• Bluebird Bio, Inc. v. Sloan Kettering Institute For Cancer ResearchNo claims unpatentable
  PTAB · Apr 22, 2024 · IPR2023-00074 · APJ Sheridan K Snedden · IPR · Final written decision

  Claims 1, 2, 5–8, 11, and 15 were not shown unpatentable because the cited May references did not sufficiently disclose or guide a skilled artisan to the claimed LCR fragments.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petitioner’s description of the level of ordinary skill in the art. See PO Resp. Because Petitioner’s uncontested definition of one of ordinary skill in the art is reasonable and consistent with the ’061 patent and the prior art of record, we adopt Petitioner’s definition for purposes of this Decision.” slip op. at 8

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

    “Petitioner states that “that no term of the ’061 patent requires construction to resolve the challenges in this Petition.” Pet. 25 (citing Ex. 1002 ¶¶ 50–51) (footnote omitted). Patent Owner does not argue for any express claim constructions. See PO Resp. Based upon our review of the current record, we determine that no claim terms require express construction for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, construed, “and only to the extent necessary to resolve the controversy.”).” slip op. at 8

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

    “represents the inventors’ own work, and thus the May Thesis is not prior art to the ’061 patent. PO Resp. 14–15. The May Thesis is authored by Chad May, who is a listed inventor of the ’061 patent. Id.; Ex. 1004, 3; Ex. 1001, code (75). Thus, the May Thesis represents the work of one of the ’061 inventors and is therefore ineligible as prior art under 35 U.S.C. § 102(a) based on the July 1, 2002 priority date. See, e.g., In re Katz, 687 F.2d 450, 454–455 (CCPA 1982) (a prior publication by inventors or a subset of the inventors does not qualify as prior art under 102(a)). With respect to 35 U.S.C. § 102(b), we find that the May Thesis is ineligible as prior art, even assuming that the Challenged Claims are not entitled to receive benefit of an earlier filing date. Petitioner provides evidence that the May Thesis was publicly available as of November 26, 2001. Pet. 17 (citing Ex. 1036 ¶¶ 1–26; Ex. 1002 ¶ 60). Patent Owner does not dispute that evidence. Based on the undisputed November 26, 2001 public availability date, the May Thesis represents a disclosure less than one year before the asserted effective filing date, i.e., July 1, 2002. Based on that timing and because the disclosure was made by the inventor, the May Thesis is not available as prior art to the Challenged Claims under 35 U.S.C. §102(b).” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “summarized above, we determine that the May Article fails to disclose the restriction sites surrounding the BstXI and SnaBI HS2-, BamHI and HindIII HS3-, or BamHI and BanII HS4-spanning nucleotide fragments, as required by the challenged claims. According to Petitioner, that limitation is inherently disclosed by the May Article’s description of the lengths of the HS2, HS3, and HS4 fragments in the TNS9 vector and its depiction of those fragments on a map of the LCR. Pet. 28. To support its inherency argument, Petitioner relies on knowledge in the art, i.e., the availability of the entire map of the LCR region, and the availability of restriction enzymes, including BstX1, SnaBI, BamHI, HindIII, and BanII. Id. at 39–40 (citing Kennametal, 780 F.3d at 1381–83). Based on that combined information, Petitioner contends that a POSA would “have been able to map all of the possible restriction sites in the regions flanking the cores of HS2, HS3, and HS4.” Id. Petitioner asserts further that “[g]iven the May Article’s disclosure regarding the size and location of TNS9’s HS2, HS3, and HS4 fragments, a POSA would have placed these fragments onto the restrictionsite map of the LCR” that was available at the time, and would have identified only six possible combinations of restriction enzyme fragments, including the one recited in claim 1. Id. Upon closer inspection, however, we appreciate from the testimony of Petitioner’s declarant, Dr. Bungert, that the process involved in arriving at those six possible combinations is predicated on numerous assumptions guiding a number of exacting steps to be performed in order to achieve the the claimed LCR fragment would have involved the steps of (a) placing fragments that are the disclosed size of the HS2, HS3, and HS4 fragments from the TNS9 vector in the May Article onto the known restriction-site map of the LCR; (b) comparing those fragments to the “‘drawn to scale’ map” in the May Article; and then (c) identifying various fragments and determining which ones are consistent with the May Article’s description and match up with the fragments on the May Article’s drawn to scale map. Ex. 1002 ¶¶ 143–156. To identify the fragments consistent with the May Article’s description, it was necessary for Dr. Bungert to use certain assumptions that exclude unfavorable enzymes, such as using a range of ± 20 bp in order to identify fragments with lengths that are within 20 bp of the fragments reported in the May Article. Id. In view of the number of assumptions and steps required to get from what is disclosed in the May Article to arrive at the alleged “six possible LCRs (i.e., combination of HS2, HS3, and HS4 fragments based on the TNS9 LCR disclosed in the May Article)—including the LCR recited in claim 1,” Ex. 1002 ¶ 156, we do not find that Petitioner has demonstrated that fragments having the restriction sites recited in claim 1 would have been “at once envisaged” by a skilled artisan as argued by Petitioner. Pet. 39–40.” slip op. at 16

  Patent outcomesUS 8,058,061 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,058,061
• Bluebird Bio, Inc. v. Sloan Kettering Institute For Cancer ResearchNo claims unpatentable
  PTAB · Apr 22, 2024 · IPR2023-00070 · APJ Sheridan K Snedden · IPR · Final written decision

  Claims 1, 10, 19, and 22 were not shown unpatentable because the May Thesis was not prior art and the May Article and May Abstract did not establish the claimed LCR fragments.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petitioner’s description of the level of ordinary skill in the art. See PO Resp. Because Petitioner’s uncontested definition of one of ordinary skill in the art is reasonable and consistent with the ’179 patent and the prior art of record, we adopt Petitioner’s definition for purposes of this Decision.” slip op. at 8

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

    “Based upon our review of the current record, we determine that no claim terms require express construction for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (Only those terms that are in controversy need be construed, “and only to the extent necessary to resolve the controversy.”).” slip op. at 8

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “the ’179 patent. Id.; Ex. 1004, 3; Ex. 1001, code (75). Thus, the May Thesis represents the work of one of the ’179 inventors and is therefore ineligible as prior art under 35 U.S.C. § 102(a) for challenged claims 1, 19, and 22. See, e.g., In re Katz, 687 F.2d 450, 454–455 (CCPA 1982) (a prior publication by inventors or a subset of the inventors does not qualify as prior art under 102(a)). With respect to 35 U.S.C. § 102(b), we find that the May Thesis is ineligible as prior art, even assuming that claims 1, 19, and 22 are not entitled to receive benefit of an earlier filing date. Petitioner provides evidence that the May Thesis was publicly available as of November 26, 2001. Pet. 17 (citing Ex. 1036 ¶¶ 1–26; Ex. 1002 ¶ 60). Patent Owner does not dispute that evidence. Based on the undisputed November 26, 2001 public availability date, the May Thesis represents a disclosure less than one year before the asserted effective filing date, i.e., the July 1, 2002, for claims 1, 19, and 22 challenged with this reference. Based on that timing and because the disclosure was made by the inventor, the May Thesis is not available as prior art to challenged claims 1, 19, and 22 under 35 U.S.C. §102(b). Petitioner has not established that the May Thesis is prior art to claims” slip op. at 11

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

    “summarized above, we determine that the May Article fails to disclose the restriction sites surrounding the BstXI and SnaBI HS2-, BamHI and HindIII HS3-, or BamHI and BanII HS4-spanning nucleotide fragments, as required by the challenged claims. According to Petitioner, that limitation is inherently disclosed by the May Article’s description of the lengths of the HS2, HS3, and HS4 fragments in the TNS9 vector and its depiction of those fragments on a map of the LCR. Pet. 28. To support its inherency argument, Petitioner relies on knowledge in the art, i.e., the availability of the entire map of the LCR region, and the availability of restriction enzymes, including BstX1, SnaBI, BamHI, HindIII, and BanII. Id. at 30–31 (citing Kennametal, 780 F.3d at 1381–83). Based on that combined information, Petitioner contends that a POSA would “have been able to map all of the possible restriction sites in the regions flanking the cores of HS2, HS3, and HS4.” Id. Petitioner asserts further that “[g]iven the May Article’s disclosure regarding the size and location of [TNS9’s] HS2, HS3, and HS4 fragments, a POSA would have placed these fragments onto the restrictionsite map of the LCR” that was available at the time, and would have identified only six possible combinations of restriction enzyme fragments, including the one recited in claim 1. Id. Upon closer inspection, however, we appreciate from the testimony of Petitioner’s declarant, Dr. Bungert, that the process involved in arriving at those six possible combinations is predicated on numerous assumptions guiding a number of exacting steps to be performed in order to achieve the claimed LCR fragment. According to Dr. Bungert, the process for making the claimed LCR fragment would have involved the steps of (a) placing fragments that are the disclosed size of the HS2, HS3, and HS4 fragments from the TNS9 vector in the May Article onto the known restriction-site map of the LCR; (b) comparing those fragments to the “‘drawn to scale’ map” in the May Article; and then (c) identifying various fragments and determining which ones are consistent with the May Article’s description and match up with the fragments on the May Article’s drawn to scale map. Ex. 1002 ¶¶ 112–117. To identify the fragments consistent with the May Article’s description, it was necessary for Dr. Bungert to use certain assumptions that exclude unfavorable enzymes such as using a range of ± 20 bp in order to identify fragments with lengths that are within 20 bp of the fragments reported in the May Article. Id. In view of the number of assumptions and steps required to get from what is disclosed in the May Article to arrive at the alleged “six possible LCRs (i.e., combination of HS2, HS3, and HS4 fragments based on the TNS9 LCR disclosed in the May Article)—including the LCR recited in claim 1,” Ex. 1002 ¶ 117, we do not find that Petitioner has demonstrated that fragments having the restriction sites recited in claim 1 would have been “at once envisage[d]” by a skilled artisan as argued by Petitioner. Pet. 30–31.” slip op. at 16

  Patent outcomesUS 7,541,179 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,541,179
• 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
• Abs Global, Inc. / Genus, PLC v. Cytonome/St, LLCNo claims unpatentable
  PTAB · Apr 28, 2022 · IPR2021-00088 · APJ James A Worth · IPR · Final written decision

  Claims 1, 2, 6, 8, and 9 were not shown unpatentable because Simonnet disclosed split sample streams, and Petitioner did not adequately show a reason to modify it to form a single stream.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “focused split sample typically would not allow two cells to arrive at the inspection region at once, because there is not enough space for two 10-μm cells to travel side by side.” See Ex. 1054 ¶ 21 (citing Ex. 1005, 5662) (emphasis added). The qualifier “typically” for two cells not arriving at the same time does not indicate that there would be no split stream. And Dr. Issadore seems to concede there could be a split sample. Id. Further, Dr. Issadore does not state which dimensions of which of Simonnet’s channels that he is using as a reference.27 We determine that Dr. Issadore provides insufficient evidence and reasoning for an understanding that there would be a single stream if mammalian cells were used, in addition to making a statement that stops short of that conclusion. Although not argued by Petitioner nor discussed by Dr. Issadore, Simonnet does state: “we expect the HTD to be compatible with cells up to ~15 µm in size.” Ex. 1005, 5662. Simonnet also states: “We expect that with the improvements in optics and detection electronics, a cytometry system based on the HTD would match the throughput, sensitivity, and accuracy of commercial flow cytometers and would be an adequate tool for assaying fluorescently marked live cells.” Id. These statements can be fairly read as a statement of reasonable expectation of success of using mammalian cells in the device. However, Simonnet is silent as to whether the mammalian cells would be in a single stream, and if anything, Simonnet appears to be inviting further experimentation. Accordingly, Petitioner has not provided adequate reasoning to modify Simonnet to form a single sample stream.” slip op. at 52

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision on Institution, we set forth our preliminary determination that a person of ordinary skill in the art at the relevant time would have had a bachelor’s or master’s degree in the field of bioengineering, mechanical engineering, chemical engineering, or analytical chemistry, or a related field and at least three years of experience in designing or developing microfluidic systems. See Dec. 10–11. Patent Owner does not dispute this definition. See PO Resp. 4. 6 The parties do not present or address objective evidence of non-obviousness in this proceeding. After considering all evidence and arguments anew, we determine that it is proper to maintain our definition of the level of skill in the art.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “sheath flow does not mean that “focusing” requires sheath flow. In other words, the Specification does not contain a definition of “focusing” that defines “focusing” as requiring “sheath flow.” As discussed above, the Specification does state “focusing (e.g., constricting).” See also Tr. 41:22– 42:8 (discussing the Specification of the ’439 patent). Whether or not this disclosure rises to the level of a definition, it indicates that focusing is understood to be constricting and does not mention “sheath flow.” Although sheath flow may, in certain cases, be a natural result of having multiple fluid focusing features (see Ex. 1001, 14:6), the claim itself does not require that focusing include sheath flow.11 11 In terms of resolving the dispute between the parties, the real question appears to be whether the sample stream that exits the focusing region must be a single sample stream or whether it may encompass split sample streams, a question that we address in the next subsection. Patent Owner’s ultimate argument appears to be that “focusing” requires a single sample stream because “focusing” requires sheath flow and sheath flow requires a single sample stream. However, we agree with Petitioner that persons of ordinary skill could still refer to split streams as having “sheath flow” (see Ex. 1054 ¶ 11; Ex. 1043, 2215, Fig. 10 and caption (“separated two-sample 3D sheath flow”); Ex. 1044, 2 (“multiple core-sheath flow”), and therefore, even if we agreed with Patent Owner that focusing requires sheath flow, that would not clarify whether “focusing” precludes split sample streams. In any event, we conclude that focusing does not require sheath flow. We recognize that there are examples in the Specification where there is sheath flow. E.g., Ex. 1001, 5:30–32 (“Certain embodiments described herein relate [to] systems and methods for producing a sheath flow . . .”), 10:35–37 (“The illustrated core stream forming geometry 400 provides improved sheath flow capabilities and thus improved sample focusing capabilities.”). However, case law generally counsels against importing limitations from the Specification into the claims. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1323 (“To avoid importing limitations from the specification into the claims, it is important to keep in mind that the purposes of the specification are to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so.”).12 We, therefore, do not import “sheath flow” into the definition of focusing.” slip op. at 16

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

    “Therefore, we construe “the sample stream” in the claim phrase “configured to focus the sample stream” to refer to a singular stream. c) Conclusion as to “focusing” and “configured to focus the sample stream” We maintain our construction of “focusing” as “pinching, confining, squeezing, or constricting” and decline to import additional requirements such as sheath flow into the term “focusing.” Nevertheless, we construe “the sample stream” in the claim phrase “configured to focus the sample stream” to refer to a singular stream.” slip op. at 28

  Patent outcomesUS 10,583,439 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,583,439
• 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
• Johns Manville Corporation / Johns Manville, Inc. v. Knauf Insulation, Inc. And Knauf Insulation SPRLNo claims unpatentable
  PTAB · May 8, 2017 · IPR2016-00130 · APJ Scott A Daniels · IPR · Final written decision

  The sole claim was not shown unpatentable under the instituted § 103 and § 102 grounds because the brochures did not create the same visual impression or anticipate the claimed design.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDenied

    “The plain language of section 315(e)(1) states that the estoppel applies to grounds a petitioner “reasonably could have raised.” (Emphasis added). The statute is grammatically clear in that the verb phrase or predicate, “reasonably could have raised,” is logically tied to its subject, “petitioner.” The word “reasonably” is not a mandatory word such as, “must,” or “shall.” The word “reasonably” is a qualifier that refers to the discretion applied by a qualified searcher in conducting an adequate search. This is consistent with the legislative history of section 315: The present bill also softens the could-have-raised estoppel that is applied by inter partes review against subsequent civil litigation by adding the modifier ‘reasonably.’ It is possible that courts would have read this limitation into current law’s estoppel. Current law, however, is also amenable to the interpretation that litigants are estopped from raising any issue that it would have been physically possible to raise in the inter partes reexamination, even if only a scorched-earth search around the world would have uncovered the prior art in question. Adding the modifier ‘reasonably’ ensures that could-have-raised estoppel extends only to that prior art which a skilled searcher conducting a diligent search reasonably could have been expected to discover. 157 Cong. Rec. S1360-94 (daily ed. Mar. 8, 2011) at 1375 (stmt. of Sen. Kyl). A reasonable reading of section 315(e)(1) does not mandate estoppel of all prior art in the possession of a petitioner, or prior art which petitioner, e.g. via its employees, may have possessed or known about at some point in time. To the contrary, the prior art estopped is that which “a skilled searcher conducting a diligent search reasonably could have been expected to discover.” Id. Congress easily could have broadened the estoppel provision to extend to “any ground that the petitioner raised or [] could have raised during that inter partes review,” but it did not. See id.” slip op. at 9

  • ExcludeMotion to exclude, deniedDenied

    “We determine that the documents are sufficiently authenticated, first, because the marketing, company contact and product information expressly set out in the brochures, along with the witnesses’ corroborating statements, show sufficiently that Exhibits 1004 and 1005 are what they appear to be, that is, advertising brochures that were printed and produced for dissemination to Johns Manville’s customers and sales personnel for unrestricted distribution to the public. Second, we determine that the dates on the brochures are not merely “archival” dates in Mr. Mota’s files as Knauf contends. See Mot. to Exclude, 4 (citing Apple Inc. v. DSS Technology Management, Inc., IPR2015-00369, slip op. at 6 (PTAB August 12, 2015) (Paper 14)). Mr. Mota and Mr. Graves both explain that it was standard practice at Johns Manville to print these dates on the brochures to indicate a first printing of the brochure. Ex. 2019, 20:23–21:24; Ex. 2020, 39:4–40:2. This testimony is corroborated, at least circumstantially, by the documents themselves where, for example, Exhibit 1005 states “10/00 (Replaces 12/97),” where 12/97 is the date printed on Exhibit 1004 and Exhibit 1005. We agree with Knauf that hearsay is not admissible under Fed. R. Evid. 802. Mot. to Exclude, 2. However, based on the testimony of Mr. Mota and Mr. Graves, we find that the dates printed on the brochures were a common business practice at James Manville. See Ex. 2019, 20:23–21:24; Ex. 2020, 39:4–40:2. These dates, along with the testimony of Mr. Mota and Mr. Graves, are probative of the authenticity of the documents themselves and their existence and purpose at the relevant time period. Knauf has provided no persuasive evidence that either the December 1997 date or the October 2000 dates as printed on the brochures are untrustworthy, or that either Mr. Mota’s or Mr. Graves’s testimony are inconsistent with this assertion. Also, we do not consider Mr. Mota or Mr. Graves’s declarations to be hearsay, as they are not out-of-court statements. In an inter partes review, direct testimony is typically provided via affidavit, with cross-examination taken via deposition. 37 C.F.R. § 42.53(a) and see Ex. 2019, 20:23–21:24; Ex. 2020, 39:4–40:2, 44:15–20. Thus, we determine on the evidence in this proceeding that Exhibits 1004 and 1005 are properly authenticated and not inadmissible hearsay because they have been shown to be commercial product advertising publications under Fed. R. Evid. 803(17) and include customary date information that, based on the sworn testimony of Mr. Graves and Mr. Mota, was made in the regular course of business and is thus subject to the business records exception under Fed. R. Evid. 803(6).” slip op. at 18

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

    “2010, 4). For example, considering the claimed design, we observe a random swirl pattern evident in both the color and black and white images of the claimed design shown above. We find the phrase “variations in a swirl pattern” helpful to objectively describe what we observe as the relative arrangement between the “distinct hues” shown in the photograph. Moreover, both parties have advanced this term in their proposed claim constructions. Compare Pet. 17 with PO Resp. 28. Observing the design as a whole, “swirl pattern” is somewhat less than specific. We agree to an extent with Knauf’s Declarant, Professor Rake, that “swirl pattern” can aptly describe a variety of patterns. Ex. 2012 ¶ 28. Thus, to facilitate a more expressive elocution of this element, we further described the contrast imparted by the “swirl pattern” consistent with the prosecution history of the ’670 patent as having a “cloud-like appearance.” Ex. 1002, 33. Both parties have also included this term in their proposed constructions. Compare Pet. 16 with PO Resp. 28.” slip op. at 28

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “manager who has a technical or engineering background and is familiar with the insulation manufacturing process, but who does not have any specialized training in color, is a designer of ordinary skill. PO Resp. 7–10. This definition has some appeal, mainly because the claimed article of manufacture here is insulation, and it does not appear, based on the testimony of witnesses from both parties, that in the insulation manufacturing process any particular expertise in color of the insulation was generally necessary. Compare Ex. 2004, 3:15–5:7 with Ex. 2008 ¶¶ 14–16. Color, however, is an issue here in this case that involves colored insulation material, specifically because Knauf conceded during prosecution that “color is an integral part of the claimed invention.” Ex. 1002, 13. We agree that a product manager can be “a designer of ordinary skill in the art” as applied to designs because a product manager, in charge of manufacturing insulation, is knowledgeable and sufficiently trained to fabricate such products. PO Resp. 7. That a product manager without certain expertise, such as in color, may be a “designer of ordinary skill” does not explain why such a definition must necessarily exclude another person, with a skill set in color, as a designer of ordinary skill. We find this to be particularly reasonable where an unfamiliar aspect of insulation design, such as color, is a concern. Indeed, James Worden, Knauf’s declarant, confirms that a Product Manager who did not have certain experience, for example with color, would understand that “a color pigment specialist may provide an understanding of coloring various substances.” Ex. 2008 ¶¶ 15–16. Thus, while Dr. Bide’s testimony may not be particularly relevant to all aspects of insulation design, here, where color is an integral part of the design, it is reasonable to include aspects of his particular expertise within the purview of an ordinary designer. See In re Nalbandian, 661 F.2d 1214, 1216 (C.C.P.A. 1981) (“The ‘ordinary designer’ means one who brings certain background and training to the problems of developing designs in a particular field.”) We determine that the designer of ordinary skill in the art for insulation material therefore may be a product manager in the insulation manufacturing industry who has a technical (e.g. engineering) background and, on issues relating to color, may also be a person such as a pigment specialist and/or binder chemist having background and training pertaining to color in development of the insulation design.” slip op. at 40

  Patent outcomesUS D631,670 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
• Johns Manville Corporation / Johns Manville, Inc. v. Knauf Insulation, Inc. And Knauf Insulation SPRLNo claims unpatentable
  PTAB · Jan 11, 2017 · IPR2015-01453 · APJ Scott A Daniels · IPR · Final written decision

  The sole claim was not shown unpatentable: OC PROPINK did not anticipate, and the asserted obviousness combinations did not establish the claimed design’s overall visual appearance.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedMixed

    “Based on this evidence, we determine that the testimony of at least Mr. Fay and Mr. Worden along with the characteristics and circumstances of the document itself are evidence sufficient to establish the authenticity of Exhibit 1003 – OC PROPINK, as a prior art reference. Knauf’s assertion in its Motion to Exclude, that “Mr. Worden had no personal knowledge of Exhibit 1003,” (Paper 40, 6) is also not persuasive because, as discussed above, Mr. Worden found the OC PROPINK promotional material entirely consistent, in his experience, with Owens Corning’s advertising and product promotion practices. Ex. 1024, 31:4–11. When asked if Owens Corning produced product literature such as OC PROPINK for products sold to the public, Mr. Worden replied: we had literature for everything, yes, multiple pieces that some targeted to certain audiences to make sure we were providing them with appropriate features and benefits that would be important to them, whether they were a contractor or homeowner. Id. at 33:8–13. Mr. Worden’s cross-examination testimony, as it is directed to his experience and knowledge as a marketing communication manager for Owens Corning, is neither hearsay, because it is not an out of court statement. Neither is Mr. Worden’s testimony inadmissible hearsay under at least Fed. R. Evid. 803(5)–(6) as it relates to evidence of regularly conducted business matters and promotional publications under Fed. R. Evid. 803(17), with which he was generally familiar in the course of his marketing and communications duties for Owens Corning. We are persuaded by the evidence discussed above that Johns Manville has shown by a preponderance of the evidence that OC PROPINK promotional material would have been publically available in at least 2005 and that Mr. Fay, as part of his investigative research into the products promoted in this document, downloaded OC PROPINK on March 28, 2005. Accordingly, we determine that OC PROPINK qualifies as a publically disseminated printed publication and is prior art to the ’670 patent. Knauf’s Motion to Exclude Exhibits 1003, 1017, 1020, and 1024 is DENIED.” slip op. at 10

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

    “Based on this evidence, we determine that the testimony of at least Mr. Fay and Mr. Worden along with the characteristics and circumstances of the document itself are evidence sufficient to establish the authenticity of Exhibit 1003 – OC PROPINK, as a prior art reference. Knauf’s assertion in its Motion to Exclude, that “Mr. Worden had no personal knowledge of Exhibit 1003,” (Paper 40, 6) is also not persuasive because, as discussed above, Mr. Worden found the OC PROPINK promotional material entirely consistent, in his experience, with Owens Corning’s advertising and product promotion practices. Ex. 1024, 31:4–11. When asked if Owens Corning produced product literature such as OC PROPINK for products sold to the public, Mr. Worden replied: we had literature for everything, yes, multiple pieces that some targeted to certain audiences to make sure we were providing them with appropriate features and benefits that would be important to them, whether they were a contractor or homeowner. Id. at 33:8–13. Mr. Worden’s cross-examination testimony, as it is directed to his experience and knowledge as a marketing communication manager for Owens Corning, is neither hearsay, because it is not an out of court statement. Neither is Mr. Worden’s testimony inadmissible hearsay under at least Fed. R. Evid. 803(5)–(6) as it relates to evidence of regularly conducted business matters and promotional publications under Fed. R. Evid. 803(17), with which he was generally familiar in the course of his marketing and communications duties for Owens Corning. We are persuaded by the evidence discussed above that Johns Manville has shown by a preponderance of the evidence that OC PROPINK promotional material would have been publically available in at least 2005 and that Mr. Fay, as part of his investigative research into the products promoted in this document, downloaded OC PROPINK on March 28, 2005. Accordingly, we determine that OC PROPINK qualifies as a publically disseminated printed publication and is prior art to the ’670 patent. Knauf’s Motion to Exclude Exhibits 1003, 1017, 1020, and 1024 is DENIED.” slip op. at 10

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

    “a case, as to whether or not it is appropriate to provide a verbal construction of the claimed design. See Egyptian Goddess 543 F.3d at 679 (stating that the Board is “not obligated to issue a detailed verbal description of the design if it does not regard verbal elaboration as necessary or helpful.”). It may be preferable not to provide a detailed claim construction in certain cases. However, observing the design in this proceeding as a whole, a claim construction such as “insulation material as shown in the sole figure of the ’670 patent,” would not reasonably provide a substantive factual or evidentiary basis for comparison relative to the prior art. Here, because the single color photograph depicting “insulation material” is, on its face, visually amorphous, lacking clear structure, form, and environment in which to give context to the design, we consider a verbal claim construction helpful to compare the claimed design to the prior art. See Egyptian Goddess, 543 F.3d at 680 (“While it may be unwise to attempt a full description of the claimed design, a court may find it helpful to point out . . . various features of the claimed design as they relate to the accused design and the prior art.”); see also High Point Design, 730 F.3d at 1314 (holding that a district court erred by failing to translate the design into a verbal description for purposes of a non-obviousness analysis). For example, there is a random swirl pattern evident in both the color and black and white images of the claimed design shown above. We find the term “swirl pattern” helpful to objectively describe what we observe as the relative arrangement between the “distinct hues” shown in the photograph. Moreover, both parties have advanced this term in their proposed claim constructions. Compare Pet. 16 with PO Resp. 28. Observing the design as a whole, “swirl pattern” is somewhat less than specific. We agree to an extent, with Knauf’s Declarant, Professor Rake, that “swirl pattern” can aptly describe a variety of patterns. Ex. 2012 ¶ 28. Thus, to facilitate a more expressive elocution of this element, we further described the contrast imparted by the “swirl pattern” consistently with the prosecution history of the ’670 patent as having a “cloud-like appearance.” Ex. 1002, 33. Both parties have also included this term in their proposed constructions. Compare Pet. 16, with PO Resp. 28. We further construed the claimed insulation material to include “a ‘waffle pattern’ as shown and described by the sole figure.” Inst. Dec. 8. We noted in our Institution Decision that in “observing the overall appearance of the design, the ‘waffle pattern’ is visually apparent, although not terribly distinct, in the color photograph.” Id. Neither party substantively disputes our interpretation of this element of the claim. Compare PO Reply 13, with Pet. Resp. 28.” slip op. at 17

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “A designer of ordinary skill in the art of insulation materials is generally someone “who designs articles of the type involved.” See High Point Design, 730 F.3d at 1313 (quoting Durling, 101 F.3d at 103). Knauf proposes the more persuasive definition for an ordinary designer. See PO Resp. 7–9. For one thing, the claimed design is for “insulation material,” not color per se. See Ex. 1001. Furthermore, Knauf’s definition is supported not only by its own witness James Worden, but also Johns Manville’s witnesses. Exs. 2008, ¶¶ 13–16; 2004, 3:24–6:10; 2007, 12:23–13:17. For example, Mark Granger, an employee of Johns Manville, is a mechanical engineer who has been involved in the design of insulation materials for almost 40 years. Ex. 2004 3:24–4:21. Mr. Granger testified during his deposition that an “[e]ngineering background is common,” and that he could not recall ever working with someone with a degree in color science. Id. at 4:22–6:10. However, we do not discount Mr. Worden’s testimony that an ordinary designer of insulation materials may consult “a pigment specialist and/or binder chemist” regarding issues of color. Ex. 2008 ¶ 17. The designer of ordinary skill in the art for insulation material is therefore a product manager in the insulation manufacturing industry who has a technical (e.g. engineering) background and who, on issues relating to color, may consult with a person such as a pigment specialist and/or binder chemist having background and training pertaining to color.” slip op. at 28

  Patent outcomesUS D631,670 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
• Ford Motor Company v. TMC Fuel Injection System, LLCNo claims unpatentable
  PTAB · Jun 22, 2015 · IPR2014-00272 · APJ James A Worth · IPR · Final written decision

  Petitioner failed to prove claims 38 and 40 unpatentable over Tuckey alone or in combination with Ford ’479, Chih, or Coleman, because the references did not meet the construed flow-constraint limitation or the combinations were …

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundTerm construed board ownDecided for patent owner

    “c. Analysis of Prosecution History Disclaimer “Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Thus, for purposes of the broadest reasonable construction, claim terms are interpreted according to their ordinary meaning in light of, and to be consistent with, the intrinsic evidence, which consists of the language of the claims as a whole, the Specification, and the prosecution history. See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 977 (Fed. Cir. 2014) (“In claim construction, this court gives primacy to the language of the claims, followed by the specification. Additionally, the prosecution history, while not literally within the patent document, serves as intrinsic evidence for purposes of claim construction. This remains true in construing patent claims before the PTO.”) (citing In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997)). See also Microsoft Corporation v. Proxyconn, Inc., No. 2014-1542, -43 (Fed. Cir. June 16, 2015) (“The PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review.”). In light of Applicant’s unequivocal statements during prosecution, we determine that there is an express disclaimer of pressure regulators and other forms of incremental regulation as a flow constraint for issued claims 38 and 40.” slip op. at 18

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

    “We find Petitioner’s argument persuasive and decline to adopt Patent Owner’s construction. While the prosecution history disclaimed the use of variable valves, the prosecution history and Specification are consistent with the notion that a binary valve may be used to close, instantaneously, the fuelreturn line in order to give a brief power boost in one mode of operation. Ex. 1001, 4:11–16, 41–44, 9:7–14, Fig. 6. We do not consider such a mode of operation to be inconsistent with the recirculation of fuel set forth in the preamble, which is the “normal” mode of operation. See Fig. 2.” slip op. at 24

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

    “In light of our revised construction of “a fuel return path with flow constraint,” we agree with Patent Owner that Tuckey does not anticipate claims 38 and 40. Applicant expressly disclaimed pressure regulators and incremental regulation “of any type from the system.” Ex. 1008, 451. Thus, because Tuckey’s system includes demand regulator 12 and pressure relief valve 250 (a ball-spring valve), Tuckey does not meet the limitation “a fuel return path with flow constraint . . . allowing fuel recirculation to stabilize the pump operation, and creating stable fuel pressure,” as recited by claims 38 and 40. We, therefore, conclude that Petitioner has not shown by a preponderance of the evidence that Tuckey anticipates claims 38 and 40.” slip op. at 28

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

    “We agree with Patent Owner that Ford ’479 does not teach a “fuel return path with flow constraint” in light of the express disclaimer of pressure regulators and incremental regulation “of any type from the system.” Ex. 1008, 451. Ford ’479’s pressure regulator 22 is therefore inconsistent with this disclaimer. On cross-examination, Petitioner’s declarant, Dr. Davis, affirmed Ford ’479’s need for a pressure regulator, explaining that the orifice does not stabilize the pressure without the assistance of the pressure regulator: “In this system, again, because it’s a real system applied to a vehicle where the demands are changing all the time, fuel flow demands, you need the pressure regulator in order to provide a stable fuel pressure to the system.” Ex. 2002, 283:18–25. Moreover, as we found above, Tuckey’s use of demand regulator 12 and pressure relief valve 250 do not constitute “flow constraints” within the proper construction of the term, either. We, therefore, find that Petitioner has not shown by a preponderance of the evidence that Ford ’479 and Tuckey render obvious claims 38 and 40.” slip op. at 31

  Patent outcomesUS 7,318,414 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,318,414
• Ford Motor Company v. TMC Fuel Injection System, LLCNo claims unpatentable
  PTAB · Jun 22, 2015 · IPR2014-00273 · APJ James A Worth · IPR · Final written decision

  Petitioner failed to prove claims 38 and 40 unpatentable over Tuckey or the Tuckey combinations with Ford ’479, Chih, or Coleman, because the references did not meet the construed flow-constraint limitation or the combinations lacked …

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “those sources expressly disclaim the broader definition.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Thus, for purposes of the broadest reasonable construction, claim terms are interpreted according to their ordinary meaning in light of, and to be consistent with, the intrinsic evidence, which consists of the language of the claims as a whole, the Specification, and the prosecution history. See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 977 (Fed. Cir. 2014) (“In claim construction, this court gives primacy to the language of the claims, followed by the specification. Additionally, the prosecution history, while not literally within the patent document, serves as intrinsic evidence for purposes of claim construction. This remains true in construing patent claims before the PTO.”) (citing In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997)). See also Microsoft Corporation v. Proxyconn, Inc., No. 2014-1542, -43 (Fed. Cir. June 16, 2015) (“The PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review.”). In light of Applicant’s unequivocal statements during prosecution, we determine that there is an express disclaimer of pressure regulators and other forms of incremental regulation as a flow constraint for issued claims 38 and 40. The disclaimer of pressure regulators in the introduction section of the Appeal Brief is particularly express, i.e., “eliminating pressure regulators and incremental regulation means of any type from the system,” and is applied in the Brief to Configuration 1 (application claim 42). It is clear from the above prosecution history that the stabilization of pressure (e.g., at a high pressure) is based on fuel recirculation through the flow constraint of an open fuel-return line (or fuel by-pass). This fuel-return line may use a binary valve to open and close the fuel-return line and to instantaneously switch between high and low pressure states. However, pressure regulators and incremental regulation devices are incompatible with the invention because they do not allow for instantaneous pressure stabilization in the same manner as binary valves.” slip op. at 19

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

    “We find Petitioner’s argument persuasive and decline to adopt Patent Owner’s construction. While the prosecution history disclaimed the use of variable valves, the prosecution history and Specification are consistent with the notion that a binary valve may be used to close, instantaneously, the fuelreturn line in order to give a brief power boost in one mode of operation. Ex. 1001, 4:11–16, 41–44, 9:7–14, Fig. 6. We do not consider such a mode of operation to be inconsistent with the recirculation of fuel set forth in the preamble, which is the “normal” mode of operation. See Fig. 2.” slip op. at 24

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

    “In light of our revised construction of “a fuel return path with flow constraint,” we agree with Patent Owner that Tuckey does not anticipate claims 38 and 40. Applicant expressly disclaimed pressure regulators and incremental regulation “of any type from the system.” Ex. 1008, 451. Thus, because Tuckey’s system includes demand regulator 12 and pressure relief valve 250 (a ball-spring valve), Tuckey does not meet the limitation “a fuel return path with flow constraint . . . allowing fuel recirculation to stabilize the pump operation, and creating stable fuel pressure,” as recited by claims 38 and 40. We, therefore, conclude that Petitioner has not shown by a preponderance of the evidence that Tuckey anticipates claims 38 and 40.” slip op. at 28

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

    “We agree with Patent Owner that Ford ’479 does not teach a “fuel return path with flow constraint” in light of the express disclaimer of pressure regulators and incremental regulation “of any type from the system.” Ex. 1008, 451. Ford ’479’s pressure regulator 22 is therefore inconsistent with this disclaimer. On cross-examination, Petitioner’s declarant, Dr. Davis, affirmed Ford ’479’s need for a pressure regulator, explaining that the orifice does not stabilize the pressure without the assistance of the pressure regulator: “In this system, again, because it’s a real system applied to a vehicle where the demands are changing all the time, fuel flow demands, you need the pressure regulator in order to provide a stable fuel pressure to the system.” Ex. 2002, 283:18–25. Moreover, as we found above, Tuckey’s use of demand regulator 12 and pressure relief valve 250 do not constitute “flow constraints” within the proper construction of the term, either. We, therefore, find that Petitioner has not shown by a preponderance of the evidence that Ford ’479 and Tuckey render obvious claims 38 and 40.” slip op. at 31

  Patent outcomesUS 7,318,414 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,318,414

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.