- Apple Inc. v. Andrea Electronics Corp.Some claims unpatentablePTAB · Jul 12, 2018 · IPR2017-00627 · APJ Jeremy M Plenzler · IPR · Final written decision
Claims 1–5, 10–16, 21–23, 25, and 38–46 are unpatentable; claims 6–9, 17–20, 24, and 47 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“Although the dictionary defines “periodically” as “from time to time” or “at regular intervals of time,” based on the record before us, we agree with Patent Owner that its proposed construction is how one skilled in the art would have understood that term in the context of the ’345 patent Specification. Turning first to the intrinsic evidence, the Specification explains that “[t]he future and current minimum values are calculated continuously and initiated periodically, for example, every 5 seconds.” Ex. 1001, 8:37–39. Although the Specification later notes that “[i]t will be appreciated that, while specific values are used as in the several equations and calculations employed in the present invention, these values may be different than those shown” (id. at 8:64–67), this passage does not mean that the Specification contemplates arrangements where “periodically” is simply “from time to time.” Rather, we determine that statement from the Specification indicates that the specific amount of time (i.e., every 5 seconds) may vary. Turning now to the extrinsic evidence, the testimony of Dr. Douglas supports our conclusion, explaining that “at regular intervals of time” is the “only . . . definition . . . consistent with the understanding of a person skilled in the art in light of the specification of the ’345 Patent and its use in the particular field of audio signal processing” because [l]ike the “period” of an audio signal itself, which is the amount of time it takes for a signal to repeat itself, “periodically” as recited in claims 6 and 9 and throughout the remainder of the specification of the ’345 Patent refers to actions that occur at regular intervals (e.g., every 5 seconds rather than merely “from time to time”). Ex. 2002 ¶ 48. Moreover, Petitioner’s declarant, Dr. Hochwald testifies that outside of the context of the ’345 patent Specification, “periodically” means “at regular time intervals” (Ex. 2005, 99:13–15), and when asked about that term’s meaning in the context of the ’345 patent Specification, Dr. Hochwald simply noted that “all I can do is read what it says,” which is that “[i]t’s doing something periodically, for example, every five seconds” (id. at 100:4–6). Accordingly, the testimony from Dr. Douglas, as well as that from Dr. Hochwald, supports Patent Owner’s construction. In summary, we adopt Patent Owner’s construction of “periodically,” requiring “at regular intervals of time,” because (1) this is consistent with how this term is used in the context of the ’345 Patent Specification; and (2) this is supported by the testimony of both experts.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Patent Owner responds that, because Helf uses average values (i.e., the average of eight consecutive values), it does not disclose using a minimum value. PO Resp. 17–23. Patent Owner acknowledges that the ’345 patent, itself, uses a “smoothing process [that] produces frequency bins with multiple smoothed magnitude values, ultimately finding the minimum of all of the values,” but contends that “Helf’s averaging process produces a single output representing one average of the original samples.” Id. at 20–21 (underlining omitted) (citing Ex. 1001, 8:14–28; Ex. 2002 ¶¶ 52, 63–72). We disagree with Patent Owner’s characterization of the differences between Helf and the ’345 patent. While Helf may ultimately produce a single minimum value, as discussed above, that value is based on a minimum value of the averages calculated over the given time period. At oral hearing, Patent Owner acknowledged that Helf determines many averages values (i.e., the averages of the eight consecutive frames) and determines a minimum of those values. See, e.g., Tr. 22:2–6. The claim simply requires a “future minimum value,” and does not preclude that value from being a minimum value taken from a set of average values. Indeed, such an interpretation of the claim would be inconsistent with the ’345 patent’s use of smoothed values noted by Patent Owner. Ex. 1001, 8:14–28. The testimony of Dr. Douglas cited by Patent Owner does not convince us otherwise. See Ex. 2002 ¶¶ 52, 63–72 (effectively repeating Patent Owner’s contentions, which are unpersuasive for the reasons set forth above). Accordingly, we are persuaded that Helf’s minimum value (Mk) corresponds to the “future minimum value” recited in claims 4 and 39.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed
“With respect to its “running minimum estimator,” Helf explains that the “running minimum estimator” is used “when either the speech signal is never absent for more than a second or the background noise itself is never constant in spectral shape.” Ex. 1010, 8:11–15. Helf acknowledges that its “running minimum estimator” is “much less accura[te]” than its “stationary estimator,” which is typically used for background noise estimates. Id. at 8:15–17. As a result, Helf only uses its “running minimum estimator” if “[i]t has been more than 10 seconds since the last update of the background noise spectral estimate due to the Stationary Estimator,” and “[t]he difference, D, between the past background noise estimate, which may have resulted from the Stationary Estimator or the Running Minimum Estimator, and the current Running Minimum Estimator is great.” Id. at 8:32–42. We see no persuasive reason to set Helf’s current background noise estimate (Nk and Ck, considered the “current minimum” by Petitioner) to the minimum estimate (Mk) from the “running minimum estimator” (considered the “future minimum” by Petitioner). The testimony of Dr. Douglas supports this conclusion. See, e.g., Ex. 2002 ¶¶ 119, 120. Addressing the portions of Helf noted above, Dr. Douglas testifies that “Helf only relies on Mk in a ‘worst case’ scenario” and “disfavors the use of Mk, even where Bk is unavailable,” and concludes that “one of ordinary skill would not be motivated to force the use of the disfavored Mk every ten seconds even where the much more accurate Bk estimate is available.” Id. ¶ 119. Dr. Douglas further testifies that “one of ordinary skill would not have been motivated to abandon[] the comparison of D to a threshold” because “one of ordinary skill in the art would recognize that Helf is a signal-dependent system, and it would not abandon its ability to adapt to varying signal conditions in favor of a blind periodic update using a disfavored estimate.” Id. ¶ 120. We credit the testimony of Dr. Douglas over that of Dr. Hochwald in this regard. See Ex. 1004 ¶¶ 157–159; Ex. 2002 ¶¶ 115–120. The testimony from Dr. Douglas is consistent with the disclosure of Helf, while that of Dr. Hochwald is based on conclusory statements. For example, the only portions of Dr. Hochwald’s testimony cited in the Petition in connection with the rationale provided in this challenge are conclusory statements that “[a] person of ordinary skill would have found it obvious to modify Helf to update the background noise estimate after every 10 second period based on the teachings of Martin,” and “[t]he skilled person would have recognized it was beneficial to periodically update the minimum noise value to ensure it accurately reflected the current noise level,” which are contrary to the disclosure of Helf noted above. Ex. 1004 ¶¶ 158, 159.” slip op. at 21
- Expert testimonyPatent owner expert creditedPetitioner expert discountedOther
“We see no persuasive reason to set Helf’s current background noise estimate (Nk and Ck, considered the “current minimum” by Petitioner) to the minimum estimate (Mk) from the “running minimum estimator” (considered the “future minimum” by Petitioner). The testimony of Dr. Douglas supports this conclusion. See, e.g., Ex. 2002 ¶¶ 119, 120. Addressing the portions of Helf noted above, Dr. Douglas testifies that “Helf only relies on Mk in a ‘worst case’ scenario” and “disfavors the use of Mk, even where Bk is unavailable,” and concludes that “one of ordinary skill would not be motivated to force the use of the disfavored Mk every ten seconds even where the much more accurate Bk estimate is available.” Id. ¶ 119. Dr. Douglas further testifies that “one of ordinary skill would not have been motivated to abandon[] the comparison of D to a threshold” because “one of ordinary skill in the art would recognize that Helf is a signal-dependent system, and it would not abandon its ability to adapt to varying signal conditions in favor of a blind periodic update using a disfavored estimate.” Id. ¶ 120. We credit the testimony of Dr. Douglas over that of Dr. Hochwald in this regard. See Ex. 1004 ¶¶ 157–159; Ex. 2002 ¶¶ 115–120. The testimony from Dr. Douglas is consistent with the disclosure of Helf, while that of Dr. Hochwald is based on conclusory statements. For example, the only portions of Dr. Hochwald’s testimony cited in the Petition in connection with the rationale provided in this challenge are conclusory statements that “[a] person of ordinary skill would have found it obvious to modify Helf to update the background noise estimate after every 10 second period based on the teachings of Martin,” and “[t]he skilled person would have recognized it was beneficial to periodically update the minimum noise value to ensure it accurately reflected the current noise level,” which are contrary to the disclosure of Helf noted above. Ex. 1004 ¶¶ 158, 159.” slip op. at 21
Patent outcomesUS 6,363,345 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,363,345 - Apple Inc. v. Andrea Electronics Corp.Some claims unpatentablePTAB · Jul 12, 2018 · IPR2017-00626 · APJ Jeremy M Plenzler · IPR · Final written decision
Claims 1–3, 12–25, 38, and 47 are unpatentable; claims 4–11 and 39–46 are not shown unpatentable, chiefly because the proposed Hirsch–Martin combination was not supported.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“In its Reply, Petitioner contends that, “[i]n this configuration [where W = 1], any purported distinction between windows and sub-windows in Martin vanishes and [Patent Owner]’s argument is irrelevant,” acknowledging that the proposed modification eliminates Martin’s sub-windows. Pet. Reply 5. Petitioner further contends that Patent Owner “incorrectly argues that the use of sub-windows is central to Martin’s algorithm” and “[n]othing in Martin suggests that the use of sub-windows is required.” Id. at 7 (citing Ex. 1023 ¶¶ 6–8). We disagree with Petitioner, and credit the testimony of Dr. Douglas over that of Dr. Hochwald with respect to Martin’s use of sub-windows because, as discussed below, Dr. Hochwald’s testimony is not consistent with the disclosure of Martin, while the testimony of Dr. Douglas is consistent with that disclosure. See, e.g., Ex. 1023 ¶¶ 6–9 (asserting that Martin does not expressly require sub-windows); Ex. 2002 ¶¶ 94–96 (discussing Martin’s use of at least two sub-windows for monotonic determination). As noted above, Martin’s algorithm requires a determination of whether or not “the minimum power of the last W windows with M samples each is monotonically increasing.” Ex. 1006, 1094. We are not persuaded by Petitioner’s argument that one skilled in the art would have found it obvious to modify Hirsch’s system based on a scenario from Martin where W = 1 because such a scenario is counter to the entire purpose of Martin. Even Petitioner’s Declarant, Dr. Hochwald, acknowledges that a single data point (i.e., W = 1) cannot be used to determine whether something is monotonically increasing. See Ex. 2005 69:10–17 (explaining that you need at least two data points to make such a determination, meaning W ≥ 2). Petitioner fails to provide persuasive reasoning as to why one skilled in the art would have modified Hirsch’s teachings in a manner that is contrary to the express disclosure of Martin.” slip op. at 14
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner attempts to cure these deficiencies in its Reply, contending that, “[e]ven where Martin’s algorithm is configured to use multiple sub-windows, it still teaches the claimed ‘future minimum.’” Pet. Reply 8. We do not consider this new argument, as it is a new theory of unpatentability presented for the first time in the Petitioner’s Reply. See Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1301 (Fed Cir. 2016) (“A patent owner . . . is undoubtedly entitled to notice of and a fair opportunity to meet the grounds of [unpatentability].”) (quoting Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015)). For at least these reasons, Petitioner has failed to establish by a preponderance of the evidence that claims 4–11, 39–42, and 46 are unpatentable over the combined teachings of Hirsch and Martin.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Hirsch is directed to “techniques . . . to estimate the noise spectra or the noise characteristics for noisy speech signals” that “can be combined with a nonlinear spectral subtraction scheme.” Ex. 1005, 153. Hirsch discusses use of “FFT based spectral analysis” (id. at 154), for example, which Petitioner cites as corresponding to the “generating the frequency spectrum of said audio signal thereby generating frequency bins of said audio signal” recited in claim 1 (Pet. 27). Hirsch discusses use of an “adaptive threshold” for each frequency bin to distinguish between speech and noise (Ex. 1005, 153), which Petitioner cites as corresponding to the “setting a threshold for each frequency bin using a noise estimation process” recited in claim 1 (Pet. 27). Hirsch describes comparing spectral components to their corresponding thresholds to determine if speech is present (Ex. 1005, 153), which Petitioner cites as corresponding to the “detecting for each frequency bin whether the magnitude of the frequency bin is less than the corresponding threshold, thereby detecting the position of noise elements for each frequency bin” recited in claim 1 (Pet. 27–28). Based on the record before us, we are persuaded that Hirsch discloses each and every element of claim 1. We also are persuaded that Hirsch discloses each and every element of claim 38 for the reasons discussed above in connection with claim 1, as well as the “subtracting said noise elements . . . from said audio signal” additionally recited in claim 38. With respect to the recited “subtracting,” Petitioner cites Hirsch’s discussion of spectral subtraction. Pet. 25–26 (citing Ex. 1005, 153–155). As Petitioner notes, “[t]he spectral subtraction technique shown in Hirsch subtracts the noise estimate from each sub-band or ‘bin’ and sets any negative values to zero” (id. (citing Ex. 1005, 153)), which “is the same technique used in the ’345 patent” (id. (citing Ex. 1001, 6:58–61, 7:16–27)). Claims 2, 3, 12, 13, 21, and 23 depend from claim 1, and Petitioner cites to relevant portions of Hirsch as disclosing the additional limitations of those claims. See Pet. 28–31. We are persuaded by Petitioner’s unrebutted arguments and evidence related to how Hirsch properly accounts for each and every element of these dependent claims, which we adopt for purposes of this decision. Specifically, we find that Hirsch discloses the additional limitations recited in those claims based on the citations to Hirsch therein and the supporting expert testimony. See id. Based on our review of the record before us, the preponderance of the evidence supports Petitioner’s contentions that claims 1–3, 12, 13, 21, 23, and 38 are anticipated by Hirsch.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed
“Initially, we agree with Petitioner that one skilled in the art would have considered Martin’s teachings, generally, when reviewing the teachings of Hirsch, as Martin is specifically referenced in Hirsch itself. Nevertheless, we are not persuaded that one skilled in the art would have modified Hisch’s system based on the teachings of Martin in the particular manner proposed by Petitioner. Consistent with Patent Owner’s contentions noted above, Martin describes determining “[t]he noise power estimate is based on the minimum of signal power within a window of L samples” and “[f]or reasons of computational complexity and delay the data window of length L is decomposed into W windows of length M such that M * W = L,” and provides an example where W=4. Ex. 1006, 1094. Martin distinguishes between “slowly varying noise power” and “rapidly varying noise power” to determine its noise power estimate, with a determination of whether the minimum power in successive sub-windows is monotonically increasing central to its estimation. Id. “If the minimum power of the last W windows with M samples each is monotonically increasing we decide on rapid noise power variation” and “the noise power estimate equals the power minimum of the last M samples Pn(i) = PMmin(i = r * M).” Id. “In case of non monotonic power the noise power estimate is set to the minimum of the length L window.” Id. Regardless of whether the noise power calculation is that for “slowly varying noise power” or “rapidly varying noise power,” Martin requires that first a determination is made as to whether or not “the minimum power of the last W windows with M samples each is monotonically increasing.” Id. (emphasis added). To the extent there can be any dispute on this issue, the testimony from Dr. Douglas supports the understanding that at least two subwindows are required to determine which noise power calculation to use. See Ex. 2002 ¶¶ 95, 96. In its Reply, Petitioner contends that, “[i]n this configuration [where” slip op. at 13
Patent outcomesUS 6,363,345 mixed§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,363,345 - Apple Inc. v. Virnetx Inc.Some claims unpatentablePTAB · Aug 24, 2015 · IPR2014-00482 · APJ Stephen C Siu · IPR · Final written decision
Claims 1, 4, 6, 10, 13–15, 17, 20, 22, 26, 29–31, 33, 35, and 37 are unpatentable; claims 12 and 28 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“We previously determined that, under a broad but reasonable construction, one of skill in the art would have understood the term “virtual private network communication link,” in light of the Specification, to include “a transmission path between two devices that restricts access to data, addresses, or other information on the path, generally using obfuscation methods to hide information on the path, including, but not limited to, one or more of authentication, encryption, or address hopping.” Dec. on Inst. 6–7. 1 Patent Owner disputes this interpretation and argues that the term “virtual private network communication link” must be “a communication path between computers in a virtual private network” (PO Resp. 8), “requir[es] computers within a VPN to communicate directly” (PO Resp. 10), and requires a “network of computers,” which, according to Patent Owner must be “more than a ‘path between two devices.’” PO Resp. 14. We decline to modify our previous construction of this term in the manner suggested by Patent Owner because such a modification is immaterial in this proceeding for reasons set forth below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed to the extent necessary to resolve the case).” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“understood that a “secure computer network address” must be “associated with a computer capable of virtual private network communications” because a claim recites “sending an access request message to the secure computer network address using a virtual private network communication link.” PO Resp. 16. We agree with Patent Owner that claim 1, for example, recites “sending an access request message to the secure computer network address using a virtual private network communication link.” However, Patent Owner does not explain sufficiently why an explicitly recited claim limitation must be incorporated into the construction of an associated claim term. Indeed, if one of ordinary skill in the art would have understood that all secure computer network addresses must be associated with a computer capable of VPN communications and that any computer network address that is associated with computers that are incapable of VPN communications would be understood by one of ordinary skill in the art not to be a “secure computer network address” (even if authorization for access is required), then any such recited claim limitation would be superfluous. Patent Owner also argues that “VirnetX’s proposed construction has been agreed to by its litigation adversaries and has been adopted by a district court.” PO Resp. 17. Even if Patent Owner’s proposed construction “has been agreed to by” parties in litigation and the district court, Patent Owner does not assert or demonstrate persuasively that one of ordinary skill in the art would have broadly but reasonably construed the term “secure computer network address” in light of the Specification to require association with a computer capable of virtual private network communications. In any event, Patent Owner does not appear to contend that the cited references fail to disclose a secure computer network address that is associated with a computer capable of VPN communications and, therefore, does not demonstrate sufficiently that the construction of “secure computer network address” will bear on the outcome of the issues in this inter partes review. We decline to modify our construction of this term.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“computer network address” of “the server-side proxy” (and not the “host”). PO Resp. 32 (emphasis omitted). In other words, Patent Owner argues that, in contrast to claim 1, which requires sending a query message requesting an address and receiving a response message containing the address requested in the query message, Kiuchi discloses sending a query message requesting an address of “the host” but receiving a response message containing an address of “the server-side proxy,” rather than “the host.” Based on this presumption that “the host” of Kiuchi differs from the “server-side proxy” of Kiuchi, Patent Owner argues that Kiuchi fails to disclose the claimed invention and also that “the Board has exceeded its statutory authority by instituting in part on rationales that were not before it.” PO Resp. 30. However, Patent Owner does not explain sufficiently a difference between “the host” and the “server-side proxy” of Kiuchi. Kiuchi discloses that a client-side proxy “asks the C-HTTP name server whether it can communicate with the host” and that, in response, the C-HTTP name server examines “the requested server-side proxy” and responds by sending the IP address of the server-side proxy. Ex. 1004, 65 (emphasis added). In other words, Kiuchi discloses that “the host” that is requested is the requested “server-side proxy.”” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableMixed
“of ordinary skill in the art would have combined Kiuchi with the other references.” PO Resp. 3. Petitioner provides reasons with supporting factual underpinnings to support the conclusion that the combination of Kiuchi and Bhatti (and/or Tavs) would have been obvious to one of ordinary skill in the art. Pet. 34–35, 38–39. For example, Petitioner states that one of ordinary skill in the art would implement Kiuchi’s user agent such that the user agent sends an access request for content stored on the origin server, in the same manner that Bhatti describes sending an access request from a user terminal for content stored [on] a content server. Pet. 38. Petitioner also states that “[i]t would have been obvious to one of ordinary skill at the time of the ’180 patent to modify the client-side proxy and server-side proxy described by Kiuchi to support the service-level categorization and differentiation described by Tavs in order to give priority to business-relevant traffic during peak network congestion.” Pet. 34. Patent Owner does not dispute the reasons provided by Petitioner as to why it would have been obvious to one of ordinary skill in the art to have combined teachings of Kiuchi and Bhatti (and/or Tavs) but argues that this obviousness ground “is critically flawed because the Petition relies solely on missing expert testimony for its rationale for combining” the references. PO Resp. 54, 56. However, Patent Owner does not explain why Petitioner is required to provide expert testimony in support of a proposed ground of unpatentability. Nor does Patent Owner explain the supposed flaws in the rationale provided by Petitioner.” slip op. at 21
Patent outcomesUS 7,188,180 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,188,180 - Medtronic, Inc. v. Nuvasive, Inc.Some claims unpatentablePTAB · Feb 11, 2015 · IPR2013-00507 · APJ Stephen C Siu · IPR · Final written decision
Claims 1–5, 10, 11, 14–17, and 19–28 are unpatentable as obvious over Frey and Michelson; claim 18 was not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“Thus, it would have been obvious to one of ordinary skill in the art to have provided an implant with a length of greater than 40 mm (e.g., 42 mm) and at least 2.5 times the width, as recited in claim 1.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“the capability for posterolateral TLIF procedure.” PO Resp. 30. However, Frey discloses “spinal surgery from a unilateral posterior approach, a lateral approach, an oblique approach, and through laparoscopic or endoscopic instruments from any of a variety of angles or approaches to the spine.” Ex. 1003 ¶ 184. Given that Frey discloses spinal surgery performed “from any of a variety of angles or approaches,” and not just from the posterolateral approach, we are not persuaded by Patent Owner that the “intended purpose” of Frey is to perform spinal surgery from a posterolateral approach, specifically. Rather, Frey discloses that “spinal discs may be displaced or damaged” and “may result in nerve damage, pain, numbness, muscle weakness, and even paralysis.” Ex. 1003 ¶ 3. According to Frey, these issues are addressed by “surgical correction of a collapsed disc space” by “discectomy . . . often followed by restoration of normal disc space height and bony fusion of the adjacent vertebrae to maintain the disc space height.” Id. Hence, the “intended purpose” of the implant of Frey, as explicitly disclosed by Frey, is to correct surgically a collapsed disc space, to restore normal disc space height, and to provide bony fusion of the adjacent vertebrae. We disagree with Patent Owner that incorporating Michelson, which discloses an implant that “engage[s] more of the adjacent vertebrae,” (Ex. 1105, 3:49–50) would have rendered the resulting implant inoperable for Frey’s intended purpose of surgically correcting a collapsed disc space or providing bony fusion of the adjacent vertebrae. Even if the “intended purpose” of Frey is to practice a “TLIF procedure,” as Patent Owner contends, we are not persuaded by Patent Owner’s argument that an implant measuring greater than 40 mm in length would be inoperable in a “TLIF procedure.” As Petitioner explains, U.S. Patent No. 7,815,682 (the ’682 patent) demonstrates that when performing “Transforaminal lumbar interbody fusion (TLIF) procedures,” one of ordinary skill in the art may employ a spinal implant with “a length ranging between 20 and 45 mm.” Pet. Resp. 6 (citing, Ex. 1028, 1:37–38; 4:45). The ’682 patent does not disclose that the use of a spinal implant measuring up to 45 mm in length would render the “TLIF procedure” inoperable.” slip op. at 6
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“We recognize that evidence of secondary considerations must always be considered en route to the determination of obviousness, but its existence alone does not control the conclusion of obviousness. Richardson-Vicks v. Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. 1997). The weight given to evidence of secondary considerations is dependent upon whether there is a nexus between the merits of the claimed invention and the evidence offered. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983). Even assuming that NuVasive’s CoRoent XL implant experienced “commercial success,” as Patent Owner asserts, Patent Owner has not demonstrated sufficiently that there is a nexus between the merits of the claimed invention and the evidence offered. For example, Patent Owner argues that NuVasive “pioneered the market for lateral, trans-psoas interbody fusion surgeries,” (PO Resp. 44) but fails to demonstrate sufficiently that any of the disputed claims recite “lateral, trans-psoas interbody fusion surgeries.” We are not persuaded by Patent Owner’s arguments.” slip op. at 11
- ExcludeOther
“C. Motion to Exclude In its Motion to Exclude, Patent Owner seeks to exclude the Declaration of Loic Josse (Ex. 1116, “Josse Declaration”). We did not rely on the Josse Declaration in this decision. Therefore, Patent Owner’s motion to exclude is dismissed as moot.” slip op. at 12
Patent outcomesUS 8,187,334 mixed§ 103 obviousnessPatents in suitUS 8,187,334 - Medtronic, Inc. v. Nuvasive, Inc.Some claims unpatentablePTAB · Feb 11, 2015 · IPR2013-00508 · APJ Stephen C Siu · IPR · Final written decision
Claims 1–5, 10, 11, 14–17, and 19–28 are unpatentable under §103; claim 18 was not shown unpatentable because the cited art did not establish its required dimensions.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed
“Thus, it would have been obvious to one of ordinary skill in the art to have provided an implant with a length of greater than 40 mm (e.g., 42 mm) and at least 2.5 times the width, as recited in claim 1.” slip op. at 7
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“We recognize that evidence of secondary considerations must always be considered en route to the determination of obviousness, but its existence alone does not control the conclusion of obviousness. Richardson-Vicks v. Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. 1997). The weight given to evidence of secondary considerations is dependent upon whether there is a nexus between the merits of the claimed invention and the evidence offered. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983). Even assuming that NuVasive’s CoRoent XL implant experienced “commercial success,” as Patent Owner asserts, Patent Owner has not demonstrated sufficiently that there is a nexus between the merits of the claimed invention and the evidence offered. For example, Patent Owner argues that NuVasive “pioneered the market for lateral, trans-psoas interbody fusion surgeries,” (PO Resp. 59) but fails to demonstrate sufficiently that any of the disputed claims recite “lateral, trans-psoas interbody fusion surgeries.” We are not persuaded by Patent Owner’s arguments.” slip op. at 17
- ExcludeOther
“C. Motion to Exclude In its Motion to Exclude, Patent Owner seeks to exclude the Declaration of Loic Josse (Ex. 1116, “Josse Declaration”). We did not rely on the Josse Declaration in this decision. Therefore, Patent Owner’s motion to exclude is dismissed as moot.” slip op. at 17
Patent outcomesUS 8,187,334 mixed§ 103 obviousnessPatents in suitUS 8,187,334 - Nuvasive, Inc. v. Warsaw Orthopedic, Inc.Some claims unpatentablePTAB · Jul 10, 2014 · IPR2013-00206 · APJ Stephen C Siu · IPR · Final written decision
Claims 17–23 were held unpatentable as obvious over Jacobson, Leu, and Brantigan; claims 9–16 and 24–30 were not shown unpatentable on the asserted obviousness grounds.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“ordinary skill in the art to have combined the teachings of Jacobson, Leu, and Brantigan. PO Resp. 50–53. Jacobson discloses advancing instruments laterally into the disc space to perform a “fusion” procedure. Ex. 1004, 5:1– 4, 6:11–13. Leu discloses fusion of the lumbar spine by introducing an “interbody graft” into the disc space. Ex. 1005, p. 603. Brantigan, like Leu, discloses “prosthetic implant devices” that are “suitable for . . . lateral placement in any area of the spine.” Ex. 1006, 2:56–58. We agree with Petitioner that the combination of the known element of performing a spinal fusion procedure by laterally advancing instruments into the disc space (Jacobson) with the known element of using an “interbody graft” in a spinal fusion procedure (Leu and Brantigan) would have resulted in no more than the predictable and expected result of performing a spinal fusion procedure (Jacobson) that includes inserting an implant into a disc space (Leu or Brantigan). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Jacobson, Leu, Brantigan - combinability Patent Owner argues that it would not have been obvious to one of ordinary skill in the art to have combined the teachings of Jacobson, Leu, and Brantigan. PO Resp. 50–53. Jacobson discloses advancing instruments laterally into the disc space to perform a “fusion” procedure. Ex. 1004, 5:1– 4, 6:11–13. Leu discloses fusion of the lumbar spine by introducing an “interbody graft” into the disc space. Ex. 1005, p. 603. Brantigan, like Leu, discloses “prosthetic implant devices” that are “suitable for . . . lateral placement in any area of the spine.” Ex. 1006, 2:56–58. We agree with Petitioner that the combination of the known element of performing a spinal fusion procedure by laterally advancing instruments into the disc space (Jacobson) with the known element of using an “interbody graft” in a spinal fusion procedure (Leu and Brantigan) would have resulted in no more than the predictable and expected result of performing a spinal fusion procedure (Jacobson) that includes inserting an implant into a disc space (Leu or Brantigan). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“of ordinary skill in the art to have combined the teachings of Brantigan with any of Jacobson or Leu because, according to Patent Owner, Brantigan “teaches away from sizing an implant to rest on the apophyseal ring or be sized to occupy substantially the full transverse width of adjacent vertebral bodies.” PO Resp. 51–52, 55–56. This issue was discussed previously above. Patent Owner also argues that it would not have been obvious to one of ordinary skill in the art to have combined the teachings of Brantigan with any of Jacobson or Leu because the “cannulae disclosed by Jacobson and Leu are too narrow to accommodate Brantigan’s implant,” that “a person of ordinary skill in the art would not be able to insert [Brantigan’s] implant in Jacobson’s [system],” and that “the shape of the Brantigan implant is not conducive to insertion through a cannula or similar surgical instrument [as disclosed by Jacobson or Leu].” PO Resp. 52–53. In other words, Patent Owner argues that the combination of Jacobson, Brantigan, and Leu would not have been obvious to one of ordinary skill in the art because the prior art systems are not physically combinable (i.e., Brantigan’s implant allegedly cannot be physically combined with the cannula of either Jacobson or Leu). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”). We are thus not persuaded by Patent Owner’s argument.” slip op. at 24
- Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia no nexusDecided for patent owner
“Secondary considerations We recognize that evidence of secondary considerations must always be considered en route to the determination of obviousness, but its existence alone does not control the conclusion of obviousness. Richardson-Vicks v. Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. 1997). The weight given to evidence of secondary considerations is dependent upon whether there is a nexus between the merits of the claimed invention and the evidence offered. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983).” slip op. at 25
Patent outcomesUS 8,251,997 mixed§ 103 obviousnesscites KSRPatents in suitUS 8,251,997
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.