- Louisiana-Pacific Corporation v. Huber Engineered Woods LLCNo claims unpatentablePTAB · Oct 5, 2020 · IPR2019-00919 · APJ Michael L Woods · IPR · Final written decision
Claims 1–20 were not shown unpatentable: APA does not disclose the claimed panel-joint sealant, and the proposed combinations fail to establish the required limitations or motivation to combine.
RulingsFinal written decision- BurdenNot shown unpatentable
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 32
- Skill levelSkill level board ownOther
“In our Decision to Institute, we determined that a POSITA “would have had a degree in civil engineering, building, material, wood science, or other degree, if such other degree required coursework or experience in the pertinent technology and two years of industry experience or equivalent therein.” Inst. Dec. 14. We further determined, “Additional education, such as an advanced degree, could offset less work experience, and additional work experience could offset less education or coursework.” Id. Patent Owner adopts the level of a POSITA set forth in our Decision to Institute. PO Resp. 13 (“HEW adopts the Board’s definition of a POSA.”). Petitioner does not address our definition in its Reply. See generally Pet. Reply. We maintain the level of a POSITA that we provided in our Decision to Institute.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“1. Claim 11 Independent claim 11 recites the step of “positioning” wall panels, where each panel comprises a “barrier layer.” Ex. 1001, 22:49–63. The claim further requires the separate step of “fastening” each panel assembly to a building structure. Id. As a matter of logic, the panels cannot be fastened onto the structure until they have first been positioned. See Mformation Techs., Inc. v. Research In Motion Ltd., 764 F.3d 1392, 1398– 99 (Fed. Cir. 2014) (“[A] claim ‘requires an ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires’ an order of steps.”). Accordingly, claim 11’s step of “positioning at least two wall panel assemblies” occurs before the step of “fastening each panel assembly to the structure.” Id.; see also Ex. 1001, 3:59–61, Fig. 10 (depicting a flow diagram of the steps included in the manufacture of a panel for roof or wall sheathing). Furthermore, because the “positioning” step of the claim requires each of its panels to have “a barrier layer secured to the outer surface of each panel,” it logically follows that the panels have barrier layers before the panels are fastened to the structure. For the foregoing reason, we interpret claim 11 to require the “adjacent structural wall panels” to each have a “barrier layer secured to the outer surface of each panel” before the panels are fastened to the structure, and before the joint between the edges of the adjacent panels are sealed.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Despite the disagreement between Patent Owner and Petitioner regarding the meaning of the claimed “barrier layer secured to the outer surface of each panel,” construing this claim phrase is not necessary for purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy’” (internal citation omitted)). Rather, we determine that the only claim that requires construction is method claim 11.” slip op. at 11
Patent outcomesUS 9,546,479 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 9,546,479 - Milwaukee Electric Tool Corporation / Techtronic Industries Co. Ltd. et al. v. Irwin Industrial Tool CompanyNo claims unpatentablePTAB · Sep 29, 2016 · IPR2015-01461 · APJ Michael L Woods · IPR · Final written decision
Claims 1–37 were not shown unpatentable: Redford did not anticipate or render the claims obvious, and Redford combined with Starbuck did not render them obvious.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“The party moving to exclude evidence bears the burden of proving that it is entitled to the relief requested—namely, that the material sought to be excluded is inadmissible under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.20(c), 42.62(a).” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). A presumption exists that a claim term should be construed in light of its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Under the broadest reasonable construction standard, claim terms are generally 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).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“not enough to find that a prior art device is merely capable of being adapted or modified to operate in a manner that would anticipate the claims. See Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Fantasy Sports Props., Inc. v. Sportsline.com, Inc., 287 F.3d 1108, 1117–18 (Fed. Cir. 2002)); see also Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1299 (Fed. Cir. 2016) (“For anticipation purposes, the absence of such a teaching makes it immaterial whether . . . a user . . . could modify the system to activate such remote booting”). Thus, even if “no claim in the ’554 patent requires an arbor or any other particular drive structure,” as Petitioner asserts (Pet. Reply 18), that Redford’s cleaning flange 60 must be modified in order for it to be “use[d] as a conventional hole saw,” as suggested in the Petition (see Pet. 19), means that Redford is not an anticipatory disclosure. Here, we find Mr. Vallee’s testimony that “there is no portion of the cleaning flange 60 that can be easily connected to a rotating device” persuasive. Ex. 2004 ¶ 53. We do not see how “a hole saw arbor could have been threaded or otherwise attached to the stem extending upward from the cleaning flange,” as argued by Petitioner (Pet. 19), without modifying Redford’s structure. Nothing in Redford discloses that “the stem extending upward from the cleaning flange” is either threaded or otherwise attachable to a different drive structure without modification. See also Ex. 2004 ¶ 53 (“No such standard means of attaching a hole saw arbor to the cleaning flange 60 is described in Redford.”) Furthermore, although Redford discloses that “the cleaning flange could be remov[ed]” from nut driver 40 (Ex. 1003, 6:6–10), this is not a disclosure that the cleaning flange includes structure that allows it to be “connectable to a different drive structure for use as a conventional hole saw,” as Petitioner suggests (Pet. 19). In particular,” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“Patent Owner’s argument is persuasive. Petitioner provides insufficient reasoning as to why a person of ordinary skill in the art would have added a second, alternate drive structure to Redford’s cleaning flange 60, when Redford already discloses a drive structure that utilizes pin 54 for attaching body 20 to cleaning flange 60. Petitioner’s proposed modification of Redford’s cleaning flange 60 appears to be premised on an impermissible use of hindsight after review of the ’554 Patent, rather than on a supported reason to modify Redford’s cleaning flange 60. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (stating that the fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”). We also find unpersuasive Petitioner’s argument that Patent Owner’s own “expert testified that by the ’554 patent’s priority date, it would have been obvious to incorporate such structures into a hole saw” (Pet. Reply 18 (citing Ex. 1008, 36:5–17)). Here, Patent Owner’s expert (Mr. Vallee) simply answered “Yes” in response to the question, “[y]ou would agree that at the time of the [’554 patent] it was obvious that you would have a mandrel and use a power drill to operate a hole saw, correct?” Ex. 1008, 36:5–17. The issue is not whether it would have been obvious to add a mandrel to any hole saw so that it can be driven by a power drill, as posed by the question; rather, the issue is whether it would have been obvious to modify Redford’s cleaning flange 60—which already uses a pin-type attachment mechanism—to include a second attachment mechanism that would avoid the use of the pin.” slip op. at 16
Patent outcomesUS 8,579,554 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,579,554
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.