- PTAB · Sep 6, 2024 · IPR2024-00430 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–24 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in a petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’690 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A POSITA6 would have had a bachelor’s degree in electrical engineering, computer engineering, or a similar discipline, and three to four years of experience working in signal processing and/or communication systems/networks. Additional education may substitute for experience, and significant work experience may substitute for formal education. Pet. 6 (citing Ex. 1002 ¶¶ 115–120). Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (stating that the applied prior art may reflect an appropriate level of skill). For this stage of the proceeding, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Since the parties apply what they contend is the plain and ordinary meaning of the claim terms in their briefs, and have stipulated in the Cox case that the plain and ordinary meaning applies, and Patent Owner argues that the district court’s construction in the Charter case is the plain and ordinary meaning, there is no controversy concerning claim terms that we need to resolve in this Decision. Pet. 6; Prelim. Resp. 10; Ex. 1005, 104–105; Ex. 2001, 2. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). At this stage of the proceeding, therefore, we apply the plain and ordinary meaning to the claim terms consistent with their ordinary and customary meaning under 37 C.F.R. § 42.100(b). We note, however, that Patent Owner seems to consider the court’s construction in the Charter case to require that the claimed “probe” must be of a type that can be compared with a reference signal. Prelim. Resp. 10. We question whether all of the different types of probes mentioned and claimed in the ’690 patent would require comparison with a reference signal. See, e.g., Ex. 1001, 2:7–19. However, this is a matter best resolved, if necessary, on a full record at trial.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableUnpatentableMixed
“Prelim. Resp. 23 (citing Ex. 1013, 37) (annotated in red by Patent Owner). IEEE-802.16’s Table 5 shows that the CID is a field of a generic MAC header. Petitioner does not show sufficiently that the CID, located in the header, specifies content payload of a MAC message, as required by limitation 1A. Petitioner alternatively relies on IEEE-802.16’s ranging code index that it contends is another example of data that is in a ranging request parameter and is used for the ranging response payload. Pet. 15 (citing Ex. 1013, 49–51, 204–213, 576–579, 665–66; Ex. 1002 ¶ 149). Patent Owner asserts that the portions of IEEE-802.16 that Petitioner cites do not disclose that the ranging code index is sent as part of a ranging request message. Prelim. Resp. 25. Although the parts of IEEE-802.16 that Petitioner cites disclose that the ranging code index is sent from the SS to the BS and is included in a ranging response (Ex. 1013, 49–51, 204–213, 576–579, 665–66), the cited parts do not disclose that the SS sends the ranging code index to the BS in a ranging request. Consequently, Petitioner has not established that IEEE- 802.16 anticipates a ranging code index that is a parameter of a ranging request specifying the content payload of the ranging response corresponding to limitation 1A. For the foregoing reasons, on this record, we determine that Petitioner has not shown a reasonable likelihood to prevail in showing that claim 1 is anticipated by IEEE 802.16.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,284,690 - Hunter’S Manufacturing Company, Inc. D/B/A Tenpoint Crossbow Technologies v. Ravin Crossbows, LLCAll claims unpatentablePTAB · Jul 9, 2024 · IPR2023-00407 · APJ Robert J Silverman · IPR · Final written decision
Claim 1 is unpatentable as anticipated by Stanziale ’771; the Board did not reach the alternative grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“As an initial matter, the recited expression “mounted to” is broad. The Federal Circuit has explained that words in a claim “will ordinarily be given their full meaning,” without imposing narrowing modifications on the claim language. Johnson Worldwide, 175 F.3d at 989, see also Virginia Panel, 133 F.3d at 865–66. As to whether the “mounted to” connection may be an indirect connection, the parties agree that an indirect connection is permitted — a view that is amply supported by the intrinsic record, as discussed above. With regard to the types of movement that may occur between a “string guide” and a corresponding “limb,” the intrinsic record shows that that various types of movements (including no movement at all) are characterized as “mounted to.” Slight variations of “mounted to,” occurring in the intrinsic record, are helpful in understanding the claim language — particularly because the ’015 patent itself uses such a variant (“mounted . . . on”) to describe the very connection (between a “string guide” and a “limb”) that is elsewhere, and in claim 1, is described as “mounted to.” See Ex. 1001, 5:23–26.” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Patent Owner’ sole argument — i.e., that Stanziale ’771 fails to teach the “mounted to” limitation — is based upon its construction of the “mounted to” limitation, which permits the “string guide” to be rotatable relative the corresponding “limb,” but permits no other type of relative motion. See PO Resp. 4, 13–14. As discussed above, we do not accept Patent Owner’s construction of the “mounted to” limitation. In Stanziale ’771, first and second pulleys 145, 146, and interconnecting pivot 147 (all three of which Petitioner maps to claim 1’s “string guide[s]”) are pivotally connected to a number of intermediate members (e.g., lever arms or pushing arms 32, connecting elements 27, and constraining member 29) which are, in turn, pivotally connected to elastic members 10 (which Petitioner maps to claim 1’s “limb[s]”). See Pet. 41–42 (citing Ex. 1012 7:9–17, 8:26–8:13, 11:8–9, 14:18–15:22, 16:24–25, 16:29, 17:2, 17:15–17, 17:24–27, 19:12–30, 20:32–21:16, Figs. 1–7; Ex. 1016 ¶¶ 177–179); see also Ex. 1012 11:3–7, 11:34–12:4, 12:10–17, 16:29–18:3, 18:22–19:30, Figs. 8, 9, 10a, 10b. Therefore, Stanziale ’771, in Petitioner’s mapping, teaches the “string guide[s]” connected indirectly to the “limb[s].” Per the construction of the “mounted to” limitation employed herein (“connected to, either directly or indirectly”), Petitioner establishes, by a preponderance of the evidence, that Stanziale ’771 teaches the “string guide[s]” “mounted to” the “limb[s],” as recited in claim 1 of the ’015 patent. Contrary to Patent Owner’s concerns (see Paper 47, 1), the indirect connection between Stanziale ’771’s “string guide[s]” and “limb[s]” is not “unbounded.” Rather, the connection disclosed by Stanziale ’771 is the type of indirect connection supported by the intrinsic record. See supra § II.B. Patent Owner’s contention that “a POSA would be disinclined to rely on [Stanziale ’771] as a reference for the improved crossbow design disclosed in Claim 1” is not persuasive. See PO Resp. 38 (citing Ex. 2029 ¶ 46). The test for anticipation is whether a prior art reference discloses each and every element recited in the claim, not whether one of ordinary skill in the art would have been inclined to rely on the reference. See Net MoneyIN, Inc., 545 F.3d at 1369.” slip op. at 32
- ExcludeMotion to exclude, deniedMixed
“Motions to exclude evidence are authorized under 35 C.F.R. § 42.64. Rule 42.64(b)(1) states: “Once a trial has been instituted, any objection [to evidence] must be filed within five business days of service of evidence to which the objection is directed.” Further, “[t]he objection must identify the grounds for the objection with sufficient particularity to allow correction in the form of supplemental evidence.” 35 C.F.R. § 42.64(b)(1). “A motion to exclude evidence must be filed to preserve any objection.” 35 C.F.R. § 42.64(c).” slip op. at 40
- Expert testimonyPatent owner expert creditedDecided for patent owner
“In the present proceeding, Petitioner proposed — and Patent Owner does not dispute (see PO Resp. 3) — the following definition of a person of ordinary skill in the art: A hypothetical POSA to which the ’015 Patent pertains would be a technical person who has at least some experience working in the field of archery, reviewing crossbows or engineering related to bows and/or crossbows, and is generally familiar with prior art crossbows. (Ex. 1016 ¶17.) Such a person would likely have at least a bachelor’s degree in mechanical engineering or, alternatively, would have several years of experience in the field of archery or engineering related to bows and/or crossbows. (Id.) Pet. 28. As discussed above, we adopt Petitioner’s description of a person of ordinary skill for the purposes of this Decision. See supra § II.A. Petitioner alleges various deficiencies in Mr. Teater’s background, education, and knowledge. Paper 39, 4–8. Nevertheless, Mr. Teater satisfies the definition, of a person of ordinary skill in the art, that Petitioner advanced. Specifically, Mr. Teater has reviewed crossbows for 14 years, encompassing the relevant priority date for the ’015 patent, during which time he wrote evaluations of various bows and crossbows, developed and published testing standards for crossbows, and served on the Archery Trade Association’s technical committee for standards and guidelines. Paper 41, 4 (citing Ex. 2029 ¶¶ 3, 4, 7). Accordingly, Mr. Teater satisfies Petitioner’s definition of “a technical person who has at least some experience working in the field of archery, reviewing crossbows or engineering related to bows and/or crossbows, and is generally familiar with prior art crossbows.” Pet. 28. Petitioner emphasizes that Mr. Teater “does not have a degree in mechanical engineering.” Paper 39, 4 (citing Ex. 2034, 1; Ex. 1034, 43:20–44:5). However, no degree of any kind is mandatory for satisfying Petitioner’s definition of a person of ordinary skill in the art. Indeed, Petitioner’s definition states that “[s]uch a person would likely have at least a bachelor’s degree in mechanical engineering or, alternatively, would have several years of experience in the field of archery or engineering related to bows and/or crossbows.” Pet. 28 (emphasis added). There is no dispute that Mr. Teater meets this standard. Petitioner raises various other issues that form no part of the definition that Petitioner advanced — for example, whether Mr. Teater has taught courses related to crossbows, whether he is named as an inventor on a” slip op. at 36
Patent outcomesUS 9,354,015 unpatentableClaim construction§ 102 anticipationcites PhillipsPatents in suitUS 9,354,015 - PTAB · Apr 24, 2023 · IPR2023-00070 · APJ Erica A Franklin · IPR · Institution
The Board instituted IPR of claims 1, 10, 19, and 22 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over the May Article.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In evaluating matters under § 325(d), the Board uses the following two-part framework: (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8.” slip op. at 7
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill in the art (“POSA”) “at the time of the alleged invention would have had: (1) at least an advanced degree (e.g., a Master’s or Ph.D.) in biochemistry, biotechnology, protein chemistry, genetics, molecular and structural biology, bioengineering, or similar disciplines.” Pet. 17 (citing Ex. 1002 ¶¶ 14–15). Petitioner further asserts that a POSA would have had “(2) several years of post-graduate training or related experience in one or more of these areas” and “(3) an understanding of vector design and the effect of LCR fragments on gene expression, including experience with how the LCR regulates gene expression.” Id. At this stage in the proceeding, Patent Owner does not dispute Petitioner’s description of the level of ordinary skill in the art. See Prelim. Resp. Because Petitioner’s uncontested definition of one of ordinary skill in record, we adopt Petitioner’s definition for purposes of this Decision.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “no term of the ’179 patent requires construction to resolve the challenges in this Petition.” Pet. 22 (citing Ex. 1002 ¶¶ 49– 50) (footnote omitted). Patent Owner does not argue for any express claim constructions. See Prelim. Resp. Based upon our review of the current record, we determine that no claim terms require express construction for purposes of deciding whether to institute an inter partes review of the challenged claims. 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 15
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“As the Federal Circuit has noted, however, “[i]n order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.” Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). Rather, “the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,541,179 - Shenzhen Buxiang Network Technology Co., Ltd. v. Sun Pleasure Co. LimitedNo claims unpatentablePTAB · 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 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,353,555 - Boston Scientific Corp. And Boston Scientific Neuromodulation Corp. v. Nevro Corp.Some claims unpatentablePTAB · Mar 14, 2022 · IPR2020-01563 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 1–7 and 9–21 are unpatentable as anticipated by Bradley857 and obvious over Bradley857, Bradley384, and Meadows; claim 8 was not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“At the outset, we find that the plain language of clauses 1[i], 12[k], and 18[e], in isolation, requires only that the displayed image of one lead is aligned with the displayed image of the other lead without requiring any “repositioning” of previously displayed images. However, Patent Owner argues that other language recited in each independent claim requires first “establishing” the positions of the first and second leads, which necessarily means that “aligning” the images of the first and second leads refers to repositioning them on the display. Sur-reply 2–3. However, Patent Owner’s argument fails to recognize the distinction between establishing the physical “position” of the leads relative to a physical frame of reference and aligning computer-based images of those leads. For example, clauses 18[b] and 18[c] of independent claim 18 recite: “[b] establishing a first positional relationship between a location of a first signal delivery device and an anatomical feature of a patient” and “[c] establishing a second positional relationship between a location of a second signal delivery device and at least one of the location of the first signal delivery device or the anatomical feature of the patient.” Ex. 1001, 40:34–41. None of clauses 18[b] or 18[c] or the substantively identical clauses 1[d], 1[f], 12[h], 12[i]5 from the other independent claims mentions displaying an image of either lead on a computer screen. Rather, these clauses encompass establishing the spatial position of each of the first and second physical leads relative to a physical frame of reference (e.g., an anatomical feature of a patient or another lead). These limitations may be met without displaying leads on a computer screen at all. Accordingly, we reject Patent Owner’s argument that the claims first require positioning images of the leads on a display before aligning those images on the display. Rather, we find that a plain reading of “align” or” slip op. at 10
- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
“II. PATENT OWNER’S MOTION TO AMEND Patent Owner filed a contingent motion to amend claims. Paper 25. Patent Owner affirmatively withdrew its motion, Paper 36, after we issued Preliminary Guidance on the motion, Paper 32. Accordingly, Patent Owner’s motion to amend is moot, and we do not reach any issue presented in that motion.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest Petitioner’s definition of the ordinary level of skill. PO Resp. 17. For purposes of this Decision, we adopt Petitioner’s undisputed definition. We also find that Petitioner’s proposed definition is consistent with the level of skill demonstrated in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). E. CLAIMS 1–21: ANTICIPATION BY BRADLEY857” slip op. at 17
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner
“which electrodes are selected for delivering therapy. Reply 10. Petitioner also responds that Bradley857’s reference to Meadows incorporates Meadows method for determining whether an electrode is “available” to the user for delivering therapy by first confirming that impedance of the electrode is within a pre-established range. Id. For example, Meadows indicates that the “number of implanted and available electrodes is typically automatically determined by impedance measurements during hardware interrogation,” Ex. 1006, 34:57–59, and that impedance of an electrode “is a general measure of the fitness of the system to perform its required function,” id. at 46:61–64. Dr. Stone, Patent Owner’s expert, agrees that Meadows’s system does not deliver therapy to an electrode if the measured impedance for that electrode is too high or too low, that is, outside a pre-established range. Ex. 1040, 82:8–87:8.” slip op. at 33
Patent outcomesUS 10,076,665 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,076,665 - St. Jude Medical, LLC v. Snyders Heart Valve LLCAll claims unpatentablePTAB · May 2, 2019 · IPR2018-00107 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 1–3, 8, 9, 22, 23, 31–35, 37–39, and 45 are unpatentable, including as obvious over Bessler and Johnson; anticipation by Bessler succeeds only for claims 38, 39, and 45.
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 › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“direct attachment” of the flexible valve element to the frame. Id. at 8. However, the portion of the Specification on which Patent Owner relies also describes indirectly attaching the flexible valve element to a frame by securing it to a band that is directly attached to the frame. Ex. 1001, 7:55–66. This type of indirect attachment is illustrated in Figure 3, reproduced below right. The Specification describes Figure 3 as follows: As illustrated in FIG. 3, the flexible valve element 22 is attached to the central portion 36 of the frame 20 at a position substantially centered between the anchors 34. Although the valve element 22 may be attached to the frame 20 by other means without departing from the scope of the present invention, the valve element of the preferred embodiment is attached to the frame by adhesive bonding. Further, the flexible valve element 22 is attached to the frame 20, and more particularly to the band 40, at several attachment points 56 around the frame. Id. at 7:57–66 (emphasis added). This passage indicates that the flexible valve element is attached to the frame in two ways: (1) directly by being bonded to the central portion 36 of frame 20 and (2) indirectly by being attached to band 40 at attachment points 56. The Specification later expresses a preference for bonding valve element 22 to band 40 with adhesive. Id. at 8:11–14. Interpreting “attached to” to mean “directly attached to” as suggested by Patent Owner would be inconsistent with the Specification’s broader description of how valve element 22 is attached to frame 20. We interpret claim language “in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b) (2018). Doing so requires us to interpret claim language in a manner that “corresponds with what and how the inventor describes his invention in the specification.” In re Smith Int’l, Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017). The inventor describes both direct and indirect methods of attaching the flexible valve element to the frame. Accordingly, we interpret “attached to” as encompassing both direct and indirect ways of attaching the flexible valve element to the frame.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Petitioner’s argument that Bessler’s valve is attached to the central part of the frame of claims 1 and 31 fails. Bessler’s valve is undeniably attached to its frame because the cuff portion of the valve is sutured to its stent. Claims 1 and 31 require the valve element to be attached to a portion of the frame located along the radial centerline. Ex. 1001, 19:19–20 (claim 1), 22:67–23:2 (claim 31). Bessler’s valves fail to meet this requirement. Bessler’s stent 32 is a hollow cylinder devoid of structure located along its centerline,3 and the “central portion of the frame” identified by Petitioner, straight sections 33, is part of walls 31 located on the radial periphery of stent 32. Id. at 5:28–43, Figure 4. Regardless of how Bessler’s valve is attached to the wall of its stent, the valve is not attached to structure “located along a centerline” as recited in claims 1 and 31. Therefore, we determine that Petitioner fails to establish by a preponderance of evidence that Bessler anticipates claims 1 and 31 or their respective dependent claims 2, 3, 8, 9, 32–35, and 37.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“For all these reasons, Dr. Chronos’s assertion that incorporating Johnson’s strut-based frame and membrane into Bessler’s stent would render the combined structure too large is not supported by the objective evidence of record. Patent Owner’s argument rests upon Dr. Chronos’s testimony. Accordingly, we find Patent Owner’s argument unpersuasive. Instead, we determine that Petitioner has proven that an ordinarily skilled artisan would 5 Ex. 1009, 1:12–13. have been motivated to combine the teachings of Bessler and Johnson as alleged.” slip op. at 38
Patent outcomesUS 6,821,297 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,821,297 - Johns Manville Corporation / Johns Manville, Inc. v. Knauf Insulation, Inc. And Knauf Insulation SPRLNo claims unpatentablePTAB · 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 unpatentableClaim construction§ 102 anticipation§ 103 obviousness - Johns Manville Corporation / Johns Manville, Inc. v. Knauf Insulation, Inc. And Knauf Insulation SPRLNo claims unpatentablePTAB · 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 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Graham - J Squared, Inc. D/B/A University Loft Company v. Sauder Manufacturing CompanySome claims unpatentablePTAB · Jun 27, 2016 · IPR2015-00774 · APJ Linda E Horner · IPR · Final written decision
Claims 1, 2, 6–8, 10, and 11 are unpatentable over Mackey and/or Pollack II and Pollack I; claims 4, 5, 9, and 12–14 are not held unpatentable.
RulingsFinal written decision- BurdenFwd mixedMixed
“i. Conclusion - Obviousness We have weighed the entirety of the evidence in this proceeding, including J Squared’s evidence of obviousness and Sauder’s evidence of non-obviousness. On balance, we conclude that J Squared has shown by a preponderance of the evidence that the subject matter of claims 1, 2, 6‒8, 10, and 11 would have been obvious over Pollack II and Pollack I, but has not shown that the subject matter of claims 9 and 12‒14 would have been obvious over this prior art. III. CONCLUSIONS For the foregoing reasons, we determine the following: A. J Squared has shown by a preponderance of the evidence that claims 1, 2, 8, 10, and 11 are anticipated under 35 U.S.C. § 102 by Mackey; B. J Squared has not shown by a preponderance of the evidence that claims 4 and 5 are anticipated under 35 U.S.C. § 102 by Mackey; C. J Squared has shown by a preponderance of the evidence that claims 1, 2, 6‒8, 10, and 11 are unpatentable under 35 U.S.C. § 103 as obvious over Pollack II and Pollack I; and D. J Squared has not shown by a preponderance of the evidence that claims 9 and 12‒14 are unpatentable under 35 U.S.C. § 103 as obvious over Pollack II and Pollack I.” slip op. at 64
- Skill levelSkill level board ownOther
“considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962‒63 (Fed. Cir. 1986)). The court in GPAC held that the Board did not err in in failing to make a specific finding as to the level of skill in the art and relying instead on the references of record to inform it as to the level of skill in the art. Id.; see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the absence of specific findings on the 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). J Squared did not proffer a specific level of skill of one of ordinary skill in the art, and relied instead on the prior art to reflect an appropriate level of skill. Tr. 78:15‒20. We find no need for testimony as to the level of skill in the art, as it is demonstrated aptly by the prior art of record. For purpose of this Final Written Decision, we resort to the prior art of record to assess the level of skill of one of ordinary skill in the art. In particular, as discussed below, the prior art explicitly proposes the combination of the teachings of the Pollack references.” slip op. at 37
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Sauder is, in essence, seeking to have the Board rewrite the claim to recite, “A combination consisting of a chair and a stool base portion.” We see no reason to narrow the claim, particularly when the body of the claim itself recites “said combination further comprises an assembly . . . .” Ex. 1001, 10:42. For these reasons, we construe “combination” to include, but not be limited to, a chair and a stool base portion.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“We reconsider our claim interpretation in light of the additional arguments and evidence provided by Sauder in its Patent Owner Response and by J Squared in its Reply. The function called for in this means plus function claim limitation is “releasably engaging said chair to said base portion.” Ex. 1001, 12:4‒5. We think Sauder has the correct interpretation of the functional recitation of claim 12. The focus of the language of claim 12 is on the verb “engaging,” while the adverb “releasably” modifies the verb “engaging” to simply require that the engagement is effected in such a way that it is not permanent. This understanding is consistent with the claim language used in the remainder of this clause, which focuses on releasable engagement of the chair “to” the base portion. We note that during prosecution of claim 12 (application claim 20) of the ’136 patent before the examiner, Sauder amended the claim language “manually operable means for releasably engaging said chair from said base portion” to recite instead “manually operable means for releasably engaging said chair to said base portion,” thereby clearly shifting the focus of this functional language from one of disengagement to engagement. Ex. 1013, 210. Consistent with our interpretation of “engage,” we construe the term “engaging” to mean locked together. The ’136 patent describes the structure corresponding to the function of releasable engagement, i.e., locking together of the chair to the base as being effected by the claw and the latch engaging the underside of the saddle: The claw 142 (illustrated in FIGS. 9, 10, 13 and 14) extends generally downward from the frame lower portion 106, near the second portion 124 of the frame lower portion 106, and is adapted for cooperating releasable engagement with the base 300. More specifically, and as will be discussed in greater detail in subsequent paragraphs herein, the claw 142 will function so as to releasably engage with a saddle 310 of the base 300. . . . More specifically, the clip clamp latch 160 extends generally downward from the frame lower portion 106, near its first portion 122, and is adapted for cooperating releasable engagement with the base 300 and more specifically with the saddle 310 of the base, discussed further below. Ex. 1001, 5:19‒26, 5:58‒62.” slip op. at 24
Patent outcomesUS 8,585,136 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,585,136 - Actifio, Inc. v. Delphix Corp.All claims unpatentablePTAB · Apr 29, 2016 · IPR2015-00108 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 9–13 and 21–23 are unpatentable as obvious under § 103 over Sanders, Edwards, and Patel; claims 13 and 23 also rely on Chapman.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner
“printed publications” in accordance with 35 U.S.C. §§ 102 and 311(b). PO Resp. 1‒5. We look to the underlying facts to make a legal determination as to whether a document is a printed publication. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a document is a “printed publication” under 35 U.S.C. § 102(b) involves a caseby-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Public accessibility is a key question in determining whether a document is a printed publication and is determined on a case-by-case basis. Suffolk Techs., 752 F.3d at 1364. To qualify as a printed publication, a document “must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The first phrase in the cited passage above explicitly defines the term, by stating “[a] database block is a unit of data used by a database.”4 Ex. 2102, 2:7–8. Although the sentence following shortly thereafter states that a database block “stores metadata,” that sentence by itself is insufficient to limit the disputed term by requiring the unclaimed “metadata” feature because it does not state unambiguously that all “database blocks” must include metadata. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (construing a claim term broadly because “[n]o statement in the written description [ ] constitute[d] a limitation on the scope of the invention”) (quoting Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc., 334 F.3d 1294, 1301 (Fed. Cir. 2003)). Further, the cited passage also does not exclude the possibility of some database blocks not having any metadata. See id. at 908 (passages in the Summary of the Invention section of a patent did not limit the scope of the invention because the passages, “although focusing on the use of the invention in conjunction with pressure jackets, do not disclaim the use of the invention in the absence of a pressure jacket”). More importantly, the rest of the ’361 patent is consistent with a definition of database blocks that does not require metadata in all database blocks.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We are not persuaded by Patent Owner’s arguments. The crux of these arguments appears to be that, because a Snapshot copy allegedly is an exact copy of the current state of the volume, SnapMirror does not utilize database blocks from different points in time to create a Snapshot copy. The claim language, however, does not require database blocks for different point-in-time copies to be utilized in this manner. Rather, the claim language merely requires receiving and storing database blocks for different point-in-time copies. We agree with Petitioner that the combined teachings of Sanders and Edwards disclose receiving and storing database blocks for different point-intime copies. Sanders discloses that “[t]he SnapMirror initialize command creates a Snapshot copy of the source volume and transfers data from the source to the destination volume,” such that the transferred data is received and stored at the destination volume. Ex. 1104, 22. We also credit Dr. Zadok’s testimony that a Snapshot copy is a point-in-time copy. Ex. 1117 ¶¶ 44, 123. Thus, each Snapshot copy would result in transferred data (i.e., database block) for different point-in-time copies being received and stored. Lastly, even if Patent Owner is correct that a given Snapshot copy uses only database blocks from the same point in time, we agree with Petitioner that this does not mean that database blocks for different point-in-time copies are not received and stored. We conclude that a preponderance of the evidence demonstrates that a person of ordinary skill would have found the limitation of loading the first database at multiple points in time, including receiving and storing database blocks for different point-in-time copies, obvious.” slip op. at 47
- ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed
“1132, 1133, 1135, 1136, 1138, 1141–1145, 1147, 1148, 1150, 1154, 1155, 1157, 1159, 1160, 1164, 1166, and 1167. Paper 36 (“Mot. to Exclude”), 1. In inter partes reviews, documents are admitted into evidence subject to an opposing party asserting objections to the evidence and moving to exclude the evidence. 37 C.F.R. § 42.64. As movant, Patent Owner has the burden of showing that an Exhibit is not admissible. 37 C.F.R. § 42.20(c). Patent Owner contends that Petitioner does not rely on Exhibits 1132, 1133, 1135, 1138, 1144, 1148, 1150, 1154, 1157, 1159, 1164, 1166, and 1167. Mot. To Exclude 1 n.1. Petitioner does not dispute this contention. See Paper 46 (“Opp. Mot. to Exclude”). We, therefore, grant Patent Owner’s motion as it pertains to Exhibits 1132, 1133, 1135, 1138, 1144, 1150, 1154, 1157, 1159, 1164, 1166, and 1167. We note, however, that Petitioner does rely on Exhibit 1148. See Reply 11. For reasons discussed below, we deny Patent Owner’s motion as it pertains to Exhibit 1148. Further, Petitioner has moved, unopposed, to expunge Exhibit 1128 (see Paper 34), which motion we hereby grant. Of the remaining objected-to Exhibits, our Final Written Decision discusses and relies on only Exhibits 1106, 1120, 1147, and 1148. We determine, for reasons set forth above, that Petitioner has demonstrated by a preponderance of the evidence that the challenged claims are unpatentable, without need for Petitioner’s additional arguments or evidence in relation to the remaining additional Exhibits. Accordingly, Patent Owner’s motion to exclude Exhibits 1136, 1141–1143, 1145, 1155, and 1160 is dismissed as moot.” slip op. at 57
Patent outcomesUS 8,566,361 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,566,361
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.