- Pny Technologies, Inc. v. Phison Electronics Corp.All claims unpatentablePTAB · Feb 4, 2015 · IPR2014-00150 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–21 are unpatentable: claims 1, 3–9, and 11–21 as obvious over Elbaz and Deng; claims 2 and 10 as obvious over Elbaz, Deng, and Admitted Art.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“persuaded that construing “concave” as only “curving inwards from a housing” does not conform to the ordinary meaning of the term. We stated in the second Decision to Institute that a recess “cannot act as a prop, . . . [t]he portion that acts as a prop is the portion that extends inwardly from the housing,” and “that ‘concave’ need not require the formation of a recess.” 2nd Dec. 7. We are now persuaded that construing “concave” such that a convex protrusion that acts as a prop, without a concave portion, impermissibly “reads out” the concave aspect of “concave prop.” We also are persuaded that there is not sufficient evidence in the instant record that shows that Phison acted as its own lexicographer, redefining the term “concave prop.”” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We have determined previously that Minneman does not disclose that the captivating indentations are curving or that it would have been inherent for them to have curvature based on their formation process. Paper 16, 3. The rationale for altering the stand-offs of Minneman to have curvature comes from the curved protrusions disclosed in Takahashi. 1st Dec. 13. We have acknowledged as well that protrusions in Takahashi do not disclose a recess as a part thereof. Id. Based on our construction of “concave prop,” we are not persuaded that one of ordinary skill in the art would have modified Minneman’s stand-offs to be curved and have recesses based on the disclosure of Takahashi.” slip op. at 11
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Ex. 2008 ¶¶ 44–48. Although Mr. Visser argues that the “guiding means 515 could loosely receive the module, allowing some movement of the module 5 between the guiding means 515 and between the guiding means 16 515 and means for raising 516, yet still provide guidance to the module 5,” (Ex. 2008 ¶ 48), for example, we do not find this testimony persuasive. Although the Elbaz drawings and specification do not provide tolerances or dimensions, we are persuaded that one of ordinary skill in the art would have arrived at the conclusion that the module was received in the adaptor through the guiding means and the raising means and maintained securely such that vertical movement would not occur. Further, Mr. Visser acknowledges that the guiding means and the raising means act to properly position the module (Ex. 1008, 133:8–19), so that those aspects of the adaptor would need to at least touch and come in contact with the module. As such, we are not persuaded by Mr. Visser’s testimony that one of ordinary skill in the art would not have understood that the module in Elbaz would have been inserted and secured in position through the guiding means and the raising means.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Phison provides no evidence of the relative costs of PCBAs and chip cards, such that an increase in manufacturing costs has not been demonstrated. Although the use of a PCBA may require shielding and not provide the same attack resistance, such disadvantages may be offset by the lower relative cost of the PCBA. We also do not agree that Elbaz teaches away, as a reference must criticize, discredit, or otherwise discourage the solution claimed to constitute a teaching away. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The preferences and objectives of Elbaz are not teachings that disparage or discourage the use of alternate electronic components.” slip op. at 19
Patent outcomesUS 7,518,879 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,518,879 - Pny Technologies, Inc. v. Phison Electronics Corp.All claims unpatentablePTAB · Feb 4, 2015 · IPR2013-00472 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–21 are unpatentable under § 103: claims 1, 3–9, and 11–21 over Elbaz and Deng, and claims 2 and 10 over Elbaz, Deng, and Admitted Art.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“persuaded that construing “concave” as only “curving inwards from a housing” does not conform to the ordinary meaning of the term. We stated in the second Decision to Institute that a recess “cannot act as a prop, . . . [t]he portion that acts as a prop is the portion that extends inwardly from the housing,” and “that ‘concave’ need not require the formation of a recess.” 2nd Dec. 7. We are now persuaded that construing “concave” such that a convex protrusion that acts as a prop, without a concave portion, impermissibly “reads out” the concave aspect of “concave prop.” We also are persuaded that there is not sufficient evidence in the instant record that shows that Phison acted as its own lexicographer, redefining the term “concave prop.” PNY argues that the ’879 Patent fails to describe the term “concave” as including a recess and that Phison should not be allowed “to impart the ‘recess’ limitation into its construction of concave.” Reply 2. We do not agree that including the recess aspect can only be proper if explicitly recited in the Specification. The plain, ordinary meaning of “concave,” in the context of the claim language, includes the meaning of having a recess, thus, one of ordinary skill in the art would have included that aspect in any” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“require the inclusion of shielding elements, and would increase manufacturing costs. Id. Phison also takes exception to our characterization that “Elbaz provides a preference for the use of an integrated circuit chip card [that] does not rise to the level of teaching away.” 2nd Dec. 15. We do not agree. Phison provides no evidence of the relative costs of PCBAs and chip cards, such that an increase in manufacturing costs has not been demonstrated. Although the use of a PCBA may require shielding and not provide the same attack resistance, such disadvantages may be offset by the lower relative cost of the PCBA. We also do not agree that Elbaz teaches away, as a reference must criticize, discredit, or otherwise discourage the solution claimed to constitute a teaching away. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The preferences and objectives of Elbaz are not teachings that disparage or discourage the use of alternate electronic components.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We have determined previously that Minneman does not disclose that the captivating indentations are curving or that it would have been inherent for them to have curvature based on their formation process. Paper 16, 3. The rationale for altering the stand-offs of Minneman to have curvature comes from the curved protrusions disclosed in Takahashi. 1st Dec. 13. We have acknowledged as well that protrusions in Takahashi do not disclose a recess as a part thereof. Id. Based on our construction of “concave prop,” we are not persuaded that one of ordinary skill in the art would have modified Minneman’s stand-offs to be curved and have recesses based on the disclosure of Takahashi.” slip op. at 11
- Expert testimonyPatent owner expert discountedDecided for petitioner
“his deposition that the “props” of Minneman could be shaped so that they are concave, and that this is clear evidence that one of ordinary skill in the art would have viewed shaping the structures of Minneman so that they are concave as an obvious design choice. Reply 8; Ex. 1008, 90:11–16, 98:23– 99:1. Mr. Visser’s testimony is not persuasive, however, because he merely acknowledges that Minneman’s stand-offs could be formed by forming a recess in the housing, and that they could be curved in shape. This does not address why the combination would have props which are concave with a 11 recess when Takahashi’s elements are solid and it is not clear that Minneman’s stand-offs have a recess. We find neither statement by Mr. Visser to be persuasive.” slip op. at 11
Patent outcomesUS 7,518,879 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,518,879 - Cardiocom, LLC v. Robert Bosch Healthcare Systems, Inc.All claims unpatentablePTAB · Jan 15, 2015 · IPR2013-00449 · APJ Justin T Arbes · IPR · Final written decision
Claims 1–5 are unpatentable under § 103: claim 1 over Crawford and Tallman; claims 2–5 over Crawford, Tallman, and Goodman.
RulingsFinal written decision- Skill levelSkill level board ownOther
“ordinary skill in the art at the time of the ’420 patent (October 16, 1996, when the parent application of the ’420 patent was filed), and neither party contends that the minor differences between those definitions impact the obviousness analysis. Petitioner’s declarant, Robert T. Stone, Ph.D., testifies that a person of ordinary skill would have had (1) “a bachelor’s degree in Electrical Engineering or Computer Science, or its equivalent, and at least 2 years of experience with the design and programming of patient monitoring systems,” and (2) “at least 1 year of experience with the design or programming of networked systems.” Ex. 1008 ¶ 22; see Pet. 6; Ex. 1022 ¶¶ 19–21. Patent Owner’s declarant, Dr. David, agrees with the first portion of Dr. Stone’s definition, but disagrees as to the second portion, testifying that a person of ordinary skill would not have had experience with the design or programming of networked systems. Ex. 2010 ¶ 24. Based on our review of the ’420 patent, the types of problems and solutions described in the ’420 patent and cited prior art, and the testimony of the parties’ declarants, we conclude that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering or computer science (or its equivalent), and at least two years of experience with the design and programming of patient monitoring systems. See, e.g., Ex. 1001, col. 1, l. 23–col. 2, l. 67 (describing prior art medical monitoring systems that collected data from remote monitoring devices, and stating that the ’420 patent describes “computer systems for managing healthcare”); Ex. 1008 ¶¶ 1–5 (background of Dr. Stone); Ex. 2010 ¶¶ 1–9 (background of Dr. David). We do not include a requirement of one year of experience with the design or programming of networked systems. Although the challenged claims recite “transmitting a communication” to a patient via “electronic mail message” or “telephone message,” the Specification describes such communications only at a high level of generality. See, e.g., Ex. 1001, col. 4, ll. 50–52 (“Clinic server 12 is coupled to a modem M1 for connecting server 12 to a communication network 34, preferably a public telephone network or similar data transmission network.”); col. 8, ll. 53–55 (“mail server application 16 transmits each message 78 through network 34 to the corresponding patient”). A person of ordinary skill in the art would have had at least two years of experience with the design and programming of patient monitoring systems, and, therefore, would have had at least some familiarity with the use of networked systems (e.g., to communicate with monitored patients), but may not have had one year of specific experience designing or programming the underlying networked systems that enable electronic mail or telephone message communication with patients.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“2. “Data Point” The parties do not propose any specific interpretations for the term “data point” in claim 1. In attempting to distinguish one of the prior art references at issue (Crawford), however, Patent Owner argues that each “data point” in claim 1 must be “separate” from its corresponding “icon,” and that the “data point distribution” in the recited chart must be “dynamic” (i.e., data points change location over time). PO Resp. 36–38. Petitioner disagrees with both assertions. Reply 9–11. We conclude that interpretation of “data point” is necessary to resolve the dispute.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“analogous art to the ’420 patent. “A reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). “Two separate tests define the scope of analogous prior 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). “A reference is reasonably pertinent if . . . it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) (citation and internal quotation marks omitted).” slip op. at 18
Patent outcomesUS 7,840,420 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,840,420 - Cardiocom, LLC v. Robert Bosch Healthcare Systems, Inc.All claims unpatentablePTAB · Jan 15, 2015 · IPR2013-00431 · APJ Stephen C Siu · IPR · Final written decision
Claims 1–6 and 8–15 are unpatentable over Goodman and Wahlquist; claims 7 and 16 are unpatentable over Goodman, Wahlquist, and Lyons under § 103(a).
RulingsFinal written decision- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“of the ’186 patent.” PO Resp. 33. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “A reference is reasonably pertinent if . . . it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011).” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“the combination of the known system of Goodman and the known system of Wahlquist would have entailed [no] more than a combination of known systems to perform their known functions to achieve a predictable result. . . . “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Dec. on Inst. 13 (quoting KSR, 550 U.S. at 416). Patent Owner does not demonstrate persuasively that the combination of Goodman and Wahlquist would have entailed any more than combining familiar elements to achieve a predictable result. Therefore, we are not persuaded by Patent Owner’s argument.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Patent Owner does not demonstrate persuasively that “Wahlquist’s system is a computer diagnosis system in which a help desk representative seeks to eliminate communications with a user.” Id. at 34 (citing Ex. 1003, 3:14–20; Ex. 2006 ¶¶ 122–123). Rather, Wahlquist discloses a system and method in which “a user calls the customer service help desk” who “is then asked to identify the general nature of the problem.” Ex. 1003, 2:7–16. The representative then “instructs the user” as to what actions to take. Id. at 2:6– 7, 15–16, 26. One of ordinary skill in the art would have understood that a user calling a help desk and identifying a problem to the representative, as well as the representative instructing the user, would have constituted “communication” between the user and the representative. The system of Wahlquist depends on “communications with a user” because without such “communication,” the representative would not be apprised of the user’s issues and would be unable to instruct the user as to the proper action to take. In addition, in Wahlquist, an application “created by the representative” “establishes communications with the user’s system” and “downloads the case and script files to the user’s computer.” Ex. 1003, 2:32, 36–40. One of ordinary skill in the art would have understood that establishing a “communication” with a user’s system and downloading script files to the user’s computer via the “communication” would have constituted a “communication” between devices. While Patent Owner argues that Wahlquist “eliminates communication with the user,” Patent Owner does not explain sufficiently how such a system that relies on “communication” actually “eliminates communication with the user.” PO Resp. 35.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“Stone) performed an obviousness analysis improperly by “us[ing] the claims of the Bosch patents as a template to try and fit combinations of references into the claims” and “improperly used the teachings of the Bosch specifications to identify the goals and motivations for combining the prior art.” PO Resp. 18 (citing Ex. 2061, 314:5–20; 256:25–257:11; 313:1–20). Hence, Patent Owner argues that Dr. Stone’s analysis is based improperly on hindsight reasoning. However, “[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Patent Owner does not indicate how Dr. Stone’s analysis relies on knowledge that was beyond the level of ordinary skill in the art at the time the claimed invention was made. For example, Dr. Stone relies on Goodman’s disclosure of “a personal health network comprising a host computer which is in communication with one or more patient nodes over a communication link” and on Wahlquist’s disclosure of “an application on the help desk computer that is used to select” tests for a user’s computer. Ex. 1007 ¶ 121. We do not see, and Patent Owner does not assert or demonstrate persuasively, how either of these disclosures (neither of which was gleaned only from the ’186 patent specification) would have been beyond the level of ordinary skill in the art.” slip op. at 29
Patent outcomesUS 7,921,186 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,921,186 - Cardiocom, LLC v. Robert Bosch Healthcare Systems, Inc.All claims unpatentablePTAB · Jan 15, 2015 · IPR2013-00451 · APJ Miriam L Quinn · IPR · Final written decision
Claims 1, 2, and 5–10 are unpatentable under §103 over Cohen and Wahlquist, and over Cohen, Wahlquist, and Jacobs.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“The Board interprets claims using the “broadest reasonable construction in light of the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b). We presume that claim terms have their ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning that the term would have to a person of ordinary skill in the art in question.”) (citation and internal quotation marks omitted).” slip op. at 6
- Skill levelSkill level board ownOther
“Petitioner asserts that the level of ordinary skill in the art has the following education and experience: Bachelor’s degree in Electrical Engineering or Computer Science, or its equivalent, and at least 2 years of experience with the design and programming of patient monitoring systems and at least 1 year of experience with the design or programming of networked systems. Ex. 1008 ¶ 22. Patent Owner’s declarant, Dr. David, disagrees with the above assertion in that a person of ordinary skill in the art would not have the 1 year of experience with the design and programming of networked systems. Ex. 2009 ¶ 26. The disagreement appears to be immaterial to the arguments presented by Patent Owner, however, because Dr. David declares that this additional experience would not affect his opinions. Id. Accordingly, we need not determine which of the alleged education and experience proffered by the parties is correct. We determine the obviousness issues guided by the evidence of the level of ordinary skill in the art presented by the references themselves. See Okajima, 261 F.3d at 1355. From the Cohen reference, which Patent Owner agrees is in the field of endeavor of the invention in question (Tr. 29:2130:2), we understand that the level of ordinary skill in the art, at a minimum, requires some amount of experience with the configuration of telecommunications hardware systems, such as telephone and personal computer systems, for communicating with a central monitoring system, which is computer-implemented technology. See Ex. 1002, 3:1724; see also 3:4357 (describing the features of the computer-implemented technology at-issue in Cohen: computer processor and software, telecommunication lines, voice signal interpretation, database and report generation, voice generation, speech recognition, speech and digit recognizer, printer, and local area network (LAN)). With this level of ordinary skill in mind, we now turn to the analysis of the differences between the asserted prior art references and the subject matter recited in the claims-at-issue.” slip op. at 8
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“endeavor nor reasonably pertinent to the problems addressed by the ’469 patent. PO Resp. 21. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “A reference is reasonably pertinent if . . . it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“First, an obviousness “analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. It is, therefore, unpersuasive for Patent Owner to argue that Petitioner’s proffered rationales for the combination fail because neither Cohen nor Wahlquist teaches explicitly that they could be combined with other teachings. See PO Resp. 31, 3738 (arguing the lack of evidence that Cohen is “incomplete” and that nothing in Wahlquist would teach the combination).6 Further, Patent Owner narrowly focuses on Wahlquist being directed solely to eliminating slow and unsatisfactory communications with users. PO Resp. 31. As stated above in the analogous art analysis, Wahlquist is directed to more than just eliminating communications with users. The alleged “elimination” is not supported by a thorough reading of Wahlquist. We find, instead, that Wahlquist teaches prompting users with keystrokes during the diagnosis of their computer, a process that, from the standpoint of the user, is greatly simplified compared to the prior art systems described by Wahlquist, and consistent with the problems described in Cohen and the ’469 patent of simplifying user interactions with user devices.” slip op. at 19
Patent outcomesUS 7,587,469 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,587,469 - Nuvasive, Inc. v. Warsaw Orthopedic, Inc.All claims unpatentablePTAB · Dec 17, 2014 · IPR2013-00395 · APJ Lora M Green · IPR · Final written decision
Claims 1–6 are unpatentable under § 103(a) over both Senter and Brantigan ’035, and Michelson ’037, Wagner, and Brantigan ’035.
RulingsFinal written decision- Skill levelOther
“A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“As demonstrated by the embodiment shown in Figure 14, reproduced above, however, there may be more than a single bearing surface. The claim language only requires that those bearing surfaces be convex. We agree, therefore, with Petitioner that the claim language does not require that the convexity be along the entire length of the implant. Moreover, independent claims 1 and 4 only require that the “upper and lower bearing surfaces . . . being convex along the entire length of said upper and lower bearing surfaces.” There is nothing in the claim language that requires that the convexity conform to the anatomic endplates of the adjacent vertebrae. The Specification does not provide a definition of convexity as conforming to the anatomic endplates of the adjacent vertebrae with reasonable clarity, deliberateness, and precision. We decline, therefore, to construe the convexity of the bearing surfaces as requiring that the convexity conform to the anatomic endplates of the adjacent vertebrae. Thus, we construe “upper and lower bearing surfaces” as requiring that the bearing surface itself must be convex along the entire length of the bearing surface, but as the implant may have more than one upper bearing surface, as well as more than one lower bearing surface, the convexity need not be along the entire length of the implant. Moreover, the convexity need not conform to the anatomic endplates of the adjacent vertebrae.” slip op. at 10
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Evidence of commercial success, or other secondary considerations, is only significant if there is a nexus between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech. Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006). “For objective evidence to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). In order to establish a proper nexus, the patent owner must offer proof that the sales were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter. See Microsoft v. Proxyconn, Inc., IPR2012-00026, slip op. at 4 (PTAB Mar. 8, 2013) (Paper 32). Patent Owner, however, has not attempted to establish a nexus between the claims of the ’696 and the CLYDESDALE® Spinal System. Thus, Patent Owner’s arguments and evidence as to commercial success are entitled to little or no weight. slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“Moreover, as taught by Brantigan ’035, the sharp apexes of the nubs bite into the vertebrae bone, and, thus, once the implant is in the proper position, it will not shift from that position. Ex. 1005, 21:1–5. We, thus, credit Dr. Brantigan’s testimony that the ratchetings would not propel an implant forward, but would resist forward movement of the implant, as well as back-out of the implant, after implantation. Ex. 1017 ¶ 18. Thus, we agree with Petitioner that Senter does not teach away from the combination with Brantigan ’035.” slip op. at 19
Patent outcomesUS 8,444,696 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,444,696 - Nuvasive, Inc. v. Warsaw Orthopedic, Inc.All claims unpatentablePTAB · Dec 17, 2014 · IPR2013-00396 · APJ Lora M Green · IPR · Final written decision
Claims 7–12 are unpatentable under § 103(a) as obvious over the combination of Steffee, Michelson ’037, and Kim.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner argues that ratchetings should be construed as “facets that are angled to afford forward movement of the spinal fusion implant in one direction and facets that are angled to prevent the spinal fusion implant from backing out in the opposite direction.” PO Resp. 17 (citing Ex. 2005 ¶ 38). Petitioner does not present an alternate construction. We determine that Patent Owner’s construction is consistent with the Specification and the language of the claim itself, and, thus, we adopt that construction.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“a hole that extends from the upper bearing surface to the lower bearing surface that is of sufficient size to permit growth of bone therethrough. Stated differently, “opening,” as required by challenged independent claims 7 and 10, requires that the hole be vertical in the implant as placed. While Steffee does not teach a vertical opening, it does teach that the implant has a plurality of horizontal openings that extend between the side surfaces to allow for blood flow, as well as bone growth from one side of the implant to the other. Ex. 1108, 2:64–67. Michelson ’037 also teaches an implant that may contain a plurality of cells or openings of 1–3 mm, into which fusion-promoting materials may be placed, allowing a bony bond between the adjacent vertebrae to each other, as well as to the implant. Ex. 1109, 8:10–21. Thus, the openings of Steffee and the opening of Michelson ’037 serve the same purpose—that is, to allow the growth of bone to aid in bonding the implants to the adjacent vertebrae. The addition of vertical openings as taught by Michelson ’037 to the implant of Steffee would have been a predictable use of an element taught by the prior art according to its established function. KSR, 550 U.S. at 417.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“The obviousness inquiry, however, does not require an advantage or an improvement in properties. See In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“[A] finding that the prior art as a whole suggests the desirability of a particular combination need not be supported by a finding that the prior art suggests that the combination claimed by the patent applicant is the preferred, or most desirable, combination.”); see also In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“[a] known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.”). Moreover, the fact that Brantigan ’757, referenced by Steffee, discloses horizontal slots, but Steffee did not adopt them, does not amount to a teaching away from the use of horizontal slots. See Fulton, 391 F.3d at 1201 (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any . . . alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.”).” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“Michelson ’037 and Kim as compared to Steffee, Petitioner engaged in improper hindsight in combining Steffee with Michelson ’037 and Kim to arrive at the implant of challenged independent claims 7 and 10. PO Resp. 46. We disagree. Although the Supreme Court has cautioned that it may be valuable to identify a particular reason to combine two references, the obviousness analysis is not limited to this inquiry. See KSR, 550 U.S. at 418–19. “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. Similarly, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id. The combination of Steffee, Michelson ’037, and Kim is no more “than the predictable use of prior art elements according to their established functions.” Id.” slip op. at 24
Patent outcomesUS 8,444,696 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,444,696 - Hayward Industries, Inc. v. Pentair Water Pool And SpA, Inc.All claims unpatentablePTAB · Nov 19, 2014 · IPR2013-00287 · APJ James B Arpin · IPR · Final written decision
Claim 1 is unpatentable under § 103(a) over Struthers and the TI DSP Motor Solutions Guide; Petitioner’s motion to exclude evidence is denied.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“1001, col. 17, ll. 36–39, 44–45). Accordingly, Patent Owner argues that the patentee has given a specific definition to the phrase “minimum non-zero flow speed of the motor” in the Specification and that phrase means a “minimum motor speed capable of producing positive water flow in the water distribution system.” Id. For the reasons set forth below, we are not persuaded that the patentee acted as a lexicographer and set forth this definition for the claim phrase. First, we note that the Specification states that controller 24 “can take into account the motor speed required for the pump 10 to open any check valves and produce a positive water flow in the water distribution system” and that this required motor speed “can be referred to as . . . the minimum non-zero flow speed.” Ex. 1001, col. 17, ll. 36–39, 44–45 (emphasis added). We are not persuaded that the Specification sets forth, with “reasonable clarity, deliberateness, and precision,” the definition for the phrase proposed by Patent Owner. Paulsen, 30 F.3d at 1480. Thus, we determine that the Specification only describes a particular embodiment, but does not establish a clear, deliberate, and precise definition of the phrase.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We are persuaded by Petitioner that the “minimum non-zero flow speed of the motor” is determined by the desired flow of water into the water distribution system. Pet. Reply 1. Consequently, we construe the phrase “minimum non-zero flow speed of the motor” to mean “the minimum speed for achieving a desired flow.” Id.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Struthers to achieve the pump controller of claim 1. PO Resp. 24–26. In particular, Patent Owner argues that “[t]he methods taught by Struthers include reducing the pump’s speed while increasing the pump’s torque, in an attempt to move the clog through the grinder pump.” Id. at 24–25 (citing Ex. 1012, col. 8, ll. 17–39). On the other hand, Patent Owner argues that “[t]he ’051 Patent addresses the problem of how to save time and energy by always starting a pump at a speed that will result in some flow through the pump and into the particular hydraulic system in which the pump is installed.” Id. at 25. As the U.S. Supreme Court explained, however, in performing the obviousness analysis, adjudicative bodies should not look only to the problem that the patentee was trying to solve. KSR, 550 U.S. at 420. “Under the correct analysis, any need or problem known in the field . . . and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. Because we determine that the recited pump controller of claim 1 addresses problems relevant to the teachings of Struthers, those problems may provide a reason to combine the teachings of Struthers and the TI DSP Motor Solutions Guide, in the manner proposed by Petitioner. Patent Owner further argues that “the combination of Struthers and [the TI DSP Motor Solutions Guide] does not teach the claimed division of responsibility between the digital signal processor and the microcontroller, such that any conclusion to the contrary relies, respectfully, on an impermissible hindsight reconstruction [of the pump controller recited in claim 1.]” PO Resp. 24; see id. at 33–38. We note that Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill [in the art] at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper . In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). For the reasons set forth above, we are persuaded that Petitioner has shown that Struthers and the TI DSP Motor Solutions Guide teach or suggest all of the limitations recited in claim 1, including the functions attributed to the digital signal processor and the microcontroller. Moreover, Struthers teaches that “it will be understood that some specific functions may be assigned to either the control board 22 or the microprocessor 24, depending on the specific construction and programming of each of those components in a particular pump unit 10.” Ex. 1012, col. 3, ll. 49–53; see Tr. 7:23–9:18. Thus, we are persuaded that the combination of the teachings of Struthers and the TI DSP Motor Solutions Guide does not rely on impermissible hindsight and that Petitioner has presented adequate reasons for combining the teachings of Struthers and the TI DSP Motor Solutions Guide to achieve the pump controller recited in claim 1 of the ’051 Patent.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill [in the art] at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper . In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). For the reasons set forth above, we are persuaded that Petitioner has shown that Struthers and the TI DSP Motor Solutions Guide teach or suggest all of the limitations recited in claim 1, including the functions attributed to the digital signal processor and the microcontroller. Moreover, Struthers teaches that “it will be understood that some specific functions may be assigned to either the control board 22 or the microprocessor 24, depending on the specific construction and programming of each of those components in a particular pump unit 10.” Ex. 1012, col. 3, ll. 49–53; see Tr. 7:23–9:18. Thus, we are persuaded that the combination of the teachings of Struthers and the TI DSP Motor Solutions Guide does not rely on impermissible hindsight and that Petitioner has presented adequate reasons for combining the teachings of Struthers and the TI DSP Motor Solutions Guide to achieve the pump controller recited in claim 1 of the ’051 Patent.” slip op. at 24
Patent outcomesUS 7,704,051 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,704,051 - Hayward Industries, Inc. v. Pentair Water Pool And SpA, Inc.All claims unpatentablePTAB · Nov 19, 2014 · IPR2013-00285 · APJ James B Arpin · IPR · Final written decision
Claim 12 is unpatentable as obvious over Rasmuson and Møller ’042 because the combination teaches the claimed pumping system and a skilled artisan would have had reason to combine them.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“not makes clear by its language that the word “primed” should be understood to mean “initially primed” or primed after the pressing of a “Start” button. As Patent Owner acknowledged at Oral Hearing, the claim language does not mention the term “initial” or “start” (Tr. 38:23–40:6) and, despite Patent Owner’s argument regarding the appropriate interpretation of “primed” in view of the Specification, we are not persuaded that the Specification limits “primed” in the manner argued by Patent Owner. Consequently, we conclude that the Specification does not express a clear intent to deviate from the plain meaning of the word “primed.” See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (“It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must clearly express an intent to redefine the term” (citations omitted; internal quotation marks omitted)). We are persuaded by Petitioner that our construction of the terms “is primed” and “is not primed,” as set forth in our Decision on Institution represents “the broadest reasonable meaning of the words in their ordinary usage, as those words would be understood by one of ordinary skill in the art, taking into account any definitions supplied by [patentee’s] Specification” (In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)), and we confirm that construction here (Dec. on Inst. 11 (citing Ex. 3001)). Despite Patent Owner’s arguments, we are not persuaded that patentee has supplied here such a definition limiting “primed” to “become primed” or “initially primed” with sufficient clarity, deliberateness, and precision. Paulsen, 30 F.3d at 1480.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“persuaded that the reference to “at least one aquatic application” in the preamble of claim 12 is a limitation. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Marketing Int’l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). “Conversely, a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’” Id. (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). Here, we determine that the body of the claim describes a structurally complete invention and that the preamble neither recites structure nor is necessary to give life meaning or vitality to claim 12. Therefore, we are not persuaded by Patent Owner’s arguments that Rasmuson is not analogous art based on the type of pumps described in Rasmuson or the aquatic applications for which the recited pumping systems are suitable.” slip op. at 29
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“’479 Patent. In particular, Patent Owner argues that Rasmuson is neither from the same field of endeavor as the claimed invention nor is it reasonably pertinent to the problem faced by the patentee. PO Resp. 40–43 (citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). For the following reasons, we conclude that Rasmuson is analogous art to the pumping system recited in the challenged claim.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“the relevant art would not have combined the teachings of Rasmuson and Møller ’042 to achieve the pumping system recited in claim 12. PO Resp. 30–59. After consideration of the parties’ remarks and supporting evidence, we are not persuaded by Patent Owner’s arguments and conclude that a person of ordinary skill in the relevant art would have had reason to combine the references in the manner proposed by Petitioner. Petitioner contends that the measurement of input power, as taught by Møller ’042, is a proxy for Rasmuson’s flow transducer’s measurement of actual flow rate and would represent an improvement on Rasmuson’s methods and systems for measuring flow.6 Pet. 33; see Ex. 1018 ¶ 61 (“The controller of the Møller ‘042 Patent correlates the input power to a delivery variable of the pump (flow rate or pressure).” (citing Ex. 1003, col. 3, ll. 33–42)); Ex. 1037 ¶ 38 (“In many cases, using power-sensing techniques is a better option than using a flow transducer . . .”).7 In particular, Petitioner contends that “providing a power 6 Patent Owner argues that Møller ’042 teaches away from Rasmuson because Rasmuson teaches direct flow measurement and Møller ’042 teaches indirect flow measurement. PO Resp. 58–59. We do not find a clear teaching away from the substitution of one flow measurement means for its functional equivalent. For the reasons set forth above, we are not persuaded by those arguments. 7 Dr. Schaaf testified that the use of power meters was less invasive than the installation of flow sensors at the pump and that, after utilizing a controller that measured electrical power to detect loss of prime, pump life was increased from measuring technique [eliminates] the need for a probe to be placed in the water, which may become contaminated, or require piping to be cut.” Pet. 33; see Ex. 1037 ¶¶ 29–40; see also KSR, 550 U.S. at 417 (arrangement of known elements according to their understood functions).” slip op. at 21
Patent outcomesUS 8,019,479 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,019,479 - Nuvasive, Inc. v. Warsaw Orthopedic, Inc.All claims unpatentablePTAB · Jul 10, 2014 · IPR2013-00208 · APJ Stephen C Siu · IPR · Final written decision
Claims 1–8 were held unpatentable under §103 over Jacobson, Leu, and Brantigan, with Frey for claims 2–7; the Michelson ’247 ground was not proven.
RulingsFinal written decision- BurdenOther
“For the reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that claims 1–8 of the ’997 patent are unpatentable.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Patent Owner argues that an “axis lying in a coronal plane” should be construed as an axis that is lying in “a plane at right angles to a sagittal plane.” PO Resp. 10–11. Petitioner does not contest Patent Owner’s assertion that one of ordinary skill in the art would understand that a “coronal plane” would be oriented “at right angles to a sagittal plane.” Pet. Reply 1. Thus, no further construction of this term is necessary.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“implant” should be construed such that “the composition of the implant does not include any bone” because “the prefix ‘non’ is commonly understood to exclude the thing specified after the word.” PO Resp. 12–13, citing Ex. 2038 ¶ 63. We agree that one of ordinary skill in the art would have understood that the prefix “non” indicates that the implant contains material that is not bone. Patent Owner does not show persuasively, however, that, under a broad but reasonable construction, one of ordinary skill in the art would have understood that it cannot contain any component derived from bone. Hence, we broadly, but reasonably, construe a “non-bone interbody instraspinal implant” as an implant that contains at least one component that does not contain bone.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“what it says (i.e., to mean “lateral”), at least because it would have been reasonable for one of ordinary skill in the art to have construed a term (i.e., “lateral”) with a plain and common definition. Patent Owner’s observation that a construction of the term “lateral” that was in use at the time of the invention included a “direct lateral” approach (as understood in this proceeding) further supports Dr. Jacobson’s testimony that one of ordinary skill in the art would have understood the term “lateral” to mean “direct lateral,” as that term is presently construed in the instant proceedings. Also, we note that claim 1 does not recite the term “direct lateral,” and Patent Owner does not assert that the ’997 patent specification discloses the term “direct lateral.” The absence of the term “direct lateral” in the ’997 patent further supports that one of ordinary skill in the art at the time of the invention would not have used (or understood) the term “direct lateral.” In addition to Jacobson’s explicit disclosure of, for example, “laterally inserting a cannula,” Jacobson discloses figures that illustrate what Patent Owner now refers to as a “direct lateral” approach (i.e., lateral insertion along a path having an axis lying in a coronal plane). Ex. 1004, 2:26–27, Figs. 3–8. We note that in each of the figures of Jacobson, the outer side periphery of the instrument(s) inserted “laterally” into the intervertebral space, as illustrated, are depicted by parallel lines that are oriented at 90 degrees from a horizontal surface. Based on the depiction of the outer side contours of the instrument(s) as being oriented 90 degrees from a horizontal surface, one of ordinary skill in the art would have understood that the instrument(s) are perpendicular to an underlying horizontal surface in the superior-inferior perspective (with respect to the orientation of the patient). More importantly, as the outer side contours of the instruments are parallel in these perspectives, one of ordinary skill in the art would have understood the instruments, as illustrated by Jacobson, to be perpendicular to an underlying horizontal surface in the medial-lateral perspective (with respect to the orientation of the patient – i.e., that the orientation of the instrument(s) is “direct lateral,” as Patent Owner uses that phrase, and not “posterolateral” or “anterolateral”). That is true because, assuming the instrument(s) illustrated in Jacobson are cylindrical, if the instrument(s) were angled away from the viewer, the outer side contours of the instrument(s) at the point of insertion into the intervertebral space would appear farther away from each other as compared to the outer side contours of the instrument(s) at the point farthest from the point of insertion into the intervertebral space (i.e., the proximal end of the instrument(s), which would be located farther away from the viewer). Likewise, if the instrument(s) were angled toward the viewer, the outer side contours of the instrument(s) at the point of insertion into the intervertebral space would appear closer to each other as compared to the outer side contours of the instrument(s) at the point farthest from the point of insertion into the intervertebral space (i.e., the proximal end of the instrument(s), which is located closer to the viewer). Moreover, as Petitioner’s declarant (Dr. Paul McAfee) points out, an anterior cross sectional view of the instrument(s) in-situ (i.e., Ex. 1004, Fig. 6) shows an even and symmetrical view of the instruments throughout the length of the instrument(s). See, e.g., Ex. 1029 ¶ 38. Dr. McAfee’s testimony further supports that Jacobson discloses that the instruments are inserted along a path having an axis lying in a coronal plane passing through a lateral aspect and a medial aspect of the two adjacent vertebrae, as recited in claim 1 (i.e., the “direct lateral” approach as presently understood in the instant proceedings).” slip op. at 8
Patent outcomesUS 8,251,997 unpatentableClaim construction§ 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.