- Babybjörn AB v. The Ergo Baby Carrier, Inc.Institution deniedPTAB · Apr 22, 2025 · IPR2025-00110 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus deny institution of inter partes review. See 37 C.F.R. § 42.108(b) (“At any time prior to a decision on institution of inter partes review, the Board may deny all grounds for unpatentability for all of the challenged claims. Denial of all grounds is a Board decision not to institute inter partes review.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person having ordinary skill in the art “would have had at least a four-year degree in a design-based field, which may include fashion design, industrial design, mechanical engineering, or another technical field, or equivalent experience, and familiarity working with child products and/or adjustable products.” Pet. 6–7 (citing Smith Decl. ¶¶ 32–38). Patent Owner does not address Petitioner’s proposed definition, which appears consistent with the record in this proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. Furthermore, Patent Owner does not argue that Petitioner’s proposal for the level of ordinary skill leads to an improper understanding of how a skilled artisan would understand either the challenged patent or the prior art. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Based on the current record, we need not construe explicitly the term “at least one thigh support adjuster” because doing so would not change the outcome of the analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). More particularly, and as discussed below, Petitioner does not show sufficiently how the prior art teaches the structure identified as corresponding to the alleged claimed function. Further, because we deny on the merits (as discussed below), we do not address Patent Owner’s alternative argument that we should deny institution because “Petitioner fails to construe th[is] limitation and otherwise argues for an advisory opinion from the Board on indefiniteness.” Prelim. Resp. 1; see id. at 1–6 (entire argument). 2. “defined by” Limitations 1j and 11l each recite “a first setting, a second setting, and a third setting defined by the adjustable child carrier.” Ex. 1001, 17:38–39 (emphasis added), 19:43–44 (emphasis added). Limitation 6k recites “a first position, a second position, and a third position defined by the adjustable child carrier.” Id. at 18:36–37 (emphasis added). Patent Owner proposes a construction for “defined by” in these limitations. See Prelim. Resp. 12–15. At this stage of the proceeding and based on the current record, we need not construe explicitly “defined by”” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Public accessibility “has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ . . . .” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). In Hulu, the Precedential Opinion Panel (“POP”) rejected a petitioner’s argument that a reference necessarily meets “the reasonable likelihood standard for institution where the reference bears conventional markers of publication, such as a copyright date, edition identifiers, publication by a commercial publisher, and the assignment of an ISBN number.” Hulu, Paper 29 at 17. The POP stated: “We do not hold that any particular indicia per se is sufficient at the institution stage. Rather, the indicia on the face of a reference, such as printed dates and stamps, are considered as part of the totality of the evidence.” Id. at 17–18 (citing Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1377 (Fed. Cir. 2018)). Here, Petitioner provides no citation, no discussion, and no support for its assertion that the Synergy Manual was “published” in “2007.” See Pet. 2. Instead, we are left to assume that Petitioner relies on the text “© BabyBjörn AB, Stockholm, 2007” at the bottom of page 6 of the Synergy Manual. More to the point, Petitioner does not discuss in the Petition any evidence supporting the implicit position that the Synergy Manual was publicly accessible prior to the critical date of the claimed invention.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,786,055 - PTAB · May 28, 2024 · IPR2024-00085 · APJ Michael L Woods · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 5, 7–11, 13, and 15 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the Challenged Claims of the ’659 patent. Accordingly, we institute an inter partes review of the Challenged Claims on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We disagree with Patent Owner. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation.”8 The Director’s Memorandum explains that, when a petitioner makes a Sotera-type stipulation, “it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB” and “[w]ith such a stipulation, if an IPR or PGR is instituted, the grounds the PTAB resolves will differ from those present in 8 https://www.uspto.gov/sites/default/files/documents/interim_proc_discretio nary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (“Director’s Memorandum”). the parallel district court litigation.” Director’s Memorandum 7 (citing Sotera, IPR2020-01019, Paper 12 at 18–19). Pursuant to the Director’s Memorandum, we “will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Id. Because Petitioner provides a Sotera-type stipulation, we do not exercise our discretion to deny institution under Fintiv.” slip op. at 8
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Upon review of the prior art of record and the parties’ arguments, we adopt Patent Owner’s definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art). Petitioner’s proposed definition appears overly restrictive, as it requires a graduate degree in a narrow field of engineering or equivalent experience. We find that a bachelor’s degree with the accompanying experience proposed by Patent Owner more closely aligns with the prior art of record and the ’659 patent. We note, however, there is some overlap in the proposed levels of ordinary skill in the art because Patent Owner’s proposal includes “at least” a bachelor’s degree, which would encompass Petitioner’s master’s degree as well. Prelim. Resp. 19. Nonetheless, our determination herein would be the same under either party’s definition.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree with Patent Owner’s claim construction. By using the word “or,” the plain and ordinary meaning of “prone, kneeling, or standing” is that only one must be satisfied to meet the claim. See, e.g., SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1199 (Fed. Cir. 2013) (“The disjunctive ‘or’ plainly designates that a series describes alternatives.”). Furthermore, and although claims are read in light of the specification, limitations in a specification are not read into a claim. In re van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Even if the Specification describes embodiments in which the user can begin in a prone position and then transition to a kneeling or standing position, as Patent Owner points out (see Prelim. Resp. 20), the claim does not recite the term “transitioning,” and we do not read the terms “each of” or “substantially flat surface” into this claim limitation. For example, the claim does not recite a “substantially flat” top surface and Patent Owner’s attempt to infer this structure into the claim is not supported under the law. See id. at 29–30. For purposes of this Decision, we agree with Petitioner and construe “prone, kneeling, or standing” in accordance with its plain and ordinary meaning as alternatives, and the prior art need only show one to satisfy this aspect of the claim.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,586,659 - PTAB · May 28, 2024 · IPR2024-00086 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1, 2, 5-8, 10-15, 17, 18, 20, and 21 on all asserted grounds after finding a reasonable likelihood of success and declining Fintiv denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in an inter partes review). slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“1. “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position” With respect to the claim term “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position,” Patent Owner points to passages of the Specification, arguing that all three positions are possible. Prelim. Resp. 19–21 (citing Ex. 1001, Abstr., 4:13–17, 4:33–40; Ex. 2006 ¶ 18). We do not agree with Patent’s Owner proposed construction because even if the Specification discloses that all three positions are possible, that is not what the plain language of the claim requires. Claim 1 recites “or,” which means that a user can be disposed on the top surface of the flotation device in any one of the three positions. See, e.g., SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1199 (Fed. Cir. 2013) (“The disjunctive ‘or’ plainly designates that a series describes alternatives.”). Patent Owner does not identify any definition or disclaimer that would modify this plain meaning. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Thus, we agree with Petitioner and apply the plain and ordinary meaning of the phrase “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position,” to construe “prone, kneeling, or standing” as alternatives, and the prior art need only show one to satisfy this aspect of the claim.” slip op. at 13
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Neither party explains how or why its particular proposal impacts the issues before us in this proceeding. We find that a bachelor’s degree with the accompanying experience proposed by Patent Owner more closely aligns with the prior art of record and the ’044 patent. We note, however, there is some overlap in the proposed levels of ordinary skill in the art because Patent Owner’s proposal includes “at least” a bachelor’s degree, which would encompass Petitioner’s master’s degree as well. Prelim. Resp. 10. Nonetheless, our determination herein would be the same under either party’s definition.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“As the Board has held in a precedential decision, “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,359,044 - Unified Patents, LLC v. Ideahub Inc.All claims unpatentablePTAB · Feb 5, 2024 · PGR2022-00044 · APJ Monica S Ullagaddi · PGR · Final written decision
Claims 1–13 are unpatentable for lack of written description under § 112(a); the Board did not reach the anticipation and obviousness grounds based on HEVC265.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that: A person of ordinary skill in the art at the priority date for the ’274 Patent (“POSITA”) would have had a bachelor’s degree in electrical or computer engineering, or a closely related scientific field such as physics or computer science, and two years of work experience with video processing. A lack of experience can be remedied with additional education (e.g., a Master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 4–5 years). This definition would apply at the earliest claimed priority date of the ’274 Patent as well as any later date. Pet. 12 (citing Ex. 1005 ¶¶ 50–52). Patent Owner does not dispute the level of ordinary skill in the art. See generally PO Resp. We adopt Petitioner’s definition as it appears to be consistent with the Specification of the ’274 patent and the cited reference.” slip op. at 14
- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“A party is collaterally estopped from relitigating an issue if: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party. VirnetX Inc. v. Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (citing Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)).” slip op. at 21
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“For the reasons that follow, we determine that the ’928 application does not provide sufficient written description support, for at least independent claim 1 of the ’274 patent, so as to “reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date” of the ’928 application. Ariad, 598 F.3d at 1351. Accordingly, we are persuaded that the ’928 application lacks sufficient written description support for the invention recited in claim 1 of the ’274 patent, and thus, claim 1 does not receive an effective filing date as early as that of the ’928 application (i.e., December 23, 2010). We further determine that Petitioner filed the Petition within the 9-month statutory period for requesting post-grant review in accordance with 35 U.S.C. § 321(c). The ’274 patent issued on September 14, 2021 (see Ex. 1001, code (45)), and the present Petition was accorded a filing date of June 9, 2022 (see Paper 5). Accordingly, the Petition was filed less than 9 months after the date of issuance of the ’274 patent. In view of the above, we are persuaded that the ’274 patent is eligible for post-grant review.” slip op. at 16
Patent outcomesUS 11,122,274 unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,122,274 - PTAB · Jul 18, 2023 · IPR2023-00350 · APJ Cynthia L Murphy · IPR · Institution
Review instituted for claims 1–8 on all asserted grounds, based on a reasonable likelihood of success on the Publicover anticipation challenge and the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In Part Two of the Advanced Bionic framework, we determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims.” Advanced Bionics, Paper 6 at 8. “An example of material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact the patentability of the challenged claims.” Id. at 8 n.9. Here, the prosecution history of the ’687 Patent reflects that the Office materially erred by overlooking Publicover’s non-illustrated embodiments. As discussed above in Section V, the prosecution history reflects that the different treatment of Application Claim 1 (i.e., rejected as anticipated by Publicover) and Application Claim 11 (i.e., not anticipated by Publicover) seemed to rest on Application Claim 11 requiring the support members to be connected to the barrier net only at or near an upper peripheral part of the barrier (i.e., a top-only connection (c)), while Application Claim 1 did not. As discussed above in Section VI, a claim that did not required a top-only connection (c) could be anticipated by Publicover’s non-illustrated embodiment. And Petitioner demonstrates that when Publicover’s non-illustrated embodiment is taken into consideration, there is a reasonable likelihood that Issued Claim 1 is anticipated by Publicover. Infra § VIII. Thus, we decline to exercise our discretion to deny the Petition under § 325(d).” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We conclude that Petitioner demonstrates a reasonable likelihood that it will prevail on its challenge to Issued Claim 1 as anticipated by Publicover. We have reviewed Petitioner’s cited evidence and explanation regarding why Publicover anticipates claims 2–8 and find them sufficient at this stage. At this stage, Patent Owner raises no other arguments regarding these claims other than those considered above with respect to claim 1. On this record, we determine that Petitioner has shown a reasonable likelihood of success that Publicover anticipates claims 2–8.” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). “However, 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). “[A] reference may still anticipate if that reference teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination.” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016). slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“With respect to Ground 2—Obviousness of claims 3 and 4 over Publicover and Coan, Petitioner relies on Coan “[i]f Publicover is determined not to teach ‘so that in their natural rest state the enclosure support members extend away from the mat.” Pet. 40. Patent Owner contends that Coan does not teach this limitation, and because the rigid nature of Coan’s enclosure, Coan teaches away from the combination with Publicover. Prelim. Resp. 50–53. Patent Owner further argues that Petitioner only offers a conclusory motivation to combine the references. Given our conclusion above, we do not resolve this argument, which may have some merit. The parties should address these arguments further during trial.” slip op. at 22
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,854,687 - Iapartments, Inc. v. Edst, LLCInstitutedPTAB · Apr 11, 2023 · IPR2022-01468 · APJ Michelle N Wormmeester · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds after finding a reasonable likelihood that claims 1, 2, 5–11, 14, 15, 17, 18, 20, 21, 23, 25, 26, 28, 29, 31, and …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the foregoing reasons, Petitioner has demonstrated on the record before us a reasonable likelihood that it will prevail in showing that claims 1, 2, 5–11, 14, 15, 17, 18, 20, 21, 23, 25, 26, 28, 29, 31, and 33 of the ’273 patent are unpatentable. Although we express concern as to Petitioner’s showing for the Kraus-based grounds and determine that the record would benefit from further briefing on an issue related to Petitioner’s showing for the ground of anticipation by Cahill, we institute trial on all challenged claims and all asserted grounds of unpatentability. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018) (holding that a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 5 (Nov. 2019), available at https://www.uspto.gov/ sites/default/files/documents/tpgnov.pdf (“In instituting a trial, the Board will either (1) institute as to all claims challenged in the petition and on all grounds in the petition, or (2) institute on no claims and deny institution. The Board will not institute on fewer than all claims or all challenges in a petition.”). We have not, however, made a final determination with respect to the patentability of the challenged claims. V. ORDER For the reasons given, it is ORDERED that inter partes review is instituted as to all challenged claims of the ’273 patent, namely, claims 1, 2, 5–11, 14, 15, 17, 18, 20, 21, 23, 25, 26, 28, 29, 31, and 33, based on all grounds presented in the Petition; and” slip op. at 39
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See 37 C.F.R. § 42.100(b). That standard involves construing claims in accordance with 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. §§ 102 and 103, effective March 16, 2013. Because the application from which the ’273 patent was filed before this date, the pre-AIA version of §§ 102 and 103 apply. 2 Cahill, U.S. Publ’n No. 2019/0043289 A1, published Feb. 7, 2019 (Ex. 1005). 3 Deros et al., U.S. Publ’n No. 2018/0110093 A1, published Apr. 19, 2018 (Ex. 1007). 4 Kraus et al., U.S. Publ’n No. 2010/0283579 A1, published Nov. 11, 2010 (Ex. 1006). 5 Ho et al., U.S. Publ’n No. 2021/0319639 A1, published Oct. 14, 2021 (Ex. 1008). 6 Michael McCole, How to Make Nest’s Thermostat Your Smart-Home Hub, WIRED (Feb. 10, 2016, 5:42 AM), https://www.wired.com/2016/02/ iotcookbook-nest/ (Ex. 1013). the ordinary and customary meaning of such claims as would have been understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). Petitioner proposes constructions for the claim terms “offline door lock” and “credential device.” Pet. 34–35. Patent Owner does not respond. See generally Prelim. Resp. For purposes of this Decision, we conclude that no claim term requires express interpretation at this time to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“We disagree with Patent Owner. As discussed above, Petitioner argues that modifying Cahill’s system to use a LoRaWAN protocol as taught by Deros would have been a simple substitution of one communication protocol for another. Pet. 56. Petitioner points to where Cahill teaches considering not only satellite, broadcast radio, and microwave, but also various other communication methods including the well-known protocols Wi-Fi and Ethernet, as options for wired or wireless communications. Ex. 1005 ¶ 43 (cited by Pet. 43). Petitioner also points to where Deros teaches considering Wi-Fi, Ethernet, and LoRa, among various other communication methods, as options for wired or wireless communications. Ex. 1007 ¶ 38 (cited by Pet. 62). This teaching in Deros suggests using various communication methods including Wi-Fi, Ethernet, or LoRa interchangeably, thus supporting Petitioner’s simple substitution argument. A claimed invention that involves “the simple substitution of one known element for another” to “yield a predictable result” is obvious. KSR, 550 U.S. at 416–17. Here, the claimed invention may be obtained by modifying Cahill’s system to use LoRa for communications as taught by Deros. This is the substitution of one known communication protocol for another known communication protocol to obtain a predictable result. That satellite, broadcast radio, and microwave may not be types of protocols, as Patent Owner contends, does not adequately rebut Petitioner’s showing for obviousness. We note Patent Owner’s contention that “Petitioner’s further allegation that a [person of ordinary skill in the art] would have been motivated to use a LoRaWAN in Cahill ‘to improve battery life of the connected smart devices such as smart locks’ is wrong and misguided.” Prelim. Resp. 22–24. Even if this were true, we still find Petitioner’s simple substitution argument sufficient for institution for the reasons given above.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot reached
“We disagree with Patent Owner. As discussed above, Petitioner argues that modifying Cahill’s system to use a LoRaWAN protocol as taught by Deros would have been a simple substitution of one communication protocol for another. Pet. 56. Petitioner points to where Cahill teaches considering not only satellite, broadcast radio, and microwave, but also various other communication methods including the well-known protocols Wi-Fi and Ethernet, as options for wired or wireless communications. Ex. 1005 ¶ 43 (cited by Pet. 43). Petitioner also points to where Deros teaches considering Wi-Fi, Ethernet, and LoRa, among various other communication methods, as options for wired or wireless communications. Ex. 1007 ¶ 38 (cited by Pet. 62). This teaching in Deros suggests using various communication methods including Wi-Fi, Ethernet, or LoRa interchangeably, thus supporting Petitioner’s simple substitution argument. A claimed invention that involves “the simple substitution of one known element for another” to “yield a predictable result” is obvious. KSR, 550 U.S. at 416–17. Here, the claimed invention may be obtained by modifying Cahill’s system to use LoRa for communications as taught by Deros. This is the substitution of one known communication protocol for another known communication protocol to obtain a predictable result. That satellite, broadcast radio, and microwave may not be types of protocols, as Patent Owner contends, does not adequately rebut Petitioner’s showing for obviousness. We note Patent Owner’s contention that “Petitioner’s further allegation that a [person of ordinary skill in the art] would have been motivated to use a LoRaWAN in Cahill ‘to improve battery life of the connected smart devices such as smart locks’ is wrong and misguided.” Prelim. Resp. 22–24. Even if this were true, we still find Petitioner’s simple substitution argument sufficient for institution for the reasons given above.” slip op. at 29
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,825,273 - PTAB · Mar 6, 2023 · IPR2022-01472 · APJ Cynthia L Murphy · IPR · Institution
The Board instituted IPR on claims 1–4, 7, and 9–23 on all asserted grounds, finding a reasonable likelihood that the Lennox, Harris, and Nailor combination renders at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“35 U.S.C. § 314(a) to deny institution in view of the parallel district court litigation involving the challenged claims (“the Parallel Proceeding”). Prelim. Resp. 34. Petitioner contends that “discretionary denial is not appropriate in this case” at least because of its Soreta stipulation (Sotera [Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)]. Pet. 64. In particular, Petitioner stipulates that, if IPR is instituted on the grounds set forth in this Petition, it will not pursue in the Parallel Proceeding the specific grounds asserted in the Petition against the challenged claims, or any other ground that could have been reasonably raised in the Petition against the challenged claims.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying the above standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’988 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., claims 1–4, 7, and 9–23) of the ’988 patent, based on the grounds asserted in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We find that Petitioner has shown sufficiently that the combination accounts for the preamble, regardless of whether or not it is limiting. Patent Owner’s arguments that Harris and Nailor do not teach a “linear bar grille” are not persuasive because Petitioner relies on Lennox for that limitation. As for the reason to combine, we find that Petitioner has shown a sufficient reason to combine. As Petitioner explains, extrusion is a well-known manufacturing process with known economic advantages, which at this stage, is a sufficient motivation to combine the teachings of Lennox with Harris and Nailor. See Ritchie v. Vast Resources, Inc., 563 F.3d 1334, 1337 (Fed. Cir. 2009) (noting “efforts at routine experimentation with different standard grades of a material used in a product—standard in the sense that their properties, composition, and method of creation are well known, making successful results of the experimentation predictable” generally are obvious); see also KSR, 550 U.S. at 417 (noting “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).” slip op. at 20
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“has made a reasonable showing that Nailor—the document in the record as Exhibit 1006, including the figures, without magnification, was publicly accessible. Nor does Patent Owner dispute that the figures accurately represent enlargements of the figures shown in Nailor. See Prelim. Resp. 11 (acknowledging that the 300% enlarged figure is the “same figure”). Instead, Patent Owner argues that Petitioner must make an additional showing that the magnified drawings, already existed and these magnifications were publicly accessible. See id. We disagree. A party is allowed to magnify and annotate figures to aid its presentation in its papers. See Lubanski v. Coleco Indus., Inc., 929 F.2d 42, 48 (1st Cir. 1991) (allowing photographs and enlargements of photographs, if “the photograph depicts a correct likeness of the scene it purports to represent”); Durant v. Surety Homes Corp., 582 F.2d 1081, 1089 (7th Cir. 1978) (allowing using of “blowups of otherwise admissible pictures” noting “[e]nlarged photographs are frequently used in trials”). Petitioner clearly labels the figures as annotated and enlarged. See Pet. 26–28 (indicating that the figures are “enlarged” and “annotated”). Moreover, contrary to Patent Owner’s argument that the figures are not “substantiated in any declaration,” Petitioner’s expert provides similar enlargements and annotations and explains what they are. Ex. 1003 ¶¶ 54, 55. As Patent Owner acknowledges and we have confirmed, the figures appear to accurately represent 300% magnification of portions of Exhibit 1006. See Prelim. Resp. 11. “It is well settled that a prior art reference is relevant for all that it teaches to those of ordinary skill in the art.” In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992). Thus, we disagree with Patent Owner that Petitioner needed to separately show that the enlargements were publicly accessible apart from showing that Nailor was publicly accessible. We have reviewed Petitioner’s evidence that Nailor was publicly accessible before the effective filing date of the ’988 patent. See Pet. 25–26 (citing Ex. 1030 ¶ 5; Ex. 1028 ¶¶ 5–7; Ex. 1029 ¶¶ 5–7). On this record, we find that it is sufficient to establish a reasonable likelihood that Nailor qualifies as prior art in this proceeding. See Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) (precedential). We address Patent Owner’s other arguments about whether Nailor teaches indented slots, or not, Prelim. Resp. 25, below.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,765,988 - Unified Patents, LLC v. Ideahub Inc.InstitutedPTAB · Feb 6, 2023 · PGR2022-00044 · APJ Monica S Ullagaddi · PGR · Institution
The Board instituted post-grant review of claims 1–13 on all grounds, finding it more likely than not that at least claim 1 lacks written-description support.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324(c); 37 C.F.R. § 42.4(a) (2021). Under 35 U.S.C. § 324(a), a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” After considering the Petition, Patent Owner’s Preliminary Response, Petitioner’s Preliminary Reply, Patent Owner’s Preliminary Sur-reply, as well as all supporting evidence, we determine that Petitioner satisfies its burden under 35 U.S.C. § 324(a) to show that it is more likely than not that at least one of the challenged claims of the ’274 patent is unpatentable. Therefore, we authorize a post-grant review to be instituted as to all grounds and all challenged claims. 37 C.F.R. § 42.208(a) (“When instituting post-grant review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“Id. at 7:24–8:4 (emphasis added). The ’928 application repeatedly makes clear that directionality and intra mode are related, but distinct concepts. They are not interchangeable as Patent Owner argues. On this point, we find Dr. Freedman’s explanation in paragraph 85 of his Declaration on the relationship between “intra mode” and “directionality” to be particularly well-reasoned and persuasive. As Dr. Freedman explains, [t]hroughout the ’928 application, the text uses the term “directionality” to refer to characteristics of neighboring blocks, whereas the term “intra mode” is used when referring to the current block. For example, the ’928 application describes that “directionality” of neighboring blocks is “estimated from the neighboring blocks” that “have already been reconstructed” while the “intra mode” is selected for the current block for purposes of reconstructing that current block. This is likely because the neighboring blocks “have already been reconstructed” and thus, the intra mode number that was used in reconstructing those blocks is no longer pertinent. Instead, what is pertinent in the ’928 application’s method is the directionality characteristic of those neighboring blocks. Phrased differently, in the ’928 application, directionality is a concept that is evaluated after performance of intra prediction (i.e., after reconstruction), whereas the intra mode or number is a concept used during performance of intra prediction. They are not equivalent in the context of the ’928 application. Ex. 1005 ¶ 86 (citing Ex. 1028, 11:14–12:4, 25:10–15; Ex. 1036, 706 (“The DCT coefficients gathered from the MPEG 2 process are used to estimate the directional features in a picture. The estimated directional features are then used to compute the intra prediction modes in the H.264 encoding stage.”)).8 Thus, we are persuaded by Dr. Freedman’s testimony, supported by Kalva, that these terms are not synonymous, as is Patent Owner’s and its expert’s position.” slip op. at 31
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“Patent Owner argues that HEVC265 is not prior art because it was published in 2013. Prelim. Resp. 24. Insofar as we determine that the ’928 application does not provide sufficient written description support for at least claim 1, and insofar as no other patent or application in the priority chain of the ’274 patent was filed before 2013 (see Pet. 19), Patent Owner’s argument is unavailing as to this claim. As we preliminarily conclude that Petitioner demonstrates that it is more likely than not to prevail on its challenge to independent claim 1 based on lack of written description support, we institute review on all challenged claims on all grounds set forth in the Petition, including Petitioner’s anticipation and obviousness challenges to claims 1–4 and 6 applying HEVC265. See SAS, 138 S. Ct. at 1354; PGS, 891 F.3d at 1360.” slip op. at 38
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“F. Anticipation and Obviousness Challenges Based on HEVC265 Petitioner contends that claims 1–4 and 6 are anticipated by, or alternatively, rendered obvious in view of HEVC265. Pet. 49–52. Patent Owner argues that HEVC265 is not prior art because it was published in 2013. Prelim. Resp. 24. Insofar as we determine that the ’928 application does not provide sufficient written description support for at least claim 1, and insofar as no other patent or application in the priority chain of the ’274 patent was filed before 2013 (see Pet. 19), Patent Owner’s argument is unavailing as to this claim. As we preliminarily conclude that Petitioner demonstrates that it is more likely than not to prevail on its challenge to independent claim 1 based on lack of written description support, we institute review on all challenged claims on all grounds set forth in the Petition, including Petitioner’s anticipation and obviousness challenges to claims 1–4 and 6 applying HEVC265. See SAS, 138 S. Ct. at 1354; PGS, 891 F.3d at 1360.” slip op. at 38
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,122,274 - Beckman Coulter, Inc. v. Becton, Dickinson And CompanyInstitution deniedPTAB · Dec 1, 2022 · IPR2022-01122 · APJ Michael A Valek · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–13 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“likelihood of establishing that any of the challenged claims are unpatentable on any of the grounds in the Petition. Accordingly, institution of inter partes review is denied. V. ORDER Accordingly, it is: ORDERED that the Petition is denied, and no inter partes review is instituted” slip op. at 33
- Skill levelOther
“We are sympathetic to Patent Owner’s argument that a POSA would have had at least some experience with the optical systems used in optical analyzers. All of the claims recite an “optical analyzer” and the Specification is replete with references to optical analyzers and their operation. See, e.g., Ex. 1001, Abstr., 1:14–15, 2:3–4, 2:18–29, 3:38–57, 9:55–10:59 (claims reciting an “optical analyzer”). Moreover, Patent Owner cites other evidence that also suggests a POSA would have such experience. See Prelim. Resp. 12–13. However, on the current record, we are not convinced that the ordinary level of skill in the art would necessarily require the amount of specific experience (i.e., two years working and/or designing optical systems in optical analyzers) that Patent Owner urges. Petitioner’s declarant, Dr. Fang, testifies that two years of experience “in the field of optical imaging, with a specific focus on laser optics” would suffice. See Ex. 1002 ¶ 9. Thus, while it seems likely that a POSA would have at least some experience specific to optical analyzers, we see no reason why additional experience with laser optics more generally could not provide the balance of the two years of experience noted in the parties’ definitions. In any event, we need not resolve this issue here because we would reach the same outcome under either parties’ POSA definition.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“The testimony Petitioner offers from its declarant, Dr. Fang, does not provide the missing explanation. Paragraphs 115 and 127 of Dr. Fang’s declaration, provide his opinions that “adapting a lens to focus a light beam onto a focal spot within a sample analysis region is no different from adapting a lens to focus a light beam into any region in space in other applications” and that a POSA would “understand that Lynch is generally applicable to light sources emitting collimated beams, and that such light sources were well-known in the art.” Ex. 1002 ¶¶ 115, 127. In paragraph 126, Dr. Fang testifies that a POSA would have a reasonable expectation of success in implementing the system described in Lynch.11 None of this testimony explains why a POSA would have been motivated to modify Lynch for implementation in an optical analyzer. For these reasons and based on the current record, Petitioner has not” slip op. at 25
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Whether to treat a preamble as a limitation is a determination ‘resolved only on review of the entirety of the patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim.”’ In re Cruciferous Sprout Litig., 301 F.3d 1343, 1347 (Fed. Cir. 2002) (citation omitted). “In general, a preamble limits the claimed invention if it recites essential structure or steps, or if it is necessary to give live meaning and vitality to the claim.” Id. (citation and quotations omitted). This may be ascertained by review of the entirety of the patent to determine whether the preamble “discloses a fundamental characteristic of the claimed invention” as opposed to merely “stat[ing] a purpose or intended use.” Poly-Am., L.P. v. GSE Lining Tech., Inc., 383 F.3d 1303, 1310 (Fed. Cir. 2004). As Patent Owner points out, the ’197 patent is replete with references describing the invention as an optical analyzer. See Prelim. Resp. 24–25 (bullet pointing quotes from the Specification). The Specification begins by explaining that optical or “[p]article analyzers . . . are well known analytical tools that enable the characterization of particles on the basis of optical parameters such as light scatter and fluorescence.” Ex. 1001, 1:16–19. The Specification explains that “[t]he present invention” provides both “illumination optics for use in an optical analyzer” and “an optical analyzer incorporating the illumination optics of the present invention.” Ex. 1001, 2:3–4, 2:18–19. Claims 1–13, each of which recites an “optical analyzer” comprising a set of optical elements, are specifically directed to the latter. Id. at 9:55–10:59. The Specification further demonstrates that the preamble term is limiting by explaining that “the invention addresses a concern specific to” optical analyzers. See Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349 1358 (Fed. Cir. 2012) (finding that the specification “demonstrates that the preamble phrase ‘rotary cutter deck’ is a limitation” because it “explains that the invention addresses a concern specific to rotary cutters”). The Specification explains that in a flow cytometer, i.e., an exemplary type of optical analyzer, “the excitation light from a laser . . . is focused onto a focal spot to illuminate the core stream (the fluid stream containing the particles to be analyzed).” Ex. 1001, 1:39–42. According to the Specification, “[a]ccurate focusing of the excitation light beam on the core stream is important,” “[o]ptimal performance is compromised if the focused light beam is not properly adjusted on the core stream,” and because the particles being analyzed are only a “few microns in size, the precision of the light beam adjustment also needs to be in the micron range.” Id. at 1:42–51; see also id. at 3:38–49 (explaining that “fine control over the focus spot” is useful in optical analyzers). The present invention addresses these concerns by providing an optical analyzer “adapted to focus an illumination beam onto a sample analysis region,” configured to obtain a “high degree of precision over the adjustment of the focal spot using less expensive lens adjusting mechanisms,” and comprising “detection optics for measuring the light emitted from the analysis region.” See id. at 2:18–23, 7:3–8. We also agree with Patent Owner that the recitation of an “optical analyzer” in the preamble informs the meaning of the phrase “a focusing lens . . . adapted to focus the light beam onto a focal spot within a sample analysis region” in the claim body. The term “sample analysis region” refers to a structural feature of the claimed “optical analyzer,” i.e., the area configured to contain the sample to be analyzed. This is confirmed by the Specification, which explains that in addition to illumination optics “[t]he optical analyzer will further comprise detection optics for measuring the light emitted from the analysis region. In a preferred embodiment, the optical analyzer is a flow cytometer, and the sample analysis region is a sample detection region in a fluid stream containing particles to be optically analyzed.” Ex. 1001, 2:21–26. In this regard, the preamble informs the meaning of “sample analysis region” by indicating that the recited “sample analysis region” is configured such that it can contain a sample and that light emitted from that region can be measured by the analyzer. See Deere, 703 F.3d at 1358 (explaining that “rotary cutter deck” in the claim preamble “informs the meaning of the ‘torsional stiffness’ limitation––the claimed structure must possess sufficient stiffness to withstand the torsional loads imposed by the operation of a rotary cutter”). By the same measure, holding that the “sample analysis region” need not be so configured would undermine the benefits the Specification indicates the recited illumination optics achieve. See Ex. 1001, 1:39–55, 2:30–48, 7:3–7 (explaining that “accurate focusing” is important because the sample to be analyzed may be very small and that the present invention obtains “precise positioning control” using less expensive components). The fact that the preamble informs the meaning of a term in the claim body, distinguishes it from “nonlimiting preamble terms” that “merely state a name or a use” by demonstrating that the optical analyzer recited in the preamble of the presently challenged claims is a “fundamental characteristic of the claimed invention.” Deere, 703 F.3d at 1358 (quoting Poly-Am., 383 F.3d at 1310).9 slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,787,197 - Medtronic Corevalve LLC / Medtronic, Inc. v. Speyside Medical, LLCAll claims unpatentablePTAB · Aug 16, 2022 · IPR2021-00244 · APJ Kevin W Cherry · IPR · Final written decision
Claims 21 and 22 are unpatentable as obvious over Salahieh and Sands; the Board did not reach the remaining grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”), at the time the ’708 or its parent applications were filed, would have had a minimum of either a medical degree and experience working as an interventional cardiologist or a Bachelor’s degree in bioengineering or mechanical engineering (or a related field) and approximately two years of professional experience in the field of prosthetic cardiovascular implants. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Pet. 23 (citing Ex. 1002 ¶¶ 31–34). For purposes of this Final Written Decision, we maintain our determination from the Institution Decision because neither party disputes that determination, and that level of ordinary skill is consistent with the record. See Resp. 11 (applying Petitioner’s level of ordinary skill).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Furthermore, we expressly construe the claims only to the extent necessary to resolve the issues presented in this case. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). For purposes of this decision, the parties agree that we do not need to construe any claim terms to resolve their dispute. Resp. 12, 13 n.1; Reply 1 (“The Board need not construe any claim terms as the claims are unpatentable under Grounds 1-2.”). Accordingly, we need not construe expressly any claim terms in this decision. Nidec, 868 F.3d at 1017.” slip op. at 8
- Expert testimonyPatent owner expert discountedDecided for petitioner
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“petitioner’s grounds of unpatentability. A petitioner bears the burden of proving that a non-patent reference qualifies as a printed publication. Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (“As petitioner, Blizzard had the burden to prove Lin is a printed publication.”); Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 11 (PTAB Dec. 20, 2019) (precedential) (“To prevail in a final written decision in an inter partes review, the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication.”). The determination of whether a reference is a “printed publication” “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Whether a document qualifies as a printed publication is a legal conclusion based on underlying factual determinations. Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018). We do not reach Patent Owner’s arguments regarding the McCarthy declaration because we find Petitioner’s other evidence and arguments demonstrate by a preponderance of the evidence that Sands was publicly available.8 Our analysis focuses on the indicia of availability on Sands and Dr. Drasler’s testimony, as outlined below.” slip op. at 11
Patent outcomesUS 9,603,708 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,603,708
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.