- Seoul Semiconductor Co., Ltd / North America Seoul Semiconductor Inc. v. Enplas CorporationAll claims unpatentablePTAB · Oct 15, 2015 · IPR2014-00878 · APJ Jeremy M Plenzler · IPR · Final written decision
Claims 1, 2, 5–7, and 10–12 are unpatentable as obvious over the instituted combinations of Tetsuo with Kim or Blieske, with Yamaguchi for claims 10 and 11.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“lexicographical definition for the “light control/emission surface,” and, instead, “merely describes an embodiment of a light control/emission surface.” Pet. Reply 2. Petitioner proposes that we construe this term in the manner stated in our Decision to Institute (Pet. Reply 4 (citing Dec. 7)), where we construed the term “as only requiring a ‘surface that controls a traveling direction of light emitted from the light emitting element’” (Dec. 7). We agree with Petitioner. Patent Owner has failed to persuade us that the cited portions of the Specification of the ’969 patent provide a definition of this term with reasonable clarity, deliberateness, and precision. Although the Specification of the ’969 patent provides the example of light control/emission surface 11 including first, second, and third emission surfaces 11a, 11b, 11c (Ex. 1001, 7:20–42), Patent Owner fails to identify anything in the Specification indicating that these three emission surfaces are required for the claimed “light control/emission surface.” The initial discussion of light controlling emission surface 11 states that “light controlling emission surface 11” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“to arrange optical elements on the back of a light flux controlling member. Id. at 33 (citing Ex. 1003 ¶¶ 32–33). Petitioner contends that one skilled in the art would have needed to select an arrangement for Tetsuo’s refraction parts, and would have considered the grid pattern taught by Kim to be one obvious option. Id. Petitioner reasons, for example, that it would have been obvious to one skilled in the art to use a grid pattern to arrange the refraction parts on the back of Tetsuo’s light flux controlling member because “Kim also identifies specific benefits from providing a grid of horizontal and perpendicular grooves between optical elements on the light incoming side of a lens” including “uniform output brightness from the light flux controlling member,” which would have been beneficial to the arrangement in Tetsuo. Id. at 33–34 (citing Ex. 1005, 2:35–37; Ex. 1004 ¶¶ 6–7).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Patent Owner responds with general allegations of “teaching away” and “impermissible hindsight,” but does not explain persuasively why one skilled in the art would have been discouraged from the proposed modification or why it was based solely on the disclosure of the ’969 patent. PO Resp. 27–30. For example, Patent Owner alleges, generally, that “Petitioners’ position requires one of skill in the art to ‘disassemble the single lens of Kim’ at the point of novelty of the Claims, to provide a surface taught away from by Tetsuo, which employs a different type of surface.” Id. at 28.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“Patent Owner responds with general allegations of “teaching away” and “impermissible hindsight,” but does not explain persuasively why one skilled in the art would have been discouraged from the proposed modification or why it was based solely on the disclosure of the ’969 patent. PO Resp. 27–30. For example, Patent Owner alleges, generally, that “Petitioners’ position requires one of skill in the art to ‘disassemble the single lens of Kim’ at the point of novelty of the Claims, to provide a surface taught away from by Tetsuo, which employs a different type of surface.” Id. at 28.” slip op. at 15
Patent outcomesUS 8,227,969 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,227,969 - Edmund Optics, Inc. v. Semrock, Inc.No claims unpatentablePTAB · Sep 16, 2015 · IPR2014-00599 · APJ William A Capp · IPR · Final written decision
Claims 33–36, 39–41, 44, and 45 were not shown unpatentable: MacLeod did not enable claim 33 for anticipation, and Edmund did not establish obviousness over MacLeod.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“After considering claim 33 in view of the specification, as a whole, we are not persuaded that the intrinsic record requires a departure from the plain and ordinary meaning of “multi-layer, thin-film, laser-line filters.” The standard for finding claim scope disavowal is exacting. See GE Lighting Solutions, LLC v. Agilight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). It is not enough that the only embodiments, or all of the embodiments, contain a particular limitation. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012). Mere criticism of a particular embodiment encompassed in the plain meaning of a claim term is not sufficient to rise to the level of clear disavowal. See Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009). Furthermore, even where a particular structure makes it “particularly difficult” to obtain certain benefits of the claimed invention, this does not rise to the level of disavowal of the structure. See Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1315 (Fed. Cir. 2010). It is the claims that define the metes and bounds of the patentee’s invention. See Phillips, 415 F.3d at 1313. Thus, the patentee is free to choose a broad term and expect to obtain the full scope of its plain and ordinary meaning unless the patentee explicitly redefines the term or disavows its full scope. See Thorner, 669 F.3d at 1366. Each claim does not need to cover every feature disclosed in a specification. See Ventana Med. Sys., Inc. v. Biogenex Labs, Inc., 473 F.3d 1173, 1182 (Fed. Cir. 2006). When a claim addresses only some of the features disclosed in the specification, it is improper to limit the claim to other, unclaimed features.” slip op. at 14
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“The MacLeod Treatise is a non-patent, printed publication. Edmund relies on In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012), for the proposition that a non-patent, printed publication is presumptively enabled for purposes of an anticipation analysis. Paper 69, 1. Semrock distinguishes Antor Media as being restricted to the context of patent prosecution. Paper 68, 3. The Court, in Antor Media, explained the underlying rationale for permitting a presumption of enablement during patent prosecution. [A]n examiner, who has no access to experts or laboratories, is not in a position to test each piece of prior art for enablement in citing it, and requiring him to do so would be onerous, if not impossible. An examiner, therefore, is not required to anticipate every possible response to a rejection, including showing that a cited reference is enabling. Consistent with the statutory frame-work and our precedent, we therefore hold that, during patent prosecution, an examiner is entitled to reject claims as anticipated by a prior art publication or patent without conducting an inquiry into whether or not that prior art reference is enabling. As long as an examiner makes a proper prima facie case of anticipation by giving adequate notice under § 132, the burden shifts to the applicant to submit rebuttal evidence of nonenablement. Antor Media, 689 F.3d at 1289. In the case of Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313 (Fed. Cir. 2003), the Federal Circuit held that an accused infringer should be entitled to have a district court presume the enablement of unclaimed material in a prior art patent asserted against a patentee. Id. at 1355. In dicta, the Amgen Court stated that its reasoning “might” also apply to prior art printed publications. We note that by logical extension, our reasoning here might also apply to prior art printed publications as well, but as Sugimoto is a patent we need not and do not so decide today. See id. (emphasis added). Thus, the Amgen Court did not reach that issue in its decision. See id. District Courts are split on this issue. We note that at least one district court decision has held that a district court should presume that a prior art printed publication is enabled. See Robocast, Inc. v. Apple Inc., 39 F. Supp. 3d 552, 565 (D. Del. 2014). Other district courts maintain otherwise. See e.g., CA, Inc. v. Simple.com., Inc., 780 F. Supp. 2d 196, 250 (E.D.N.Y. 2009); Matsushita Elec. Indus. Co. v. Samsung Electronics Co., 2006 WL 1794768, *5 (D.N.J. June 26, 2006).” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“G. Ultimate Determination of Enablement A patent claim “cannot be anticipated by a prior art reference if the allegedly anticipatory [disclosure] cited as prior art [is] not enabled.” In re NTP, Inc., 654 F.3d 1279, 1301 (Fed. Cir. 2011). Although anticipation is a question of fact, whether a prior art reference is enabling is a question of law with underlying factual inquiries. Id. The standard for what constitutes proper enablement of a prior art reference for purposes of anticipation under section 102 differs from the enablement standard for a patent application under section 112. See Verizon Services Corp., v. Cox Fibernet Virginia, Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010). Anticipation does not require the actual creation or reduction to practice of the prior art subject matter; anticipation requires only an enabling disclosure. See Schering Corp., v. Geneva Pharma, Inc., 339 F.3d 1373, 1380 (Fed. Cir. 2003); citing In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985). Nevertheless, we determine that the MacLeod Treatise does not enable claim 33. Claim 33 is directed to optical performance parameters. There is no dispute that multi-layer, thin-film, laser-line filters comprised of alternating layers of ZnS and Cryolite were known in the prior art. Thus, Semrock distinguishes its invention over prior art soft-coated filters on the basis of optical performance, not on the basis of using the basic structure of alternating layers of refractive materials with Fabry-Perot cavities. Upon consideration of the various Wands factors, including the absence of any working examples that demonstrate that Edmund’s theoretical calculations are capable of realization, we conclude that Semrock has carried its burden of showing that the MacLeod Treatise does not enable claim 33.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“By waiting and filing its expert declaration after Semrock filed its Patent Owner Response, Edmund effectively precluded Semrock from addressing Professor MacLeod’s Exhibit 1029 declaration in its Response. This also effectively precluded Semrock’s expert, Dr. Rancourt, from responding to Professor MacLeod’s belated testimony in his declaration that was filed in support of Semrock’s Response. We will not countenance such tactics. See Murphy v. Village of Hoffman Estates, 1999 U.S. Dist. LEXIS 3320, at *5–6 (N.D. Ill. 1999) (“[I]t is established beyond peradventure that it is improper to sandbag one’s opponent by raising new matter in reply.”). A Reply that belatedly presents evidence will not be considered. Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767. Edmund’s original Petition asserted a ground of unpatentability over the ZnS/Cryolite of Figure 7.26 of the MacLeod Treatise. If Edmund wanted to present a ground of unpatentability over the ZnS/Cryolite embodiment of Figure 7.26 in combination with a tantala/silica embodiment, Edmund should have presented evidence as to how and why a person of ordinary skill in the art would have combined the two embodiments to achieve the invention of claim 33 contemporaneous with the filing of its original Petition. See KSR, 550 U.S. at 418 (requiring articulated reasoning with rationale underpinning as to how or why a person of ordinary skill in the art would have combined or modified the teachings of the prior art). Presenting such evidence and argument for the first time in a Reply is untimely.” slip op. at 43
Patent outcomesUS 7,119,960 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,119,960 - Greene’S Energy Group, LLC v. Oil States Energy Services, LLCNo claims unpatentablePTAB · May 1, 2015 · IPR2014-00364 · APJ William A Capp · IPR · Final written decision
The Board found claims 1–13, 27, and 30–32 not shown unpatentable because the proposed obviousness combinations did not establish the claimed mechanical lockdown mechanism and its required function.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“The parties do not dispute that a “lockdown mechanism” maintains the mandrel in a fixed position during a fracking or well treatment operation. Thus, we will construe “lockdown mechanism” to mean “machinery for maintaining [the mandrel] in a fixed position during a fracking or well treatment operation.” This leaves us to determine what it means for a lockdown mechanism to be “mechanical” and whether the correct construction requires imposing a further definitional limitation regarding a range of adjustment. Oil States points out that the Specification differentiates a mechanical mechanism from hydraulic mechanisms. PO Resp. 12. The Specification distinguishes the instant invention from an earlier invention by the same inventor that discloses a hydraulic unit. Ex. 1001, 2:28–63. The Specification further states that: a mechanical lockdown mechanism for securing the BOP protector mandrel in an operative position is considered more reliable because a source of pressurized hydraulic fluid is not required. Id. at 2:3–6; see also id. at 3:53–56. Greene does not challenge that this language in the Specification effectively differentiates a mechanical lockdown mechanism from a hydraulic mechanism. Thus, we construe “mechanical” lockdown mechanisms as being limited to purely mechanical means such as nuts and bolts and the like. We further clarify that the principal holding force that maintains the mandrel in a fixed position is not a dynamic force such as through hydraulic, pneumatic, or electrical means or the like.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Oil States’s effort to read a “broad range of adjustment” limitation into the definition of mechanical lockdown mechanism in claim 1 renders the dependent limitation in claim 3 superfluous. Claim 2 claims an elongated spiral thread. There is no need to add a further limitation to claim 3 to provide for adjustment to compensate for variations in the distance between a top of the blowout preventer and the top of the casing of different wellheads if a “broad range of adjustment” is already contemplated in the meaning of mechanical lockdown mechanism. 8 It is well-settled that each claim does not necessarily cover every feature disclosed in the specification. See Ventana Med. Sys., Inc. v. Biogenex Labs, Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006). When a claim addresses only some of the features disclosed in the specification, it is improper to limit the claim to other unclaimed features. Id. Here, Oil States’s inclusion of adjustment limitations in claims 2 and 3 belie an intention to limit the scope of the term “mechanical lockdown mechanism” in claim 1 to mechanisms that provide a broad range of adjustment.9 Thus, we decline to adopt Oil States’s proposed construction. We construe a “lockdown mechanism” to mean “machinery for maintaining [the mandrel] in a fixed position.” In the context of lockdown mechanisms, we construe the adjective “mechanical” to mean that the lockdown mechanism is limited to purely mechanical means such as nuts and bolts and the like so that the principal holding force that maintains the mandrel in a fixed position 8 In the Summary of the Invention section of the Specification, the topic sentence of the paragraph describing an embodiment with a “significant range of adjustment,” qualifies the description of such embodiment with the word “preferably.” Ex. 1001, 3:8–27. This suggests that this passage of the Specification merely describes one embodiment and not the entire invention. 9 To the extent that claim 1 requires the mechanical lockdown mechanism to have any range of adjustment, such adjustment requirement may be found in the claim limitation directed to the lockdown mechanism being “adapted to ensure that the annular sealing body is securely seated against the top of the casing when the mandrel is in the operative position” and not in definition of “mechanical lockdown mechanism” per se.” slip op. at 11
- Skill levelSkill level board ownOther
“Green’s expert, Mr. Shackelford, opines that the person of ordinary skill in the art at the time of the invention of the ’993 patent would have had a Bachelor-level degree in a recognized engineering discipline and practical job exposure of several years with oil and gas well operations. Ex. 1002 ¶ 13. Mr. Shackelford’s testimony is entirely conclusory with no supporting factual analysis. Oil States contends that the level of ordinary skill in the art is “relatively low,” but does not articulate or explain what it means by this characterization. PO Resp. 22. Oil States’s expert, Dr. Wooley, merely adopts Mr. Shackelford’s position and, like Mr. Shackelford, fails to provide any supporting factual analysis. Merely reciting a college degree and a number of years of experience provides little guidance as to the actual capabilities of a person of ordinary skill in the art. Neither party presents a detailed evidentiary showing under the factors recited in Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). 13” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“combine references is a question of fact. In re Constr. Equip. Co., 665 F.3d 1254, 1255 (Fed. Cir. 2011). Greene fails to persuade us that a person of ordinary skill in the art would have had reason to combine Herricks and McLeod to achieve the invention claimed in claims 1 and 27 of the ’993 patent. Because the mechanical lockdown mechanism in McLeod is intended to be used with a mandrel that packs off at an indeterminate point in the casing, rather than at a fixed point and, therefore, does not disclose any range of adjustment to accommodate production trees of varying heights as would be necessary to be operable in systems designed for fixed point packoff, the proposed combination does not provide a mechanical lockdown mechanism that is adapted to securely seat a mandrel against the top of the casing as required by claim 1. Similarly, the proposed combination does not provide a method for engaging the mechanical lockdown mechanisms to lock the mandrel in the operative position such that the annular sealing body is in fluid sealing engagement with a top of a casing of the well as required by claim 27.” slip op. at 30
Patent outcomesUS 6,289,993 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,289,993 - Intri–plex Technologies, Inc. / Mmi Holdings, Ltd. v. Saint–gobain Performance Plastics Rencol LimitedNo claims unpatentablePTAB · Mar 23, 2015 · IPR2014-00309 · APJ William A Capp · IPR · Final written decision
Claims 1–10 were not shown unpatentable because Saint-Gobain’s evidence of commercial success outweighed the obviousness case over Admitted Prior Art and Wing.
RulingsFinal written decision- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Two separate tests define the scope of analogous art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Saint-Gobain argues that Wing does not satisfy either test. PO Resp. 26. slip op. at 30
- Skill levelSkill level board ownOther
“Notwithstanding the scant evidence on skill level presented by the parties, the level of skill in the art can often be determined from a review of the prior art. See Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985). Based on our review of the prior art and the other technology related exhibits of record that are contemporaneous with the date of the invention, the applicable art is hard disk drive assembly and similar precision machinery. The person of ordinary skill in this field would have been familiar with hard disk drive design and assembly in general and the use of tolerance rings in conjunction with actuator bearing cartridges in particular. Ex. 2001; Ex. 2016. The ordinarily skilled artisan would have been familiar with both Shaft Variable and Housing Variable tolerance rings and their manner of assembly with a bearing shaft and a bore. Ex. 1001, Admitted Prior Art. Such an artisan also would have been familiar with the problem of debris or particle generation during assembly of a hard disk drive. Ex. 2003; Ex. 1001, 2:5–17. Such a person would have 17 Factors pertinent to a determination of the level of ordinary skill in the art include: (1) educational level of the inventor; (2) type of problems encountered in the art: (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology, and (6) educational level of workers active in the field. Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). been familiar with the use of chamfering as an aid to assembly of machine components. Ex. 1023, 128:21–132:1; Ex. 1040. 18” slip op. at 34
- Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia with nexusDecided for patent owner
“A patentee demonstrates commercial success by showing significant sales of the patented product in a relevant market. J.T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563 (Fed. Cir. 1997). However, evidence of commercial success is only significant if there is a nexus between the claimed invention and the commercial success. Ormco Corp. v. Align Technology, Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). In the instant case, Saint-Gobain produced evidence that adding a flared guide portion to a tolerance ring quickly caused sales of flared tolerance rings to supplant sales of non-flared tolerance rings. Saint-Gobain also produced evidence that adding a flared guide portion caused sales of tolerance rings to supplant the sales of other, competing technologies. This evidence indicates that market demand for the flared tolerance ring is attributable to the flared guide portion. We are not persuaded by Intri-Plex’s evidence and argument that the market dominance of flared tolerance rings is attributable to Saint-Gobain coercing customers into sole source agreements. During the period from 2003 to 2007, Saint-Gobain sold tolerance rings with and without a guide portion. We are persuaded that the rapid increase in sales of flared tolerance rings vis-à-vis non-flared rings is more logically explained by customer preference than supplier coercion. Indeed, given the relatively easily discernable difference between the non-flared tolerance rings and the flared tolerance rings, we are hard pressed to come to a determination that the increase in sales of the flared tolerance rings is attributable to anything other than the flared guide portion. In any event, Intri-Plex’s arguments are belied by its own admissions. In response to Saint-Gobain’s allegations of copying, Intri-Plex volunteered that the only reason Intri-Plex made tolerance rings with a flared guide portion is due to customer requests. Pet. Reply 4; Paper 67, 12. Intri-Plex further admitted that the reason that its customers requested flared tolerance rings is because they had set up their manufacturing operations to accommodate a flared tolerance ring to the exclusion of a non-flared ring. Tr. 31:416.19 These admissions constitute strong evidence that the commercial success is attributable to customer demand for the patented features. In summary, the commercial success of flared tolerance rings, whether made and sold by Saint-Gobain or Intri-Plex, weighs heavily in favor of non-obviousness of the invention. 2. Copying” slip op. at 37
- Obviousness (§103) › Objective indicia / secondary considerations › CopyingDecided for patent owner
“A party may prove copying by showing that an accused copier had access to the patented product combined with substantial similarity to the patented product. Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010). Here, Intri-Plex denies direct copying of Saint-Gobain’s product and asserts, instead, that its alleged copy was made in response to customer requests. However, Intri-Plex does not deny that its customers had access to Saint-Gobain’s product.21 To the contrary, Ryan Schmidt admitted that all of the flared tolerance rings that Intri-Plex made and sold were the result of customers asking Intri-Plex to be a “second source” to Saint-Gobain. Ex. 1033 ¶¶ 20–23, 29; Ex. 1034. We are not persuaded that Intri-Plex can insulate itself from an accusation of copying, merely by interposing an intermediary between itself and Saint-Gobain’s patented product.22 We determine that Intri-Plex’s customers gave Intri-Plex detailed product specifications of a flared tolerance ring because they wanted a second source for Saint-Gobain’s patented product. Whether information concerning Saint-Gobain’s patented product was passed from Intri-Plex’s customers to Intri-Plex in the form of detailed product specifications instead of an actual product sample does not, in our view, negate a finding that Intri-Plex had the 21 Tr. 71:13-15. 22 In the copyright context, courts have found access when the alleged infringer and an intermediary occupy positions such that it is natural that information possessed by one would be imparted to the other. See, e.g., Meta-Film Associates, Inc. v. MCA, Inc., 586 F. Supp. 1346, 1356 (C.D. Cal. 1984); Bevan v. Columbia Broadcasting System, Inc., 329 F. Supp. 601, 610 (S.D.N.Y. 1971). requisite access to Saint-Gobain’s patented product.23 Ex. 1033 ¶ 21; Ex. 1034. On the basis of the facts that (1) Intri-Plex admits that its own commercial product included a flared guide portion and (2) that the flared guide portion was added in response to customer requests for a second source to Saint-Gobain’s product, we are persuaded that Saint-Gobain has shown that Intri-Plex had access to the patented product and that there is substantial similarity between the parties’ respective products, specifically, that both products included flared guide portions. Intri-Plex’s evidence fails to persuade us that this similarity between the parties’ respective products is either a coincidence or the result of independent creation. Consequently, Saint-Gobain’s evidence of copying weighs in favor of a finding that the patented invention is non-obvious.” slip op. at 40
Patent outcomesUS 8,228,640 not shown unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,228,640
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.