- Dynaenergetics Europe GmbH / Dynaenergetics US, Inc. v. Qinetiq LimitedNo claims unpatentablePTAB · Apr 11, 2024 · PGR2023-00003 · APJ William A Capp · PGR · Final written decision
The Board held claims 1–5 not unpatentable; Petitioner failed to prove its asserted §101, §102, §103, and §112 grounds, including indefiniteness and written-description challenges.
RulingsFinal written decision- BurdenNot shown unpatentable
“prevail, Petitioner bears the burden to demonstrate that the challenged claims are unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). The standard of proof is preponderance of the evidence. 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d). We have jurisdiction under 35 U.S.C. § 6.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill Petitioner’s expert, Mr. Serra testifies that he is familiar with the” slip op. at 45
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“process of claim 1. The first principal decision is the selection of a known liner design from a library that is made at the beginning of the design process. The second principal decision is made at the conclusion of the design process where a “final liner design” emerges after hole shapes produced by modified liners converge toward the desired hole shape. A person of ordinary skill in the art, having read claim 1 in context, would understand that the term “optimized” in the claim refers to the hole shape of the known liner design that is selected from among the known liner designs in the library during the selection step of the claim. A person of ordinary skill in the art would similarly understand that the design that is chosen in the initial selection process is “optimized” with respect to the population of known liner designs in the library as opposed to being “optimized” relative to liner designs produced during the later varying and modelling steps of the design process.” slip op. at 26
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable
“Accordingly, Petitioner has not shown that claims 1–5 of the ’039” slip op. at 22
Patent outcomesUS 11,215,039 not shown unpatentableClaim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Bilski · Phillips · Markman · NautilusPatents in suitUS 11,215,039 - PTAB · Apr 3, 2023 · IPR2022-01605 · APJ Michael L Woods · IPR · Institution
The Board instituted IPR of claims 1 and 2 on all asserted grounds, finding a reasonable likelihood that both claims would have been obvious over Schreibfeder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. 5 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. Interim Procedure 9 (emphasis added); see also PO Sur-Reply 5 (acknowledging that Petitioner stipulated after the Patent Owner’s Preliminary Response was filed). Under the Interim Procedure, “the PTAB will not deny institution of an IPR . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). This is what Petitioner stipulates. Ex. 1021; see Reply 4 n.1 (stating that Petitioner is filing a “Sotera stipulation,” which “precludes discretionary denial” under the Interim Procedure); Sur-Reply 5. Accordingly, we decline to deny institution under Fintiv.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“an inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under Section 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). Turning to the first prong of Advanced Bionics, neither Schreibfeder nor Threlkel was cited during prosecution of the ’028 patent. See Ex. 1002; see also Ex. 1001, code (56). Further, we do not find anything in the prosecution history of the ’028 patent, such as an office action on the merits, that suggests the Examiner considered “the same or substantially the same prior art” as these references. See Ex. 1002. We disagree with Patent Owner that the Examiner considered “the same prior art” simply because Schreibfeder or Threlkel may have fallen within the same classes searched by the Examiner. See Sur-Reply 3. We are aware of no authority, and Patent Owner cites none, to support this position. Because we do not find that the same or substantially the same art or” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a minimum of a B.S. in engineering or a related field, as well as four to six years of industry experience designing or building amusement rides or motion simulator systems. Higher education by way of advanced degrees in a related field could substitute for years of experience. Pet. 6 (citing Ex. 1003 ¶ 43). Patent Owner does not dispute Petitioner’s definition of a POSITA. See generally, Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as we find that it is consistent with the ’028 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“controller” “should be construed as ‘one or more computer-based devices that issue control signals to engage and control the projector, the motor system, and actuator system.’” Pet. 7 (citing Ex. 1020). Patent Owner similarly proposes that the term “controller” should be construed as “one or more computer-based devices that issue control signals to engage and control the projector, the motor system, and actuator system.” See Prelim. Resp. 12. As both parties propose identical interpretations of the term “controller” (compare Pet. 7, with Prelim. Resp. 2), and Patent Owner at this time does not dispute that the asserted prior art (Schreibfeder) teaches the recited “controller,” this term is not in controversy, and we do not construe it in this Decision. See infra Section III.E.3.h; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,266,028 - PTAB · Mar 17, 2023 · IPR2022-01604 · APJ William A Capp · IPR · Institution
The Board instituted IPR on claims 1–19 after finding a reasonable likelihood that claim 1 is unpatentable over King and Rokkaku.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION Invata has shown a reasonable likelihood of prevailing on its challenge that claim 1 is unpatentable over King and Rokkaku. Under prevailing law, a determination that any one claim is reasonably likely to be shown unpatentable in an IPR warrants institution of a trial on all challenged claims. SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348, 1356 (2018). We have not, however, made a final determination with respect to the patentability of any challenged claim or the construction of any claim term. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review is hereby instituted as to claims 1–19 of the ‘144 patent on the following grounds of unpatentability: A. Claims 1–3, 5, and 9–19 under 35 U.S.C. § 103(a) as obvious over King and Rokkaku;” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Whether a person of ordinary skill in the art would have been motivated to modify or combine teachings in the prior art, and whether he would have had a reasonable expectation of success, are questions of fact.” Regents of Univ. of Cal. v. Broad Inst., Inc., 903 F.3d 1286, 1291 (Fed. Cir. 2018) (quoting In re Stepan Co., 868 F.3d 1342, 1346 (Fed. Cir. 2017)). Given that we are at the Preliminary Response stage of these proceedings, we are not inclined to engage in an exercise of weighing evidence, particularly on an incomplete record. We determine, on the current record, that Petitioner sufficiently demonstrates at this stage of the proceeding that a person having ordinary skill in the art would have had reason to combine King and Rokkaku. Resolution of the combinability issues in this case will be reserved for trial following discovery and more extensive briefing by the parties. slip op. at 9
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“An investigation into secondary considerations of non-obviousness can frequently be particularly fact intensive. It almost invariably requires discovery into matters that are outside of the scope and content of the prior art presented in an IPR petition. Considering that Invata is the Petitioner and has only now, for the first time in this proceeding, been presented with an outline of OPEX’s secondary considerations case and has not yet been given an opportunity for discovery, much less present evidence at a trial in response to OPEX’s case, we are disinclined to hinge the outcome of a Decision to Institute on the incomplete record before us. Resolution of this issue must await discovery and a presentation of evidence at trial.” slip op. at 10
§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,192,144 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLCAll claims unpatentablePTAB · Dec 9, 2015 · IPR2014-00921 · APJ Josiah C Cocks · IPR · Final written decision
Claims 23, 24, 60, and 61 are unpatentable as obvious over Robertson and Ungerboeck; claims 23 and 60 were not shown anticipated by Palicot.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“It is clear from the record evidence before us that, in the context of the ’783 patent, a connection between two components is not one that is considered properly as “direct” if there is an interleaver between those components. We understand that an “interleaver” is a structure that provides extensive reordering of data. For instance, record evidence characterizes a particular interleaver as a “pseudorandom block scrambler” that reads out data “in a specified permuted order.” Ex. 1009, 29. Indeed, the ’783 patent itself characterizes an interleaver as a “pseudo-random block scrambler” that operates to output data “in a specified (fixed) random order.” Ex. 1001, 5:57–61. In that respect, it is further understood from the ’783 patent that there are extensive considerations that go into the design of interleavers and the effect that a given interleaver has on the configuration, order, and characteristics of data. See id. at 9:53–13:54. Thus, the operations of an interleaver appear to constitute complex data reordering schemes where the “pseudorandom” scrambling of data is, at least in some cases, the desired goal. As noted above, in the context of an inter partes review, the Board construes claim terms based on their broadest reasonable construction that is consistent with the underlying specification. Here, with that guidance in mind, we do not discern that Intellectual Ventures’s position that the claim terms in question should be construed narrowly to prohibit any intervening structure that performs any type of operation that may be regarded as manipulating data or changing the order of data in some aspect, regardless of the nature or extent of the data reordering. To that end, while the reordering operations provided by an interleaver are not encompassed by “directly” connecting elements, we are not satisfied that Intellectual Ventures has provided a suitable evidentiary basis for its position that any intervening data reordering, of any kind, is the benchmark for evaluating whether structures are directly connected to one another. It also is clear from the Specification of the ’783 patent, and as we observed in our Decision instituting trial (Inst. Dec. 12–13), that a direct connection does not prohibit some intervening structures, such as the intervening presence of a switch. In considering the totality of the record before us, we do not discern that there is cause to deviate from the construction we initially adopted for “directly coupled”/“signal directly from” as a part of the Decision to institute trial. Accordingly, for purposes of this Final Written Decision, we maintain the understanding that components that are “directly” coupled to one another, or which receive signals “directly” from one another, excludes the presence of an interleaver between those components, but does not prohibit any and all intervening structures, such as a switch.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for patent owner
“Thus, the declarants are largely in agreement as to the level of ordinary skill in the art, but for a slight difference of opinion as to the extent of education. While Mr. Lanning and Dr. Xiong take the view that a person of ordinary skill “would have at least a Bachelors or Masters level college degree in Electrical Engineering, Computer Science, Computer Engineering or equivalent training and experience,” Dr. Cimini opines that only a Bachelor’s degree would be insufficient. Dr. Cimini advanced that opinion on the theory that one with only a Bachelor’s degree would lack an appropriate “mathematical foundation.” On the record before us, it is not apparent that the possession of a Master’s degree as compared with possession of a Bachelor’s degree establishes a dividing line between a person who is of ordinary skill in the art, and a person who is not. Dr. Cimini does not explain persuasively why a person with a Bachelor’s degree in the noted areas, coupled for instance, with the noted “academic or industry experience” would lack the requisite “mathematical foundation.” To that end, we are cognizant of the level of ordinary skill to which all declarants have testified, but do not understand the record as establishing that a Master’s degree, to the exclusion of other equivalent experience, is a strict requirement of a skilled artisan in the pertinent field.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“contends that Robertson discloses all the features of claims 23 and 60 (Pet. 49–54) with the exception of those features directed to “multilevel modulation” (id. at 53). In that regard, Ericsson contends that Robertson is directed to “binary modulation” rather than “multilevel modulation,” but points to Ungerboeck as disclosing multilevel modulation. Id. Referencing the declaration testimony of Mr. Mark Lanning (Ex. 1003), Ericsson contends the following: As noted by Mr. Lanning, it would have been obvious to one of ordinary skill in the art to combine Robertson and Ungerboeck to replace the binary modulation in Roberton’s coding system with multilevel modulation taught by Ungerboeck because it would yield the predictable result–that more data bits correspond to a modulated symbol, thereby enhancing bandwidth efficiency. Id. at 53–54. To that end, we understand that Ericsson proposes, and Mr. Lanning testifies (Ex. 1003 ¶ 230), that one of ordinary skill in the art would have had reason to substitute Ungerboeck’s multilevel 8-PSK modulator for Robertson’s binary modulator so as to enhance bandwidth efficiency.” slip op. at 18
- Expert testimonyPatent owner expert discountedDecided for patent owner
“ordinary skill in the art, but for a slight difference of opinion as to the extent of education. While Mr. Lanning and Dr. Xiong take the view that a person of ordinary skill “would have at least a Bachelors or Masters level college degree in Electrical Engineering, Computer Science, Computer Engineering or equivalent training and experience,” Dr. Cimini opines that only a Bachelor’s degree would be insufficient. Dr. Cimini advanced that opinion on the theory that one with only a Bachelor’s degree would lack an appropriate “mathematical foundation.” On the record before us, it is not apparent that the possession of a Master’s degree as compared with possession of a Bachelor’s degree establishes a dividing line between a person who is of ordinary skill in the art, and a person who is not. Dr. Cimini does not explain persuasively why a person with a Bachelor’s degree in the noted areas, coupled for instance, with the noted “academic or industry experience” would lack the requisite “mathematical foundation.” To that end, we are cognizant of the level of ordinary skill to which all declarants have testified, but do not understand the record as establishing that a Master’s degree, to the exclusion of other equivalent experience, is a strict requirement of a skilled artisan in the pertinent field.” slip op. at 16
Patent outcomesUS 6,023,783 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,023,783 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Dec 7, 2015 · IPR2014-00915 · APJ William A Capp · IPR · Final written decision
Claims 6–10 and 28–32 are unpatentable as obvious over the specified combinations based on McFarland and over the specified combinations based on Trompower.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“We think Exhibit 1012 is probative of whether Trompower is analogous art to the ’079 patent and will admit it for this limited purpose. We DENY Intellectual Ventures’ motion to exclude Exhibit 1012.” slip op. at 7
- Skill levelSkill level board ownOther
“Neither party presents a detailed evidentiary showing under the factors recited in Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696– 97 (Fed. Cir. 1983).24 Notwithstanding the scant evidence on skill level presented by the parties, the level of skill in the art often can be determined from a review of the prior art. See Litton Indus. Products, Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985). Based on our review of the prior art, the applicable field of endeavor is wireless telecommunication. The person of ordinary skill in this field would have been generally familiar with transmitting information using packets that included a header portion and a data portion. Ex. 1002, 6:64– 24 Factors pertinent to a determination of the level of ordinary skill in the art include: (1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field. Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. See id. These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). 7:3. The person of ordinary skill in the art would have been familiar with techniques for varying the signal rate and the occupied bandwidth of a signal on a packet-by-packet basis. Id. at 7:4–15. The ordinarily skilled artisan also would have been familiar with the fundamentals of OFDM communications technology. Id. 1:18–2:61. Such fundamentals of OFDM communications would have included synchronizing the timing and frequency of OFDM signals. Ex. 1003, 7:1–8, 9:1–23. The skilled artisan also would have been familiar with the basic principles underlying spread spectrum communication technology. Ex. 1007, Abstract. Such an artisan would have been familiar with modulating carrier waves, varying the modulation scheme used in different packet/signals, and synchronizing the modulation scheme between a transmitter and a receiver. Ex. 1004, 2:14– 19; 10:48–11:3. The person of ordinary skill in the art would also have familiarity with using Node-Bs in a UMTS environment. Ex. 1005; Ex. 1006.” slip op. at 41
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We think that Ericsson’s position is correct. Trompower discloses that: “for a given communication . . . the mobile terminal and the base station can adjust the PN code length and the chipping rate.” Ex. 1007, 5:42–44 (emphasis added); Ex. 1015 ¶ 49. Dr. Haas’s testimony at paragraphs 49–54 of his declaration is corroborated by statements in Trompower that the system can increase or decrease its spectral bandwidth depending on conditions. Ex. 1007, 6:27–39. 26 This change in spectral bandwidth is accomplished in connection with information that is gleaned from the header of a packet: The demodulator 814 demodulates the PN coded signal from the carrier frequency and forwards the PN coded signal to the filter 816. Prior to receiving the PN coded signal, the filter 816 receives the PN code chipping rate value signal from the microprocessor 730 and adjusts its spectral bandwidth based on the PN code chipping rate value received. Ex. 1007, 33:39–45. Thus, we agree with Ericsson that there is no material difference between the prior art and claimed invention with the respect to the “indication of an operating bandwidth” limitation in claims 6 and 28. 2. Claims 7, 10, and 29” slip op. at 54
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“As modern telecommunications technology has developed over time, the term “bandwidth” has acquired more than one meaning. For example, one on-line dictionary provides the following two definitions: 1: a range within a band of wavelengths, frequencies, or energies; especially: a range of radio frequencies which is occupied by a modulated carrier wave, which is assigned to a service, or over which a device can operate. 2: the capacity for data transfer of an electronic communications system (graphics consume more bandwidth than text does); especially: the maximum data transfer rate of such a system (a bandwidth of 56 kilobits per second). www.merriam-webster.com/dictionary/bandwidth (last visited October 16, 2015). The parties’ proposed constructions appear to agree that the term “bandwidth,” as used in the claims of the ’079 patent, more closely conforms to definition number 1 above. Such a construction is supported by the prosecution history of the ’353 patent where the claims were amended essentially to substitute “bandwidth” or “bandwidth determined by . . . chip rate” for “chip rate” to distinguish over the Boer reference. In view of the foregoing, we retain the same construction for “bandwidth” that we adopted for purposes of the Decision to Institute. Thus, for purposes of this Final Written Decision, we construe “bandwidth” to mean “a frequency range.” For purposes of clarification, we will provide the following example: a band of frequencies with a lower cut-off frequency of 10 MHz and an upper cut-off frequency of 40 MHz has a “bandwidth” of 30 MHz.” slip op. at 17
Patent outcomesUS 8,396,079 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,396,079 - Seoul Semiconductor Co., Ltd / North America Seoul Semiconductor Inc. v. Enplas CorporationAll claims unpatentablePTAB · Oct 15, 2015 · IPR2014-00878 · APJ Jeremy M Plenzler · IPR · Final written decision
Claims 1, 2, 5–7, and 10–12 are unpatentable as obvious over the instituted combinations of Tetsuo with Kim or Blieske, with Yamaguchi for claims 10 and 11.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“lexicographical definition for the “light control/emission surface,” and, instead, “merely describes an embodiment of a light control/emission surface.” Pet. Reply 2. Petitioner proposes that we construe this term in the manner stated in our Decision to Institute (Pet. Reply 4 (citing Dec. 7)), where we construed the term “as only requiring a ‘surface that controls a traveling direction of light emitted from the light emitting element’” (Dec. 7). We agree with Petitioner. Patent Owner has failed to persuade us that the cited portions of the Specification of the ’969 patent provide a definition of this term with reasonable clarity, deliberateness, and precision. Although the Specification of the ’969 patent provides the example of light control/emission surface 11 including first, second, and third emission surfaces 11a, 11b, 11c (Ex. 1001, 7:20–42), Patent Owner fails to identify anything in the Specification indicating that these three emission surfaces are required for the claimed “light control/emission surface.” The initial discussion of light controlling emission surface 11 states that “light controlling emission surface 11” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“to arrange optical elements on the back of a light flux controlling member. Id. at 33 (citing Ex. 1003 ¶¶ 32–33). Petitioner contends that one skilled in the art would have needed to select an arrangement for Tetsuo’s refraction parts, and would have considered the grid pattern taught by Kim to be one obvious option. Id. Petitioner reasons, for example, that it would have been obvious to one skilled in the art to use a grid pattern to arrange the refraction parts on the back of Tetsuo’s light flux controlling member because “Kim also identifies specific benefits from providing a grid of horizontal and perpendicular grooves between optical elements on the light incoming side of a lens” including “uniform output brightness from the light flux controlling member,” which would have been beneficial to the arrangement in Tetsuo. Id. at 33–34 (citing Ex. 1005, 2:35–37; Ex. 1004 ¶¶ 6–7).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Patent Owner responds with general allegations of “teaching away” and “impermissible hindsight,” but does not explain persuasively why one skilled in the art would have been discouraged from the proposed modification or why it was based solely on the disclosure of the ’969 patent. PO Resp. 27–30. For example, Patent Owner alleges, generally, that “Petitioners’ position requires one of skill in the art to ‘disassemble the single lens of Kim’ at the point of novelty of the Claims, to provide a surface taught away from by Tetsuo, which employs a different type of surface.” Id. at 28.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“Patent Owner responds with general allegations of “teaching away” and “impermissible hindsight,” but does not explain persuasively why one skilled in the art would have been discouraged from the proposed modification or why it was based solely on the disclosure of the ’969 patent. PO Resp. 27–30. For example, Patent Owner alleges, generally, that “Petitioners’ position requires one of skill in the art to ‘disassemble the single lens of Kim’ at the point of novelty of the Claims, to provide a surface taught away from by Tetsuo, which employs a different type of surface.” Id. at 28.” slip op. at 15
Patent outcomesUS 8,227,969 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,227,969 - Edmund Optics, Inc. v. Semrock, Inc.No claims unpatentablePTAB · Sep 16, 2015 · IPR2014-00599 · APJ William A Capp · IPR · Final written decision
Claims 33–36, 39–41, 44, and 45 were not shown unpatentable: MacLeod did not enable claim 33 for anticipation, and Edmund did not establish obviousness over MacLeod.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“After considering claim 33 in view of the specification, as a whole, we are not persuaded that the intrinsic record requires a departure from the plain and ordinary meaning of “multi-layer, thin-film, laser-line filters.” The standard for finding claim scope disavowal is exacting. See GE Lighting Solutions, LLC v. Agilight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). It is not enough that the only embodiments, or all of the embodiments, contain a particular limitation. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012). Mere criticism of a particular embodiment encompassed in the plain meaning of a claim term is not sufficient to rise to the level of clear disavowal. See Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009). Furthermore, even where a particular structure makes it “particularly difficult” to obtain certain benefits of the claimed invention, this does not rise to the level of disavowal of the structure. See Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1315 (Fed. Cir. 2010). It is the claims that define the metes and bounds of the patentee’s invention. See Phillips, 415 F.3d at 1313. Thus, the patentee is free to choose a broad term and expect to obtain the full scope of its plain and ordinary meaning unless the patentee explicitly redefines the term or disavows its full scope. See Thorner, 669 F.3d at 1366. Each claim does not need to cover every feature disclosed in a specification. See Ventana Med. Sys., Inc. v. Biogenex Labs, Inc., 473 F.3d 1173, 1182 (Fed. Cir. 2006). When a claim addresses only some of the features disclosed in the specification, it is improper to limit the claim to other, unclaimed features.” slip op. at 14
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“The MacLeod Treatise is a non-patent, printed publication. Edmund relies on In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012), for the proposition that a non-patent, printed publication is presumptively enabled for purposes of an anticipation analysis. Paper 69, 1. Semrock distinguishes Antor Media as being restricted to the context of patent prosecution. Paper 68, 3. The Court, in Antor Media, explained the underlying rationale for permitting a presumption of enablement during patent prosecution. [A]n examiner, who has no access to experts or laboratories, is not in a position to test each piece of prior art for enablement in citing it, and requiring him to do so would be onerous, if not impossible. An examiner, therefore, is not required to anticipate every possible response to a rejection, including showing that a cited reference is enabling. Consistent with the statutory frame-work and our precedent, we therefore hold that, during patent prosecution, an examiner is entitled to reject claims as anticipated by a prior art publication or patent without conducting an inquiry into whether or not that prior art reference is enabling. As long as an examiner makes a proper prima facie case of anticipation by giving adequate notice under § 132, the burden shifts to the applicant to submit rebuttal evidence of nonenablement. Antor Media, 689 F.3d at 1289. In the case of Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313 (Fed. Cir. 2003), the Federal Circuit held that an accused infringer should be entitled to have a district court presume the enablement of unclaimed material in a prior art patent asserted against a patentee. Id. at 1355. In dicta, the Amgen Court stated that its reasoning “might” also apply to prior art printed publications. We note that by logical extension, our reasoning here might also apply to prior art printed publications as well, but as Sugimoto is a patent we need not and do not so decide today. See id. (emphasis added). Thus, the Amgen Court did not reach that issue in its decision. See id. District Courts are split on this issue. We note that at least one district court decision has held that a district court should presume that a prior art printed publication is enabled. See Robocast, Inc. v. Apple Inc., 39 F. Supp. 3d 552, 565 (D. Del. 2014). Other district courts maintain otherwise. See e.g., CA, Inc. v. Simple.com., Inc., 780 F. Supp. 2d 196, 250 (E.D.N.Y. 2009); Matsushita Elec. Indus. Co. v. Samsung Electronics Co., 2006 WL 1794768, *5 (D.N.J. June 26, 2006).” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“G. Ultimate Determination of Enablement A patent claim “cannot be anticipated by a prior art reference if the allegedly anticipatory [disclosure] cited as prior art [is] not enabled.” In re NTP, Inc., 654 F.3d 1279, 1301 (Fed. Cir. 2011). Although anticipation is a question of fact, whether a prior art reference is enabling is a question of law with underlying factual inquiries. Id. The standard for what constitutes proper enablement of a prior art reference for purposes of anticipation under section 102 differs from the enablement standard for a patent application under section 112. See Verizon Services Corp., v. Cox Fibernet Virginia, Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010). Anticipation does not require the actual creation or reduction to practice of the prior art subject matter; anticipation requires only an enabling disclosure. See Schering Corp., v. Geneva Pharma, Inc., 339 F.3d 1373, 1380 (Fed. Cir. 2003); citing In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985). Nevertheless, we determine that the MacLeod Treatise does not enable claim 33. Claim 33 is directed to optical performance parameters. There is no dispute that multi-layer, thin-film, laser-line filters comprised of alternating layers of ZnS and Cryolite were known in the prior art. Thus, Semrock distinguishes its invention over prior art soft-coated filters on the basis of optical performance, not on the basis of using the basic structure of alternating layers of refractive materials with Fabry-Perot cavities. Upon consideration of the various Wands factors, including the absence of any working examples that demonstrate that Edmund’s theoretical calculations are capable of realization, we conclude that Semrock has carried its burden of showing that the MacLeod Treatise does not enable claim 33.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“By waiting and filing its expert declaration after Semrock filed its Patent Owner Response, Edmund effectively precluded Semrock from addressing Professor MacLeod’s Exhibit 1029 declaration in its Response. This also effectively precluded Semrock’s expert, Dr. Rancourt, from responding to Professor MacLeod’s belated testimony in his declaration that was filed in support of Semrock’s Response. We will not countenance such tactics. See Murphy v. Village of Hoffman Estates, 1999 U.S. Dist. LEXIS 3320, at *5–6 (N.D. Ill. 1999) (“[I]t is established beyond peradventure that it is improper to sandbag one’s opponent by raising new matter in reply.”). A Reply that belatedly presents evidence will not be considered. Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767. Edmund’s original Petition asserted a ground of unpatentability over the ZnS/Cryolite of Figure 7.26 of the MacLeod Treatise. If Edmund wanted to present a ground of unpatentability over the ZnS/Cryolite embodiment of Figure 7.26 in combination with a tantala/silica embodiment, Edmund should have presented evidence as to how and why a person of ordinary skill in the art would have combined the two embodiments to achieve the invention of claim 33 contemporaneous with the filing of its original Petition. See KSR, 550 U.S. at 418 (requiring articulated reasoning with rationale underpinning as to how or why a person of ordinary skill in the art would have combined or modified the teachings of the prior art). Presenting such evidence and argument for the first time in a Reply is untimely.” slip op. at 43
Patent outcomesUS 7,119,960 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,119,960 - Greene’S Energy Group, LLC v. Oil States Energy Services, LLCNo claims unpatentablePTAB · May 1, 2015 · IPR2014-00364 · APJ William A Capp · IPR · Final written decision
The Board found claims 1–13, 27, and 30–32 not shown unpatentable because the proposed obviousness combinations did not establish the claimed mechanical lockdown mechanism and its required function.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“The parties do not dispute that a “lockdown mechanism” maintains the mandrel in a fixed position during a fracking or well treatment operation. Thus, we will construe “lockdown mechanism” to mean “machinery for maintaining [the mandrel] in a fixed position during a fracking or well treatment operation.” This leaves us to determine what it means for a lockdown mechanism to be “mechanical” and whether the correct construction requires imposing a further definitional limitation regarding a range of adjustment. Oil States points out that the Specification differentiates a mechanical mechanism from hydraulic mechanisms. PO Resp. 12. The Specification distinguishes the instant invention from an earlier invention by the same inventor that discloses a hydraulic unit. Ex. 1001, 2:28–63. The Specification further states that: a mechanical lockdown mechanism for securing the BOP protector mandrel in an operative position is considered more reliable because a source of pressurized hydraulic fluid is not required. Id. at 2:3–6; see also id. at 3:53–56. Greene does not challenge that this language in the Specification effectively differentiates a mechanical lockdown mechanism from a hydraulic mechanism. Thus, we construe “mechanical” lockdown mechanisms as being limited to purely mechanical means such as nuts and bolts and the like. We further clarify that the principal holding force that maintains the mandrel in a fixed position is not a dynamic force such as through hydraulic, pneumatic, or electrical means or the like.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Oil States’s effort to read a “broad range of adjustment” limitation into the definition of mechanical lockdown mechanism in claim 1 renders the dependent limitation in claim 3 superfluous. Claim 2 claims an elongated spiral thread. There is no need to add a further limitation to claim 3 to provide for adjustment to compensate for variations in the distance between a top of the blowout preventer and the top of the casing of different wellheads if a “broad range of adjustment” is already contemplated in the meaning of mechanical lockdown mechanism. 8 It is well-settled that each claim does not necessarily cover every feature disclosed in the specification. See Ventana Med. Sys., Inc. v. Biogenex Labs, Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006). When a claim addresses only some of the features disclosed in the specification, it is improper to limit the claim to other unclaimed features. Id. Here, Oil States’s inclusion of adjustment limitations in claims 2 and 3 belie an intention to limit the scope of the term “mechanical lockdown mechanism” in claim 1 to mechanisms that provide a broad range of adjustment.9 Thus, we decline to adopt Oil States’s proposed construction. We construe a “lockdown mechanism” to mean “machinery for maintaining [the mandrel] in a fixed position.” In the context of lockdown mechanisms, we construe the adjective “mechanical” to mean that the lockdown mechanism is limited to purely mechanical means such as nuts and bolts and the like so that the principal holding force that maintains the mandrel in a fixed position 8 In the Summary of the Invention section of the Specification, the topic sentence of the paragraph describing an embodiment with a “significant range of adjustment,” qualifies the description of such embodiment with the word “preferably.” Ex. 1001, 3:8–27. This suggests that this passage of the Specification merely describes one embodiment and not the entire invention. 9 To the extent that claim 1 requires the mechanical lockdown mechanism to have any range of adjustment, such adjustment requirement may be found in the claim limitation directed to the lockdown mechanism being “adapted to ensure that the annular sealing body is securely seated against the top of the casing when the mandrel is in the operative position” and not in definition of “mechanical lockdown mechanism” per se.” slip op. at 11
- Skill levelSkill level board ownOther
“Green’s expert, Mr. Shackelford, opines that the person of ordinary skill in the art at the time of the invention of the ’993 patent would have had a Bachelor-level degree in a recognized engineering discipline and practical job exposure of several years with oil and gas well operations. Ex. 1002 ¶ 13. Mr. Shackelford’s testimony is entirely conclusory with no supporting factual analysis. Oil States contends that the level of ordinary skill in the art is “relatively low,” but does not articulate or explain what it means by this characterization. PO Resp. 22. Oil States’s expert, Dr. Wooley, merely adopts Mr. Shackelford’s position and, like Mr. Shackelford, fails to provide any supporting factual analysis. Merely reciting a college degree and a number of years of experience provides little guidance as to the actual capabilities of a person of ordinary skill in the art. Neither party presents a detailed evidentiary showing under the factors recited in Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). 13” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“combine references is a question of fact. In re Constr. Equip. Co., 665 F.3d 1254, 1255 (Fed. Cir. 2011). Greene fails to persuade us that a person of ordinary skill in the art would have had reason to combine Herricks and McLeod to achieve the invention claimed in claims 1 and 27 of the ’993 patent. Because the mechanical lockdown mechanism in McLeod is intended to be used with a mandrel that packs off at an indeterminate point in the casing, rather than at a fixed point and, therefore, does not disclose any range of adjustment to accommodate production trees of varying heights as would be necessary to be operable in systems designed for fixed point packoff, the proposed combination does not provide a mechanical lockdown mechanism that is adapted to securely seat a mandrel against the top of the casing as required by claim 1. Similarly, the proposed combination does not provide a method for engaging the mechanical lockdown mechanisms to lock the mandrel in the operative position such that the annular sealing body is in fluid sealing engagement with a top of a casing of the well as required by claim 27.” slip op. at 30
Patent outcomesUS 6,289,993 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,289,993 - Intri–plex Technologies, Inc. / Mmi Holdings, Ltd. v. Saint–gobain Performance Plastics Rencol LimitedNo claims unpatentablePTAB · Mar 23, 2015 · IPR2014-00309 · APJ William A Capp · IPR · Final written decision
Claims 1–10 were not shown unpatentable because Saint-Gobain’s evidence of commercial success outweighed the obviousness case over Admitted Prior Art and Wing.
RulingsFinal written decision- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Two separate tests define the scope of analogous art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Saint-Gobain argues that Wing does not satisfy either test. PO Resp. 26. slip op. at 30
- Skill levelSkill level board ownOther
“Notwithstanding the scant evidence on skill level presented by the parties, the level of skill in the art can often be determined from a review of the prior art. See Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985). Based on our review of the prior art and the other technology related exhibits of record that are contemporaneous with the date of the invention, the applicable art is hard disk drive assembly and similar precision machinery. The person of ordinary skill in this field would have been familiar with hard disk drive design and assembly in general and the use of tolerance rings in conjunction with actuator bearing cartridges in particular. Ex. 2001; Ex. 2016. The ordinarily skilled artisan would have been familiar with both Shaft Variable and Housing Variable tolerance rings and their manner of assembly with a bearing shaft and a bore. Ex. 1001, Admitted Prior Art. Such an artisan also would have been familiar with the problem of debris or particle generation during assembly of a hard disk drive. Ex. 2003; Ex. 1001, 2:5–17. Such a person would have 17 Factors pertinent to a determination of the level of ordinary skill in the art include: (1) educational level of the inventor; (2) type of problems encountered in the art: (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology, and (6) educational level of workers active in the field. Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). been familiar with the use of chamfering as an aid to assembly of machine components. Ex. 1023, 128:21–132:1; Ex. 1040. 18” slip op. at 34
- Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia with nexusDecided for patent owner
“A patentee demonstrates commercial success by showing significant sales of the patented product in a relevant market. J.T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563 (Fed. Cir. 1997). However, evidence of commercial success is only significant if there is a nexus between the claimed invention and the commercial success. Ormco Corp. v. Align Technology, Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). In the instant case, Saint-Gobain produced evidence that adding a flared guide portion to a tolerance ring quickly caused sales of flared tolerance rings to supplant sales of non-flared tolerance rings. Saint-Gobain also produced evidence that adding a flared guide portion caused sales of tolerance rings to supplant the sales of other, competing technologies. This evidence indicates that market demand for the flared tolerance ring is attributable to the flared guide portion. We are not persuaded by Intri-Plex’s evidence and argument that the market dominance of flared tolerance rings is attributable to Saint-Gobain coercing customers into sole source agreements. During the period from 2003 to 2007, Saint-Gobain sold tolerance rings with and without a guide portion. We are persuaded that the rapid increase in sales of flared tolerance rings vis-à-vis non-flared rings is more logically explained by customer preference than supplier coercion. Indeed, given the relatively easily discernable difference between the non-flared tolerance rings and the flared tolerance rings, we are hard pressed to come to a determination that the increase in sales of the flared tolerance rings is attributable to anything other than the flared guide portion. In any event, Intri-Plex’s arguments are belied by its own admissions. In response to Saint-Gobain’s allegations of copying, Intri-Plex volunteered that the only reason Intri-Plex made tolerance rings with a flared guide portion is due to customer requests. Pet. Reply 4; Paper 67, 12. Intri-Plex further admitted that the reason that its customers requested flared tolerance rings is because they had set up their manufacturing operations to accommodate a flared tolerance ring to the exclusion of a non-flared ring. Tr. 31:416.19 These admissions constitute strong evidence that the commercial success is attributable to customer demand for the patented features. In summary, the commercial success of flared tolerance rings, whether made and sold by Saint-Gobain or Intri-Plex, weighs heavily in favor of non-obviousness of the invention. 2. Copying” slip op. at 37
- Obviousness (§103) › Objective indicia / secondary considerations › CopyingDecided for patent owner
“A party may prove copying by showing that an accused copier had access to the patented product combined with substantial similarity to the patented product. Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010). Here, Intri-Plex denies direct copying of Saint-Gobain’s product and asserts, instead, that its alleged copy was made in response to customer requests. However, Intri-Plex does not deny that its customers had access to Saint-Gobain’s product.21 To the contrary, Ryan Schmidt admitted that all of the flared tolerance rings that Intri-Plex made and sold were the result of customers asking Intri-Plex to be a “second source” to Saint-Gobain. Ex. 1033 ¶¶ 20–23, 29; Ex. 1034. We are not persuaded that Intri-Plex can insulate itself from an accusation of copying, merely by interposing an intermediary between itself and Saint-Gobain’s patented product.22 We determine that Intri-Plex’s customers gave Intri-Plex detailed product specifications of a flared tolerance ring because they wanted a second source for Saint-Gobain’s patented product. Whether information concerning Saint-Gobain’s patented product was passed from Intri-Plex’s customers to Intri-Plex in the form of detailed product specifications instead of an actual product sample does not, in our view, negate a finding that Intri-Plex had the 21 Tr. 71:13-15. 22 In the copyright context, courts have found access when the alleged infringer and an intermediary occupy positions such that it is natural that information possessed by one would be imparted to the other. See, e.g., Meta-Film Associates, Inc. v. MCA, Inc., 586 F. Supp. 1346, 1356 (C.D. Cal. 1984); Bevan v. Columbia Broadcasting System, Inc., 329 F. Supp. 601, 610 (S.D.N.Y. 1971). requisite access to Saint-Gobain’s patented product.23 Ex. 1033 ¶ 21; Ex. 1034. On the basis of the facts that (1) Intri-Plex admits that its own commercial product included a flared guide portion and (2) that the flared guide portion was added in response to customer requests for a second source to Saint-Gobain’s product, we are persuaded that Saint-Gobain has shown that Intri-Plex had access to the patented product and that there is substantial similarity between the parties’ respective products, specifically, that both products included flared guide portions. Intri-Plex’s evidence fails to persuade us that this similarity between the parties’ respective products is either a coincidence or the result of independent creation. Consequently, Saint-Gobain’s evidence of copying weighs in favor of a finding that the patented invention is non-obvious.” slip op. at 40
Patent outcomesUS 8,228,640 not shown unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,228,640
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.