• Restem, LLC. v. Jadi Cell, LLCNo claims unpatentable
  PTAB · Apr 18, 2023 · IPR2021-01535 · APJ Devon Zastrow Newman · IPR · Final written decision

  Claims 1–15 were not proven unpatentable: Majore did not anticipate claims 1–13 and 15, and the asserted obviousness combinations did not establish the claimed limitations.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Ex. 1007 ¶¶ 132, 133. Importantly, however, Dr. Olson does not cite anything to support his opinion that the ordinary artisan would have known that MSCs could be cultured to be renewable from subepithelial UC tissue. Nor does Dr. Olson explain why the artisan would have had this understanding aside from simply stating it. Majore uses the word “subepithelial” only once to explain that primitive stem cells are “distributed in subepithelial and intervascular regions,” but this does not teach what Dr. Olson asserts. Accordingly, Dr. Olson’s testimony is entitled to little weight. Xerox Corp., IPR2022-00624, Paper 9 at 15–16 (finding that an expert’s conclusory assertions that repeat the proposition for which they are offered without “any additional supporting evidence or provide any technical reasoning” in support are “conclusory and unsupported, add[] little to the conclusory assertion[s] for which [they are] offered to support, and is” slip op. at 52

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “21 The parties do not dispute that the preamble’s recitation of “isolated cell” serves as a limitation to claim 1 as it provides antecedent basis for its recitation later in the body of the claim. Accordingly, we treat the preamble as limiting. “When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003).” slip op. at 31

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

    “[JUDGE NEWMAN:] So if -- if the comparison is possible, why did you not present evidence of that comparison? MR. FITZPATRICK: We --we’ve had the -- we had this discussion with our -- with our expert, and our conclusion was that it’s just not -- it wasn’t necessary. The conclusion was that the -- the evidence that’s in the -- in the prior art references, including the fact that it clearly practices the exact same steps as the claims, that was sufficient to -- and would anticipate or render obvious the claims. That’s the only reason we didn’t present evidence -- our own evidence.” slip op. at 38

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

    “Ex. 1007 ¶ 168 (alteration in original). We agree that an ordinary artisan would be motivated to look to the teachings of analogous references for information, but to establish obviousness, a party must show that “there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner has not provided sufficient rationale to explain why the ordinary artisan would have been motivated to make the isolated cell with the specific marker profile or why the artisan would have looked to the cited references themselves out of the wide range of references available in the art.” slip op. at 64

  Patent outcomesUS 9,803,176 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,803,176
• Incyte Corporation v. Concert Pharmaceuticals, Inc.No claims unpatentable
  PTAB · May 11, 2022 · PGR2021-00006 · APJ Devon Zastrow Newman · PGR · Final written decision

  The Board held claims 1–7 and 9–21 not shown unpatentable over either obviousness ground because Petitioner did not establish motivation to select Compound (I) from Silverman’s genus.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedOther

    “It is not necessary for an expert’s experience or expertise to precisely match the art at issue. SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). However, one offering expert testimony must at least have ordinary skill in the art to provide relevant and reliable testimony that is helpful to the factfinder. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022). “The Board has broad discretion to assign weight to be accorded expert testimony.” Consolidated Trial Practice Guide 35 (available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf?MURL=). Dr. Patterson has a Ph.D. in Chemistry and over 30 years of experience in drug design, drug administration, evaluation of drug effectiveness, and participated in drug design for over 20 years. Ex. 1007 ¶¶ 4–10; Ex. 1008, 1–2. He is author or co-author on over eight peer-reviewed journal articles involving medicinal chemistry. Ex. 1007 ¶ 5. We find this level of skill to meet the qualifications for the level of skill in the art under the training and experience portion of the definition we have adopted for purposes of this opinion (see § II.B.), reproduced below: a Ph.D. in chemistry, pharmaceutical sciences, molecular biology, or a similar field, or an M.D. with similar background. A POSA would also have had at least several years of experience with drug design, drug development, clinical trials, or access to other individuals with that knowledge and experience. Likewise, a POSA would have had knowledge and experience in treating hair loss disorders, or access to a person with that knowledge and experience. We note that Dr. Patterson himself also proposes this definition. Id. ¶ 102. However, Dr. Patterson does not have “knowledge and experience in treating hair loss disorders” and did not opine that, in regards to his testimony, he had access to a person with that knowledge and experience, as is proposed in the definition. See generally, Ex. 1007. Accordingly, we find Dr. Patterson qualified to opine on the level of ordinary skill with regard to issues of drug design, evaluation of effectiveness, and drug administration, but we find he is not adequately qualified to opine on the level of ordinary skill with regard to issues of treating hair loss disorders.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner proposes the same definition as Petitioner, but adds that the skilled artisan “would also have had experience in JAK inhibition, deuteration, and AA [alopecia areata] formulations, or access to a person with that knowledge and experience.” Resp. 15 (citing Ex. 2059 ¶ 14). Patent Owner’s expert Dr. Ko critiques Petitioner’s proposed definition as “incomplete, because it lacks any requirement for experience, or access to individuals with experience, in JAK inhibition, deuteration, and AA formulations.” Ex. 2059 ¶ 16. However, neither Dr. Ko nor Patent Owner explains what difference this additional direct experience would have provided to an artisan with the skill level proposed by Petitioner, particularly when Petitioner’s definition includes “experience in treating hair loss disorders,” and for which the record contains evidence that existing JAK inhibitors such as ruxolitinib had been identified as causing reversal of hair loss caused by AA. Ex. 1003, 1043. Accordingly, we adopt Petitioner’s proposed definition as consistent with the level of skill apparent in the cited prior art. In any event, as Patent Owner does not explain why its alternative definition would have any bearing on the outcome of the present case, and as we discern no appreciable difference in the parties’ definitions, we note our findings and conclusions would be the same regardless of which definition were adopted. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 11

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

    “C. Claim Construction We construe claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100. Therefore, we construe the challenged claims under the framework set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc). Under this framework, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art (“POSA”), at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id. Only those terms that are in controversy need be construed and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We have considered Petitioner’s claim construction proposals (see Pet. 21–23), which are uncontested (see generally Resp., not addressing construction), and find that it is not necessary to expressly construe any claim term for purposes of rendering this Decision.” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Applicant-admitted prior artReference not prior artDecided for patent owner

    “Section 102(b)(1) provides two exceptions to § 102(a)(1) for disclosures made within one year of the effective filing date. Specifically, 35 U.S.C. § 102(b)(1) provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art under 35 U.S.C. § 102(a)(1) with respect to the claimed invention if: (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. 35 U.S.C. § 102(b)(1).” slip op. at 16

  Patent outcomesUS 10,561,659 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,561,659
• Shenzhen Buxiang Network Technology Co., Ltd. v. Sun Pleasure Co. LimitedNo claims unpatentable
  PTAB · Apr 11, 2022 · IPR2021-00080 · APJ Patrick R Scanlon · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

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

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

  Patent outcomesUS 7,353,555 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,353,555
• Haag-Streit AG v. Eidolon Optical, LLCNo claims unpatentable
  PTAB · Dec 19, 2019 · IPR2018-01311 · APJ Eric C Jeschke · IPR · Final written decision

  Claims 1, 5, 6, 8–10, 14–16, and 19 were not shown unpatentable because the cited references did not disclose an LED itself generating blue light energy.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating that it “appear[ed] consistent with the record at th[at] stage of the proceeding.” Dec. Inst. 6. Patent Owner does not address or dispute Petitioner’s proposed definition of the level of ordinary skill in the art. See generally PO Resp.; Sur-reply. Petitioner did not further address this issue in the Reply. See generally Pet. Reply. We continue to apply Petitioner’s proposed level of ordinary skill in the art in the analysis below.” slip op. at 7

  • ExcludeOther

    “As discussed above (see supra § II.C.3.a), to resolve the dispute between the parties here, we need not make a determination one way or the other regarding Patent Owner’s assertion as to the specific amount of power necessary to cause sodium fluorescein to fluoresce. Instead, the outcome here follows from the determination that Petitioner (who has the overall burden of persuasion as to unpatentability) has not persuasively established the existence, as of February 5, 1992, of a blue LED having sufficient power output to cause sodium fluorescein to fluoresce. Accordingly, we dismiss Petitioner’s motion as to Exhibit 2014 as moot because we need not rely on that exhibit (or the specific statement highlighted by Petitioner) in this Decision. See TPG 79–80.” slip op. at 43

  • Strike new argumentNew argument disregardedDecided for patent owner

    “commercially available by CREE, Inc. in 1992” and asserts that “Patent Owner’s arguments are wrong in that blue LEDs having sufficient output power to cause sodium fluorescein to fluoresce existed in 1992 at the time of Longobardi.” Pet. Reply 28, 32. When asked, during the oral hearing, for evidentiary support for these statements, Petitioner attempted to rely on Exhibit 2024. See Tr. 13:14–14:18 (counsel for Petitioner generally discussing Exhibit 2024 as potential support). That exhibit, however, was not discussed or relied on in either of Petitioner’s briefs. Id. at 38:22–39:20 (counsel for Petitioner discussing Exhibit 2024, but also acknowledging that it was not cited in either brief). We will not further consider Petitioner’s untimely argument as to Exhibit 2024. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (noting that the “Board was obligated to dismiss [the petitioner’s] untimely argument . . . raised for the first time during oral argument”); Patent Trial and Appeal Board Consolidated Trial Practice Guide (“TPG”) 85–86 (Nov. 2019) (discussing how, at the oral hearing, a party “may only present arguments relied upon in the papers previously submitted”), available at https://www.uspto.gov/sites/default/ files/documents/tpgnov.pdf. Petitioner did not identify any other record support for the two assertions as to the alleged state of the art in 1992.” slip op. at 30

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “one of ordinary skill in the art would have understood Longobardi as implicitly disclosing the presence of a blue LED is that, as argued by Patent Owner, none of the declaration testimony of Dr. Jiao supports that position. See PO Sur-reply 5 (“Petitioner lacks evidence that Longobardi implicitly or inherently teaches an LED sufficient to generate blue light energy itself as required by claim 1. Petitioner’s expert does not testify as to this fact.” (emphasis added)), 7 (“Petitioner fails to provide any expert testimony . . . that Longobardi teaches a blue light energy created by the LED.”). Indeed, in the entire section of the Reply Brief discussing why Longobardi allegedly implicitly discloses a blue LED, Petitioner never cites to Dr. Jiao’s testimony as evidence of how one of ordinary skill in the art would have understood the highlighted passages. See Pet. Reply 18–22; see also PO Sur-reply 14 (“Petitioner’s attorney arguments that Longobardi implicitly discloses the limitation of at least one LED sufficient to generate blue light energy itself as required by claim 1 are unreasonable.”). “Attorney argument is not evidence.” Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017); see also Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1359 (Fed. Cir. 2018) (citing this aspect of Icon Health in the context of an appeal from an inter partes review). In addition, the testimony in Dr. Jiao’s Reply Declaration that is cited in Petitioner’s Reply (in the part discussing the state of the art of blue LEDs “[i]n 1992” (Pet. Reply 26)) does not actually support Petitioner on the ultimate factual issue here. See Pet. Reply 26–32 (citing Jiao Reply. Decl. ¶¶ 11–21). Instead, most of Dr. Jiao’s testimony in these paragraphs summarizes and addresses Dr. Lebby’s position on the 1-milliwatt issue (discussing Exhibits 1021 and 1022). See Jiao Reply Decl. ¶¶ 11–20. After that discussion, Dr. Jiao concludes with a paragraph taking the position that one of ordinary skill in the art “at the time of the invention would have found that Longobardi teaches and suggests the use of a blue LED having sufficient power to cause sodium fluorescein to fluoresce.” Id. ¶ 21. None of Dr. Jiao’s testimony, however, actually addresses the state of the art of blue LEDs in 1992, which, as acknowledged by Petitioner, is the relevant point in time to assess the alleged implicit disclosures in Longobardi.” slip op. at 27

  Patent outcomesUS 6,547,394 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,547,394
• St. Jude Medical, LLC v. Snyders Heart Valve LLCNo claims unpatentable
  PTAB · May 2, 2019 · IPR2018-00109 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 18 and 20 were not shown unpatentable because Leonhardt did not disclose the claimed central frame structure and the proposed Leonhardt-Johnson combination lacked adequate motivation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Factual indicators of the level of ordinary skill in the art include “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.” 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, including the asserted prior art and, for the purposes of this Final Written Decision, we adopt Petitioner’s definition.” slip op. at 9

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

    “written decision is issued shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b) (2018); see also Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2144–46 (2016) (affirming that USPTO has statutory authority to construe claims according to Rule 42.100(b)). When applying that standard, we interpret the claim language as it would be understood by one of ordinary skill in the art in light of the specification, and absent any special definition, we give claim terms their ordinary and customary meaning. See In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning that the term would have to a person of ordinary skill in the art in question.” (internal quotation marks omitted)). Only terms that are in controversy need to be construed, and then 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). Claim 1 recites that the flexible valve element is attached to the “central portion of the frame.” Patent Owner argues that “central portion of the frame” means “central structural frame portion,” which cannot refer solely to an “empty space.” PO Resp. 3–7. Patent Owner explains that, during the related litigation, Petitioner agreed that the central portion of the frame must “actually be part of the structure of the frame.” Id. at 6 (quoting Ex. 2001, 119–20). Accordingly, we discern no dispute on the issue of whether “central portion of the frame” refers to a structural portion of the frame; it does.” slip op. at 10

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

    “Petitioner’s argument that Leonhardt’s valve is attached to the central part of the frame of claim 1 fails. Leonhardt’s valve is undeniably attached to its frame because the valve is sutured or glued to stent 26. Claim 1 requires the valve element to be attached to a portion of the frame located along the radial centerline. Ex. 1001, 19:19–20. However, Leonhardt’s frame (stent 26 coupled via connecting bar 29) is a hollow cylinder devoid of structure located along its centerline. Ex. 1017, Figure 1C. Thus, regardless of how Leonhardt’s valve is attached to stent 26 and connecting bar 29, it is not attached to a structure “located along a centerline” as recited in claim 1 and thus claims 18 and 20. Therefore, we determine that Petitioner fails to establish by a preponderance of evidence that Leonhardt anticipates claims 18 and 20. 4. Summary For the reasons expressed above, we determine that Petitioner has failed to prove by a preponderance of evidence that Leonhardt anticipates claims 18 and 20.” slip op. at 14

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

    “F. CLAIMS 18 AND 20: OBVIOUSNESS BY LEONHARDT Petitioner argues that even if Leonhardt fails to describe elements as claimed, an ordinarily skilled artisan would consider that “variations” of Leonhardt to meet the claimed limitations would have been obvious “in view of the general knowledge in the art and the limited number of ways of using known elements to achieve expected results.” Pet. 42. Petitioner also argues that “[a]s these are method claims, and not device claims, even if the valve device were somehow unobviously different, which it is not, that difference should be given minimal weight in evaluating the obviousness of the method.” Id. at 44. Petitioner cites no authority for this proposition, and we are aware of none. Claims 18 and 20 are directed to a “transluminal method of inserting an artificial valve as set forth in claim 1.” Id. at 21:1–25 (claim 18), 21:31– 50 (claim 20). Each time claims 18 and 20 refer to an “artificial valve” steps of the recited methods, they refer to the valve set forth in claim 1. None of Petitioner’s arguments persuasively addresses Leonhardt’s failure to describe a flexible valve element attached to a central portion of the frame located along a centerline. See Part II.E. Accordingly, we conclude that Petitioner has failed to prove by a preponderance of evidence that Leonhardt alone renders claims 18 and 20 unpatentable as obvious.” slip op. at 14

  Patent outcomesUS 6,821,297 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,821,297
• Snap-On Inc. v. Milwaukee Electric Tool CorporationNo claims unpatentable
  PTAB · Nov 14, 2016 · IPR2015-01244 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1–8, 10, and 11 of the ’290 patent, claims 1–8 and 10–13 of the ’173 patent, and claims 1–6 and 8–19 of the ’510 patent were not shown unpatentable under § 103 over Fohr, …

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “B. Level of Ordinary Skill in the Art We hold that the prior art references asserted in the Petition are representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (absence of specific findings on “level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). To the extent that a more specific definition is required, we hold that an ordinary artisan would include one holding a Bachelor’s Degree in Electrical Engineering with two or three years of experience in battery design. That definition comports with the very similar definitions advanced by the parties. In that regard, Petitioner asserts that an ordinary artisan would encompass a person holding a Bachelor’s Degree in Electrical Engineering with three years of experience in battery design. Pet. 8; Ex. 1007 ¶ 9. Patent Owner similarly asserts that an ordinary artisan would include a person holding a Bachelor’s Degree in Electrical Engineering with two years of battery design experience. Resp. 8; Ex. 2105 ¶ 24.” slip op. at 9

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

    “given its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In our Decisions to Institute, we construed the 20 Amp Limitation to require that “the battery cells, when configured together in a battery pack, are capable of producing reasonably close to 20 amps of discharge current or greater over the course of delivering their entire rated capacity.” Dec. 5. Neither party disputes that construction, which we adopt for the purposes of this Final Written Decision. To the extent that any other claim term requires express construction, we discuss the construction in our analysis below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need be construed, and then only to the extent necessary to resolve the controversy). The following facts are supported by a preponderance of the evidence.” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Not reached

    “D. Fohr as Prior Art As an initial matter, the parties dispute whether Fohr qualifies as prior art. Resp. 10–15; Reply 2–8; Sur-Reply 1–5. Specifically, Patent Owner seeks to antedate Fohr based on inventor testimony. Resp. 10–15; Sur- Reply 1–5. Petitioner responds that the named inventors are not true inventors with standing to establish facts sufficient to antedate Fohr. Reply 2–8. We decline to reach the antedating issue because it is not necessary to our ultimate conclusion on the question of obviousness. Specifically, even if we accept Petitioner’s view that Fohr qualifies as prior art, we ultimately hold that Petitioner fails to establish by a preponderance of the evidence that any challenged claim would have been obvious over the combined disclosures of Fohr, Sato, and Hallaj. That is so because, as explained below, Petitioner fails to establish that one of ordinary skill in the art would have been led to combine Fohr with Sato and Hallaj in the manner claimed.” slip op. at 10

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

    “We recognize that it may be necessary “to look to interrelated teachings of multiple patents . . . in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed.” KSR Int’l, 550 U.S. at 418. Petitioner in these proceedings, however, directs us to no persuasive reason why an ordinary artisan would have turned to the heat-retaining battery module of Hallaj when working to implement a plurality of Sato’s cells in a pack to replace the capacitors in Fohr. Pet. 36–38 (nowhere addressing that critical point); Reply 13 (devoting four sentences to rebuttal of Patent Owner’s persuasive evidence that one would not have combined the disclosures of Hallaj, Fohr, and Sato in the manner claimed); see Ex. 1033, 15 (Examiner’s observation, in confirming the patentability of the challenged claims during reexamination, that Sato contains “no information as to how Sato’s cells would be implemented in a pack”). We view Petitioner’s unexplained leap from the single battery cell of Sato to the heat-retaining battery module of Hallaj as a classic example of impermissible hindsight reconstruction driven not by any teaching in the prior art, but by the claim requirement of a “plurality” of cells implemented in a battery pack. Pet. 36–38; Reply 13. Patent Owner, by contrast, comes forward with persuasive evidence, which we credit, showing that one of ordinary skill in the art would not have been led to arrange a plurality of Sato’s cells in the heat-retaining battery module of Hallaj because such a modified battery pack would have been unsuitable for use as a replacement for the capacitors in Fohr. Specifically, we credit the testimony of Dr. Blomgren, who cogently explains why a person of ordinary skill in the art would not have been led to the proposed modification. Ex. 2147 ¶¶ 79–85. Dr. Blomgren explains that the proposed modified battery pack “would not have adequate heat dissipation and the Joule heating naturally occurring during operation” of such a pack “would lead to overheating and cell failure” in a power tool application. Resp. 24 (citing Ex. 2147 ¶ 84). That testimony is consistent with the Examiner’s observation, made during reexamination, that “the discharge rates described in Sato are abnormally high” for a power tool cell and “would lead to overheating of the cells.” Ex. 1033, 14. That testimony also is consistent with information provided by Petitioner’s own witness, Dr. Riley, who acknowledged on cross-examination that the battery pack of Fohr, as modified by Sato and Hallaj, would provide “the heat back to the system after a discharge” and, accordingly, would have no “practical applicability” in a power tool application. Resp. 24 (quoting Ex. 2169, 127:13–18, 131:12–24); see Ex. 2169, 127:9–128:2 (Petitioner’s own witness, Dr. Riley, further explaining that Hallaj is concerned with finding “a way of managing heat generation” in a power supply so that “heat can be used, pulled back into the batteries”). We credit Dr. Blomgren’s testimony that the “storing of heat” in Hallaj would have been “antithetical to” Sato’s lithium-based chemistry cells for use as the energy store in Fohr’s hand held power tool. Ex. 2147 ¶ 83. Petitioner’s own witness, Dr. Riley, provides testimony consistent with that view. Resp. 24 (citing Ex. 2169, 12713–18, 131:12–24) (Dr. Riley’s testimony on cross-examination); see Ex. 2147 ¶¶ 81–85 (Dr. Blomgren’s declaration testimony). That view is reinforced by evidence that the discharge rates supported by Hallaj are orders of magnitude lower than what would have been expected for a battery cell meeting the 20 Amp Limitation. Resp. 25; Pet. 38; Ex. 1015, 5:41-44; Ex. 2147 ¶¶ 79–80; see Ex. 1015, 5:41–44 (Hallaj, describing temperature profiles for discharge rates). We are persuaded that the heat-retaining battery module of Hallaj was not designed to handle, in a power tool application, the discharge currents disclosed for Sato’s individual lithium-based battery cell—much less the discharge currents that would be supplied by a plurality of Sato’s cells. Resp. 25 (citing Ex. 2147 ¶¶ 81, 84); see also Ex. 2147 ¶¶ 62–85 (testimony explaining why one of ordinary skill in the art would not have applied a plurality of Sato’s cells in the battery pack configuration of Hallaj to power Fohr’s hand held power tool). We further find that one of ordinary skill in the art would not have been led to replace the capacitors in Fohr’s power tool with Hallaj’s battery module, modified to include a plurality of Sato’s lithium-based cells. Ex. 2147 ¶¶ 62–85. That combination would have presented a serious risk of overheating and, in light of that risk, an ordinary artisan would not have expected the modified battery pack of Hallaj to successfully power Fohr’s hand held power tool. Id.” slip op. at 17

  Patent outcomesUS 7,999,510 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,999,510
• Snap-On Inc. v. Milwaukee Electric Tool CorporationNo claims unpatentable
  PTAB · Nov 14, 2016 · IPR2015-01242 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Petitioner did not prove claims 1–8, 10, and 11 of the ’290 patent, claims 1–8 and 10–13 of the ’173 patent, or claims 1–6 and 8–19 of the ’510 patent obvious over Fohr, Sato, and …

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “B. Level of Ordinary Skill in the Art We hold that the prior art references asserted in the Petition are representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (absence of specific findings on “level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). To the extent that a more specific definition is required, we hold that an ordinary artisan would include one holding a Bachelor’s Degree in Electrical Engineering with two or three years of experience in battery design. That definition comports with the very similar definitions advanced by the parties. In that regard, Petitioner asserts that an ordinary artisan would encompass a person holding a Bachelor’s Degree in Electrical Engineering with three years of experience in battery design. Pet. 8; Ex. 1007 ¶ 9. Patent Owner similarly asserts that an ordinary artisan would include a person holding a Bachelor’s Degree in Electrical Engineering with two years of battery design experience. Resp. 8; Ex. 2105 ¶ 24.” slip op. at 9

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

    “In our Decisions to Institute, we construed the 20 Amp Limitation to require that “the battery cells, when configured together in a battery pack, are capable of producing reasonably close to 20 amps of discharge current or greater over the course of delivering their entire rated capacity.” Dec. 5. Neither party disputes that construction, which we adopt for the purposes of this Final Written Decision. To the extent that any other claim term requires express construction, we discuss the construction in our analysis below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need be construed, and then only to the extent necessary to resolve the controversy). The following facts are supported by a preponderance of the evidence.” slip op. at 10

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached

    “D. Fohr as Prior Art As an initial matter, the parties dispute whether Fohr qualifies as prior art. Resp. 10–15; Reply 2–8; Sur-Reply 1–5. Specifically, Patent Owner seeks to antedate Fohr based on inventor testimony. Resp. 10–15; Sur- Reply 1–5. Petitioner responds that the named inventors are not true inventors with standing to establish facts sufficient to antedate Fohr. Reply 2–8. We decline to reach the antedating issue because it is not necessary to our ultimate conclusion on the question of obviousness. Specifically, even if we accept Petitioner’s view that Fohr qualifies as prior art, we ultimately hold that Petitioner fails to establish by a preponderance of the evidence that any challenged claim would have been obvious over the combined disclosures of Fohr, Sato, and Hallaj. That is so because, as explained below, Petitioner fails to establish that one of ordinary skill in the art would have been led to combine Fohr with Sato and Hallaj in the manner claimed.” slip op. at 10

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

    “1. Fohr Does Not Disclose or Suggest the 20 Amp Limitation We find that Fohr suggests a plurality of capacitors or battery cells as the energy store. Ex. 1014 ¶¶ 9, 17. Fohr discloses that a plurality of capacitors would have been capable of achieving a continuous current capacity from 20 to 30 amps. Id. at ¶¶ 8, 19. Although Fohr teaches that the capacitors “can advantageously alternatively be replaced by an energy store comprising rechargeable cells,” such as “Li rechargeable batteries,” Fohr does not disclose or suggest an energy store capacity for such batteries, much less establish that lithium batteries, available at the time of the invention, would have been suitable for use in a hand held power tool, or capable of achieving the 20 Amp Limitation of the challenged claims. Id. at ¶ 9. Critical to our analysis, Fohr never states what discharge currents can be achieved when lithium battery cells are used instead of capacitors as the energy source in a hand held power tool. Ex. 2147 ¶¶ 42, 58; see generally Ex. 1014 (Fohr). The Examiner, during reexamination, came to that exact same conclusion regarding Fohr’s disclosure, remarking that “there is nothing whatsoever in the reference that indicates the current produced by any lithium-based cells.” Ex. 1033, 11;5 Resp. 17.” slip op. at 12

  Patent outcomesUS 7,554,290 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,554,290
• TRW Automotive US LLC v. Magna Electronics IncorporatedNo claims unpatentable
  PTAB · Jun 25, 2015 · IPR2014-00251 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1, 8, 9, 18, 29, 30, 54, 62–64, and 70 were not shown unpatentable because the asserted references did not establish required control limitations.

  RulingsFinal written decision

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

    “These contentions by Dr. Miller, however, are conclusory statements not supported sufficiently by any objective evidence or analysis and, thus, are not persuasive. See Perreira v. Dep’t of Health and Human Serv., 33 F.3d 1375, 1377 n.6 (Fed. Cir. 1994) (“An expert opinion is no better than the soundness of the reasons supporting it.”). Dr. Miller does not point to any specific disclosure in Yanagawa indicating that use of a microprocessor (as opposed to another type of device) is “crystal clear.” Moreover, there is no explanation why digital processing necessarily requires the use of a microprocessor. Instead, we are persuaded by Patent Owner’s argument that Yanagawa provides insufficient detail as to the structure and functionality of its image signal processor 14 and executing part 15, and that the two components “could be analog circuitry-based or digital circuitry-based without necessarily employing or being based upon a microprocessor.” PO Resp. 20 (citing Ex. 2003 ¶ 41). Generally, microprocessors are distinguished from other processors in that they are contained on an integrated chip. See, e.g., DICTIONARY OF COMMUNICATIONS TECHNOLOGY: TERMS, DEFINITIONS AND ABBREVIATIONS, WILEY (John Wiley & Sons Ltd. 1998), available at http://search.credoreference.com/content/entry/wileycommtech/microproces sor/0 (last visited June 17, 2015) (defining “microprocessor” as “[a]n electronic circuit on the surface of a small silicon chip which can be programmed to perform a wide variety of functions within the computer system or terminal”).5 Neither Petitioner nor Dr. Miller addresses how Yanagawa’s image signal processor 14 and/or executing part 15 constitute a microprocessor-based control in this sense.” slip op. at 11

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

    “We are not persuaded by Petitioner’s arguments. In instituting trial on this ground, we found that Petitioner had demonstrated a reasonable likelihood that Yanagawa’s image signal processor 14 is the same or equivalent to the corresponding structure of the “control means” in the ’023 patent, i.e., digital signal processor 13 performing the algorithm identified in our claim construction. Dec. on Inst. 15. In view of the entire record, however, we now are persuaded Petitioner fails to show that image signal processor 14 performs an algorithm equivalent to the algorithm implemented by digital signal processor 13 of the ’023 patent. Petitioner’s assertions of similarities in how the controls of Yanagawa and the ’023 patent operate are insufficient to establish, by a preponderance of the evidence, that Yanagawa’s processor implements an equivalent algorithm, particularly given that there is no evidence that Yanagawa processes image data pixel-by-pixel or uses counters, as required by multiple steps of the disclosed algorithm, such as steps 2 through 6. See Dec. on Inst. 9–10. In that regard, we have reviewed the disclosure of Yanagawa and credit Dr. Turk’s explanation as to why the reference does not disclose steps 2 through 6 specifically, or even pixel light thresholds, pixel light counters, or comparing adjacent pixel light levels generally. See Ex. 2003 ¶¶ 62–64. Absent some comparison between the algorithm of Yanagawa and the steps of the algorithm disclosed in the ’023 patent, we cannot say that Yanagawa discloses structure equivalent to the “control means” in claim 1. It is not enough to show merely that Yanagawa, at a high level, operates in “substantially the same way” as the ’023 patent to identify headlights and taillights, as Petitioner suggests. See Reply 9. After considering Petitioner’s and Patent Owner’s positions, as well as their supporting evidence, we determine that Petitioner has not shown, by a preponderance of the evidence, that claim 1, or claims 8 and 9 depending therefrom, are unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of Yanagawa, AAPA, Bendell, and Koshizawa.” slip op. at 16

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “These contentions by Dr. Miller, however, are conclusory statements not supported sufficiently by any objective evidence or analysis and, thus, are not persuasive. See Perreira v. Dep’t of Health and Human Serv., 33 F.3d 1375, 1377 n.6 (Fed. Cir. 1994) (“An expert opinion is no better than the soundness of the reasons supporting it.”). Dr. Miller does not point to any specific disclosure in Yanagawa indicating that use of a microprocessor (as opposed to another type of device) is “crystal clear.” Moreover, there is no explanation why digital processing necessarily requires the use of a microprocessor. Instead, we are persuaded by Patent Owner’s argument that Yanagawa provides insufficient detail as to the structure and functionality of its image signal processor 14 and executing part 15, and that the two components “could be analog circuitry-based or digital circuitry-based without necessarily employing or being based upon a microprocessor.” PO Resp. 20 (citing Ex. 2003 ¶ 41).” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). In the Petition, Petitioner proposed that a person having ordinary skill in the art of the ’023 patent at the time of the invention would have had at least the qualifications of, or equivalent to, either (1) a master’s degree in electrical engineering or computer science, with course work or research in vision systems, or (2) an undergraduate degree in electrical engineering or computer science with at least two years of work making optical vision systems. Pet. 25. Patent Owner argued that this definition was incorrect because it failed to make any mention of expertise in vehicle technologies. Prelim. Resp. 16. In our Decision on Institution, we found Patent Owner’s argument unpersuasive because Patent Owner did not explain how the allegedly incorrect definition led to an incorrect obviousness analysis. Dec. on Inst. 17–18. The parties have not disputed this definition further, and we see no reason to modify it in light of the record developed during trial. Therefore, we adopt the above-mentioned definition of a person having ordinary skill in the art for the purposes of this Final Written Decision.” slip op. at 13

  Patent outcomesUS 6,097,023 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,097,023

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.