• Masimo Corporation v. Apple Inc.No claims unpatentable
  PTAB · Oct 15, 2024 · IPR2023-00745 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1–4 and 8–22 were not shown unpatentable because Mills did not disclose the required embedded structure and Markel combined with Mills did not teach it; the revised motion to amend was dismissed as moot.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “Patent Owner’s Revised Contingent Motion to Amend asserts that in “the event the Board finds at least one challenged [Revised Motion to Amend] claim unpatentable, [Patent Owner] respectfully requests that the Board grant this Motion with respect to the corresponding proposed substitute claim(s).” Paper 27, 1. Because we determine that Petitioner has not established that any of the challenged claims 1–4 and 8–22 are unpatentable, Patent Owner’s Revised Contingent Motion to Amend is moot.” slip op. at 61

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in both education and proposed work experience. Patent Owner’s proposed work experience is somewhat vague and potentially outside the scope of the claimed invention. For example, the requirement that the person of ordinary skill in the art have experience with the “capture and processing of data or information, including but not limited to physiological information,” would seemingly encompass data processing areas that do not relate to the scope of the claimed invention. We adopt Petitioner’s level of the level of ordinary skill in art because it is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). Our analysis and the end result are the same under either proposed definition.” slip op. at 11

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

    “structure where a lead is embedded in a portion of the enclosure from other embodiments where a lead is merely positioned against or in parallel contact with a portion of the enclosure. See Ex. 2003 ¶¶ 36–37. The Specification describes distinct embodiments such as “lead 472 of the heart sensor can be positioned against the back surface of bezel 460,” or “[a]lternatively, lead 472 can be placed within the thickness of bezel 460 (e.g., in a pocket within the bezel wall), but underneath the outer surface of the bezel.” Ex. 9:44–48. We agree with Patent Owner, and Dr. Kenny, that “[t]his passage distinguishes a lead that is embedded in a portion of the enclosure from a lead that is merely ‘positioned against’ or in parallel contact with a portion of the enclosure.” PO Resp. 6–7 (citing Ex. 2003 ¶¶ 33–35). See also Ex. 2008, 31:10–33:18, 109:18–110:19 (Petitioner’s expert, Mr. Oslan, suggesting that a first component or object in parallel contact with and positioned under a second component or object would not necessarily indicate that the first component or object is embedded in the second component or object). Similarly, we also agree that “the claims of the ’257 use the term ‘embedded in’ while also using the word ‘embedded’ in other contexts, which” indicates distinct claim scope for “the term ‘embedded in,’” versus “the broader term ‘embedded.’” Ex. 2003 ¶ 38. For instance, claim 9 distinctly requires “embedded with,” which is a broader term that, according to Dr. Kenny, encompasses embodiments where a lead may be adjacent/parallel to the first portion of the enclosure. Id.” slip op. at 18

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

    “under the exterior of the first portion” (see Pet. 21–22, 24–25; Pet. Reply 4); and (3) leaf spring 62 is embedded in housing 12 and electrode 14 (see Pet. 22–24). None of Petitioner’s mappings disclose every element of claim 1 and Petitioner improperly jumps between these various mappings without fully examining a single mapping for each and every limitation of claim 1. See Pet. 18–25. In essence, Petitioner invites the Board to piece together a single theory that meets all claim elements from these disparate theories that each require distinct structure within Mills. See Amazon.com, Inc., et al. v. Avago Technologies General IP (Singapore) PTE. LTD., IPR2017-01112, Paper 11, at 13 (PTAB Aug. 23, 2017) (“Petitioner is inviting us to assume the role of archeologist of the record, which invitation we decline.”).” slip op. at 36

  Patent outcomesUS 10,076,257 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,076,257
• 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
• Yamaha Golf Car Company v. Club Car, LLCNo claims unpatentable
  PTAB · Apr 2, 2019 · IPR2017-02143 · APJ Robert L Kinder · IPR · Final written decision

  Petitioner did not prove claims 1–11 and 13–20 unpatentable on the asserted grounds; claim 12 was disclaimed.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “In the summon mode, pressing a button to summon the caddie of the ’388 patent triggers an autonomous mode but no specific driving commands are provided to the caddie by the golfer. See Ex. 2015 ¶ 195 (“As the robotic caddy cart is operating autonomously at that point, the user does not input these movement commands.”). We agree that the summon command could not be considered a driver command because “merely defining the destination does not generate any control actions.” Id. ¶ 160. Likewise, a summon command to follow a golfer would not be a driver command because the golfer has no direct control over the route taken, the speed of the caddie, or whether or not a caddie could drive into a restricted area –– the caddie’s system pilots itself to a point near the golfer by generating movement inputs on its own. The system detects that the golfer is in a limited access area and the golfer will not be able to summon the caddie into that area. This restriction is not a driver command being limited because the summon command simply activates internal logic to move the caddie near the golfer, not a driver command to move into a restricted area. Indeed, when operating in autonomous mode, the caddie can never enter such restricted areas. We thus agree with Patent Owner that the summon command cannot be overridden or limited in the ’388 patent because the caddie will always come as close as is allowable under the parameters of the caddie’s programming.” slip op. at 45

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

    “Dec. 11. First, we note that the claim language itself focuses on limiting the ability of a “driver” to move the cart. For example, dependent claim 2 recites “an override of a driver input to the motor.” That the “driver input” needs to be overridden or otherwise restricted presumes that the golf cart is being driven by a person who has independent control of the cart and is susceptible to driving in an unruly manner, in other words, an onboard driver of the cart. This is especially true given the lack of any indication in the claims of remote or autonomous operation of the cart. Numerous other dependent claims include similar references to a driver of the cart, for example, “override of driver input” (claim 3), “driver interface unit” (claim 4), “limits the performance of driver commands” (claim 14), and “driver command” (claim 17).” slip op. at 14

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

    “Petitioner overemphasizes the ’053 Application’s use of the terms “golf cart” and “electric vehicle.” Nowhere does the ’053 Application support the disclosure of a rideable cart. Rather, it describes a golf cart that, when read in the context of the reference as a whole, is a riderless cart, or more specifically, a “caddie cart.” This is evidenced by the fact that the ’053 Application incorporates by reference a caddie cart, as discussed above, in which the only mechanism for actually operating the cart is a “grip lever,” which Petitioner’s own expert acknowledges is not something found in a rideable cart. See Ex. 2016, 94:16–95:11 (conceding “there is no such thing as a rideable golf cart, in [his] experience or in 2003, that has a grip lever”); see also 54:5–12 (essentially same testimony). Further evidence that the ’053 Application contemplates only a riderless caddie cart is its description of the golf cart as “moving the golf bag to a location that is convenient for the play by the golfer.” Ex. 1003 ¶ 2. Nowhere does it describe the cart as moving a golfer or caddy. Even Petitioner’s expert agrees that, while the ’053 Application “does describe a caddy cart,” it “does not describe putting the person in the seat.” Ex. 2016, 92:18–93:1; 88:11–15. And to the extent Petitioner’s expert qualifies that testimony by saying that the ’053 Application doesn’t exclude the possibility of a riding cart and doesn’t preclude putting a person in the seat, that qualification is irrelevant to our analysis of anticipation, which depends on what a reference actually discloses, not what possibilities it could have disclosed. Petitioner’s assertion is that each of independent claims 1 and 6 is anticipated by the ’053 Application – Petitioner has not put forth an obviousness ground for these claims based on the ’053 Application.” slip op. at 24

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Alternatively, Petitioner argues that the ’053 Application’s disclosure of a golfer selecting a destination on an LCD display “inherently teaches” the ability of “overriding a driver command.” Pet. 29–30 (citing Ex. 1003 ¶ 37). We disagree. The ability to select a travel destination on an LCD display is not the same as the ability to “override” or “restrict” a previous command to travel to a certain destination. As argued by Patent Owner, “[t]he selection of a point on a map is just that—a selection to travel to a point on the map, not to take a particular route to that point.” PO Resp. 34 (citing Ex. 2015 ¶¶ 150–152). Nowhere does the ’053 Application say that the selected point on the display will be disregarded if it is within a prohibited area. Thus, we are not persuaded by Petitioner’s argument that the ’053 Application inherently teaches the ability to “override” a driver input. Reply 3, 23–24. In its Petition, however, Petitioner deliberately chose not to rely on the ’053 Application’s manned operating mode in arguing those particular limitations. See Pet. 28–29 (referencing repeatedly “unmanned mode operation” and showing ellipsis “. . .” where “manual traveling mode” would have been discussed in paragraph 34 of the ’053 Application). Petitioner cannot switch positions midstream and raise an entirely new argument in its reply that reasonably could have been made in the petition. See Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (“Blizzard, as petitioner, had an opportunity to present this argument in its petition, but chose not to.”). A reply may only respond to arguments raised in the corresponding patent owner response. See 37 C.F.R. § 42.23(b). Indeed, in its patent owner response, Club Car carefully notes that the ’053 Application’s manned operating mode is “not relied upon by Petitioner.” PO Resp. 28. Because Petitioner’s assertion in its reply of the ’053 Application’s manned operating mode constitutes new argument outside the scope of a proper reply, we decline to consider it.” slip op. at 30

  Patent outcomesUS 7,480,569 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,480,569
• Yamaha Golf Car Company v. Club Car, LLCNo claims unpatentable
  PTAB · Apr 2, 2019 · IPR2017-02144 · APJ Robert L Kinder · IPR · Final written decision

  The Board found claims 11 and 17–19 not shown unpatentable: claim 11 was entitled to priority over the ’918 Publication, and the obviousness challenge to claims 17–19 was unsupported.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “slows the speed of the golf car until it returns to the course—“[Y]our cart has been slowed down because you are outside the boundaries of the course. Your car will continue to slow down until you return to the course.” Ex. 1004, 30 (emphases added) (also showing that “Reduce Maximum Speed” may be adjusted to a select speed as similarly set forth in Figure 3 of the ’569 patent). The ’894 Provisional specifies that the Curtis 1510 controller includes a configuration setting for “REVERSE SPEED,” and we find persuasive Mr. Andrews’ testimony that this control setting is separate from the maximum forward speed settings, “M1 MAX SPEED,” “M2 MAX SPEED,” “M3 MAX SPEED,” and “M4 (HIGH) MAX SPEED.” Ex. 1004, 12; Ex. 2009 ¶ 58 (“‘REVERSE SPEED’ is a separate configuration setting that the controller can configure based on GPS location.”). We find that these disclosures in the ’894 Provisional—slowing or stopping the car until it reverses course and separate configurable settings for reverse speed in the motor controller—establish affirmative support for a configuration as claimed where the car’s forward movement is disabled, but the car may still move in a reverse direction, as required by claim 11. Because the maximum forward speed can be set to zero to stop the vehicle from further movement towards the restricted area, but setting the maximum speed to zero leaves the separate “REVERSE SPEED” configuration setting in the motor controller unchanged, Patent Owner has shown how the vehicle is capable of operation only in a reverse direction. See Ex. 1004, 10, 12, 16, 30. From a functional capability, there is simply no difference between the descriptions found in the ’894 Provisional and the claimed limitations. See Ex. 2009 ¶¶ 49–60. Thus, Patent Owner has met its burden of showing adequate written description support for claim 11 in the earlier ’894 Provisional. Accordingly, the ’918 Publication does not qualify as prior art against claim 11. Based on the final trial record before us, Petitioner does not present sufficient arguments and credible evidence to support a finding that claim 11 is anticipated by the ’918 Publication.” slip op. at 17

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedReference not prior artDecided for patent owner

    “slows the speed of the golf car until it returns to the course—“[Y]our cart has been slowed down because you are outside the boundaries of the course. Your car will continue to slow down until you return to the course.” Ex. 1004, 30 (emphases added) (also showing that “Reduce Maximum Speed” may be adjusted to a select speed as similarly set forth in Figure 3 of the ’569 patent). The ’894 Provisional specifies that the Curtis 1510 controller includes a configuration setting for “REVERSE SPEED,” and we find persuasive Mr. Andrews’ testimony that this control setting is separate from the maximum forward speed settings, “M1 MAX SPEED,” “M2 MAX SPEED,” “M3 MAX SPEED,” and “M4 (HIGH) MAX SPEED.” Ex. 1004, 12; Ex. 2009 ¶ 58 (“‘REVERSE SPEED’ is a separate configuration setting that the controller can configure based on GPS location.”). We find that these disclosures in the ’894 Provisional—slowing or stopping the car until it reverses course and separate configurable settings for reverse speed in the motor controller—establish affirmative support for a configuration as claimed where the car’s forward movement is disabled, but the car may still move in a reverse direction, as required by claim 11. Because the maximum forward speed can be set to zero to stop the vehicle from further movement towards the restricted area, but setting the maximum speed to zero leaves the separate “REVERSE SPEED” configuration setting in the motor controller unchanged, Patent Owner has shown how the vehicle is capable of operation only in a reverse direction. See Ex. 1004, 10, 12, 16, 30. From a functional capability, there is simply no difference between the descriptions found in the ’894 Provisional and the claimed limitations. See Ex. 2009 ¶¶ 49–60. Thus, Patent Owner has met its burden of showing adequate written description support for claim 11 in the earlier ’894 Provisional. Accordingly, the ’918 Publication does not qualify as prior art against claim 11. Based on the final trial record before us, Petitioner does not present sufficient arguments and credible evidence to support a finding that claim 11 is anticipated by the ’918 Publication.” slip op. at 17

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

    “slows the speed of the golf car until it returns to the course—“[Y]our cart has been slowed down because you are outside the boundaries of the course. Your car will continue to slow down until you return to the course.” Ex. 1004, 30 (emphases added) (also showing that “Reduce Maximum Speed” may be adjusted to a select speed as similarly set forth in Figure 3 of the ’569 patent). The ’894 Provisional specifies that the Curtis 1510 controller includes a configuration setting for “REVERSE SPEED,” and we find persuasive Mr. Andrews’ testimony that this control setting is separate from the maximum forward speed settings, “M1 MAX SPEED,” “M2 MAX SPEED,” “M3 MAX SPEED,” and “M4 (HIGH) MAX SPEED.” Ex. 1004, 12; Ex. 2009 ¶ 58 (“‘REVERSE SPEED’ is a separate configuration setting that the controller can configure based on GPS location.”). We find that these disclosures in the ’894 Provisional—slowing or stopping the car until it reverses course and separate configurable settings for reverse speed in the motor controller—establish affirmative support for a configuration as claimed where the car’s forward movement is disabled, but the car may still move in a reverse direction, as required by claim 11. Because the maximum forward speed can be set to zero to stop the vehicle from further movement towards the restricted area, but setting the maximum speed to zero leaves the separate “REVERSE SPEED” configuration setting in the motor controller unchanged, Patent Owner has shown how the vehicle is capable of operation only in a reverse direction. See Ex. 1004, 10, 12, 16, 30. From a functional capability, there is simply no difference between the descriptions found in the ’894 Provisional and the claimed limitations. See Ex. 2009 ¶¶ 49–60. Thus, Patent Owner has met its burden of showing adequate written description support for claim 11 in the earlier ’894 Provisional. Accordingly, the ’918 Publication does not qualify as prior art against claim 11. Based on the final trial record before us, Petitioner does not present sufficient arguments and credible evidence to support a finding that claim 11 is anticipated by the ’918 Publication.” slip op. at 17

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

    “sufficiently how the ’918 Publication’s disclosure of a “signal . . . of the violation” (Ex. 1003 ¶ 68) also teaches or suggests the additional claim requirements of “the driver interface unit . . . operable to communicate an alarm to the base station of a controller limiting the performance of a driver command” as required by claim 17. Petitioner recognizes the distinction by arguing “that the system could also provide a message to the course personnel . . . of any remedial corrective measures taken in response.” Pet. 25 (emphasis added). Based on the evidence cited, the ’918 Publication does not provide any such notification. Petitioner cannot suggest that a reference could have a feature that it does not have without some rational basis as to why such a feature would have been suggested by the reference. Mr. Breen’s explanation mirrors Petitioner’s contention (Ex. 1001 ¶ 277) and likewise states “that the system could also provide a message to the course personnel” (emphasis added) but no further explanation is provided as to how this unsupported conclusion was reached. Petitioner has also failed to lay the necessary foundation to establish that “common sense” could fill the gap for the missing limitation, or provide a basis for modifying the ’918 Publication to teach the claim 17 limitation. We recognize that in certain instances “common sense” can be used to supply the missing claim limitation, but only if the art is “unusually simple and the [patented] technology particularly straightforward.” Arendi Sarl v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016). In this proceeding, we have no testimony or evidence to establish either condition is met. Neither Petitioner nor Mr. Breen explain adequately why the limitations of claim 17” slip op. at 24

  Patent outcomesUS 7,480,569 not shown unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 7,480,569
• Freightcar America, Inc. v. National Steel Car, LimitedNo claims unpatentable
  PTAB · Sep 22, 2017 · IPR2016-00787 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1, 2, 7–10, and 13 were not shown unpatentable over Hitt; claims 7–10 and 13 were not shown unpatentable over White because the floor structure limitation was not established.

  RulingsFinal written decision

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

    “NSC, however, has now taken the opportunity to articulate more thorough reasoning, and provide a more substantive basis, for its position that the proposed meaning of “standing upwardly of” as “standing on and rising in an upward direction” is also the broadest reasonable construction of the term in the context of the ’600 patent. The ’600 patent depicts various embodiments of its disclosed invention. See, e.g., Ex. 1001, Figures 1–10. In reviewing those depictions, and as noted by NSC (see, e.g., PO Resp. 7–9), they consistently show sidewalls of a rail car that stand or rest on the underlying flooring of the car. NSC also relies on the testimony of its declarant, Mr. Jack Long, in discussing the meaning of “standing upwardly of.” See, e.g., PO Resp. 12– 16 (citing Ex. 2018 ¶¶ 160–165, 167–178). Specifically, Mr. Long testifies that a person of ordinary skill in the art would have recognized that in the ’600 patent the term “standing” is used in “its positional sense,” citing, for instance, to a dictionary definition of “standing” as “to rest or remain upright on a base or lower end.” Ex. 2018 ¶ 164 (citing Ex. 2013, 5). Mr. Long’s testimony and the underlying support for that testimony shed favorable light on the meaning of “standing upwardly of” that is urged by NSC.” slip op. at 9

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

    “exclusively on Hitt’s description of its “30-Ton Metal Wagon.” Pet. 22–23. More particularly, FreightCar takes the position that the above-noted claim requirement concerning sidewalls “standing upwardly of” is shown in the two Figures of Hitt designated Figures 6188 and 6189. Id. Those figures, however, are not a model of clarity when it comes to ascertaining the relationship of the sidewalls and the flooring of a rail car. We observe also that FreightCar seemingly bases its challenge to claims 1 and 2 on the premise that sidewalls that extend on the sides of the flooring are within the scope of those claims. Indeed, FreightCar’s own declarant, Mr. Keith Miller, provides testimony to that effect, i.e., that the sidewalls of the rail car depicted in Hitt’s Figures 6188 and 6189 do not rest or stand on the flooring or the car, but rather, lie to the sides of the flooring. See Ex. 1003 ¶ 124. As discussed above, we now conclude that claims 1 and 2 require a sidewall that stands on the flooring of a rail car. NSC maintains that such a configuration is not shown in the portions of Hitt on which FreightCar relies in its Petition. PO Resp. 22–31. NSC also relies on the testimony of its declarant, Mr. Long, in advocating that Hitt’s 30-Ton Metal Wagon embodiment does not meet the sidewall and flooring configuration required by claims 1 and 2. Id. (citing Ex. 2018 ¶¶ 195–208). We find Mr. Long’s testimony explaining the disclosure of Hitt’s Figures 6188 and 6189 credible. Although FreightCar does contend, as a part of its Reply to NSC’s Patent Owner Response, that Hitt’s 30-Ton Wagon includes “stanchions” as a part of a peripheral sidewall, we are not persuaded on that basis of the unpatentability of claims 1 and 2. It is not apparent readily that such position was taken by FreightCar as a part of its Petition, nor does FreightCar explain adequately why, even if true, such a circumstance constitutes a peripheral sidewall standing upwardly of flooring, as is required by claims 1 and 2 of the ’600 patent. Having thoroughly considered the record that has been developed at trial, we conclude that FreightCar’s Petition does not establish, by a preponderance of the evidence, that claims 1 and 2 are unpatentable over Hitt. More specifically, we are not persuaded that Hitt’s “30-Ton Metal Wagon” embodiment sets forth a “peripheral sidewall standing upwardly of said flooring” as required by claim 1. Accordingly, we are not persuaded that Hitt anticipates that claim, or dependent claim 2, nor does FreightCar offer any adequate explanation as to why the claims would have been obvious in view of Hitt.” slip op. at 15

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

    “exclusively on Hitt’s description of its “30-Ton Metal Wagon.” Pet. 22–23. More particularly, FreightCar takes the position that the above-noted claim requirement concerning sidewalls “standing upwardly of” is shown in the two Figures of Hitt designated Figures 6188 and 6189. Id. Those figures, however, are not a model of clarity when it comes to ascertaining the relationship of the sidewalls and the flooring of a rail car. We observe also that FreightCar seemingly bases its challenge to claims 1 and 2 on the premise that sidewalls that extend on the sides of the flooring are within the scope of those claims. Indeed, FreightCar’s own declarant, Mr. Keith Miller, provides testimony to that effect, i.e., that the sidewalls of the rail car depicted in Hitt’s Figures 6188 and 6189 do not rest or stand on the flooring or the car, but rather, lie to the sides of the flooring. See Ex. 1003 ¶ 124. As discussed above, we now conclude that claims 1 and 2 require a sidewall that stands on the flooring of a rail car. NSC maintains that such a configuration is not shown in the portions of Hitt on which FreightCar relies in its Petition. PO Resp. 22–31. NSC also relies on the testimony of its declarant, Mr. Long, in advocating that Hitt’s 30-Ton Metal Wagon embodiment does not meet the sidewall and flooring configuration required by claims 1 and 2. Id. (citing Ex. 2018 ¶¶ 195–208). We find Mr. Long’s testimony explaining the disclosure of Hitt’s Figures 6188 and 6189 credible. Although FreightCar does contend, as a part of its Reply to NSC’s Patent Owner Response, that Hitt’s 30-Ton Wagon includes “stanchions” as a part of a peripheral sidewall, we are not persuaded on that basis of the unpatentability of claims 1 and 2. It is not apparent readily that such position was taken by FreightCar as a part of its Petition, nor does FreightCar explain adequately why, even if true, such a circumstance constitutes a peripheral sidewall standing upwardly of flooring, as is required by claims 1 and 2 of the ’600 patent. Having thoroughly considered the record that has been developed at trial, we conclude that FreightCar’s Petition does not establish, by a preponderance of the evidence, that claims 1 and 2 are unpatentable over Hitt. More specifically, we are not persuaded that Hitt’s “30-Ton Metal Wagon” embodiment sets forth a “peripheral sidewall standing upwardly of said flooring” as required by claim 1. Accordingly, we are not persuaded that Hitt anticipates that claim, or dependent claim 2, nor does FreightCar offer any adequate explanation as to why the claims would have been obvious in view of Hitt.” slip op. at 15

  • ExcludeOther

    “D. Motion to Exclude NSC filed a Motion to Exclude various exhibits offered by FreightCar in support of its Petition. Specifically, NSC seeks to exclude, in part or in total, exhibits 1003, 1007, 1011, 1012, 1014, and 1022. In reaching our determination in this Decision that FreightCar’s Petition does not establish the unpatentability of any of claims 1, 2, 7–10 and 13, we either: (1) did not rely on any of the content that NSC seeks to exclude, or; (2) evaluated that content in NSC’s favor. We conclude that the circumstances here do not require us to consider the substantive merits of NSC’s Motion to Exclude, and, instead, we dismiss that Motion as moot.” slip op. at 23

  Patent outcomesUS 7,461,600 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,461,600
• 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
• Milwaukee Electric Tool Corporation / Techtronic Industries Co. Ltd. et al. v. Irwin Industrial Tool CompanyNo claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents 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.