• Tesla, Inc. v. Graphite Charging Company LLCNo claims unpatentable
  PTAB · Aug 19, 2025 · IPR2024-00388 · APJ Ken B Barrett · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because Wang and Wang with AESO did not establish the claimed analysis, and Cooley did not disclose reducing current power consumption.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the claims require a decision engine to perform those elements.” Tr. 48:17– 20. In light of this, we fail to understand the basis for Patent Owner’s objection to the characterization of the level of ordinary skill involving experience with “intelligent” techniques or devices that control grid electricity. We determine that Petitioner’s definition is consistent with the level of ordinary skill reflected in the Specification and the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). We, therefore, apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 11

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

    “Patent Owner (PO Resp. 12, 49–50) points to the Specification’s list of “[e]xamples of power reduction actions.” Ex. 1001, 8:47–63. Patent Owner asserts that the list includes numerous examples of power reductions that occur in the present and one that takes place in the future—namely, “scheduling nonessential operations at a different time (e.g., nonessential software or hardware upgrades).” Ex. 1001, 8:61–62 (cited at PO Resp. 12, 50). We are persuaded by Patent Owner’s contention (PO Resp. 12) that the applicant, by including the term “current” in the claims, intentionally narrowed the claims to power consumption reductions that occur temporally in the present, rather than those that occur in the future. See Pet. Reply 6–7 (Petitioner asserting that Patent Owner’s position is “inconsistent with the specification’s examples,” but then arguing that the Specification does not support that position rather than pointing to any purported inconsistencies). Because the independent claims recite the term “current,” construing the term in the temporal sense is not, as Petitioner argues, importing into the claims an example from the Specification. See Pet. Reply 8.” slip op. at 13

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

    “Given the interchangeable nature taught for various features of Wang’s embodiments, it would have been a routine and obvious matter for a POSA to combine aspects from Wang’s various embodiments (e.g., data acquisition, internal hardware, data analysis performed by the UMC receiver 400 and/or the display 200). Moreover, many of Wang’s embodiments–particularly of specific smart appliance types– include common components, thus further confirming combinability of aspects of the disclosed embodiments. A POSA would have had a reasonable expectation of success in combining features of the embodiments together. Id. at 77–78 (citing Ex. 1003 ¶¶ 201–203). We determine that these reasons are inadequate and too generic to satisfy Petitioner’s burden as they lack a clear explanation of what and how “aspects from Wang’s various embodiments” are proposed to be combined along with reasoning specific to that proposal. Petitioner, for example, does not explain adequately or persuasively why a person of ordinary skill in the art would have added a display that purportedly receives and analyzes data to a “smart appliance,” when that appliance already has an application processor that purportedly receives and analyzes the same data. It is not enough for Petitioner to allege that all of the elements of the challenged claims can be found somewhere in the various embodiments of Wang; Petitioner must also show that a person of ordinary skill in the art would have had a reason to combine the elements in the manner as arranged in the challenged claims. See KSR Int’l Co., 550 U.S. at 418 (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). We find Petitioner has not shown an adequate reason to combine embodiments.” slip op. at 38

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

    “We determine that these reasons are inadequate and too generic to satisfy Petitioner’s burden as they lack a clear explanation of what and how “aspects from Wang’s various embodiments” are proposed to be combined along with reasoning specific to that proposal. Petitioner, for example, does not explain adequately or persuasively why a person of ordinary skill in the art would have added a display that purportedly receives and analyzes data to a “smart appliance,” when that appliance already has an application processor that purportedly receives and analyzes the same data. It is not enough for Petitioner to allege that all of the elements of the challenged claims can be found somewhere in the various embodiments of Wang; Petitioner must also show that a person of ordinary skill in the art would have had a reason to combine the elements in the manner as arranged in the challenged claims. See KSR Int’l Co., 550 U.S. at 418 (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). We find Petitioner has not shown an adequate reason to combine embodiments.” slip op. at 38

  Patent outcomesUS 8,291,243 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,291,243
• Nokia Of America Corporation / Ericsson Inc. et al. v. General Access Solutions, Ltd.No claims unpatentable
  PTAB · Apr 14, 2025 · IPR2023-01416 · APJ Ken B Barrett · IPR · Final written decision

  The Board held claims 1–15 and 18 not unpatentable; the petition failed to prove the asserted anticipation and obviousness grounds, including failure to establish WiMAX as prior art.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentOther

    “filed with the Office a statutory disclaimer disclaiming method claims 16, 17, 19, and 20. See Ex. 2007; see also Tr. 33, 21:1–12 (Patent Owner’s counsel informing the Board that the disclaimer had been filed in the USPTO Patent Center, and Petitioner’s counsel having no objection to the filing of the disclaimer as an exhibit in this inter partes review); Tr. 34:19 1 Petitioner identifies Nokia of America Corporation, Ericsson Inc., and T-Mobile USA, Inc. as real parties in interest. Pet. 72. 2 Patent Owner identifies General Access Solutions, Ltd. as the real party in interest. Paper 6, 1. (Patent Owner’s counsel stating, “General Access has disclaimed method Claims 16, 17, 19, and 20.”). We treat disclaimed claims as if they never existed. See Facebook, Inc. v. SKKY, LLC, CBM2016-00091, Paper 12 at 8 (PTAB Sept. 28, 2017) (expanded panel) (precedential) (“The Federal Circuit has held consistently that claims disclaimed under § 253(a) should be treated as though they never existed.”) (citing, inter alia, Vectra Fitness, Inc. v. TWNK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in section 253 to mean that the patent is treated as though the disclaimed claims never existed.”); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.”)). Accordingly, the remaining claims challenged in this proceeding are apparatus claims 1–15 and method claim 18.” slip op. at 2

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

    “of both types of parameters to be stored in the same “device” is consistent with the claim language. The claim recites “a profile parameter storage device,” “said profile parameter storage device for storing [two parameter] values,” and refers to “the values stored at said profile parameter storage device.” Ex. 1001, 13:10–16. Accordingly, the claim language speaks of a single device for storing both types of parameters.12 And, Petitioner does” slip op. at 32

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

    “of both types of parameters to be stored in the same “device” is consistent with the claim language. The claim recites “a profile parameter storage device,” “said profile parameter storage device for storing [two parameter] values,” and refers to “the values stored at said profile parameter storage device.” Ex. 1001, 13:10–16. Accordingly, the claim language speaks of a single device for storing both types of parameters.12 And, Petitioner does” slip op. at 32

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “Id. “[A] work is not publicly accessible if the only people who know how to find it are the ones who created it.” Samsung Elecs. Co. v. Infobridge Pte. Ltd., 929 F.3d 1363, 1372 (Fed. Cir. 2019) (citing SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1196 (Fed. Cir. 2008) Application of Bayer, 568 F.2d 1357 (CCPA 1978)). Accordingly, in this case, Petitioner must demonstrate by a preponderance of the evidence that the WiMAX exhibit was disseminated or otherwise made available to interested ordinary artisans outside of the group that created the document. Petitioner has failed to satisfy that burden.” slip op. at 48

  Patent outcomesUS 6,947,477 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,947,477
• Cellco Partnership D/B/A Verizon Wireless v. General Access Solutions, Ltd.No claims unpatentable
  PTAB · Dec 23, 2024 · IPR2023-01147 · APJ Ken B Barrett · IPR · Final written decision

  Claims 1–6 were not shown unpatentable because the asserted references did not establish that the claimed second transceiver routes information based on monitored signal characteristics.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art (“POSA”) at the time of the purported invention would have had either: (1) a Bachelor of Science degree in computer science, electrical or computer engineering, or a related field, and at least 2 years of work or research experience in digital communications systems, such as wireless communications systems and networks, or equivalent, or a Master’s degree in electrical engineering, computer engineering, computer science or similar field. Additional education could compensate for less practical experience and vice versa. Ex. 1002, ¶¶1-46. Pet. 10. Patent Owner does not address the level of ordinary skill in the art. Cf. Ex. 2007 ¶19 (Patent Owner’s declarant, after acknowledging Petitioner’s definition, stating: “Patent Owner has not offered a different understanding of a POSITA, and the PTAB accepted Petitioner’s submission. I accept and use Petitioner’s and the PTAB’s definition of a POSITA.”). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 11

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

    “During oral argument, both parties confirmed their respective positions that the claim term “route” needs no construction. See, e.g., Tr. 11:7–9 (Petitioner’s counsel: “Frankly, it doesn’t make any difference to the analysis of the prior art. And so, we don’t believe that the PTAB needs to construe the term route, and so we have not proposed a construction.”); id. at 58:25–59:2 (Patent Owner’s counsel: “You know, I don’t think that you have to define routing in order to decide the case. I think you can do it, you know, just apply whatever plain and ordinary meaning is.”); cf. Tr. 40:14–18 (Patent Owner’s counsel at oral argument: “For the routing itself, you know, there is a District Court construction and that’s a construction that the other—the Petitioner did not ask for determination whether that’s appropriate or not appropriate here. We did not address that as well, so the parties aren’t arguing that that construction should be applied here.”). For the reasons discussed below, we determine that Petitioner has not proven by a preponderance of the evidence that the prior art discloses or teaches, under Petitioner’s articulated theories, that a second transceiver routes information based on monitored characteristics. This is dispositive of the inter partes review. Accordingly, we determine that no claim terms require express construction for purposes of deciding the dispositive issues.” slip op. at 13

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Ex. 1004, 5:25–36 (emphasis added). Thus, Palmer discloses that the determination to roam to another cell may be done by the mobile worker’s wireless communication device 20 having a specifically-programmed processor or may be done centrally, with examples being the “network” or central host processor. We disagree that this constitutes a disclosure of the access point 40 performing the roaming determinations. Rather, we find to be persuasive and credible Dr. Chrissan’s testimony that “a POSITA recognizes that an access point does not qualify as ‘centrally, for example, by the network or a central host processor,’” and, “[i]nstead, this phrase refers to one of the centrally located devices such as network 14 or central host processor 12 (in Fig. 1), or a device in administration building 33 (in Fig. 2).” Ex. 2007 ¶ 71 (citing Ex. 1004, Figs. 1, 2). Dr. Chrissan’s opinion is consistent with Palmer’s disclosure, as we will now discuss.” slip op. at 23

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

    “We determine that Petitioner has not established by a preponderance of the evidence its foundational assertion that Palmer discloses that “access point 40 determines whether roaming by a portable terminal 20 should take place and routes data packets accordingly.” Pet. 26–27; see Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008) (“Failure to prove the matter as required by the applicable standard means that the party with the burden of persuasion loses on that point—thus, if the fact trier of the issue is left uncertain, the party with the burden loses.”). As such, Petitioner has not met its burden to show that Palmer discloses, as recited in independent claim 1, a second transceiver that, “based on the first signal characteristics and the second characteristics, routes information to the first mobile station and the second mobile station, respectively,” or, as recited in independent claim 6, “based on the first signal characteristics and the second characteristics, routing, using the second transceiver, information to the first mobile station and the second mobile station, respectively.” Ex. 1001, 10:38–44, 11:19–22. The Petition does not contain a contention that this “route” aspect of the claims would have been obvious. Compare Pet. 25–26 (offering an alternative argument for the monitoring aspect; contending that, “to the extent the Board disagrees that Palmer’s access point 40 performs the monitoring, it would have nonetheless been obvious to a POSA to select the access point 40 to perform the monitoring since it directly communicates with the portable terminals 20.”), with id. at 26–27 (making the anticipationtype contention that “[t]he access point 40 routes information” without an alternative obviousness contention); see also Pet. Reply 12–13 (arguing, under the monitoring-and-routing heading, that monitoring by the access point would have been obvious, but not arguing the same for routing). Petitioner has not shown by a preponderance of the evidence that independent claims 1 and 6 and dependent claims 2–4 are anticipated by or would have been obvious over Palmer.” slip op. at 28

  Patent outcomesUS 9,426,794 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,426,794
• Masimo Corporation v. Apple Inc.No claims unpatentable
  PTAB · Oct 15, 2024 · IPR2023-00745 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1–4 and 8–22 were not shown unpatentable because Mills did not disclose the required embedded structure and Markel combined with Mills did not teach it; the revised motion to amend was dismissed as moot.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “Patent Owner’s Revised Contingent Motion to Amend asserts that in “the event the Board finds at least one challenged [Revised Motion to Amend] claim unpatentable, [Patent Owner] respectfully requests that the Board grant this Motion with respect to the corresponding proposed substitute claim(s).” Paper 27, 1. Because we determine that Petitioner has not established that any of the challenged claims 1–4 and 8–22 are unpatentable, Patent Owner’s Revised Contingent Motion to Amend is moot.” slip op. at 61

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in both education and proposed work experience. Patent Owner’s proposed work experience is somewhat vague and potentially outside the scope of the claimed invention. For example, the requirement that the person of ordinary skill in the art have experience with the “capture and processing of data or information, including but not limited to physiological information,” would seemingly encompass data processing areas that do not relate to the scope of the claimed invention. We adopt Petitioner’s level of the level of ordinary skill in art because it is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). Our analysis and the end result are the same under either proposed definition.” slip op. at 11

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

    “structure where a lead is embedded in a portion of the enclosure from other embodiments where a lead is merely positioned against or in parallel contact with a portion of the enclosure. See Ex. 2003 ¶¶ 36–37. The Specification describes distinct embodiments such as “lead 472 of the heart sensor can be positioned against the back surface of bezel 460,” or “[a]lternatively, lead 472 can be placed within the thickness of bezel 460 (e.g., in a pocket within the bezel wall), but underneath the outer surface of the bezel.” Ex. 9:44–48. We agree with Patent Owner, and Dr. Kenny, that “[t]his passage distinguishes a lead that is embedded in a portion of the enclosure from a lead that is merely ‘positioned against’ or in parallel contact with a portion of the enclosure.” PO Resp. 6–7 (citing Ex. 2003 ¶¶ 33–35). See also Ex. 2008, 31:10–33:18, 109:18–110:19 (Petitioner’s expert, Mr. Oslan, suggesting that a first component or object in parallel contact with and positioned under a second component or object would not necessarily indicate that the first component or object is embedded in the second component or object). Similarly, we also agree that “the claims of the ’257 use the term ‘embedded in’ while also using the word ‘embedded’ in other contexts, which” indicates distinct claim scope for “the term ‘embedded in,’” versus “the broader term ‘embedded.’” Ex. 2003 ¶ 38. For instance, claim 9 distinctly requires “embedded with,” which is a broader term that, according to Dr. Kenny, encompasses embodiments where a lead may be adjacent/parallel to the first portion of the enclosure. Id.” slip op. at 18

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

    “under the exterior of the first portion” (see Pet. 21–22, 24–25; Pet. Reply 4); and (3) leaf spring 62 is embedded in housing 12 and electrode 14 (see Pet. 22–24). None of Petitioner’s mappings disclose every element of claim 1 and Petitioner improperly jumps between these various mappings without fully examining a single mapping for each and every limitation of claim 1. See Pet. 18–25. In essence, Petitioner invites the Board to piece together a single theory that meets all claim elements from these disparate theories that each require distinct structure within Mills. See Amazon.com, Inc., et al. v. Avago Technologies General IP (Singapore) PTE. LTD., IPR2017-01112, Paper 11, at 13 (PTAB Aug. 23, 2017) (“Petitioner is inviting us to assume the role of archeologist of the record, which invitation we decline.”).” slip op. at 36

  Patent outcomesUS 10,076,257 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,076,257
• Shenzhen Buxiang Network Technology Co., Ltd. v. Sun Pleasure Co. LimitedNo claims unpatentable
  PTAB · Apr 11, 2022 · IPR2021-00080 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–9 were not shown unpatentable because Metzger lacked the claimed fluid passage, and Wu was not prior art based on the claims’ earlier reduction to practice.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on the testimony of Mr. Kuchel, Petitioner submits that a person of ordinary skill in the art “would have either (i) a bachelor’s degree in mechanical engineering, or an equivalent field, or (ii) would have an associate degree in mechanical engineering, or an equivalent field, and two years of practical experience in inflatable product design.” Pet. 16 (citing Ex. 1002 ¶ 26). In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 9. In its Response, Patent Owner makes arguments that rely on Petitioner’s proposed level of ordinary skill in the art, but does not dispute Petitioner’s definition. See PO Resp. 35, 39–53 (citing Ex. 2014 ¶ 66). Based on our review of the complete record, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution.” slip op. at 10

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

    “Petitioner proposes claim constructions for the terms “substantially below” and “substantially inwardly” recited in claims 1 and 6. Pet. 40–41. In the Decision on Institution, we determined that it was not necessary to construe the terms at that stage of the proceeding. Dec. Inst. 9–10 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). Patent Owner contends “the claim terms ‘substantially below’ and ‘substantially inwardly’ are sufficiently clear on their face to preclude any need for claim construction,” but proposes claim constructions that differ somewhat from Petitioner’s proposed constructions in the event the Board determines that these terms require claim construction. PO Resp. 13, 15–16. Patent Owner also proposes a claim construction for the term “upper tubular periphery” recited in claims 1 and 6 that Petitioner opposes. Id. at 17–19; Pet. Reply 7–10. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec, 868 F.3d at 1017. Because the outcome of our decision does not depend on either parties’ construction of the terms “substantially below,” “substantially inwardly,” or “upper tubular periphery,” we need not construe these terms to resolve the issues in dispute in this proceeding.” slip op. at 11

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

    “We agree with Patent Owner that Metzger’s gaps define fluid passages located between adjacent side support beams 25 (i.e., “internal walls”) and are not formed in any of the side support beams. We are not directed to any written description in Metzger indicating that the gaps are formed in a side support beam.7 Instead, Figures 5 and 6 of Metzger depict the gaps as being defined between four distinct side support beams 25. Furthermore, as Patent Owner points out, Mr. Kuchel appears to agree that there are no passages formed through the side support beams 25 of Figures 5 and 6. Ex. 2003, 107:12–108:9, 108:17–108:21. For these reasons, we determine that Metzger’s gaps are not formed through an internal wall, as required by claim 1. In the Reply, Petitioner asserts that, even if Metzger discloses four discrete, spaced-apart beams or walls, “the gaps or slices between walls are apertures in a structure through which air can pass.” Pet. Reply 15 (emphasis added). This argument is not persuasive because claim 1 recites that the fluid passage is formed through the internal wall (which Petitioner asserts is met by Metzger’s side support beam 25), not just any structure. Petitioner’s general assertion that air passes through “a structure” fails to establish that the gaps are formed in a side support beam.” slip op. at 16

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

    “Specifically, Petitioner argues that one of ordinary skill in the art would have understood from Metzger “that an air passage would be necessary to bypass the side support beam 25 and inflate the upper tubular periphery for the air mattress to function as intended.” Id. (citing Ex. 1002 ¶ 200). According to Petitioner, because Metzger discloses only a single air inlet valve, an ordinarily skilled artisan would have understood that providing openings, or fluid passages, through the side support beam 25, in lieu of or in addition to the gaps between the side support beam 25, would have been a simple solution to adequately inflate the peripheral frame of the mattress defined by the side support beam(s) 25. Id. at 74–75 (citing Ex. 1002 ¶ 200). Petitioner thus presents two alternate theories for modifying Metzger: (1) providing fluid passages in at least one side support beam 25 in addition to the gaps, and (2) providing fluid passages in lieu of the gaps. In support of the first theory, Petitioner only argues that providing fluid passages in the side support beams, in addition to the gaps between the ends of the side support beams, would have allowed the peripheral frame to inflate more freely. Id. at 75 (citing Ex. 1002 ¶ 201). In its Response, Patent Owner contends that “Petitioner is just wrong.” PO Resp. 45 (citing Ex. 2001 ¶¶ 146–149). Dr. Letton testifies that pumps used to inflate air mattresses are low flow and low pressure and generally inflate an air mattress to a maximum pressure of around 1 psi. Ex. 2001 ¶ 147. Dr. Letton further testifies that, with Metzger’s design, the” slip op. at 28

  Patent outcomesUS 7,353,555 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,353,555
• Zillow Group, Inc. / Zillow, Inc. v. International Business Machines Corp.No claims unpatentable
  PTAB · Mar 3, 2022 · IPR2020-01656 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1–5 and 7–10 were not shown unpatentable because Reuning did not disclose the ordered selection and assignment steps required by claim 1.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a skilled artisan “would have had a bachelor’s degree in computer science or a closely related field, along with two or more years of programming experience in application development, including familiarity with accessing databases and implementing user interfaces, as well as familiarity with marketing concepts and marketing workflows.” Pet. 7–8 (citing Ex. 1004 ¶ 22). Patent Owner contends a skilled artisan “would have had a degree in computer science, information systems, or a similar discipline, or equivalent work experience.” PO Resp. 2. In addition to the educational attainment, Patent Owner contends a skilled artisan would have had “one to two years of work experience implementing networked systems with user interfaces, including familiarity with databases and computerized marketing.” Id. (citing Ex. 2004 ¶ 46). Patent Owner acknowledges that Petitioner offers “a slightly different level of ordinary skill in the art” but that “it is not materially different.” Id. at 2–3. For the purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art because it appears consistent with the problems addressed in the ’904 patent and the prior art of record. Our Decision, however, would not be impacted if we adopted Patent Owner’s proposed level of skill in the art.” slip op. at 7

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

    “Our decision in this case does not turn on whether or not a promotion instance is limited to one used in a marketing campaign or whether a list of contacts constitutes a promotion instance or whether the preamble is limiting. The parties also do not dispute that the cited prior art discloses promotion instances. Thus, we need not reach these issues. Consequently, we need not formally construe this term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8

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

    “Patent Owner next contends that “promotion list” should be construed as “a collection of one or more promotion instances” but the term “does not apply to a collection of contact information.” PO Resp. 3–4 (citing Ex. 2004 ¶¶ 50–51). Petitioner, in turn, contends Patent Owner “fails to explain why the word ‘collection’ should replace ‘list’ or how ‘a collection’ clarifies the plain and ordinary meaning of ‘list.’” Pet. Reply 1–2. Petitioner further contends, based on deposition testimony by Dr. Shamos, that Patent Owner “imposes intent––‘an express act of making a list’––into ‘promotion list.’” Id. at 2 (citing Ex. 1020, 70:10–71:3). Patent Owner denies “there is an element of intent in the claims of the ’904 Patent.” Sur-Reply 9. We apply the plain and ordinary meaning of “promotion list” as “a list of one or more promotion instances.” We note that our Decision would be the same even if we adopted Patent Owner’s construction, i.e., “a collection of one or more promotion instances.”” slip op. at 9

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

    “Owner Response that steps 1[c] through 1[h] must be performed in order. PO Resp. 4. Patent Owner provides a step-by-step analysis showing that the language of claim 1 shows that “step 1f . . . refers back to step 1e,” “step 1e . . . refers back to step 1d,” and “step 1d . . . refers back to step 1c.” Id. at 5–6 (emphasis omitted). Petitioner’s basis for its contention that the steps do not have to be performed in order is Mr. Hochman’s testimony concerning prefetching and indexing. Pet. Reply 4–7. As discussed above in connection with step 1[d], we find this testimony by Mr. Hochman to be entitled to no weight because it is entirely unsupported. We also note that Mr. Hochman’s credibility in regard to his testimony that the steps of claim 1 are not required to be performed in order is further undercut by his testimony that he is not familiar with the “the term ‘antecedent basis’ in patent law.” Ex. 2003, 52:22–24. For all of these reasons, we agree with Patent Owner that the plain language of claim 1, including the antecedent basis recited in steps 1[c] to 1[h] requires the steps to be performed in order.” slip op. at 32

  Patent outcomesUS 8,315,904 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 8,315,904
• LKQ Corporation / Keystone Automotive Industries, Inc. v. GM Global Technology Operations LLCNo claims unpatentable
  PTAB · Oct 8, 2021 · PGR2020-00055 · APJ Robert L Kinder · PGR · Final written decision

  Claim 1 was not shown unpatentable as anticipated by the Leopaard or obvious over the Leopaard alone or with the Equinox.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “designer of ordinary skill analysis whereas the overall claimed design cannot be accurately compared to the Leopaard vehicle. As we discuss in more detail below, there are simply too many aspects of the claimed design that are not adequately disclosed by the images of the Leopard. Although LKQ’s experts project what is likely to be in these evidentiary voids, we do not find estimations of design features on par with an actual showing. LKQ’s anticipation and obviousness theories are based too much on speculation and conjecture about what features might be present in the Leopaard’s skid bar (see, e.g., Pet. Reply 22 (“most likely”)), or that various features can be discounted as “likely barely noticeable” or “unlikely to be noticeable.” Id. at 25, 28. With this understanding, we compare the design claim to the Leopaard, noting both the similarities and difference and also the shortcomings in evidence.” slip op. at 43

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “individual who has at least an undergraduate degree in transportation or automotive design and experience in the field of transportation design, or someone who has several years’ work experience in the field of transportation or automotive design. Pet. 37 (citing Ex. 1003 ¶¶ 41–42; Ex. 1004 ¶ 39). GM originally argued for a slightly different standard for the ordinary designer in its Preliminary Response, but for purposes of its Response, GM has acquiesced in LKQ’s definition. See PO Resp. 8. Mr. Peters contends that “I do not discern any relevant differences between these proposals, nor do I have any substantive disagreement with Mr. Gandy’s proposal. My opinion is the same, regardless of which definition is applied.” Ex. 2004 ¶ 27. Based on the final record, we adopt Petitioner’s proposed definition of the ordinary designer.” slip op. at 16

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

    “contentions. As we analyze in detail below, LKQ’s case is not persuasive for several reasons, including its failure to provide sufficient evidence. LKQ has not produced images of the Leopaard that would enable a persuasive comparison with corresponding views of the claimed invention. The evidence produced by LKQ related to the Leopaard simply fails to clearly show several claimed aspects of the design. Because the Petition omits sufficient views of any complete single skid bar (Ex. 2004 ¶ 51), the evidence produced by LKQ related to the Leopaard simply fails to clearly show several claimed aspects of the design. For example, Exhibits 1006– 1009 include front or perspective views that show, at most, only an upper portion of a skid bar. Exhibit 1010 shows slightly more of the skid bar of its vehicle, but also omits a significant portion of the bottom of the skid bar. Ex. 2004 ¶ 51; Ex. 2006, 77:2–21. The exhibits do not show a sufficient bottom view to allow comparison and the exhibits also have obscured side views due to other trim features covering the outsides of the skid bar. For these and other reasons such as the differences between the designs discussed below, LKQ has failed to meet its burden of proof.” slip op. at 18

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Petition does propose any other modifications to the Leopaard. LKQ’s obviousness analysis failed to address the differences that contribute to the overall appearance of the ’508 patent’s design. As discussed above, the evidence shows multiple readily apparent differences between the claimed design and the Leopaard. We agree with Mr. Peters that “[t]he differences I discussed above in the context of the ordinary observer are just as significant to the ordinary designer, who would likewise have recognized these readily visible features.” Ex. 2004 ¶ 86. These same differences in the aggregate create an overall ornamental design that is not basically the same between the claimed design of the ’508 patent and the Leopaard. Accordingly, the Leopaard is not a proper Rosen reference. Even before modifications may be considered, LKQ has the burden to show that the Leopaard, as it currently is “in existence,” has design characteristics of which are basically the same as the claimed design. High Point Design, 730 F.3d at 1311. Considering the Leopaard before any proposed modifications, it is not a proper Rosen reference. Ex. 2004 ¶ 84. The Leopaard does not give basically the same visual impression as the patented design because the Leopaard does not teach a substantial vertical front face, bottom surface and edge (continuous surface below the recesses), outwardly projecting top and side surfaces, curvature from side-to-side, deep recesses entirely visible from the front, and outer perimeter shape. See id. ¶¶ 49, 52–85. As Mr. Peters testifies, the Leopaard does not have substantially the same overall appearance because “the respective designs include numerous fundamentally different design characteristics,” which “[t]he Petition does not specifically address.” Id. ¶¶ 83, 84. Without accounting for these differences—and particularly, the significance of these differences to the designer of ordinary skill in the art—the Petition lacks sufficient evidence that the Leopaard is “a single reference that creates basically the same visual impression” as the claimed design. Indeed, the differences described above in the context of the ordinary observer are just as significant to the ordinary designer, who is aware of readily apparent differences when assessing the visual impression of designs. Ex. 2004 ¶¶ 25, 84–86. Thus, we are not persuaded that a designer of ordinary skill would have viewed the Leopaard to give basically the same visual impression as the ’508 patent.” slip op. at 58

  Patent outcomesUS D855,508 not shown unpatentable
  § 102 anticipation§ 103 obviousness
• Cooler Masters Co., Ltd. v. Aavid Thermalloy LLCNo claims unpatentable
  PTAB · Jun 4, 2020 · IPR2019-00146 · APJ Robert A Pollock · IPR · Final written decision

  Claims 1, 2, 4, and 5 were not shown unpatentable because Nakamura did not disclose the claimed spacer, and Petitioner did not establish a basis to modify it.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “level of skill in the art than that proposed by Petitioner. PO Resp. 11‒12. In particular, Patent Owner disagrees with Petitioner’s requirement for an advanced degree in mechanical engineering or a closely related field as it would, for example, exclude both the named inventors of the ’679 patent as well as “a large majority of active workers in the field at the time of the invention.” Id. at 12 (citing Ex. 2002 ¶ 80). Rather, Patent Owner contends that the person of ordinary skill in the art at the time of the invention would have a Bachelor of Science degree in engineering and at least 3 years of experience working or studying in the field of heat pipes; or an equivalent level of education, training, and work experience. Id. at 11 (citing Ex. 2002 ¶¶ 77‒79). Dr. Pokharna comports with the qualifications a person would have needed to understand and implement the teachings of the ’679 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). Moreover, Petitioner concedes that this dispute as to the appropriate level of skill in the art “is immaterial because the challenged claims are invalid under both sides’ definitions.” Reply 1 n.2. We agree with Petitioner that the outcome of this proceeding is not dependent on our application of one party’s definition as compared to the other. Nonetheless, because Petitioner’s and Dr. Pokharna’s definition better reflects the level of ordinary skill in the art, we adopt and apply it here. C.” slip op. at 10

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

    “extending between and contacting said first and second plates,” claim 1 separately recites “a depression formed in said first plate,” which projects into said vapor chamber and is bonded to said second plate. PO Resp. 25–26 (emphasis added) (citing Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (“Where a claim lists elements separately, the clear implication of the claim language is that those elements are distinct components of the patented invention.”)); see Ex. 2002 ¶ 114. Whereas claim 1 requires that a spacer contact both the first and second plates, it makes clear (as do claims 4 and 6) that a depression formed in a first plate is bonded to only the opposing plate. See Ex. 1001, claim 7 (reciting that a “depression formed in said second plate . . . is in contact with an inner surface of said first plate”). We, thus, infer from the structure of the recited in claim 1 are distinct components with distinct properties. In particular, the claimed “spacer . . . extending between and contacting said first and second plates” is a distinct element between and in contact with two plates, whereas the claimed “depression” is a part of one plate that contacts, or is bonded to, an opposing plate.” slip op. at 14

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

    “whether a reference is a printed publication. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a given reference qualifies as a prior art “printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); see In re Wyer, 655 F.2d 221, 226 (CCPA 1981). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (citation omitted). Bruckelmyer and Wyer specifically addressed the public accessibility of laid open patent applications.” slip op. at 24

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “The relevant language of independent claim 1 is not merely “spacer” but “spacer. . . extending between and contacting said first and second plates,” which we construe as referring to a “structure separate from and in 16 Petitioner also addresses obviousness under the construction of “spacer” that Patent Owner proposed before the district court but that we do not adopt here. See id. at 36–41; section II(C)(2), n.7, above. 17 Petitioner and its expert also reference Nakamura’s Figures 5 and 6, which show embossed depressions in only one plate. Pet. 39–40; Ex. 1002 ¶ 64. Nonetheless, we agree with Patent Owner that “Petitioner’s grounds are based on the concavities 9 described and illustrated with respect to Figure 4 of Nakamura,” and Petitioner’s passing reference to the alternative embodiment of Nakamura’s Figures 5 and 6 does not substantially affect our analysis, which focuses on the embodiment of Figure 4. See PO Resp. 46 (citing Inst. Dec. 15–18). clearance between the plates.” See section II(C)(2), above. Applying this panel’s construction, we agree with Patent Owner that Petitioner has neither shown how Nakamura discloses this limitation, nor identified any rationale or motivation to modify Nakamura to provide a “spacer. . . extending between and contacting said first and second plates,” as recited in claim 1. See PO Resp. 46–47. As discussed above, Petitioner seeks to satisfy this limitation by pointing to the “H-shaped structure” defined by concavities pressed into opposing plates of the heat pipe illustrated in Nakamura’s Figure 4. But as Patent Owner points out, “these concavities are integral with the portions of the container in which they are formed, and a concavity cannot be said to contact the same plate in which it is formed without rendering the term ‘contacting’ in claim 1 meaningless.” Id. (citing Ex. 2002 ¶¶ 116, 145).” slip op. at 35

  Patent outcomesUS 7,100,679 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,100,679
• Hamamatsu Photonics K.K. v. Semicaps Pte Ltd.No claims unpatentable
  PTAB · Mar 18, 2019 · IPR2017-02112 · APJ Ken B Barrett · IPR · Final written decision

  Claims 2, 3, and 8–20 were not shown unpatentable because Hamada did not disclose the claimed sampling and accumulation, the obviousness theories were insufficient, and Quah was not proven prior art.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “adequately address the pertinent issue—whether Petitioner’s proposed hypothetical person of ordinary skill in the art would lack the requisite experience and understanding of the art. Patent Owner does not identify adequately a substantive difference between Petitioner’s hypothetical person of ordinary skill in the art and Patent Owner’s. See PO Resp. 17–20. For example, Patent Owner does not argue that an electrical engineer or physicist with two years of experience utilizing electronic circuit testing equipment would lack adequate knowledge of the use of lasers in circuit testing. To the contrary, Patent Owner’s expert, Dr. Woods, “generally agree[s] with petitioner’s definition of a [person of ordinary skill in the art]”—including the type of education and level of experience—and testified that “[t]hese techniques [of OBIRCH and TIVA] were known and widely used around the time of the invention of the ’982 patent to determine the location of defects in a semiconductor device and would have been known to those of ordinary skill in the art.” Ex. 2029 ¶¶ 30–31. To the extent that Patent Owner’s proposed definition of the level of ordinary skill is more than merely an elaboration upon Petitioner’s, we find it to be directed to a super-expert in a very narrowly defined field and calculated to undermine Dr. Mercer’s credibility while simultaneously promoting the credentials of its own experts. We do not find this litigation-induced argument persuasive. We determine that the definition offered by Dr. Mercer comports with the qualifications a person would have needed to understand and implement the teachings of the ’982 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art). Accordingly, we apply Dr. Mercer’s definition of the level of ordinary skill in the art.” slip op. at 10

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

    “Thus, the parties agree that accumulating encompasses, at least, adding values together. This understanding is consistent with the specification’s discussion of accumulated samples. See, e.g., Ex. 1001, 8:20–29. Petitioner initially asserted, in the Petition, that “accumulating” should be construed to include the act of averaging. Pet. 4–5. In the Institution Decision, we declined to construe “accumulating” as necessarily including the act of averaging. Inst. Dec. 7–8. In its Reply, Petitioner no longer advocates this as a matter of claim construction. See Pet. Reply 6. As discussed below, the parties address the issue as a factual matter, and specifically as to whether a prior art reference’s use of the term “average” discloses “accumulating” within the meaning of the claims of the ’982 patent. We again, as we did in the Institution Decision, Inst. Dec. 8, construe the term “accumulating” merely as encompassing the process of addition.” slip op. at 12

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

    “We do not find Petitioner’s dictionary-based “[b]y definition” argument to be persuasive as it is disconnected from the technology at issue. We cannot find that a person of ordinary skill in the art would apply, in this context, a lay dictionary’s general definition and thereby understand Hamada to disclose determining a plurality of samples. We credit the opinion of Dr. Woods, containing persuasive reasoning, and find that Hamada’s use of the word “average” does not disclose “determining a plurality of samples,” as Petitioner contends. We now turn to Petitioner’s arguments that are more closely related to the technology.” slip op. at 21

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

    “In support of its case, Petitioner reasons that “a POSITA would have considered it obvious to have configured Hamada’s electrical current meter 6 to determine a plurality of samples of the response signal, and to have configured signal processing and display 9 to add up this plurality of samples, in order to optimize Hamada’s averaging process.” Pet. at 23 (emphasis added) (citing Ex. 1004 ¶ 24; Ex. 1014 ¶ 205). Neither Petitioner nor its expert elaborates on the conclusory assertion that performing the claimed determining and accumulating steps would have “optimize[d]” Hamada’s averaging process. Petitioner further reasons that: it would have been obvious for a POSITA at the time of the invention to have configured electrical current meter 6 and signal processing and display unit 9 to respectively measure and add multiple samples of the response signal to allow Hamada’s averaging process, in turn, to be performed on multiple samples. Id. at 24 (citing Ex. 1014 ¶ 206). This reasoning is circular in that it is, effectively, an assertion that it would have been obvious to perform operations on multiple samples in order to perform the process on multiple samples. We also have considered Petitioner’s arguments in the Petition that the “motivation” comes from the “teaching or suggestion” provided by the disclosure of “averaging,” along with Petitioner’s string of reasons from KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). See Pet. 24, 43–44 (citing Ex. 1014 ¶¶ 206, 306). Petitioner does not develop adequately any of these reasons. An obviousness analysis requires more than “mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In its Reply, Petitioner repackages its “[b]y definition” argument as purportedly an obviousness argument. Pet. Reply 19–20. Petitioner argues that, “to the extent that Hamada does not explicitly disclose this limitation, a POSITA would have considered the act of configuring Hamada to measure and add multiple samples to have been obvious because that is what the definition of ‘averaging’ requires.” Id. (citing Pet. 23–26; Ex. 1014 ¶¶ 204– 208). Although possibly an obviousness theory, this argument reads more like an assertion that the claimed determining and accumulating of a plurality of samples either is inherently or implicitly disclosed in Hamada (offered as an alternative if it is deemed not explicitly disclosed). Thus, Petitioner appears to take the position that the disputed limitation is not absent from Hamada, and Petitioner fails to explain why a person of ordinary skill would have seen a reason to modify Hamada. For the reasons discussed above, we do not find Petitioner’s “[b]y definition” argument persuasive in the anticipation context and, for those same reasons, do not find it persuasive when couched as an obviousness ground. We determine that Petitioner has failed to demonstrate that independent claim 1 would have been obvious over Hamada. Petitioner’s arguments as to dependent claims 2, 3, 8–16, 19, and 20 (Pet. 24–26, 44–45, 47) do not cure the underlying defect in its obviousness theory with regard to independent claim 1. Accordingly, Petitioner also has not demonstrated that those dependent claims would have been obvious over Hamada. F. The Remaining Obviousness Grounds Based on Hamada in Combination” slip op. at 29

  Patent outcomesUS 7,623,982 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,623,982
• Apple Inc. v. California Institute Of TechnologyNo claims unpatentable
  PTAB · Dec 27, 2018 · IPR2017-00210 · APJ Trevor M Jefferson · IPR · Final written decision

  The Board held claims 1–8, 11–17, 19–22, and 24–33 not unpatentable because Apple did not prove anticipation by Frey or obviousness over the asserted combinations.

  RulingsFinal written decision

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

    “given reference qualifies as a prior art “printed publication” involves a caseby-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); In re Wyer, 655 F.2d 221, 226 (CCPA 1981). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (citation omitted). Petitioner has put forth date stamp evidence that a copy of the conference proceedings including Frey was at least received in the Cornell University Library by March 20, 2000. Ex. 1015, 16. Petitioner also put forth a declaration of Pamela Stansbury, an employee in the Original Cataloging Unit of the Cornell University Library, who testifies that, based upon her review of library records and her knowledge of standard operating procedures, Frey was “publicly available at the Cornell University Library as of March 20, 2000.” Ex. 1031 ¶ 4; see also Paper 22, 5 (Petitioner’s motion to submit supplemental information, which includes a description of Exhibit 1031); Paper 32 (granting Petitioner’s motion to submit supplemental information). Patent Owner does not dispute that Frey was publicly available as of March 20, 2000. See PO Resp. 15. Based on Petitioner’s evidence, we determine that Frey qualifies as a prior art printed publication as of March 20, 2000.” slip op. at 13

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

    “It is well established that when a party seeks to prove conception via the oral testimony of a putative inventor, the party must proffer evidence corroborating that testimony. . . . There is no particular formula that an inventor must follow in providing corroboration of his testimony of conception. Rather, whether a putative inventor's testimony has been sufficiently corroborated is determined by a ‘rule of reason’ analysis, in which ‘an evaluation of all pertinent evidence must be made so that a sound determination of the credibility of the inventor's story may be reached.’ However, that ‘rule of reason’ analysis does not alter the requirement of corroboration of an inventor's testimony. Evidence of the inventive facts must not rest alone on the testimony of the inventor himself. Singh, 317 F.3d 1240–41 (internal citations omitted) (quoting Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993)). With respect to priority and antedating a reference, the Federal Circuit has stated the following regarding burdens and required documentary support: When the issue of priority concerns the antedating of a reference, the applicant is required to demonstrate, with sufficient documentation, that the applicant was in possession of the later-claimed invention before the effective date of the reference. Demonstration of such priority requires documentary support, from which factual findings and inferences are drawn, in application of the rules and law of conception, reduction to practice, and diligence. The purpose is not to determine priority of invention—the province of the interference practice—but to ascertain whether the applicant was in possession of the claimed invention sufficiently to overcome the teachings and effect of an earlier publication of otherwise invalidating weight. In re Steed, 802 F.3d 1311, 1316 (Fed. Cir. 2015) (emphases added); see also Perfect Surgical Techniques, Inc. v. Olympus America, Inc., 841 F.3d 1004, 1008 (Fed. Cir. 2016) (citing Steed). “The principles are legal, but the conclusions of law focus on the evidence, for which the Board’s factual findings are reviewed for support by substantial evidence.” Steed, 802 F.3d at 1316; see also NFC Tech., LLC v. Matal, 871 F.3d 1367, 1371 (Fed. Cir. 2017).” slip op. at 14

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

    “2. Analysis To anticipate a patent claim under 35 U.S.C. § 102, “a reference must describe, either expressly or inherently, each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)). When evaluating a prior art reference in the context of anticipation, the reference must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)). “[A] reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (quoting In re Petering, 49 CCPA 993, 301 F.2d 676, 681 (1962)). We analyze the instant ground with these principles in mind.” slip op. at 20

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

    “We are persuaded by Patent Owner’s arguments that Petitioner failed to establish a reasonable expectation of success for the proposed modifications to Frey and Divsalar. Petitioner’s argument in response acknowledges the missing expectation of success evidence by relying on the experimental nature of the field. Pet. Reply 9. Petitioner states that [a]s [Patent Owner] concedes, rigorous mathematical analysis of codes is difficult, and, as a result, POSAs routinely developed codes by experimentation. POR, 4. Encouraged by Frey’s results, POSAs would have been motivated to use Frey’s irregularity in Divsalar. Indeed, this is exactly what Dr. Frey suggested to Dr. Divsalar in an email dated December 8, 1999. Ex. 1035, App. A; Ex. 1064, 185:5–8. The Petition showed that POSAs would have had a reasonable expectation of success because it was trivial to modify Divsalar to make it irregular by repeating some of the information bits more than others, which meets the limitations of the claimed invention. Pet., 44–47. . . . Dr. Mitzenmacher agreed that simply repeating the first two bits in Divsalar “q+10” times and the rest “q” times would make the code irregular. Ex. 1062, 153:11-154:8. Pet. Reply 9 (emphasis added). To buttress the argument that a skilled artisan would have had a reasonable expectation of success in the proposed modifications, Petitioner introduces new testimony and simulations from a new declarant, Dr. Frey, to confirm that using Frey’s irregularity in Divsalar would not have been difficult and would have yielded a reasonable expectation of success. Id. at 10 (citing Ex. 1068). Yet, even if we were to deem the testimony and simulation to be within the proper scope of a reply brief,6 they do not support a reasonable expectation of success at the time of the invention. We agree with Patent Owner that “[i]t is completely irrelevant what Dr. Frey claims he could do in the year 2018 when armed with Caltech’s patent disclosures and publications, [the inventor’s] original coding work, contemporary resources, and some 18 years of post-filing date knowledge.” PO Sur-Reply 6. Because this evidence is not tied to the state of the art at the time of the invention, it is not probative of anticipated success. See Millennium Pharm., Inc. v. Sandoz Inc., 862 F.3d 1356, 1367 (Fed. Cir. 2017) (quoting Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985)) (“Those charged with determining compliance with 35 U.S.C. § 103 are required to place themselves in the minds of those of ordinary skill in the relevant art at the time the invention was made, to determine whether that which is now plainly at hand would have been obvious at such earlier time.” (emphasis added)).” slip op. at 28

  Patent outcomesUS 7,116,710 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,116,710

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.