• Resmed, Inc. v. New York UniversityAll claims unpatentable
  PTAB · Dec 4, 2023 · IPR2022-00989 · APJ James A Tartal · IPR · Final written decision

  Claims 1, 2, 5–11, 13, and 15–30 are unpatentable as obvious over Sullivan995 and Sullivan460; anticipation was not shown, and the other obviousness ground was not reached.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Petitioner contends that a person of ordinary skill in the art would have had “at least a bachelor’s degree in mechanical engineering, biomedical engineering, or a similar technical field, with at least two years of relevant product design experience” and “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” Pet. 19 (citing Ex. 1003 ¶ 77). Petitioner further states that the “Petition does not turn on this precise definition, and the challenged claims would be unpatentable from the perspective of any reasonable person of ordinary skill in the art at the relevant time.” Id. (citing Ex. 1003 ¶ 78). Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill in the art. PO Resp. 15–16. We find that the ’539 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’539 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12

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

    “awake state” Claim 24 recites, in part, “to determine whether breathing patterns indicate an asleep state or an awake state.” Ex. 1001, 11:36–12:7; see also id. at 9:49–64 (claim 1 reciting “between an awake state and an asleep state”), 10:42–56 (claim 11 reciting “at least one of an awake state or an asleep state”). In regard to its allegations of obviousness, Petitioner’s arguments suggest an “awake state” ordinarily means when a patient is not asleep. Pet. 36–37, 42. By contrast, with regard to its allegations of anticipation, Petitioner argues that under Patent Owner’s “implied construction of ‘an awake state’ based on [Patent Owner’s] infringement allegations” in district court, “the patient is in an awake state when there is an absence of obstructions or other breathing patterns indicative of sleep.” Id. at 68–70 (citing, e.g., Ex. 1018 ¶¶ 2, 158, 159). Petitioner provides no further support for this “implied construction” purportedly taken from Patent Owner’s district court allegations. Id. Dr. Kirkness, in support of Petitioner, applied the plain meaning of all terms and phrases. See, e.g., Ex. 1003 ¶ 80. In regard to supporting Petitioner’s allegations of anticipation, Dr. Kirkness merely assumed Patent Owner’s purported district court claim construction “position to be true.” Ex. 1003 ¶ 253. In this proceeding Patent Owner does not propose an express meaning for “awake state.” See PO Resp. 29–33. More generally, Patent Owner states that the ’539 patent “teaches how to distinguish between an awake state and an asleep state.” Id. at 8. From the arguments of the Parties, we discern no dispute in this proceeding that a plain and ordinary meaning of an “awake state” is a state in which a patient is not asleep. See Ex. 1001, 3:1–5 (distinguishing between “a wake state” and “a sleep state”), 7:22–24 (describing an embodiment with a processing arrangement that “may determine whether the patient is in a sleep state or a wake state based on the breathing pattern”).8 We apply the plain and ordinary meaning of “awake state” in this proceeding and further determine that Petitioner has not shown by a preponderance of the evidence that an awake state means “an absence of obstructions or other breathing patterns indicative of sleep.” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner

    “Next, we turn to the Specification. “While we read claims in view of the specification . . . we do not read limitations from the embodiments in the specification into the claims.” Hill-Rom Servs., 755 F. 3d at 1371 (citation omitted). “We depart from the plain and ordinary meaning of claim terms based on the specification in only two instances: lexicography and disavowal.” Id. In order for a patentee to act as its own lexicographer, the “patentee must ‘clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning’” and “must ‘clearly express an intent’ to redefine the terms.” Bradium Tech., 923 F. 3d at 1044. In this case, Patent Owner does not argue that it disavowed the full scope of the plain and ordinary meaning of claim 24, nor does Patent Owner argue that it explicitly defined “analyzing the breathing patterns” in the Specification. See, e.g., PO Resp. 29–32. We determine that there is no disavowal nor any explicit lexicographic definition of “analyzing the breathing patterns” in the Specification. Patent Owner instead relies on an “implied lexicography” theory as to why we should construe the phrase as Patent Owner proposes. PO Sur-reply 2, 6–7 (citing, inter alia, AstraZeneca AB v. Mut. Pharm. Co., Inc., 384 F.3d 1333, 1339 (Fed. Cir. 2004)). We disagree.” slip op. at 27

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

    “We disagree with Patent Owner’s arguments—that Petitioner fails to show any motivation to combine and that Sullivan460 is not enabled— merely because Dr. Kirkness indicated in a deposition that he did not know how a preset level is calculated from a sentence in Sullivan460. As Petitioner explains, enablement “is not a requirement to prove invalidity under §103.” Amgen, 314 F.3d at 1357 (under §103, “a reference need not be enabled; it qualifies as a prior art, regardless, for whatever is disclosed therein”). Moreover, we agree with Petitioner that the Challenged Claims do not require any preset level for a flow rate, and a person of ordinary skill “would have understood that a preset level is established from previously-acquired data or data from a previous window of time, such as an average level, for example, as taught in Sullivan995.” Pet. Reply 15 (citing Ex. 2014, 38:2–16; Ex. 1005, 17:3–27, Fig. 12). Patent Owner responds that Petitioner’s assertion is unsupported, and that “Petitioner is obligated to address this challenge, and failed to do so.” PO Sur-reply 18–19 (citing In re Morsa, 713 F.3d 104, 110 (Fed. Cir. 2013)). We find Petitioner’s arguments persuasive because they are supported by the asserted references. Sullivan995 discloses that the computing system may “calculate control values of patterns for each patient based on moving average values or such values or patterns will be pre-programmed into the computing system.” Ex. 1005, 17:14–18. According to Sullivan995, when “signals deviate from predetermined values or patterns the computer system generates a signal which is sent to the feedback speed controller on the blower motor.” Id. at 17:19–22. Based on this disclosure, and given that Sullivan460 incorporates Sullivan995 by reference, we agree with Petitioner that Sullivan460’s disclosure of detecting that the flow rate has fallen below a preset level would have informed a person of ordinary skill that this level was predetermined, so that “the controller 100 activates the nCPAP apparatus 90 to supply air to the patient 30 at a pressure which ameliorates or eliminates the upper airway flow limitation.”16 Ex. 1006, 10:17–21.” slip op. at 50

  Patent outcomesUS 9,427,539 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,427,539
• Google LLC v. Ipa Technologies Inc.All claims unpatentable
  PTAB · Jun 1, 2023 · IPR2019-00731 · APJ Trevor M Jefferson · IPR · Remand

  Claim 28 is unpatentable under § 103(a) over Martin and Farley; Martin qualifies as prior art because Dr. Moran’s contribution made him a joint inventor of the relied-on disclosure.

  RulingsRemand decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “we do not agree with Patent Owner that evidence analogous to that in Duncan Parking is required in this case or for Petitioner to meet its burden by stating which specific aspects of the Facilitator were conceived by Dr. Moran. PO Remand 3–4. As the Federal Circuit stated, the facilitator described in Section 4.5 of the Martin reference plays a central role in the OAA disclosed in the specification of the ’560 patent. Google, 34 F.4th at 1087; see Ex. 1011, 23–24 (Section 4.5); Ex. 1001, 19:14–19:62. In addition, Patent Owner admits that “large portions of the ’560 application and the Martin reference are identical or almost identical.” PO Resp. 1. We find that Petitioner and Dr. Moran have sufficiently identified the facilitator in the Martin reference as his work, and persuasively asserted that Dr. Moran’s background and experience with OAA and distributed software systems support his contribution to the conception of the facilitator in the distributed agent approach of Sections 4.1–4.5. Ex. 1007 ¶¶ 23–39. Dr. Moran’s testimony provides sufficient and persuasive detail to support his contribution claim to the facilitator of Section 4.5. Id.” slip op. at 21

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “With respect to Dr. Moran’s contribution to the Martin reference, we find Dr. Moran’s testimony credible over that of Mr. Cheyer and Mr. Martin, because, as the Federal Circuit noted, because the latter testimony conflicts with other evidence of record. Google, 34 F.4th at 1088. Cheyer’s and Martin’s testimony that Dr. Moran’s role was administrative and non-technical with respect to the core infrastructure of OAA is belied by a separate article describing OAA that includes the facilitator and lists Dr. Moran as the lead author. Ex. 1174, 1–2, 4. Indeed, the OAA article lists Dr. Moran and Mr. Cheyer as authors but excludes Mr. Martin. Id. Although Mr. Cheyer disagrees with the article’s description of the origins of OAA and the facilitator (Ex. 2037, 78:23–79:12 (Mr. Cheyer asserting that he “would not agree in the characterization of Open Agent Architecture grew out of [earlier] works” as described in the article)), Mr. Cheyer admits patent]” (id. at 1088), “which is a continuation-in-part of the application that resulted in the ’115 patent” (id. at 1086). in his deposition that Dr. Moran was extremely technical, and probably made technical contributions to OAA (id. at 34:1–20, 64:16–20, 102:2–4). Similarly, Mr. Martin’s testimony also supports that Dr. Moran “may have made contributions to the technological development of either interfaces for use with OAA, agents used with OAA, or systems based on OAA.” Ex. 2038, 116:2–8, 117:7–119:10. When viewed in light of Dr. Moran’s status as a joint inventor on the closely related ’931 patent (Ex. 2002, code (75)) and as a lead author of the substantive paper that discusses OAA’s early development, we find Mr. Martin’s and Mr. Cheyer’s admissions—that Dr. Moran made technical contributions to OAA—undermine their testimony that Dr. Moran’s inclusion as an author on the Martin reference was a matter of administrative respect and not a result of a technical contribution. See PO Remand 11; PO Resp. 50–51. Indeed, we find Cheyer and Martin’s general description of Dr. Moran—as an administrator without technical contributions to the Martin reference—is not supported by the full record, which instead supports Dr. Moran’s contributions to technical work that involves the Martin reference, such as contemporary papers and the ’931 patent. See, e.g., Ex. 1174, 2002. In sum, the testimony and contemporary evidence supports Dr. Moran’s testimony that his conception and contribution to the Martin reference, the facilitator, was technical and not merely administrative. Ex. 1007 ¶ 39.” slip op. at 23

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

    “We disagree with Patent Owner’s contention. Rather, we find that the Petition persuasively explains how Martin discloses a facilitator agent arranged to coordinate cooperative task completion within a distributed computing environment having autonomous service-providing electronic agents. Pet. 39; Ex. 1002 ¶ 100. Further, Petitioner persuasively demonstrates that Farley discloses how agent functionality can be distributed across multiple processes. Pet. 39–40; Ex. 1002 ¶¶ 101–102. Finally, Petitioner also provides persuasive reasons as to why one of ordinary skill in the art would have been motivated to combine Martin and Farley, including reasons expressly provided by Farley. Pet. 40; Ex. 1002 ¶¶ 103–104.” slip op. at 28

  • ExcludeMotion to exclude, deniedMixed

    “III. MOTION TO EXCLUDE In our prior Final Written Decision, we denied Patent Owner’s Motion to Exclude (1) portions of Exhibit 1153; (2) Exhibits 1170, 1171, and 1172; (3) Exhibit 1174; and (4) portions of Exhibits 2037 and 2038; and we dismissed as moot Patent Owner’s Motion to Exclude (1) Exhibits 1158 and 1159 and (2) Exhibits 1175, 1176, and 1181. Final Dec. 26–30. We maintain these determinations on remand.” slip op. at 29

  Patent outcomesUS 7,069,560 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,069,560
• Google LLC v. Ipa Technologies Inc.All claims unpatentable
  PTAB · Jun 1, 2023 · IPR2019-00728 · APJ Trevor M Jefferson · IPR · Remand

  On remand, the Board held claim 63 unpatentable under § 103(a) over Martin and Kohn, finding Martin was prior art because Moran was a joint inventor.

  RulingsRemand decision

  • RemandDecided for petitioner

    “Petitioner relies upon is sufficient to establish the degree to which the reliedon portions of the Martin reference were conceived by Dr. Moran, and the significance of those contributions to the overall anticipating disclosure of the Martin reference. See Google, 34 F.4th at 1086–88; Duncan Parking, 914 F.3d at 1358. Contrary to Patent Owner’s contentions, Petitioner is not merely relying on Dr. Moran’s authorship to establish inventorship. PO Remand 8 (citing In re Katz, 687 F.2d 450, 455 (C.C.P.A. 1982)). Instead, Dr. Moran’s testimony establishes how his background led to his contributions to the multiple facilitator architectures disclosed in Martin and in the ’115 patent specification. Google, 34 F.4th at 1087; Ex. 1007 ¶¶ 23– 34 (OAA project), 35–39 (OAA paper). In view of Dr. Moran’s testimony, we do not agree with Patent Owner that evidence analogous to that in Duncan Parking is required in this case or for Petitioner to meet its burden by stating which specific aspects of the Facilitator were conceived by Dr. Moran. PO Remand 3–4. As the Federal Circuit stated, the facilitator described in Section 4.5 of the Martin reference plays a central role in the OAA disclosed in the specification of the ’115 patent. Google, 34 F.4th at 1087; see Ex. 1011, 23–24 (Section 4.5); Ex. 1001, 18:56–19:36. In addition, Patent Owner admits that “large portions of the ’115 application and the Martin reference are identical or almost identical.” PO Resp. 1. We find that Petitioner and Dr. Moran have sufficiently identified the facilitator in the Martin reference as his work, and persuasively asserted that Dr. Moran’s background and experience with OAA and distributed software systems support his contribution to the conception of the facilitator in the distributed agent approach of Sections 4.1–4.5. Ex. 1007 ¶¶ 23–39. Dr. Moran’s testimony provides sufficient and persuasive detail to support his contribution claim to the facilitator of Section 4.5. Id. Based on the record, the Federal Circuit’s remand squarely asks whether Dr. Moran’s stated contributions to the conception of the facilitator should be credited over Cheyer and Martin’s conflicting testimony regarding his lack of technical contribution. Google, 34 F.4th at 1088 (stating that “[t]he testimony of Dr. Moran, if credited, might well establish that he was a co-inventor of the particular portions of the Martin reference relied on by Google in, and relevant to, the challenge to particular claims”). When Dr. Moran’s testimony is viewed in combination with the supporting evidence,7 we find that incorporation of the facilitator in general, which is also found in the specification and claims, persuasively supports Dr. Moran’s testimony regarding his inventive contribution to the Martin reference. Specifically, we find Dr. Moran’s testimony persuasively supported and credible over the conflicting testimony and evidence offered by Mr. Cheyer and Mr. Martin. See Pet. Reply 12–13; Ex. 2038, 116:2–8, 117:7–119:10 (Cheyer admission that Dr. Moran made technical contributions to OAA); Ex. 2037, 34:1–20, 64:16–20, 102:2–4.” slip op. at 21

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “Upon weighing the parties’ testimony and evidence, we agree with Petitioner that sufficient evidence supports the technical contributions of Dr. Moran to OAA, including admissions by Mr. Martin that Dr. Moran made such contributions (see Ex. 2038, 116:2–116:8, 117:7–119:10; see also id. at 73:3–73:15); contemporaneous papers showing Dr. Moran’s contribution to the OAA including a facilitator (see Ex. 1170; Ex. 1174, 1– 2), and the ’931 patent (Ex. 2002). See Pet. Reply 5–7, 8, 12–13; Pet. Remand 11. In particular, Dr. Moran’s testimony establishes that he contributed to Section 4.5, the facilitator that plays an essential role in the OAA, that differs from prior art agents, and that is found in the ’115 specification. We find Dr. Moran’s contributions to be significant when measured against the full anticipating Martin reference, and to render him a joint inventor of the Martin reference. Google, 34 F.4th at 1085 (quoting Duncan Parking, 914 F.3d at 1358). 5. Conclusion Based on the full record, we find that Petitioner has provided persuasive evidence by a preponderance of the evidence that Dr. Moran is an inventive entity to the Martin reference. Accordingly, we find that Petitioner has established that Martin is “by another” and is prior art under § 102(a) to the ’115 patent. We next turn to the sole remaining ground based on the Martin reference to determine the patentability of the remaining challenged claim.” slip op. at 26

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

    “combination of Martin and Kohn. Petitioner’s expert, Dr. Olsen, provides persuasive testimony and evidence that Martin teaches compound goals and a skilled artisan would have been motivated in view of Kohn to modify Martin’s facilitator agent to interpret a compound goal that includes both local and global constraints. Pet. 32–34; Ex. 1002 ¶¶ 49, 77–88. Dr. Olsen’s testimony does not evince hindsight, but instead supports the finding that an ordinarily skilled artisan could use compound goals required in Martin and apply the type of constraints (global and local) disclosed in Kohn. Ex. 2024, 159:4–160:16. In addition, Dr. Olsen testified, the proposed implementation “would have been a mere combination of known components and technologies . . . , according to known methods, to produce predictable results.” Ex. 1002 ¶ 87. We do not agree that this case presents the same technical issues raised in G.B.T. Inc. v. Walletex Microelectronics Ltd., IPR2018-00326, Paper 60 at 16–17 (PTAB June 25, 2019), where the petitioner’s declarant failed to show how the combination would have achieved desired results and features from the combination of the circuits. Here, Dr. Olsen identified known compound goals in Martin to which Kohn’s local and global constraints are applicable. Pet. 32–34; Ex. 1002 ¶¶ 49, 77–88. In view of the level of skill in the art and the testimony of Dr. Olsen (Ex. 1002 ¶¶ 49, 77–88; Ex. 2024, 159:4–160:16), we find that Petitioner establishes persuasive motivation to combine the software teachings of Kohn’s constraints into the goals of Martin and how the references would have been combined by a preponderance of the evidence.” slip op. at 29

  • ExcludeMotion to exclude, deniedMotion to exclude, grantedMixed

    “III. MOTION TO EXCLUDE In our prior Final Written Decision, we denied Patent Owner’s Motion to Exclude (1) portions of Exhibit 1153; (2) Exhibits 1170, 1171, and 1172; (3) Exhibit 1174; and (4) portions of Exhibits 2037 and 2038; and we dismissed as moot Patent Owner’s Motion to Exclude (1) Exhibits 1158 and 1159 and (2) Exhibits 1175, 1176, and 1181. Final Dec. 25–28. We maintain these determinations on remand.” slip op. at 30

  Patent outcomesUS 6,851,115 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,851,115
• Laltitude LLC, Dba Picasso Tiles v. Altus Holdings, Inc.All claims unpatentable
  PTAB · May 10, 2023 · IPR2022-00155 · APJ Bart A Gerstenblith · IPR · Final written decision

  The sole challenged claim was held unpatentable as anticipated by Zhao US and Zhao CN; the Board did not reach the three obviousness grounds.

  RulingsFinal written decision

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

    “same as that used for infringement, except that for anticipation, the patented design is compared with the alleged anticipatory reference rather than an accused design. Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1238, 1240 (Fed. Cir. 2009). The ordinary observer test for design patent infringement was first enunciated by the Supreme Court in Gorham Co. v. White, 81 U.S. 511 (1871), as follows: [I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other. Id. at 528. The ordinary observer test requires the fact finder to consider all of the ornamental features illustrated in the figures that are visible at any time in the “normal use” lifetime of the accused product, i.e., “from the completion of manufacture or assembly until the ultimate destruction, loss, or disappearance of the article.” Int’l Seaway, 589 F.3d at 1241. Further, while the ordinary observer test requires consideration of the overall prior art and claimed designs, [t]he mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another. Just as “minor differences between a patented design and an accused article’s design cannot, and shall not, prevent a finding of infringement” . . . so too minor differences cannot prevent a finding of anticipation. Id. at 1243 (citation omitted) (quoting Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (1984)).” slip op. at 8

  Patent outcomesUS D719,138 unpatentable
  § 102 anticipation
• Fredman Bros. Furniture Company, Inc. v. Bedgear, LLCAll claims unpatentable
  PTAB · Jun 12, 2018 · IPR2017-00352 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–6, 8–13, 15–18, and 20–24 are unpatentable: Rasmussen anticipates claims 1, 4–6, 8, 11, 13, 17, 18, 22, and 23; the remaining challenged claims are obvious over the stated combinations.

  RulingsFinal written decision

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

    “construction’ as used herein refers to a construction having overall porosity greater than the inherent porosity of the constituent material or inherently having high porosity.” Ex. 1049, 1:37–40. Based on the full record, we agree with parties that “open cell construction” is defined in the specification, and we interpret it in accordance with that definition to mean “a construction having overall porosity greater than the inherent porosity of the constituent material or inherently having high porosity.” See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (“Although an inventor is indeed free to define the specific terms used to describe his or her invention, this must be done with reasonable clarity, deliberateness, and precision.”).” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “various prior art approaches employed, the types of problems encountered in the art, the rapidity with which innovations are made, the sophistication of the technology involved, and the educational background of those actively working in the field.” Jacobson Bros., Inc. v. U.S., 512 F.2d 1065, 1071 (Ct. Cl. 1975); see also Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983) (quoting with approval Jacobson Bros.). We find, based on our review of the record before us, that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the record’s indication of “the various prior art approaches employed, the types of problems encountered in the art, the rapidity with which innovations are made, the sophistication of the technology involved, and the educational background of those actively working in the field.” See, e.g., Pet. 7–12 (“Technology Background”); PO Resp. 3–4 (“Background of the Relevant Technology at the Time of the ’134 Patent”); Ex. 1006 ¶¶ 2–4; Ex. 1008; Ex. 1012 ¶¶ 3–6; Ex. 1044; Ex. 2001 ¶¶ 36–54. We resolve any differences in favor of including “several years of industry experience in applying the moisture and heat transfer properties of materials” as part of “at least one year of experience in the design of pillows and other sleep-related textile products” of a person holding a “bachelor’s degree in textile science, textile engineering, or a similar field.” See Rhodes Decl. ¶ 5 (“I am also an adjunct professor . . . teaching . . . an entry level course for textile and fashion majors.”), ¶ 6 (“I received a Bachelor of Science degree in Textile Design.”), ¶ 70 (“I met at least these minimum qualifications to be a person having ordinary skill in the art at the time of the claimed invention.”); Ex. 1062 ¶ 4 (“I teach concepts relating to moisture and heat transfer in my textile curriculum in my academic role as a professor”). Therefore, we apply Petitioner’s definition, quoted above, in our analysis of the challenges under 35 U.S.C. § 103(a). Pet. 15–16.” slip op. at 58

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Based on the full record, Petitioner sufficiently shows that Rasmussen’s “highly porous” “3D textile material” discloses the open cell construction of claim 1. Also, even if Rasmussen uses the “3D textile” broadly, the full record persuades us that Rasmussen discloses the limitations of claim 1. PO Resp. 4, 12–28; Rhodes Decl. ¶ 117; Ex. 1006 ¶ 29; Ex. 1007 ¶ 25; Parachuru Decl. ¶ 93. Also, our interpretation of the limitations of claim 1 does not require modifying or transforming a constituent base material. Patent Owner also responds that “Petitioner never even argues that the ‘interlaced,’ ‘spaced-apart,’ or ‘mesh’ strand structures are inherent from Rasmussen’s disclosure of 3-D textiles.” PO Resp. 55. Patent Owner states that “both parties’ experts acknowledge that 3D textiles, as well as highly porous 3D textiles, can have multiple possible configurations other than the ones recited in the claims,” and thus, Rasmussen does not disclose inherently the claimed structures. Id. at 55–57 (citing Parachuru Decl. ¶¶ 67–73, 92– 94, 158–160, 168–169; Ex. 2016, 15:23–16:7, 31:21–32:6, 36:3–7, 36:14– 18, 37:7–21, 49:4–12, 50:15–51:12, 52:19–53:3, 123:7–23, 135:23–136:24). The record, however, indicates that “highly porous” “3D textile material” has “interlaced strands or spaced-apart strands,” as argued by Petitioner and as required by claim 1. For the above reasons, Petitioner persuades us by a preponderance of the evidence that Rasmussen anticipates claim 1 based on disclosures related to its core.” slip op. at 30

  Patent outcomesUS 8,646,134 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,646,134
• Fredman Bros. Furniture Company, Inc. v. Bedgear, LLCAll claims unpatentable
  PTAB · Jun 12, 2018 · IPR2017-00351 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–10, 12–15, and 17–20 are unpatentable: Rasmussen anticipates the challenged claims, and Rasmussen combined with Doak, Mason, or Burton renders claims 5, 6, 12, and 19 obvious.

  RulingsFinal written decision

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

    “We agree with Patent Owner’s statement that the claim language “does not address (i.e., require or restrict) air entering through a structure other than a panel (e.g., a gusset) nor does it address any such air exiting the pillow in a particular manner (e.g., through a panel, gusset, or other structure).” See PO Resp. 47. The claim language requires “at least some air which enters through the panels” exits through the gusset alone or in combination with another structure. See id. The portions of the specification cited by Patent Owner support its above-quoted statement because the cited portions describe that the pillow allows lateral ventilation, gusset 20 provides venting, gusset 20 permits air exchange, and the panels can be made of open cell construction. See PO Resp. 48–49; Ex. 1047, 1:37–40, 2:12–15, 4:34–36, 4:56–58. Further interpretation is not required for determining whether Petitioner shows by a preponderance of the evidence the unpatentability of claim 1. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (construing explicitly only those claim terms in controversy and only to the extent necessary to resolve the controversy).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “The specification of the ’883 patent states that an “‘open cell construction’ as used herein refers to a construction having overall porosity greater than the inherent porosity of the constituent material or inherently having high porosity.” Ex. 1047, 1:44–47. Based on the full record, we agree with parties that “open cell construction” is defined in the specification, and we interpret it in accordance with that definition to mean “a construction having overall porosity greater than the inherent porosity of the constituent material or inherently having high porosity.” See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (“Although an inventor is indeed free to define the specific terms used to describe his or her invention, this must be done with reasonable clarity, deliberateness, and precision.”).” slip op. at 9

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

    “Based on the full record, we concur with the parties that an express interpretation for “gusset” is not necessary for determining whether Petitioner has demonstrated by a preponderance of the evidence that the challenge claims are unpatentable. See Vivid Techs., 200 F.3d at 803. We also determine that express interpretation of any other claim term is not necessary. See id.” slip op. at 15

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

    “Petitioner also argues that the claims of the ’883 patent are not entitled to a priority date before June 22, 2012. Pet. 24. Petitioner argues that Rasmussen (Ex. 1006) is § 102(b) prior art, if the challenged claims are entitled only to a priority date of June 22, 2012. Petitioner alternatively argues that a provisional application (Ex. 1007, to which Rasmussen claims priority, see Ex. 1006, [30]) is § 102(e) prior art, if the challenged claims are entitled to the earlier priority date of June 22, 2011. Pet. 24. Petitioner, thus, provides parallel citations to Rasmussen and the provisional application, which Petitioner asserts is identical to Rasmussen. Pet. 24 n.1; Ex. 1057 (comparison of Rasmussen and its provisional). As discussed below, the full record persuades us that Petitioner has proven by a preponderance of the evidence that claims 1–4, 7–10, 13–15, 17, 18, and 20 are anticipated by Rasmussen under 35 U.S.C. § 102(b) or § 102(e).” slip op. at 16

  Patent outcomesUS 9,015,883 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,015,883
• Campbell Soup Company / Campbell Sales Company et al. v. Gamon Plus, Inc.All claims unpatentable
  PTAB · Mar 27, 2018 · IPR2017-00096 · APJ Robert L Kinder · IPR · Final written decision

  The sole claim is unpatentable under § 102 over Pendergrast and under § 103 over Pendergrast alone or with Knott.

  RulingsFinal written decision

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

    “Manufacturing, L.L.C. (collectively, “Petitioner”) filed a Petition to institute an inter partes review of the claim for “[t]he ornamental design for a gravity feed dispenser display” in U.S. Patent No. D595,074 (“the ’074 patent”). Paper 2 (“Pet.”). Gamon Plus, Inc. (“Gamon” or “Patent Owner”) did not file a Preliminary Response to the Petition. Applying the standard set forth in 35 U.S.C. § 314(a), we instituted an inter partes review of the challenged claim. Paper 9 (“Dec.”).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “[A] design[er] of ordinary skill in the field of the ’074 Patent would have been a person with a background or familiarity with commercial dispensers, and particularly dispensers for consumer commodities such as cans, bottles, or small packaged items. . . . The designer of ordinary skill would also have a basic understanding of physics and or mechanics, which may include practical experience in the field of studying consumer commodity dispensers, or may include high school or introductory college level physics coursework. The designer of ordinary skill would also have a basic understanding of the dimensions and functions afforded to cans and bottles in the context of packaging. Ex. 1002 ¶¶ 21, 22. We agree with Mr. Gandy’s undisputed testimony as to the designer of ordinary skill based on the final trial record.” slip op. at 10

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

    “Based on these contentions, Petitioner proposes the broadest reasonable construction of the ’074 patent claim is “the ornamental design of either two or three adjacent cylindrical objects in a gravity feed dispenser display, each cylindrical object comprising a smooth curved surface with planar ends, as shown in the drawings of the ’074 Patent.” Pet. 26 (emphasis omitted). Based on the undisputed arguments above, and considering the relationship of the prior art to the claimed design, we find it helpful to describe verbally certain features of the claim for purposes of this Decision. See Egyptian Goddess, 543 F.3d at 680. We interpret the scope of the claimed design based on the unique or distinctive shape or appearance of the cylindrical objects that is not dictated by function. Based on the final record before us, we find persuasive Petitioner’s contention that the specific arrangement of the cylindrical objects is dictated primarily by function. The precise placement of cylindrical objects is controlled by the use of the gravity feed dispenser and the natural resting position of one cylindrical object on two others. See, e.g., Ex. 1001, Fig. 4. Our invalidity analysis below focuses on what the claimed cylindrical objects contribute to the design’s overall ornamentation. See Richardson, 597 F.3d at 1293–94 (factoring out purely functional aspects of a design patent from an obviousness analysis). Neither party has indicated that our claim interpretation from the Decision to Institute (Dec. 3–8) is improper and we do not perceive any reason or evidence that recommends any deviation from our initial construction. We therefore convey the scope of the claim of the ’074 patent as: “the ornamental design of a gravity feed dispenser display depicting either two or three adjacent cylindrical objects, each cylindrical object comprising a smooth curved surface with planar ends, as shown in the drawings of the ’074 patent.” See Dec. 8.” slip op. at 7

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

    “Based on the record before us, Petitioner has established persuasively that both embodiments of the ’074 patent design and the design of Pendergrast are substantially the same under the ordinary observer analysis. Both designs are for a gravity feed dispenser display. Petitioner establishes that the ornamental design of the cans of Pendergrast are substantially identical to the ’074 patent cylindrical objects, with each having a smooth curved surface with planar ends. See Ex. 1003, Fig. 1, 3; Ex. 1002 ¶¶ 42–47. Further, although not required under our claim construction, the placement and positioning of Pendergrast’s cylindrical objects are also substantially the same as that of the ’074 patent. See Ex. 1002 ¶ 46. Accordingly, based on the final record before us, Petitioner has established by a preponderance of the evidence that Pendergrast anticipates the claim of the ’074 patent.” slip op. at 14

  Patent outcomesUS D595,074 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
• Askeladden LLC v. Purple Leaf, LLCAll claims unpatentable
  PTAB · Feb 13, 2018 · IPR2016-01722 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–11 are unpatentable as obvious over four combinations; claims 12–17 are unpatentable as anticipated by Hughes.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Because it is consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 6

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

    “II. CLAIM CONSTRUCTION Neither party proposes that we expressly construe any claim terms, and we determine that none of the claims terms require an express construction to resolve the issues before us. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 5

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

    “It would have been obvious to a person of ordinary skill in the art to combine the disclosures of Carlson and Stilp because Carlson discloses “transferring data . . . via [a] cellular network.” (Ex. 1003, 4:62–64.) As such, Carlson expressly discloses the combination of its payment system with conventional cellular systems, which are described by Stilp. Moreover, Stilp discloses a registration procedure that allows cellular devices to discover each other’s presence. (Ex. 1005, 2:46–64.) It would have been obvious for one skilled in the art to modify the payment processing network (310) or access device (e.g., a POS terminal) (Ex. 1003, 4:61–61[2]) of Carlson to include the process of searching for available wireless devices in a manner similar to the cellular telephone discovery and registration process disclosed by Stilp to enable the Carlson payment processing network or access device to discover mobile phone devices (such as mobile phone 304) to participate in a mobile payment system, as disclosed in Carlson. A person of ordinary skill in the art therefore would have combined Carlson and Stilp to make the” slip op. at 8

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

    “Anticipation by Hughes A prior art reference anticipates a patent claim if it “discloses each and every element of the claimed invention arranged or combined in the same way as in the claim.” Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336, 1342–43 (Fed. Cir. 2018) (internal quotation and citation omitted). Petitioner contends that Hughes discloses each and every element of claims 12–17. Pet. 23–31.” slip op. at 11

  Patent outcomesUS 8,744,963 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,744,963
• Askeladden LLC v. Purple Leaf, LLCAll claims unpatentable
  PTAB · Feb 13, 2018 · IPR2016-01721 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–11 are unpatentable: claims 10–11 anticipated by Sirbu; claims 1–9 obvious over the specified combinations of Sirbu with Hughes and additional references.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “December 14, 1999, would have had either: “(i) a Bachelor-of-Science degree in Computer Science, Electrical Engineering, or Computer Engineering, or equivalent, and two (2) years of prior experience in software development, or (ii) a post-graduate degree in Computer Science, Electrical Engineering, or Computer Engineering, or equivalent.” Pet. 6 (citing Ex. 1502 ¶¶ 22–26). Because it is consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 7

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

    “construed according to their broadest reasonable interpretation in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). There is a presumption that claim terms are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art in the context of the specification. See In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Nonetheless, if the specification “reveal[s] a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess[,] . . . the inventor’s lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). Another exception to the general rule that claims are given their ordinary and customary meaning is “when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Uship Intellectual Props., LLC v. United States, 714 F.3d 1311, 1313 (Fed. Cir. 2013) (quoting Thorner v. Sony Computer Entm’t Am., LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Although Petitioner proposes that we construe the term “receipt” (Pet. 6), we determine that no express construction is necessary for purposes of this Decision and decline to expressly construe the term. See Vivid Techs., 200 F.3d at 803 (only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy).” slip op. at 6

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

    “Anticipation by Sirbu A prior art reference anticipates a patent claim if it “discloses each and every element of the claimed invention arranged or combined in the same way as in the claim.” Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336, 1342–43 (Fed. Cir. 2018) (internal quotation and citation omitted). Petitioner contends that Sirbu discloses each and every element of claims 10 and 11. Pet. 6–12.” slip op. at 8

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

    “Additionally, Petitioner asserts: One of ordinary skill in the art plainly would have recognized to include built-in cellular telephone functionality in a customer terminal for performing payment transactions, as taught in Hughes, in the customer computer 10 of Sirbu, as doing so would “provide[] portability for the terminal” (Ex. 1506, 11:1–4) by eliminating the necessity of a wired terminal connection. Indeed, Hughes recognizes that by including built-in cellular telephone functionality, the terminal becomes “more portable than” an alternative without such functionality (Ex. 1506, 10:64–67). One of ordinary skill in the art would plainly have recognized the benefits of including cellular connectivity in Sirbu’s customer computer, as doing so would have permitted the user to perform Sirbu’s purchase transactions without being tethered to a wired data connection. Pet. 13 (alteration by Petitioner) (citing Ex. 1502 ¶ 86). We have reviewed Petitioner’s arguments and evidence, and we find that a preponderance of the evidence supports Petitioner’s arguments. We hereby adopt Petitioner’s position on the facts as our own, including Petitioner’s citations to the evidence of record as reflected in pages 12–20 of the Petition. Accordingly, Petitioner has demonstrated by a preponderance of the evidence that the combination of Sirbu and Hughes would have rendered the subject matter of claims 1, 3, and 6–9 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 10

  Patent outcomesUS 8,527,407 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,527,407
• Askeladden LLC v. Purple Leaf, LLCAll claims unpatentable
  PTAB · Feb 13, 2018 · IPR2016-01720 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1, 3, and 6–9 are unpatentable as anticipated by Takayama; claims 2, 4, 5, 10, and 11 are unpatentable as obvious over the stated combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Because it is consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 7

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

    “Anticipation by Takayama A prior art reference anticipates a patent claim if it “discloses each and every element of the claimed invention arranged or combined in the same way as in the claim.” Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336, 1342–43 (Fed. Cir. 2018) (internal quotation and citation omitted). Petitioner contends that Takayama discloses each and every element of claims 1, 3, and 6–9. Pet. 7–25.” slip op. at 8

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

    “reference, including a claim chart and detailed discussion explaining how the references meet each limitation of the challenged claims. Pet. 25–41. In particular, Petitioner relies upon Rolf as teaching the following step of claim 10: “presenting the receipt to the payee without revealing at least part of said structured remittance data.” Ex. 1001, 20:43–44; Pet. 25–28, 34. Additionally, Petitioner asserts: One of ordinary skill in the art plainly would have recognized to modify Takayama such that the merchant terminal displays (i.e., presents), instead of or in addition to the clearing completion notification 8418, the receipt message 8419 (which contains the receipt 13708) on the merchant terminal LCD, based on the teachings of Rolf, as doing so would have provided the payee with additional information “relating to the sale just made”, as taught by Rolf (Ex. 1004, 6:7–14). Indeed Takayama already discloses that the displayed information on the merchant terminal is used “to notify the operator (merchant) that the settlement process has been completed” (Ex. 1003, ¶ 813), and by further displaying the information contained within the receipt message 8419 (such as the clearing number 13703 and transaction number 13704), the payee could have had immediate access to such transaction information for additional verification or review.” slip op. at 11

  Patent outcomesUS 8,527,407 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,527,407

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.