared has failed to show by a reasonable likelihood that Higgins anticipates independent claim 14 and its dependent claim 15. Accordingly, we decline to institute a review of claims 14 and 15 under 35 U.S.C. § 102(b) as anticipated by Higgins.” slip op. at 23

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,960,787
• Boston Scientific Corporation v. Uab Research FoundationRehearing granted
  PTAB · Mar 7, 2016 · IPR2015-00918 · APJ James A Worth · IPR · Rehearing

  Rehearing was granted, and IPR was instituted on anticipation of claims 1–20 by KenKnight ’967; no other grounds were instituted.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2

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

    “background art in which two other patents described “pacing or pretreatment pulses” delivered through the same electrodes as defibrillation. Id. (citing Ex. 1002, 7). We recognize that Patent Owner has not yet had an opportunity to introduce testimonial evidence as to whether a person of ordinary skill would understand the ’261 Application to disclose the use of pacing (in addition to pretreatment pulses) through an electrode with the claimed positioning. At this stage of the proceeding, we determine that Petitioner has shown a reasonable likelihood of prevailing on its assertion that the patentee was not in possession of the claimed configuration of electrodes at the time of the filing of the ’261 Application. As such, Petitioner has demonstrated a reasonable likelihood of prevailing on its related assertion that the claims of the ’563 patent cannot benefit from the priority from the ’261 Application. Thus, Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion that KenKnight ’967 is prior art to the ’563 patent.” slip op. at 11

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedReference is prior artDecided for petitioner

    “Application (from .01 or .05 to 1 or 2 Joules) is greater than the value of a typical pacing pulse (0.000025 Joules). See Pet. 12; Ex. 1006 ¶¶ 132–133; compare Ex. 1002, 12:29–31, with Ex. 1006 ¶ 66). We credit Dr. Benditt’s testimony that the smallest disclosed energy for the auxiliary pulse in the ’261 Application is about ten thousand times stronger than a pacing pulse, and a person of ordinary skill in the art would understand that such a pulse does not correspond to a pacing pulse. Id. Based on this difference, and based on our claim construction, we conclude that Petitioner has established a reasonable likelihood that the “auxiliary” pulses disclosed in the ’261 Application are not antitachycardia pacing energies, and do not otherwise qualify as antitachycardia pacing. Patent Owner, nevertheless, asserts that the ’261 Application states the intent to treat ventricular tachycardia (see supra), i.e., “[t]he present invention may be used to treat all forms of cardiac tachyarrythmias, including ventricular fibrillation, with defibrillation (including cardioversion) shocks or pulses.” See Opposition 3 (quoting Ex. 1002, 7:4– 9). However, the intent to treat ventricular tachycardia by itself is not enough because the claims require antitachycardia pacing as the treatment for tachycardia. In this regard, Petitioner correctly observes that the disclosure of the ’261 Application describes in large part defibrillation in combination with cardioversion shocks, including in the above passage relied on by Patent Owner. In other words, the above passage discloses defibrillation and cardioversion but does not necessarily include pacing.” slip op. at 9

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

    “D. Anticipation by KenKnight ’967 1. Claims 1, 3–7, 9–14, and 16–20 Relying on the Declaration of Dr. Benditt, Petitioner sets forth argument and evidence as to how KenKnight ’967 would anticipate each element of claims 1, 3–7, 9–14, and 16–20. Pet. 25–48. Patent Owner does not appear to dispute in its Preliminary Response that KenKnight ’967, if prior art, would anticipate claims 1, 3–7, 9–14, and 16–20. As above, we determine that there is a reasonable likelihood that KenKnight ’967 is prior art to the ’563 patent. Further, based on our own independent review of KenKnight ’967, we determine that Petitioner has shown a reasonable likelihood of prevailing on its assertion that KenKnight ’967 would anticipate claims 1, 3–7, 9–14, and 16–20.4” slip op. at 11

  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 6,266,563
• Boston Scientific Neuromodulation Corporation v. Nevro CorporationInstitution denied
  PTAB · Nov 30, 2015 · IPR2015-01203 · APJ James A Worth · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 11–15, 17–23, 25, and 26 were unpatentable.

  RulingsInstitution decision

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

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 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); 37 C.F.R. § 42.108. For the reasons set forth below, we conclude that the information presented in the Petition does not establish a reasonable likelihood that BSNC would prevail in showing that claims 1, 2, 11–15, 17–23, 25 and 26 of the ’102 patent are unpatentable. Accordingly, we do not institute an inter partes review for any of these challenged claims.” slip op. at 2

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

    “All of the evidence presented supports an understanding that paresthesia includes various manifestations of a “pins and needles” feeling, often described as “tingling.” Patent Owner’s dictionaries also refer to “pricking,” “formication,” and “creeping on the skin,” which is consistent with Petitioner’s Declarant’s observation the same sensation may manifest itself as “prickling.” See Ex. 1105 ¶ 14. Although we recognize that Patent Owner has not had the opportunity to submit any “new testimonial evidence” at this stage of the proceeding, see 37 C.F.R. § 42.107(c), Patent Owner does not here provide support for “pressure” as it might be understood apart from “pricking,” “formication,” and “creeping on the skin.” For purposes of this Decision on Institution, we determine that the broadest reasonable construction consistent with the Specification of “does not create paresthesia” is “does not create tingling.” We are guided by the submitted dictionaries as well as the Specification which criticizes prior art techniques for causing “tingling or paresthesia.” Ex. 1001, 1:50–52. We credit the statement of Petitioner’s Declarant that the same sensation may be 5 Formication is a hallucination in which a patient feels as if insects are crawling on his or her skin. variously perceived. However, we do not include “pressure” itself within that construction.” slip op. at 7

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

    “11–14, 17–22, 25, and 26 would be understood to be disclosed by MacDonald. Pet. 13–27. The parties first dispute whether MacDonald discloses any examples of electrical stimulation that “does not create paresthesia in the patient,” as recited by claims 1 and 26. See Pet. 14–17; Prelim. Resp. 24–25. When MacDonald discloses electronic stimulation lower than the threshold for tingling, MacDonald also discloses a “feeling of warmth and painless, light pressure.” 5:51–63. Applying the above claim construction of “paresthesia,” we determine, on the current record, that Petitioner has shown sufficient evidence that MacDonald discloses a lack of paresthesia in that example. However, we agree with Patent Owner that Petitioner has not sufficiently demonstrated that MacDonald anticipates because Petitioner has not shown that MacDonald’s transcutaneous therapy is applicable for an implantable signal delivery device or that MacDonald teaches the claimed frequency ranges with sufficient specificity. Prelim. Resp. 25–29. MacDonald’s disclosure results from an experiment using “surface electrodes,” and “at a rate of 100 pulses per second.” Ex. 1002, 5:33–37. Therefore, even though Petitioner relies on a disclosure in MacDonald that electrodes may be implanted (id. at 3:49–51, 8:55–57), and that frequencies of up to 150 kHz or 250 kHz may be used (id. at 4:9–21, 8:39–43), Petitioner does not provide evidence that the patient would feel no paresthesia under such conditions, i.e., under conditions different than those described in the first set of experiments. See Pet. 14–20. Nor does Petitioner direct us to persuasive evidence from Dr. McIntyre’s testimony (Ex. 1015) that MacDonald discloses this claim element. In sum, although the various disclosures relied upon by Petitioner are in the same reference, Petitioner has not sufficiently shown that the conditions were arranged together in the same way as recited in the claim. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). We, therefore, conclude that Petitioner has not shown a reasonable likelihood of prevailing on its assertion that claims 1, 2, 11–14, 17–22, 25, and 26 are anticipated by MacDonald.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “one of ordinary skill in the art to implement MacDonald’s therapy in a way that does not cause paresthesia, and De Ridder describes tests that were performed on patients using spinal cord stimulation parameters that successfully treated pain without causing paresthesia. Pet. 46–47 (citing Ex. 1005 ¶¶ 41–44; Exhibit 1115 ¶¶ 138–141; KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.”)). Petitioner also reasons that it was known from such references as De Ridder that paresthesia was undesirable. Pet. 47 and n.3. However, we agree with Patent Owner that De Ridder teaches that high frequency stimulation causes, rather than avoids, paresthesia. Prelim. Resp. 43 (citing Ex. 1005 ¶ 4). Further, De Ridder’s data reporting suppression of paresthesia was conducted at an “inter-burst” frequency of 40 Hz and an “intra-burst” frequency of 500 Hz, rather than the recited frequencies. Ex. 1005 ¶ 41–42; Table 1. With respect to Sluitjer and Royle, we address these references individually in the sections above. Further, we agree with Patent Owner that the Petition does not articulate the obviousness ground inasmuch as the Petition does not explain which aspects of MacDonald would have been retained and which aspects of De Ridder, Sluitjer, and Royle would have been the basis for a modification, and the rationale for the choice of any such elements. See Prelim. Resp. 45; Pet. 45–50; 37 C.F.R. §§ 42.104(b)(4), (b)(5), 42.108(c); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We determine, on the current record, that Petitioner has not established a reasonable likelihood of prevailing on its assertion that claims 1, 2, 11–15, 17–23, 25, and 26 are rendered obvious by the combination of MacDonald, either alone or in view of De Ridder, Sluijter and/or Royle.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,359,102

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.