- PTAB · Nov 7, 2024 · IPR2024-00884 · APJ Richard H Marschall · IPR · Institution
The Board instituted review of claims 1–15, finding a reasonable likelihood that claims 1–3, 6–11, 14, and 15 are obvious over Aker, Aker ’724, and Thomas.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art relating to the ’602 patent would have “a working knowledge of Doppler radar systems,” a “Bachelor of Science degree in an academic discipline emphasizing electrical, mechanical, instrumentation engineering or other disciplines related [to] measurement science,” and “specific training or at least one to two years of related work experience with Doppler radar systems.” Pet. 4 (citing Ex. 1003 ¶ 18). Petitioner asserts that one of ordinary skill could, alternatively, have a “Master of Science degree in electrical engineering with less than a year of related work experience in the same discipline.” Pet. 5 (citing Ex. 1003 ¶ 18). Patent Owner does not contest Petitioner’s proposal at this time. Prelim. Resp. 21–22. At this stage, and based on Petitioner’s undisputed contentions, we apply Petitioner’s proposed level of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Based on this preliminary record, we agree with Petitioner that its first proposed construction more naturally follows from the claim language and specification. That construction reads the limitation as requiring a “a radar transceiver configured to transmit and receive radar beams” either “in a front zone . . . or in a rear zone,” but does not require a single transceiver configured to transmit and receive radar beams in both the front and rear zones. See Pet. 6. Based on this record, the specification supports this approach because it describes separate transceivers operating in the front zone and rear zone of the patrol vehicle. See Ex. 1001, 4:29–5:24; see also Fig. 2 (showing front radar transceiver 12 associated with first radar beam 42 and separately showing rear radar transceiver 14 associated with second radar bean 44).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Based on the current record, Petitioner sufficiently establishes for the purposes of institution that one of ordinary skill in the art would have been motivated to combine Aker, Aker ’724, and Thomas in the manner Petitioner proposes. See Pet. 9–13. Patent Owner’s arguments do not undermine Petitioner’s showing on these issues, based on the current record, for several reasons. First, Patent Owner premises its arguments on detailed assertions as to how one of ordinary skill in the art would interpret the teachings of the references, and then includes detailed calculations based on those teachings. See Prelim. Resp. 24–36. None of these assertions are supported by any testimony from one of ordinary skill in the art, and, on this record, amount to mere attorney argument. See id. For example, even if Patent Owner’s calculations are arithmetically correct, Patent Owner does not explain or provide evidence that a skilled artisan would gauge the accuracy of GPS for law enforcement based on Patent Owner’s asserted calculations and “baseline” assumptions. See id. at 28–29. While expert testimony is not required at any stage of these proceedings, Patent Owner’s arguments here fail to undermine Petitioner’s arguments and evidence, which include currently unrebutted testimony from one of ordinary skill in the art. See, e.g., Pet. 9–13 (citing Ex. 1003 ¶¶ 31–33, 35–40). Second, the specifics of Patent Owner’s arguments do not justify denial of institution, based on the current record. Patent Owner does not dispute that using GPS to determine the speed of a vehicle as Thomas teaches could be easily incorporated into Aker’s system. Instead, Patent Owner focuses almost entirely on the lack of accuracy when using the GPS approach. As Petitioner points out, the claims do not require a specific level of accuracy and appear to allow for some degree of inaccuracy. See Prelim. Reply 1–2. In addition, Patent Owner does not argue for a claim construction that requires a specific level of accuracy. Prelim. Resp. 17–21. Even if accuracy concerns militate against the proposed combination to some degree, Patent Owner does not assert, with probative evidence, that a specific level of accuracy must be achieved in this art and how the proposed combination fails to meet that standard such that use of GPS for speed readings would be rejected despite their ready availability. See id. at 24–36. These arguments, based on the current record, do not undermine Petitioner’s reasons for its proposed combination. Final resolution of these highly factual disputes based on interpretations of the references and the standards in the art are best resolved after further development during trial.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Fourth, we are not persuaded by Patent Owner’s teaching away argument, based on the current record. See Prelim. Resp. 28–36. Patent Owner does not support its argument with citations to Aker disparaging the use of GPS to obtain speed, or the inaccuracy of such a system generally, or citations to Thomas disparaging the accuracy of its GPS approach or its suitability for use in a patrol car. See id. Instead, Patent Owner appears to argue that the Aker references disclose two methods for obtaining speed, show a preference for one method as more accurate, and Thomas’s GPS method provides no more accuracy than the method Aker disparages. See id. Patent Owner’s arguments rely on inferences drawn by one of ordinary skill in the art when reading the references and error calculations to determine the suitability of GPS-based speed readings. See id. While these arguments may ultimately prevail, they do not appear to reach the threshold of “teaching away” from Petitioner’s proposed combination. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“[T]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.”).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,703,602 - PTAB · Oct 31, 2024 · IPR2024-00858 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of claims 5–7 and 16–19, finding a reasonable likelihood that claims 5–7 and 16–19 are unpatentable over Samartgis and at least claims 5 and 19 over Leoncavallo.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“U.S.C. § 314(a) due to the advanced state of the parallel district court action, and, in doing so, relies heavily on the district court’s scheduled trial date of September 22, 2025. See Prelim. Resp. 51, 54. While the district court’s scheduled trial date may be earlier than the Board’s projected deadline for a final written decision here, CamelBak’s reliance on that date is misplaced. The Office takes the position that a district court’s scheduled trial dates are “unreliable and often change” and that a more reliable indicator is the district court’s “median time-to-trial for civil actions,” which, in this case, would place the district court’s trial date after the projected deadline of any final written decision here. See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022) (“Director’s Interim Procedure”), at 8–9. Thus, CamelBak’s reliance 5 US D586,184 S, issued Feb. 10, 2009 (Ex. 1006, “Miller”). on the district court’s scheduled trial date has no bearing on whether we should discretionarily deny institution. Of greater relevance is Trove’s express stipulation not to pursue the same grounds in the district court action as advanced in the petition or any ground that relies on the prior art references cited in the petition. See Pet. 100. Although not exactly a Sotera stipulation, the Office nonetheless recognizes that such stipulations further mitigate concerns of potentially conflicting decisions and duplicative efforts between us and the district court. See Director’s Interim Procedure, at 7–8. Thus, given Trove’s stipulation and the fact that the district court’s median time-to-trial is after the projected deadline of our final written decision here, we will not discretionarily deny institution under § 314(a).” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We disagree that Samartgis is the substantially the same as the corresponding design patent cited during prosecution, mainly because the design patent fails to show the closure retention mechanism that is clearly shown and described in Samartgis and goes to the very heart of Trove’s showing of anticipation and obviousness. Compare Ex. 1004, Figs. 3–5 (showing lug members 15, 16 and ramp sections 23, 25, 27), with Ex. 2001, Figs. 1–8 (omitting any depiction of lug members or ramp sections). Thus, Samartgis clearly was not considered. And, although Leoncavallo and Miller may arguably have been considered during prosecution, “[w]hen instituting . . . 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.” 42 C.F.R. § 42.108(a). As such, we will not discretionarily deny institution under § 325(d). B. Level of Ordinary Skill in the Art” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Trove proposes that one of ordinary skill in the art would have had: an undergraduate degree in mechanical engineering or equivalent coursework, and a year or more of experience in designing, prototyping, and/or manufacturing fluid containers or similar products . . . [and that] [m]ore work experience may substitute for a lower level of education, and vice versa. Pet. 17–18 (citing Ex. 1003 ¶¶ 25–30). CamelBak appears to agree. See Prelim. Resp. 16 (“Patent Owner assumes Petitioner has correctly stated the level of ordinary skill in the art and does not set forth its own definition.”). At this stage, we see no reason to depart from Trove’s proposed definition, as it appears reasonable and consistent with the asserted prior art and the ’252 patent.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“At this stage, we do not see the need to resolve the § 112(f) issue in light of Trove’s express and unrebutted showing that the prior art teaches sufficiently analogous structure to that identified in the ’252 patent for performing the disputed functional limitations of the claimed “closure retention mechanism.” See Pet. 35 (asserting that “[Samartgis’s] lug members 15 and 16 also are at least equivalent to the structure identified in the specification (i.e., the two or more spaced-apart tabs on the handle)” because “[l]ike the opposed tabs of the ’252 patent, the lug members 15 and 16 are projections that extend from the inner surface of the handle to engage the closure.”). Indeed, at this stage, CamelBak chooses not to address Trove’s showing in this regard, instead arguing that “the construction of ‘closure retention mechanism’ is irrelevant because [Trove] fails to show lug members 15 and 16 are configured to meet other limitations of claims 5 and 19.” Prelim. Resp. 20 n.7. That said, to the extent either party believes it is necessary for final resolution of patentability, they should explore the § 112(f) issue further during the trial phase.” slip op. at 10
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 8,905,252 - Intelligent Wellhead Systems, Inc. v. Downing Wellhead Equipment, LLCInstitution deniedPTAB · Sep 12, 2024 · IPR2024-00583 · APJ Benjamin D M Wood · IPR · Institution
The Board denied institution on all grounds because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. ANALYSIS A. Legal Standards Used in the Merits Analysis “In an IPR, 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”)); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that, for the ’779 patent, one of ordinary skill in the art “would have had an engineering degree and two or more years’ wellrelated operations experience, or equivalent education/experience.” Pet. 8. Patent Owner does not offer an alternative definition, but its Declarant, Mr. Hughett, submits that one of ordinary skill in the art would have had “a degree in petroleum or mining engineering, mechanical engineering, or a comparable discipline, and at least two years of experience in oil and gas extraction, or an equivalent combination of education and experience.” Ex. 2006 ¶ 17. On the record, we do not discern a meaningful difference between Petitioner’s and Mr. Hughett’s proposed definitions, and therefore adopt Petitioner’s definition for purposes of this Decision. We also presume that the cited prior-art references reflect the level of ordinary skill at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining the level of ordinary skill in the art may be evidenced by the cited references themselves).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The Specification does not suggest a particular definition of threshold, and neither party suggests that it is a term of art in the relevant field. Therefore, we consult a general dictionary for guidance. See Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (If “the specification does not assign or suggest a particular definition [of a claim term], in determining the ordinary and customary meaning of the claim term as viewed by a person of ordinary skill in the art, it is appropriate to consult a general dictionary definition of the word for guidance.”). Because Merriam-Webster’s online dictionary, Merriam-Webster.com, provides several definitions for threshold, we refer to the intrinsic record “to identify which of the different possible dictionary meanings is most consistent with the use of the words by the inventor.” Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1300 (Fed. Cir. 2003). Based on the context in which threshold is used in claims 1 and 8, we consider the most relevant definition to be “a level, point, or value above which something is true or will take place and below which it is not or will not.” Merriam- Webster.com/dictionary/threshold (accessed July 30, 2024). The claim context also indicates that threshold encompasses the opposite situation, i.e., the threshold may be a value below which something is true or will take place and above with it is not true or will not take place. Thus, a flow-rate value and time value are “thresholds” when there is an action that will or will not take place (or something is or is not true) depending on whether those values are met. The Specification identifies one particular action that occurs when these thresholds are met: performance of a CP swap from hydraulically fracturing the n1 well (i.e., a first well) to hydraulically fracturing the n1+1 well (i.e., a second well). Ex. 1001, 13:28–52, Figs. 1B, 12. To perform a CP swap, according to the Specification, zipper valves for the n1+1 well are opened while fluid is being pumped to the n1 well, allowing hydraulic fracturing fluid to flow to both wells, after which zipper valves for the n1 well are closed. Id. at 14:14–38, Figs. 15, 16A, 16B, 16C. This procedure is precisely what claims 1 and 8 recite. In addition to requiring “determining that the flow rate is below a flow-rate threshold . . . for a threshold amount of time,” claims 1 and 8 recite, e.g., “(c) during pumping of the fluid into the first well via the first valve, opening a second valve associated with a second well,” and “(e) during pumping of the fluid into the second well via the second valve, closing the first valve associated with the first well.” Ex. 1001, claims 1, 8. Thus, in the context of these claims, a flow-rate threshold and threshold amount of time would be flow-rate and time values that determine whether or not a second valve associated with a second well is opened during pumping of fluid into the first well via the first valve.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We are not persuaded that Ciezobka teaches or suggests limitation [1.3]. First, we agree with Patent Owner that this limitation necessarily requires comparing the measured flow rate to a threshold. Petitioner also appears to agree that such a comparison is necessary to perform limitation [1.3]. See Pet. 15 (“Ciezobka discloses determining the flowrate of the fluid and comparing the determined flowrate to certain thresholds . . . , and therefore discloses determining that the flow rate of the fluid being pumped into the first well is below a flowrate threshold.”) (emphasis added). Ciezobka does not, however, teach such a comparison. Assuming that the initial flow rate can be considered a “threshold,” Ciezobka’s teaching of the existence of an initial flow rate followed by the existence of a lower pulse flow rate does not constitute a teaching of a comparison of the two flow rates. Second, Petitioner has not established that the “initial flow rate” is a “threshold.” As discussed above, we construe “flow rate threshold” in the context of claim 1 to mean a flow rate value that an actual flow rate must drop below for a threshold amount of time in order for a second valve associated with a second well to be opened. See Section II.C. Ciezobka does not teach that a measured flow rate must drop below the initial flow rate or any other specific flowrate before one of valves 218 or 219 is opened. Instead, the valve is opened after a specific period of time and without comparing the actual flow rate to the initial flow rate. See Ex. 1037, 12:8– 12 (teaching that a pressure pulse is created by closing valve 219 “for a short period of time” ranging from 1 minute to 1 second, preferably 10 seconds). Indeed, opening valve 218/219 causes flow rate drop to one of the wells; it does not occur as a result of the flow-rate drop.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,401,779 - Jeisys Medical Inc. v. Serendia, LLCInstitutedPTAB · Aug 20, 2024 · IPR2024-00463 · APJ Carl M Defranco · IPR · Institution
The Board instituted IPR on claims 2–6, 8, 9, 13–16, and 18, finding a reasonable likelihood that at least claims 2, 8, and 13 are anticipated by Mehta.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Videndum clarified the Board’s application of the General Plastic/Valve framework. For instance, in Ford, the Director explained that “[u]nder existing Office policy and precedent, the Board does not recognize a ‘significant relationship’ between parties [i.e., serial petitioners] having different accused products that merely engage in court-ordered pretrial coordination.” Ford, at 9 (emphasis added). And, in Videndum, the Director further explained that where “the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors.” Videndum, at 6–7. Thus, per Ford and Videndum, we will not discretionarily deny a later petition in view of an earlier petition where the earlier and later petitioners are neither the same party nor have a significant relationship. After reviewing the record, we find that no significant relationship exists with Cartessa to justify application of the General Plastic/Valve framework. Contrary to Serendia’s assertions about the joint submissions of Jeisys and Cartessa in the parallel ITC proceeding (see Prelim. Resp. 8–10), the relevant facts and circumstances here are akin to those in Ford. More specifically, like the “court-ordered” coordination of the petitioners in Ford, the collaboration of Jeisys and Cartessa as co-respondents in the ITC proceeding was mandated by the rules of the ITC proceeding, and, thus,” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We agree with Jeisys. Mehta is not substantially the same as Mehta ’705. What Mehta ’705 omits, but Mehta includes, is an embodiment comprising “graphical user interface 320” and “tissue characteristic indicator 350” that allows a user to monitor the needle’s “location” in the tissue so as to decide when the needle is placed at a “desired depth.” Ex. 1006, 32:46– 13 US 8,540,705 B2, issued Sep. 24, 2013 (Ex. 1011). 14 Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). 33:29, Figs 10A–10F. Nowhere do we discern a similar embodiment in Mehta ’705. At best, Mehta ’705 discloses a “display screen” for displaying a “variety of information to the physician . . . such as treatment delivery settings, electrode impedance, electrode temperature, tissue temperature, treatment duration, power delivered, energy delivered, etc.” Ex. 1011 (Mehta ’705), 29:44–58, Figs. 10A, 10B. But, notably lacking from Mehta ’705 is any disclosure of determining the “depth” and “location” of the needle’s placement in the tissue, let alone means for doing so, which Mehta discusses at length and upon which Jeisys relies to meet the “desired distance” limitation. See Ex. 1006, 32:46–33:61; Pet. 27–28. Because Mehta includes disclosure relevant to the disputed “desired distance” limitation that is absent from Mehta ’705, Serendia fails to satisfy the first part of the Advanced Bionics framework. See Wolfspeed, Inc. v. The Tr. of Purdue Univ., IPR2022-00761, Paper 13, at 7–8 (PTAB Mar. 30, 2023) (Vidal, K.) (reference not “substantially the same prior art” when it includes disclosure relevant to unpatentability grounds not present in references previously before the Office). And to the extent Serendia makes a similar argument with respect to the asserted secondary references of Na, Lee, and Livneh, it is of no consequence given Serendia’s failed showing with respect to the primary reference of Mehta.15 Thus, we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“Jeisys proposes, and Serendia agrees, that we should adopt the level of ordinary skill in the art as defined in the parallel ITC proceeding, that is, (1) 7–10 years of experience with developing and/or using treatment systems for delivery of electromagnetic radiation energy to skin or other tissues, and (2) a related graduate engineering degree or M.D. . . . [and] may have worked as part of a multidisciplinary team and drawn upon not only his or her own skills, but also would have taken advantage of certain specialized skills of others on the team when solving a technical problem. Pet. 11 (citing Ex. 1005, at 14); Prelim. Resp. 33 (accepting Jeisys’s definition of the level of skill in the art). For purposes of this proceeding, we see no reason to depart from that definition, as it appears consistent with the level reflected in the asserted prior art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We need not formally construe the “desired distance” limitation in order to resolve whether institution is appropriate. That is because, on the current record, the asserted prior art satisfies the “desired distance” limitation regardless of which parties’ proposed construction we adopt. 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)). Nonetheless, the parties are free to further explore the appropriate construction of “desired distance” at trial, in particular, whether the plain language of the claims limits their scope to extendable needles (as opposed to fixed needles), and whether construing the “desired distance” limitation as being based on a user’s selection improperly reads a preferred embodiment into the claims.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,869,812 - Jeisys Medical Inc. v. Serendia, LLCInstitutedPTAB · Jul 23, 2024 · IPR2024-00384 · APJ Carl M Defranco · IPR · Institution
The Board instituted IPR on claims 1–8 and 11–18 after finding a reasonable likelihood that claim 11 is anticipated by Mehta.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“Videndum clarified the Board’s application of the General Plastic/Valve framework. For instance, in Ford, the Director explained that “[u]nder existing Office policy and precedent, the Board does not recognize a ‘significant relationship’ between parties [i.e., serial petitioners] having different accused products that merely engage in court-ordered pretrial coordination.” Ford, at 9 (emphasis added). And, in Videndum, the Director further explained that where “the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors.” Videndum, at 6–7. Thus, per Ford and Videndum, we will not discretionarily deny a later petition in view of an earlier petition where the earlier and later petitioners are neither the same party nor have a significant relationship. After reviewing the record, we find that no significant relationship exists with Cartessa to justify application of the General Plastic/Valve framework. Contrary to Serendia’s assertions about the joint submissions by Jeisys and Cartessa in the parallel ITC proceeding (see Prelim. Resp. 10– 11), the relevant facts and circumstances here are akin to those in Ford. More specifically, like the “court-ordered” coordination of the petitioners in Ford, the collaboration of Jeisys and Cartessa as co-respondents in the ITC proceeding was mandated by the rules of the ITC proceeding, and, thus,” slip op. at 8
- Skill levelSkill level board ownOther
“Jeisys proposes, and Serendia agrees, that one of ordinary skill in the relevant art would have had (1) 7–10 years of experience with developing and/or using treatment systems for delivery of electromagnetic radiation energy to skin or other tissues, and (2) a related graduate engineering degree or M.D. . . . [and] may have worked as part of a multidisciplinary team and drawn upon not only his or her own skills, but also would have taken advantage of certain specialized skills of others on the team when solving a technical problem. Pet. 14–15 (citing Ex. 1003 ¶ 50); see also Prelim. Resp. 32 (accepting Jeisys’s definition of the level of skill in the art). For purposes of this proceeding, we adopt the parties’ assessment of the level of ordinary skill in the art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We need not formally construe the “desired distance” limitation in order to resolve whether institution is appropriate. That is because, on the current record, the asserted prior art satisfies the “desired distance” limitation regardless of which parties’ proposed construction we adopt. 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)). Nonetheless, the parties are free to further explore the appropriate construction of “desired distance” at trial, in particular, whether the plain language of the claims limits their scope to “extendable” needles, and whether construing the “desired distance” limitation as being based on a user’s selection improperly reads a preferred embodiment into the claims.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We disagree with Serendia’s analysis of Mehta. As Jeisys correctly explains, Mehta discloses the “desired distance” limitation even assuming Serendia’s construction of that limitation, i.e., that the needles are extendable to a depth selected by the user. See Pet. 33. Indeed, although Mehta may not use the term “desired distance” expressly, it comes about as close as one would expect from an anticipatory disclosure. For example, as Jeisys notes, Mehta discloses an embodiment that includes “depth markings” on the needles (i.e., probes) that allow the user to determine a desired depth of the needles— The electrodes of the probe array can also include any number of visually distinguishing features (e.g., depth markings, colors, shades, etc.) that enable a physician to observe proper placement. . . . This ensures that the probe is not driven too far into tissue. Alternatively, the probe can be marked with one or more features that allow the physician to determine the depth of insertion of the probe. Id. (citing Ex. 1004, 13:37–45 (emphases added)). Notably, as Jeisys also explains, Mehta discloses another embodiment, depicted in Figures 10A–F, having a graphical user interface 320 (“GUI”) that displays the actual and target depths of needles so as to avoid placement of the needles in an undesired region. See id. at 32–34 (citing Ex. 1004, 10:38–39, 12:5–8, 32:63–33:43; Ex. 1003 ¶¶ 101–104). The GUI, as described, “can provide information for a physician (or other medical staff) to monitor various treatment parameters as well as other information regarding the placement of the array 108 or probes 104 when inserted in the tissue” and “maintain visual contact with the treatment device and tissue being treated.” Ex. 1004, 11:1–13. To do so, the GUI incorporates a “tissue characteristic indicator (whether visual, virtual, audible, or other feedback)” that allows the user to monitor the needle’s actual location in the tissue and advance the needle a desired distance for providing treatment— FIG. 10B illustrates a tissue characteristic indicator showing a virtual depiction 350 of the depth or location of the probe array. . . . [T]he virtual depth/location depiction 350 can illustrate an actual placement of the probe array 340. . . . [T]he system can be configured to show (or the system can have an option to show) additional probe array information. For example, the virtual depth/location depiction 350 can also show a desired probe location (e.g., array 342 can represent the desired depth of placement for providing a treatment). . . . As shown by FIG. 10B, providing the virtual depth/location depiction 350 allows the physician to not only identify whether the array is located within the desired tissue layer but also allows the physician to observe the angle of the electrode array in tissue. . . . Therefore, the physician would be informed that further advancement of the probes is necessary to place the probes within the second layer 326 (which corresponds to the dermal layer). Id. at 32:46–33:29 (emphases added); see also id. at 33:57–66 (further describing “virtual depth/location depiction 350”).” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,320,536 - Jeisys Medical Inc. v. Serendia, LLCInstitutedPTAB · Jul 22, 2024 · IPR2024-00383 · APJ Carl M Defranco · IPR · Institution
The Board instituted IPR on claims 13 and 14, finding a reasonable likelihood that Mehta anticipates them.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“At the outset, we note that the Director’s decisions in Ford and Videndum clarified the Board’s application of the General Plastic/Valve framework. For instance, in Ford, the Director explained that “[u]nder existing Office policy and precedent, the Board does not recognize a ‘significant relationship’ between parties [i.e., serial petitioners] having different accused products that merely engage in court-ordered pretrial coordination.” Ford, at 9 (emphasis added). And, in Videndum, the Director further explained that where “the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors.” See Videndum, Paper 12, 6–7. Thus, per Ford and Videndum, we will not discretionarily deny a later petition in view of an earlier petition where the earlier and later petitioners are neither the same party nor have a significant relationship. After reviewing the record, we find that no significant relationship exists with Cartessa to justify application of the General Plastic/Valve framework. Contrary to Serendia’s assertions about the joint invalidity defense of Jeisys and Cartessa in the parallel ITC proceeding (see Prelim. Resp. 9–10), the relevant facts and circumstances here are akin to those in Ford. More specifically, like the “court-ordered” coordination of the petitioners in Ford, the collaboration of Jeisys and Cartessa as co-respondents in the ITC proceeding was mandated by the rules of the ITC proceeding, and, thus, does not alone create the type of “significant relationship” contemplated by Valve. See Pet. Reply 2–3 (citing Ford, at 3; Exs. 1028, 1029); see also Prime Time Toys LLC v. Spin Master, Inc., IPR 2023-01339, Paper 12, at 19–20 (Vidal July 9, 2024) (“Prime Time Toys”) (“The parties’ collaboration as co-respondents in the ITC investigation does not by itself support a finding of a “significant relationship.”). As such, Jeisys’s knowledge of the prior art asserted in the ITC proceeding and its collaboration with Cartessa on a joint invalidity defense does not create a significant relationship where such knowledge and collaboration arises from the rules of the ITC proceeding itself.” slip op. at 8
- Skill levelSkill level board ownOther
“Jeisys proposes, and Serendia agrees, that one of ordinary skill in the relevant art would have had (1) 7–10 years of experience with developing and/or using treatment systems for delivery of electromagnetic radiation energy to skin or other tissues, and (2) a related graduate engineering degree or M.D. . . . [and] may have worked as part of a multidisciplinary team and drawn upon not only his or her own skills, but also would have taken advantage of certain specialized skills of others on the team when solving a technical problem. Pet. 14–15 (citing Ex. 1003 ¶ 48); see also Prelim. Resp. 33 (accepting Jeisys’s definition of the level of skill in the art). For purposes of this proceeding, we adopt the parties’ assessment of the level of ordinary skill in the art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We need not formally construe the “desired distance” limitation in order to resolve whether institution is appropriate. That is because, on the current record, the asserted prior art satisfies the “desired distance” limitation regardless of which parties’ proposed construction we adopt. 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)). Nonetheless, the parties are free to further explore the appropriate construction of “desired distance” at trial, in particular, whether the language of the claims limits the scope of claims 13 and 14 to “extendable” needles, and whether construing the “desired distance” limitation as being based on a user’s selection improperly reads a preferred embodiment into the claims.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We disagree with Serendia’s analysis of Mehta. As Jeisys correctly explains, Mehta discloses the “desired distance” limitation even assuming Serendia’s construction of that limitation, i.e., that the needles are extendable to a depth selected by the user. See Pet. 26–27. Indeed, although Mehta may not use the term “desired distance” expressly, it comes about as close as one would expect from an anticipatory disclosure. For example, as Jeisys notes, Mehta discloses an embodiment that includes “depth markings” on the needles (i.e., probes) that allow the user to determine a desired depth of the needles— The electrodes of the probe array can also include any number of visually distinguishing features (e.g., depth markings, colors, shades, etc.) that enable a physician to observe proper placement. . . . This ensures that the probe is not driven too far into tissue. Alternatively, the probe can be marked with one or more features that allow the physician to determine the depth of insertion of the probe.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,775,774 - Intelligent Wellhead Systems, Inc. v. Downing Wellhead Equipment, LLCInstitution deniedPTAB · Jun 5, 2024 · IPR2024-00256 · APJ Benjamin D M Wood · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing: Krupa was not established as prior art, and the other grounds failed to show key claim limitations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority under 35 U.S.C. § 314, 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.” 35 U.S.C. § 314(a). Upon considering the Petition, we determine that Petitioner has not satisfied this threshold requirement, and therefore we do not institute inter partes review of claims 1–3, 6, 8–10, 13, 15–18, 25–28, 31, and 36 of the ’779 patent.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“Here, however, Krupa’s actual filing date is after the ’779 patent’s filing date. Compare Ex. 1003, code (22) (Krupa filed Feb. 18, 2022) with Ex. 1001, code (22) (’779 patent filed Jul. 29, 2021). Petitioner therefore must seek the benefit of the earlier February 25, 2021 filing date of the Krupa Provisional. 35 U.S.C. § 102(d)(2). Pet. 6. Under subsection 102(d)(2), to qualify as prior art, a reference patent or published patent application is considered effectively filed as of the filing date of its provisional application only to the extent that the provisional “describes the subject matter” relied on in the reference patent document. We cannot presume that the Krupa Provisional describes the subject matter in Krupa that the Petition relies on, however. See Dynamic Drinkware, 800 F.3d at 1380 (“[B]ecause the PTO does not examine priority claims unless necessary, the Board has no basis to presume that a reference patent is necessarily entitled to the filing date of its provisional application.”). The burden to make this showing thus falls squarely on Petitioner. But Petitioner does not explain how the Krupa Provisional supports the relevant subject matter relied on in Krupa. In fact, Petitioner did not introduce the Krupa Provisional into the record, so it would not be possible to do so.7 Accordingly, Petitioner has not adequately shown that Krupa is prior art, and therefore Petitioner does not have a reasonable likelihood of prevailing with respect to any of the claims challenged in Grounds 1, 2, and 4, which grounds rely on Krupa in whole or substantial part.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We are not persuaded that Kajaria teaches limitation [1.5] or limitation [8.7]. First, Kajaria does not expressly teach these limitations, and, indeed, Petitioner does not appear to contend as much. Instead, Petitioner contends that one of ordinary skill in the art would have understood paragraph 35 of Kajaria as “includ[ing]” this step. But paragraph 35 teaches that “it may be desirable to provide pressurized fluid to a particular well at a particular time or place in the frac cycle, while simultaneously stopping the flow of fluid into another well that is in a different place in the frac cycle.” Ex. 1004 ¶ 35 (emphasis added). Providing pressurized fluid to one well which simultaneously stopping flow to another well suggests that fluid flow is not being provided to both wells at the same time. Second, “direct[ing] flow between wells continuously” is not the same as pumping flow to wells continuously, as Petitioner’s argument suggests. Paragraph 35 of Kajaria states that it is possible to direct flow between wells continuously “simply by opening or closing the valves 66 associated with individual wells,” and is silent regarding whether the frac pumps are on. This suggests that “direct[ing] flow between wells continuously” only refers to the valve lineup—i.e., at least one valve 66 is open “continuously’’—and does not mean providing fluid flow continuously. Interpreting the “continuously” statement in paragraph 35 in this manner is consistent with our interpretation of the “simultaneously stopping” sentence in the same paragraph, discussed above.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage of the proceeding, we do not perceive the need to expressly construe any claim terms, as the threshold question of institution can be decided without doing so. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where construction is not material to the dispute). See Pet. 14; see also Prelim. Resp. 40.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,401,779 - PTAB · May 31, 2024 · IPR2024-00235 · APJ Carl M Defranco · IPR · Institution
The Board instituted IPR on claims 1–6, 8, 10, and 14–16 based on a reasonable likelihood that claims 1 and 14 are anticipated by Young and obvious over Young and Norrie.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Provisur proposes that one of ordinary skill in the art typically would have had: (1) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working as an engineer (or similar role) on food processing and/or packaging systems (or in a similar field); or (2) at least seven years of experience working as an engineer (or similar role) on food processing and/or packaging systems (or in a similar field). Pet. 12. Weber does not contest Provisur’s framing of the level of ordinary skill in the art. Because Provisur’s proposed definition is consistent with the level of skill described in the ’321 patent and the prior art of record, we adopt it here for purposes of institution.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Provisur asserts that the claim terms should be construed “according to their plain and ordinary meanings as understood by [one of ordinary skill in the art] in view of the specification and prosecution history” and that “[n]o terms require an explicit construction to resolve the unpatentability 4 US 5,514,032, issued May 7, 1996 (Ex. 1004, “Young”). 5 US 4,979,269, issued Dec. 25, 1990 (Ex. 1005, “Norrie”). 6 US 6,929,540 B2, issued Aug. 16, 2005 (Ex. 1006, “Johnson”). 7 US 6,198,834 B1, issued Mar. 6, 2001 (Ex. 1007, “Belk”). controversy between the parties here.” Pet. 13. Weber appears to agree, its counsel stating in the parallel Missouri action that “most of [Weber’s] patent claims are plain and ordinary . . . [t]hey’re not difficult or complex claims or claim terms.” Ex. 1028, 5. There being no dispute, we need not expressly construe any claim terms at this stage, because we can decide the threshold question of institution without further construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where the construction is not material to the dispute).” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Weber requests that we deny institution under 35 U.S.C. § 314(a) due to the advanced state of the parallel Missouri action. See Prelim. Resp. 6– 17. Provisur disputes that discretionary denial is warranted (Pet. 73–77), but nonetheless submits a Sotera stipulation (Ex. 1029) in an effort to resolve the issue.8 In light of Provisur’s Sotera stipulation, we will not discretionarily deny institution under § 314(a). See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022), at 3, 7.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We disagree with Weber’s position, at least on the current record. Instead, we find that Provisur presents sufficient evidence that Young anticipates all elements of independent claims 1 and 14, including the disputed limitation requiring “automatic determination of the thickness of the fat cover.” In particular, Young’s imaging system 190 includes multiple cameras, including top plan camera 196, end view camera 197, and fat line camera 198, as well as controller 172 and real-time image processor 194. Ex. 1004, 17:34–59, 18:46–56, Figs. 2, 13. As described by Young, top plan camera 196 is primarily used to obtain “physical dimensions and characteristics” of the meat product, end view camera 197 is primarily used to determine the “height” of meat product and “to create a clear delineation along the top edge of the end” of the meat product, whereas fat line camera 198 is primarily used to determine the fat/lean separation line of the meat product. See id. at 17:59–18:39. Those disclosures by Young clearly contemplate determining specific dimensions of the meat product, and not simply identifying the fat/lean separation line, as Weber suggests. See Prelim. Resp. 19. To determine the “thickness” of the fat cover, Young’s imaging system has image processing routine 240, which “generates a fat/lean separation line and an edge line . . . representing the outer surface of the pork side proximate the fat/lean line” and uses those lines to calculate “the height, width, and length of the [meat product].” Ex. 1004, 23:12–25, 24:10–22. As part of routine 240, controller 172 uses that information to set the cutting profile of knife assembly 100 “so that the assembly follows a fixed distance from the separation line to provide the optimum fat cover for the loin.” Id. at 18:35–39 (emphasis added). Notably, according to Young, the “fixed distance” represents the “desired” thickness of fat that remains on the meat, after cutting, and “sufficiently keeps the loin from drying out, but doesn’t make the loin look too fat.” Id. at 20:60–66; see also id. at 10:39–42 (“Through control of the knife blade along several axes, assembly 100 preferably produces an optimum separation between loin and belly, with a desired fat covering left on the loin.” (emphasis added)). Young’s disclosure that image processing routine 240 determines a “fixed distance” from the loin/fat separation line at which to cut the meat product undoubtedly corresponds to the claimed “determination of the thickness of the fat cover . . . in a contactless manner.” See Ex. 1003 ¶¶ 104–112. Indeed, Young discloses specific dimensions for the desired optimum fat cover to remain on the meat—“a fixed distance (preferably 0.1 inch) from the fat/lean separation line 6.” Ex. 1004, 20:55–63.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 8,529,321 - Sharkninja Operating LLC / Sharkninja Management LLC et al. v. Bissell Inc.All claims unpatentablePTAB · Jan 11, 2024 · IPR2022-01177 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–20 are unpatentable as anticipated by Beskow; the Board did not reach the additional obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“SharkNinja submits that one skilled in the art would have had “a Bachelor’s degree in Mechanical Engineering (or an equivalent discipline) or equivalent work experience, and at least one year’s worth of experience in research, design and/or development related to vacuum cleaners (or other comparable industrial design).” Pet. 14. Bissell does not dispute SharkNinja’s proposed definition of the level of skill in the art, and we see no reason to question it. See PO Resp. 1–9. Accordingly, we adopt the level of skill in the art as defined by SharkNinja.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Despite that exchange, Bissell still presents no evidence as to the meaning of “selectively provided,” aside from asserting the term is “ambiguous” while at the same time arguing that the term requires more than simply showing that Beskow’s agitator “can” or “cannot” be mounted on the base. Notably, however, Bissell never elaborates on why Beskow must disclose “when” the agitator can be removed, as opposed to simply disclosing it can be removed. In contrast, SharkNinja presents Beskow’s Figures 1A and 7A to show that agitator 110 is removable. Thus, without more from Bissell, we fail to see why we should construe “selectively provided” any more narrowly than simply requiring that the agitator “can” or “cannot” be mounted on the base, as SharkNinja proposes. To that end, we find that Beskow’s agitator, as depicted in Figures 1A and 7A, clearly falls within the meaning of “selectively provided on the base,” as properly construed.” slip op. at 9
- Strike new argumentNew argument consideredDecided for petitioner
“We disagree that SharkNinja’s proposed construction of “selectively” in its reply is untimely or not supported by the evidence. At the outset, we note that Bissell did not provide any meaningful construction of the term in the Patent Owner Response. See PO Resp. 2–5. By opening the door in its Response to the meaning of “selectively” and by disputing that Beskow teaches this limitation, Bissell cannot reasonably fault SharkNinja for proposing its own construction of the term in its Reply. This is especially true given Bissell’s refusal to construe the term itself, despite recognizing some ambiguity in the claim’s use of that term. See Hrg. Tr. 46 (Bissell’s counsel explaining that “the word selectively is ambiguous” and that “[i]n the Patent Owner’s response we pointed out the ambiguities.”); see also id. at 49 (“[PTAB JUDGE]: Okay. So it’s your position that it’s an ambiguous term then? [BISSELL’S COUNSEL]: Yes, Your Honor.”). Thus, in the absence of any construction of “selectively” from Bissell in contending that Beskow lacks this claim limitation, SharkNinja was fully within its right to propose its own construction in its Reply to support of its assertion that Beskow teaches this limitation. As such, we reject the notion that SharkNinja’s proposed construction was untimely or otherwise not properly within the scope of its Reply.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
Patent outcomesUS 11,096,542 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 11,096,542 - Sharkninja Operating LLC / Sharkninja Management LLC et al. v. Bissell Inc.All claims unpatentablePTAB · Jan 11, 2024 · IPR2022-01176 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–20 are unpatentable as anticipated by Beskow; the Board did not reach the additional obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“SharkNinja submits that one skilled in the art would have had “a Bachelor’s degree in Mechanical Engineering (or an equivalent discipline) or equivalent work experience, and at least one year’s worth of experience in research, design and/or development related to vacuum cleaners (or other comparable industrial design).” Pet. 14. Bissell does not dispute SharkNinja’s proposed definition of the level of skill in the art, and we see no reason to question it. Accordingly, we adopt the level of skill in the art as defined by SharkNinja. B. Claim Construction” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree with Bissell that, as claimed, the suction nozzle assembly must be a separate and distinct component from the base. Although we agree that “provided on the base” may be construed to mean that the suction nozzle assembly is a separate and distinct component positioned on, or attached to, the base, we also conclude that “provided on the base” may be construed more broadly to mean that the suction nozzle assembly is part of the base or included in the base. That broader meaning comports with the specification of the ’541 patent and the plain and ordinary meaning of the term “provided on.”” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We find unpersuasive Bissell’s assertion that Beskow’s suction nozzle assembly is not “provided on the base,” as claimed. See PO Resp. 7–10, 17– 21. That is because Bissell’s assertion that the suction nozzle assembly, as claimed, must be a physically separate component from the base relies on an improper claim construction. As discussed above, we construe “a suction nozzle assembly provided on the base” to encompass not only a suction nozzle assembly that is “positioned on” the base, as Bissell asserts, but also one that it is “part of” the base or “included in” the base.” To that end, Beskow discloses that “debris and fluid inlets 724, 726 may be formed entirely or partially as a removable inlet tray 730” and “may be separately removable from the cleaning head 102, integral to or not removable from the cleaning head 102.” Ex. 1004, 20:6–7, 29–32. That the debris and fluid inlet portions of Beskow’s suction nozzle assembly are removably attached to Beskow’s cleaning head 102 (i.e., the claimed “base”) necessarily means they are “positioned on” and “included in” the base under the proper construction of “provided on the base.” Indeed, Beskow’s disclosure is no different than the preferred embodiment of the ’541 patent, where suction nozzle assembly 580 “is configured to be received in the upper cover 542,” which indisputably is part of “base 14.” Ex. 1001, 10:52–54, Fig. 8 (emphasis added); see also id. at 8:12–13 (“Upper cover 542 can be configured to releasably receive the suction nozzle assembly 580.”). Thus, we find that Beskow satisfies the claim limitation of “a suction nozzle assembly provided on the base.”” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“SharkNinja also challenges claims 1–20 as being rendered obvious by either Beskow alone or the combined teachings of Beskow and Li. See Pet. 25–26. Bissell responds that SharkNinja’s showing for these challenges fails “for the same reasons discussed with respect to Ground 1.” PO Resp. 33. Because we determine that claims 1–20 are unpatentable as anticipated by Beskow, we need not address whether those same claims are unpatentable under SharkNinja’s additional grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018) (holding that petitioner “is entitled to a final written decision addressing all of the claims it has challenged”); Boston Scientific Scimed, Inc. v. Cook Grp. Inc., 809 F. Appx 984, 990 (Fed. Cir. 2020) (nonprecedential) (recognizing that the “Board need not address issues that are not necessary to the resolution of the proceeding” and, thus, has “discretion to decline to decide additional instituted grounds once the petitioner has prevailed on all its challenged claims”).” slip op. at 23
Patent outcomesUS 11,096,541 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,096,541
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.