• Embody, Inc. / Zimmer Biomet Holdings, Inc. v. Lifenet HealthSome claims unpatentable
  PTAB · Aug 4, 2026 · IPR2025-00249 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1 and 4–8 are unpatentable: claims 1 and 4–6 as obvious over Huang2 and Kuo, and claims 7–8 as anticipated by Huang2; claims 2–3 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “(“POSITA”) “would be a Ph.D. student with a minimum of two years of experience in their faculty advisor’s laboratory” and would have an understanding of “electrospinning fibers, including for tissue engineering, tissue engineering techniques, and using/performing FFT analysis.” Pet. 20– 21 (citing Ex. 1003 § II.C7). Patent Owner does not dispute Petitioner’s proposal but specifies the set of disciplines within which the Ph.D. would have been earned, namely “bioengineering, chemical engineering, mechanical engineering, or a related engineering discipline.” PO Resp. 6. We adopt and apply Petitioner’s proposal as clarified by Patent Owner regarding the Ph.D. discipline.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “At the outset, we agree with Patent Owner that the Specification purports to define “major peaks” in the following sentence: “The ‘major peaks’ herein refer to peaks higher than the average of the peaks in the result.” Ex. 1001, 13:28–29. We determine that this language satisfies at least two of the criteria set forth in Alnylam. Specifically, the sentence at “refers to” to explain what qualifies as major peaks. That is not the end of the inquiry, however, as we find there is still some ambiguity as to whether the patentee intended to define “major peaks” so as to require so-called “minor peaks” in the claimed invention. See Bell Atlantic, 262 F.3d at 1268 (“[T]he intrinsic evidence must ‘clearly set forth’ or ‘clearly redefine’ a claim term so as to put one reasonably skilled in the art on notice that the patentee intended to so redefine the claim term.”). Importantly, the Specification does not treat the existence of minor peaks as prerequisites for the existence of major peaks. Indeed, the Specification does not discuss “minor peaks” at all. See generally Ex. 1001. Likewise, none of the claims of the ’227 patent, whether challenged or unchallenged, recites “minor peaks” or any additional peaks beyond the disputed “major peaks.” Id. at 23:30–24:42. Nor does the Specification include an example of FFT analysis results in which the average of the peaks therein is calculated and those higher than the average are identified as major peaks.8” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMixed

    “Petitioner has the better position. Huang2 teaches crosslinking and provides a reason for doing so (stability). In particular, Huang2 states: “To better mimic skin ECM, electrospun collagen fibers have been fabricated, however, the rapid degradation and poor mechanical properties determine that either crosslinking or combination with other materials is necessary to obtain a stable scaffold.” Ex. 1005, 1791 (emphasis added). It is true that, in describing work actually carried out, Huang2 states that blending with PCL was performed and does not mention crosslinking. See id. at 1792 (“Nanofibrous matrices of PCL and Collagen at a weight ratio of 3:1 were fabricated using electrospinning as previously described.”). However, the prior art – here, Huang2 – is not limited to that which it describes having created. See In re Mills, 470 F.2d 649, 651 (C.C.P.A. 1972) (“a reference is not limited to the disclosure of specific working examples”); see also In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968) (“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.”); In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) (“It is well settled that a prior art reference is relevant for all that it teaches to those of ordinary skill in the art.”). Huang2 teaches two stabilization methods when using collagen in scaffolds. Huang2 states that one or the other “is necessary to obtain a stable scaffold” (when using collagen), but it does not preclude or teach away from using Patent Owner-cited testimony of Dr. Mikos is not as definitive as Patent Owner suggests; Dr. Mikos’s testimony is that a person of ordinary skill in the art “typically would not have done both.” Ex. 2015 ¶64 (emphasis added). The bottom line is that Huang2 teaches the person of ordinary skill in the art two ways to stabilize scaffolds/matrices comprised of collagen, provides a reason for doing so (stability), and does not teach away from using both. We are persuaded that a “scaffold comprising crosslinked fibers comprising collagen” would have been obvious in view of the cited teachings of Huang2.” slip op. at 33

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We are not persuaded by Appellant’s citations to either reference. As discussed above, Petitioner’s Ground 1 is premised on a person of ordinary skill in the art altering the native flat sheet structure of Huang2 by rolling it into a jelly-roll structure as taught by Kuo. See Pet. 41 (Beginning its claim 2 arguments with the following: “Claim 1 is obvious for the reasons expressed above in § X.A., supra, which are incorporated herein.”); see also Pet. Reply 17 (“[B]ased on the explicit teaching of Kuo, a POSA would have been motivated to take the electrospun flat scaffold made by the techniques of Huang2, seed it with the desired cells, and roll it to treat a tendon and ligament.” (emphasis added)). Indeed, the paragraphs of Kuo that Petitioner cites for disclosing “scaffold sheets,” explicitly describe rolling them into jelly-roll like structures. See Ex. 1018 ¶7 (stating that “the sheet is spirally contacting a scaffold sheet of fibrous material with a cell; and rolling the scaffold sheet in a jelly-roll like manner to form a spirally wound tissue construct”), ¶22 (describing a method comprising “forming a tissue construct by contacting a scaffold sheet of fibrous material with a cell; and rolling the scaffold sheet in a jelly-roll like manner to form a spirally wound tissue construct” and implanting it in a patient). Petitioner fails to argue that that “one or more elongated sheets” recited in claim 2 would encompass the rolled structure of its proposed modification. Nor does Petitioner articulate a claim construction argument that could support such an argument. Petitioner has failed to prove, by a preponderance of the evidence, that claim 2 would have been obvious over Huang2 and Kuo.” slip op. at 42

  Patent outcomesUS 11,318,227 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Markman · KSR
  Patents in suitUS 11,318,227
• Embody, Inc. / Zimmer Biomet Holdings, Inc. v. Lifenet HealthAll claims unpatentable
  PTAB · Aug 4, 2026 · IPR2025-00248 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1–3 and 5–12 are unpatentable as anticipated by Huang2; claim 4 is unpatentable as obvious over Huang2 and Kumbar. Lee grounds failed.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of “electrospinning fibers, including for tissue engineering, tissue engineering techniques, and using/performing FFT analysis.” Pet. 18– 19 (citing Ex. 1003 § II.C5). Patent Owner does not dispute Petitioner’s proposal but specifies the set of disciplines within which the Ph.D. would have been earned, namely “bioengineering, chemical engineering, mechanical engineering, or a related engineering discipline.” PO Resp. 5–6. We adopt and apply Petitioner’s proposal as clarified by Patent Owner regarding the Ph.D. discipline.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “A patentee “may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (citing Hoechst Celanese Corp. v. BP Chemicals Ltd., 78 F.3d 1575, 1578 (Fed. Cir. 1996)); see Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc) (“[A]ny special definition given to a word must be clearly defined in the specification.”), aff'd, 517 U.S. 370 (1996); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). “[T]he intrinsic evidence must ‘clearly set forth’ or ‘clearly redefine’ a claim term so as to put one reasonably skilled in the art on notice that the patentee intended to so redefine the claim term.” Bell Atlantic Network Services, Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001). Among the criteria to consider in whether the patentee acted as a lexicographer to define a claim term include (a) whether the patent specification included the statement in question under a section for marks, (c) whether the sentence uses the term “refer to,” which generally “conveys an intent for [that sentence] to be definitional,” and (d) whether there are other non-limiting terms (e.g., “for example,” or “include”) that contradict a definitional intent. Alnylam Pharms., Inc. v. Moderna, Inc., 138 F.4th 1326, 1333 (Fed. Cir. 2025) (alteration in original). At the outset, we agree with Patent Owner that the Specification purports to define “major peaks” in the following sentence: “The ‘major peaks’ herein refer to peaks higher than the average of the peaks in the result.” Ex. 1001, 13:6–7. We determine that this language satisfies at least two of the criteria set forth in Alnylam. Specifically, the sentence at issue sets out “major peaks” in quotation marks, and then uses the term “refers to” to explain what qualifies as major peaks. That is not the end of the inquiry, however, as we find there is still some ambiguity as to whether the patentee intended to define “major peaks” so as to require so-called “minor peaks” in the claimed invention. See Bell Atlantic, 262 F.3d at 1268 (“[T]he intrinsic evidence must ‘clearly set forth’ or ‘clearly redefine’ a claim term so as to put one reasonably skilled in the art on notice that the patentee intended to so redefine the claim term.”).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “As discussed above, we agree with Patent Owner that the sentence it cites from the Specification of the ’223 patent bears sufficient hallmarks of lexicography. However, the Specification nonetheless lacks any indication that so-called “minor peaks” are a necessary component of the claimed invention. “Although it is firmly settled that an applicant may act as a 9 Figure 8B does not contain “major peaks” despite clearly depicting two “peaks higher than the average of the [three or possibly four] peaks in the result” because none of the peaks is a reflection of fiber alignment. 10 After presenting claim construction arguments based on Ayres 2008, Patent Owner confusingly states: “Finally, whether Ayres-2008 supports [Patent Owner’s] construction is irrelevant.” PO Sur-Reply 5 (emphasis added). definition that is contrary to the ordinary meaning of a claim term unless it communicates a deliberate and clear preference for this alternative definition.” Kumar v. Ovonic Battery Co., 351 F.3d 1364, 1368 (Fed. Cir. 2003). There is no indication that the patentee sought to require “minor peaks” within the scope of the claimed invention. Nor are we persuaded that a person of ordinary skill in the art would readily understand the scope of the term “major peaks” to require non-major peaks. We interpret the Specification’s statement that “‘major peaks’ herein refer to peaks higher than the average of the peaks in the result” (Ex. 1001, 13:6–7) to be teaching a person of ordinary skill in the art how to identify or discern “major peaks,” which indicate a principal axis of alignment, from any non-major peaks, which would be caused by something else. We conclude that a person of ordinary skill in the art would consider “major peaks” as used in the ’223 patent as referring to peaks that reflect the sole axis or primary axis of fiber alignment. See, e.g., id. at code (54) (“ALIGNED FIBER AND METHOD OF USE THEREOF”), code (57) (“A scaffold comprising an aligned fiber.”), 1:6–7 (“The invention relates to an aligned fiber and method of use thereof.”), 1:11–12 (“The invention relates to a scaffold comprising an aligned fiber.”), 13:16–17 (“Alignment of the fibers in the scaffold may be measured by a fast Fourier transform (FFT) analysis.”). This would certainly include peaks materially higher than the average of the peaks in the result, but it would not be limited to situations involving peaks of different heights or require so-called minor peaks. Based on the totality of the evidence before us, we do not construe the claims to require non-major peaks.” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Petitioner argues that, for the aligned sample, a major peak occurs at about 90° as identified by Petitioner’s annotation (red arrow). Pet. 30–31. As support, Petitioner directs us to Huang2’s explicit description of what the peak indicates, namely that “[t]he narrow peak of the normalized intensity values in anisotropic [aligned] matrices (Figure 1C) indicated that PCL/Coll nanofibers aligned along a single axis (Fig. 1B).” Id. at 31 (alterations in original) (quoting Ex. 1005, 1794). Patent Owner disputes that the illustrated peak is a major peak solely based on the lack of any lesser peaks. See PO Resp. 13 (“[T]he height of the sole peak is identical to—not higher than—the average height of the peaks in the result.”). As discussed above, however, we do not construe “major peaks” as requiring the existence of non-major peaks. We find that the illustrated peak in the Aniso plot of the FFT analysis results (Figure 1C) is a major peak within the meaning of the claim. The evidence in support of this finding is overwhelming. First, the term “Aniso” as used in Huang2 refers to fibers “with alignment.” Ex. 1005, 1792. Huang2 describes fabricating such matrices of aligned fibers with electrospinning, the same method used to impart alignment in the ’223 patent. Id. at 1791–92. Huang2 visually confirms that the fibers in fact are aligned via scanning electron microscopy. Id. at Fig. 1B. Further, Huang2 explicitly states that the peak illustrated in the Aniso plot of the FFT analysis results (Figure 1C) is caused by the fact that the “PCL/Coll nanofibers aligned along a single axis (Fig. 1B).” Id. at 1794. This is precisely what electrospinning may yield aligned fibers and images of aligned fibers will yield FFT results with major peaks. Ex. 1001, 2:18–19, 4:46–60, 13:16–26. Additionally, Huang2 itself considers the peak illustrated in the Aniso plot of the FFT analysis to be significant, stating: “In contrast [to the Aniso plot], the lack of a significant peak for the fibers collected on a stationary surface [(i.e., without electrospinning)] demonstrated no preferred fiber orientation in the isotropic matrices” (i.e., the Iso plot). Ex. 1005, 1794. Indeed, the asserted major peak in the Aniso plot shown in Huang2’s Figure 1C is higher than any other data point on the plot. For these reasons, we find the peak to be a major peak.15 Petitioner acknowledges that Figure 1C only reports its results” slip op. at 32

  Patent outcomesUS 10,137,223 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Markman
  Patents in suitUS 10,137,223
• Embody, Inc. / Zimmer Biomet Holdings, Inc. v. Lifenet HealthInstituted
  PTAB · Aug 5, 2025 · IPR2025-00249 · APJ Christopher G Paulraj · IPR · Institution

  The Board instituted inter partes review of claims 1–8 on all grounds in the Petition, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “review. 35 U.S.C. § 314; 37 C.F.R. §42.4(a). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). In this decision, we address the merits of the issues raised by the parties regarding claims 1–8 of the ’227 patent. For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one challenged claim of the ’227 patent is unpatentable, we institute an inter partes review of all challenged claims based on the grounds set forth in the Petition.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “II. ANALYSIS A. Discretionary Denial under 35 U.S.C. § 325(d) Patent Owner filed a request for discretionary denial under 35 U.S.C. § 325(d). Paper 9. Petitioner opposed. Paper 9. The Acting Director denied the discretionary denial request. Paper 12 (June 26, 2025). Accordingly, we proceed with our analysis of the merits of Petitioner’s patentability challenges and do not address the discretionary denial arguments presented by the parties.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA”) relevant to the ’227 patent “would be a Ph.D. student with a minimum of two years of experience in their faculty advisor’s laboratory” and would have an understanding of “electrospinning fibers, including for tissue engineering, tissue engineering techniques, and using/performing FFT analysis.” Pet. 20–21 (citing Ex. 1003 §II.C). Patent Owner does not dispute this skill level. Prelim. Resp. 10. At this stage of the proceeding and for purposes of our analysis in this Decision, we adopt Petitioner’s definition as that definition is consistent with the level of skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Neither Petitioner nor Patent Owner proposes a construction for any claim terms. Pet. 19; Prelim. Resp. 10. We also do not perceive a need to construe any claim terms of the ’227 patent for purposes of determining whether to institute trial. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 295, 803 (Fed. Cir. 1999) (holding that “only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 8

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 11,318,227
• Embody, Inc. / Zimmer Biomet Holdings, Inc. v. Lifenet HealthInstituted
  PTAB · Aug 5, 2025 · IPR2025-00248 · APJ Christopher G Paulraj · IPR · Institution

  The Board instituted IPR on claims 1–12 and all petition grounds, finding a reasonable likelihood that at least one claim is unpatentable, including based on Huang2’s inherent FFT symmetry.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “review. 35 U.S.C. § 314; 37 C.F.R. §42.4(a). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “II. ANALYSIS F. Discretionary Denial under 35 U.S.C. § 325(d) Patent Owner filed a request for discretionary denial under 35 U.S.C. § 325(d). Paper 8. Petitioner opposed. Paper 10. The Acting Director denied the discretionary denial request. Paper 13 (June 26, 2025). Accordingly, we proceed with our analysis of the merits of Petitioner’s 2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the’223 patent claims priority to a provisional application filed before the effective date of the applicable AIA amendments (March 16, 2013), we refer to the pre-AIA versions of the statutes throughout this Decision. 3 Huang et al., The involvement of integrin β1 signaling in the migration and myofibroblastic differentiation of skin fibroblasts on anisotropic collagen-containing nanofibers, 33 Biomaterials 1791-1800 (Feb. 2012) (“Huang2”) (Ex. 1005). A different reference by Huang, identified as “Huang1” in the Petition, was considered by the Examiner during prosecution. Pet. 15–17; Ex. 1008. 4 Kumbar et al., Electrospun nanofiber scaffolds: engineering soft tissues, Biomed. Mater. 3 (2008) (“Kumbar”) (Ex. 1006). 5 Lee et al., U.S. Patent Application No. US 2010/0331980 A1, Pub. Date December 1, 2011 (“Lee”) (Ex. 1011). patentability challenges and do not address the discretionary denial arguments presented by the parties.” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA”) relevant to the ’223 patent “would be a Ph.D. student with a minimum of two years of experience in their faculty advisor’s laboratory” and would have an understanding of “electrospinning fibers, including for tissue engineering, tissue engineering techniques, and using/performing FFT analysis.” Pet. 18–19 (citing Ex. 1003 §II.C). Patent Owner does not dispute this skill level. Prelim. Resp. 10. At this stage of the proceeding and for purposes of our analysis in this Decision, we adopt Petitioner’s definition as that definition is consistent with the level of skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 7

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Simpson’s testimony at this preliminary stage. Dr. Simpson extensively discusses the FFT methodology used in the Ayres papers (for which he is the senior author), and we find these papers provide sufficient underlying facts, data, and technical reasoning to support his opinion regarding the inherent symmetry of the FFT output image. Ex. 1003 ¶¶ 38–51. Contrary to Patent Owner’s argument, the fact that the Ayres 2008 paper uses the term “typically” does not undermine Dr. Simpson’s conclusion. Ex. 1010, 609. In context, it is clear that the refenced statement only speaks to how the data is typically reported rather than whether the result itself would only be typical. Indeed, the same sentence goes on to explain that the reason why the data is typically reported only for 0–180° is because “the frequency plot is symmetric.” Id. We are also not persuaded by Patent Owner’s argument that Ayres 2008 undermines Dr. Simpson’s testimony regarding “typical[] practice” because it presents FFT analysis results plotted to 360°. Rather than undermining his testimony, the plot shown in Figure 1F of Ayres 2008 further confirms the symmetrical nature of the FFT results for aligned fibers. Moreover, the fact that there are minor variations at the tips of the two peaks shown in Figure 1F does not undermine or contradict the conclusion that the major peaks for aligned fibers will necessarily be about 180° apart. The challenged claims do not require a perfect repetition or identity of the major peaks in the FFT output plot. Additionally, Dr. Simpson’s own reproduced FFT analysis of the SEM image in Huang2’s Figure 1B using the methodologies described in the Ayres 2006 and Ayres 2008 papers, which shows major peaks at 90° and 270°, further confirms that the claimed FFT analysis result is an inherent feature of Huang2’s anisotropic fibers. Ex. 1003 ¶¶ 110–111. We do not find that Dr. Simpson’s testing violates 37 C.F.R. § 42.65(b), insofar as Dr. Simpson’s declaration sufficiently explains: (1) “why the test or data is being used”; (2) “how the test was performed and the data was generated”; (3) “how the data is used to determine a value”; (4) “how the test is regarded in the relevant art”; and (5) “any other information necessary for the Board to evaluate the test and data.” See Ex. 1003 ¶¶ 38–51 (explaining FFT methodology used by Dr. Simpson). Although Dr. Simpson’s declaration does not appear to spell out all the details of the particular protocol or the version of the ImageJ software he used, we find his explanation that he used the methodology described in Huang2 (which references the Ayres 2006 paper) and the ’223 patent (which references the Ayres 2008 paper) sufficient for purposes of institution. Even assuming there may be some differences in the specific FFT methodology used in the two Ayres papers, we do not find anything at this stage to indicate that any such differences would matter with regard to the claim requirement that the major peaks are about 180° apart, especially given that both papers confirm the symmetrical nature of the FFT output plot. Furthermore, while Patent Owner argues that Dr. Simpson does not account for certain aspects of the FFT analysis discussed in the Ayres 2006 and Ayres 2008 papers, there is no evidence at this stage that Dr. Simpson did not follow the protocol described in his own papers, or that he failed to account for any specific aspects that could make a meaningful difference with regard to the FFT analysis result.” slip op. at 25

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 10,137,223
• Red Diamond, Inc. v. Southern Visions, LLPOther
  PTAB · Mar 31, 2021 · IPR2020-00001 · APJ Jeffrey W Abraham · IPR · Final written decision

  The Board canceled claims 1, 5, 8, and 10–12, but denied entry of substitute claims 20–25 because claims 20 and 24 were indefinite and claims 21–23 and 25 were obvious.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “LEVEL OF ORDINARY SKILL IN THE ART In the Institution Decision, we determined that “a person of ordinary skill in the art would have had sufficient experience and/or education in the food industry to possess an understanding of (1) sugar particle size as it pertains to brewed beverages and (2) sugar particle size screening.” Inst. Dec. 7. We observed that this level of ordinary skill is consistent with the level of ordinary skill that we adopted in a related case that involves similar subject matter. See Red Diamond, Inc. v. Southern Visions, LLP, PGR2019- 00045, Paper 9 at 6–8 (PTAB Oct. 15, 2019). We also asked the parties to expressly discuss the level of ordinary skill in the art in the remaining briefing if either party disagreed with our determination. Inst. Dec. 7–8. For purposes of this Final Written Decision, we maintain our determination from the Institution Decision because neither party disputes the level of ordinary skill identified in the Institution Decision (see Revised MTA 7–8), and because we continue to find that the stated level of ordinary skill is consistent with the record.” slip op. at 5

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “consider” the Revised Motion to Amend and cancel original claims 1, 5, 8, and 10–12. Revised MTA 1. Because Patent Owner has not indicated that our consideration of the Revised Motion to Amend is contingent on a determination that original challenged claims 1, 5, 8, and 10–12 are unpatentable, we grant Patent Owner’s request to cancel original challenged claims 1, 5, 8, and 10–12. See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018- 01129, Paper 15 at 3 (PTAB Feb. 25, 2019) (precedential) (“Lectrosonics”) (“A request to cancel claims will not be regarded as contingent.”). The remaining issue before us is whether to grant the Revised Motion to Amend as to proposed substitute claims 20–25.” slip op. at 6

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable

    “sugar, which indicates that between 2–25% of the particles in EFG sugar can have a size in the range of U.S mesh sieve nos. 20–30. Ex. 2003, 42 (showing the “Typical Analysis” for “X-fine” granulated sugar). Even if we were to agree with Patent Owner that this shows a typical analysis for EFG sugar, it still presents a variance of up to 20% for particles having a size in the range of U.S. mesh sieve nos. 20 and 30. Ex. 2003, 42. Thus, the evidence of record suggests that the particle size distribution for EFG sugar, including the number of particles falling in the range of U.S. mesh sieve nos. 3–35, can vary among different EFG sugars. Thus, the term “typical grocery store sugar,” “might mean several different things” in terms of the number of its particles having a size in the range of U.S. mesh sieve nos. 3–35, and “no informed and confident choice is available among the contending definitions.” HZNP Meds. LLC v. Actavis Labs UT, 940 F.3d 680, 698 (Fed. Cir. 2019) (quoting Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1371 (Fed. Cir. 2015)); Opp. 9; Reply 4.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “sugar in its products (Ex. 1008, 11:2–5), and Mr. Ebersole’s testimony demonstrates that a person of ordinary skill in the art would have known that Standard Grade and Medium Grade sugars are commercial grade granulated sugars and that the particles in Standard Granulated and Medium Granulated sugars “are almost entirely within the range of U.S. mesh nos. 3–35” (Ex. 2076 ¶ 51). The evidence of record thus supports Petitioner’s assertion that following the typical industry practice of using 1 ounce of tea particles and 1 pound of sugar per gallon of tea, and using a commercial grade granulated sugar (as taught by Cooper) such as Standard Granulated or Medium Granulated sugar (which are known to be “almost entirely within the range of U.S. mesh nos. 3–35”), would yield a product having a blend ratio of tea particles to sugar granules having a size in the range of U.S. mesh sieve nos. 3–35 in the range of 1:16–1:25, as recited in proposed substitute claims 21 and 23. Opp. 20–21; Ex. 1008, 11:2–5; Ex. 1001, 17–20, 57–65. In view of the foregoing, we find Petitioner has established sufficiently that the teachings of Cooper, considered in view of admitted prior art sweetening practices, teaches or suggests all of the limitations of proposed substitute claims 21 and 23. Petitioner has presented evidence demonstrating sufficiently that Cooper teaches the use of sugar having particle sizes falling “almost entirely” within the range of mesh 3–35, that following typical industry practices using such sugar would result in the claimed blend ratio of tea to sugar having a size in the range of mesh 3–35, and that a person of ordinary skill in the art would have had reason to brew commercial-sized batches of tea, with a reasonable expectation of success in doing so, as Cooper allows.” slip op. at 26

  § 103 obviousness§ 112 disclosurecites KSR · Nautilus
  Patents in suitUS 9,549,634
• Red Diamond, Inc. v. Southern Visions, LLPAll claims unpatentable
  PTAB · Mar 31, 2021 · IPR2019-01671 · APJ Jeffrey W Abraham · IPR · Final written decision

  The Board canceled claims 1, 6, and 10–12 and denied entry of substitute claims 18–22, finding claims 18–21 indefinite and claim 22 obvious.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “C. LEVEL OF ORDINARY SKILL IN THE ART In the Institution Decision, we determined that “a person of ordinary skill in the art would have had sufficient experience and/or education in the food industry to possess an understanding of (1) sugar particle size as it pertains to brewed beverages, (2) sugar particle size screening, and (3) the storage and use of sugar in commercial settings.” Inst. Dec. 6–7. We observed that this level of ordinary skill is consistent with the level of ordinary skill that we adopted in a related case that involves similar subject matter. See Red Diamond, Inc. v. Southern Visions, LLP, PGR2019-00045, Paper 9 at 6–8 (PTAB Oct. 15, 2019). We also asked the parties to expressly discuss the level of ordinary skill in the art in the remaining briefing if either party disagreed with our determination. For purposes of this Final Written Decision, we maintain our determination from the Institution Decision because neither party disputes the level of ordinary skill identified in the Institution Decision (see Revised MTA 11–12), and because we continue to find that the stated level of ordinary skill is consistent with the record.” slip op. at 5

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “II. MOTION TO AMEND A. ORIGINAL CHALLENGED CLAIMS As noted above, Patent Owner requests that we “unconditionally consider” the Revised Motion to Amend and cancel original claims 1, 6, and 10–12. Revised MTA 1. Because Patent Owner has not indicated that our consideration of the Revised Motion to Amend is contingent on a determination that original challenged claims 1, 6, and 10–12 are unpatentable, we grant Patent Owner’s request to cancel original challenged claims 1, 6, and 10–12. See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018- 01129, Paper 15 at 3 (PTAB Feb. 25, 2019) (precedential) (“Lectrosonics”) (“A request to cancel claims will not be regarded as contingent.”). The remaining issue before us is whether to grant the Revised Motion to Amend as to proposed substitute claims 18–22.” slip op. at 6

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable

    “Particle size is a critical factor for proposed substitute claims 18 and 20, which require a comparison of the particle size of the sugar used in the recited mesh pouch against the particle size of Sugar in the Raw. For all of the reasons discussed above, we find a person of ordinary skill in the art would not have understood that the trademark Sugar in the Raw identifies sugar having particles of a particular size with sufficient specificity to allow the comparison of particle sizes that proposed substitute claims 18 and 20 require. Accordingly, proposed substitute claims 18 and 20 are indefinite because they “fail[ ] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014); see USPTO Memorandum on the Approach to Indefiniteness Under 35 U.S.C. § 112 in AIA Post-Grant Proceedings (Jan. 6, 2021)6; MPEP 2173.05(e) (9th ed., Rev. 08.2017, June 2020).” slip op. at 18

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “analogous art. Reply 7. “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). Even if we were to agree with Patent Owner that Thijssen is not from the same field of endeavor because, inter alia, it involves the use of a packed bed, we still find Thijssen to be analogous art because it is reasonably pertinent to the problem with which the inventors were involved. The ’330 patent teaches that “[t]he larger sugar granules allow the water to flow around it at the same time you are extracting tea from the tea blend.” Ex. 1001, 7:15–17. This indicates that among the problems “with which the inventor[s were] involved” were extraction of flavor from tea and the flow of water around the particles involved in the tea brewing process. Thijssen likewise addresses the flow of solvent through solid particles during extraction of a beverage product. See, e.g., Ex. 1022, 2:46–48. In view of this, we find Thijssen is “reasonably pertinent to the particular problem with which the inventor[s were] involved.” Bigio, 381 F. 3d at 1325.” slip op. at 33

  Patent outcomesUS 9,468,330 unpatentable
  § 103 obviousness§ 112 disclosurecites Nautilus
  Patents in suitUS 9,468,330
• Apple Inc. v. Uniloc 2017 LLCSome claims unpatentable
  PTAB · Jan 15, 2021 · IPR2019-01337 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1, 2, 4, 5, 7–10, 13–15, and 17 are unpatentable as obvious; claims 3, 6, 11, 12, and 16 were not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “this case, we interpret claims in the same manner used in a civil action under 35 U.S.C. § 282(b) “including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for petitioner

    “We do not agree with Patent Owner that the quoted language of the ’999 patent requires a construction of the term “second link” that excludes any Bluetooth connection that reuses authentication information. Other than the one vaguely worded sentence in the ’999 patent, Patent Owner does not point to any supporting evidence for this interpretation. PO Resp. 25–26; Ex. 1001, 1:47–53). To the contrary, the evidence supports a finding that when two devices reestablish communication after being disconnected, the subsequent Bluetooth link is considered a different link. See Reply 18 (citing Ex. 1004, 151 (“Consequently, once a semi-permanent link key is defined, it may be used in the authentication of several subsequent connections between the Bluetooth units sharing it.”). This understanding is consistent with the ’999 patent, which refers to “initial Bluetooth link[s]” and “subsequent Bluetooth link[s]” (Ex. 1001, 1:49–50, 1:58, 4:40), and discloses that multiple links can be made between two Bluetooth compatible devices (id. at 1:17–20), without any clarification that such links are considered the same if authentication information is reused. Accordingly, we find that claim 13 requires two different links, one of which occurs later in time than the other, but that those links are not required to be of different types. And we do not agree with Patent Owner’s narrow reading, based on one sentence in the ’999 patent, that Bluetooth links that reuse authentication codes are considered the same link.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “We find, based on the record, that a person of ordinary skill in the art would have understood using Bluetooth’s authentication mechanism in place of Varadharajan’s described “challenge/response routine,” to be a feasible option. This is based on both the intrinsic evidence and extrinsic evidence, which support such a finding, and a lack of evidence in the record to the contrary.7 See Ex. 1003, 4:62–67 (“Each time the portable computer 50 is in local or direct communication with the desk top computer 48 . . . the identity of the portable computer 50 is authenticated by the desk top computer 48 by a suitable test such as a challenge/response routine as outlined below.”); Ex. 1004, 99, 108, 149–154, 169–178, 1043, 1045–1047, 1053; Ex. 1006 ¶¶ 96–123; Ex. 1013 ¶¶ 14–22. We are not persuaded by Patent Owner’s argument that BT Core teaches away from a very long, frequently changed, security key. See PO Resp. 19–20. Nothing in Varadharajan or BT Core may be said to discourage a person of ordinary skill from using the Bluetooth authentication mechanism for the authentication over Varadharajan’s direct link. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). To the contrary, the facts suggest that a person of ordinary skill would have understood Varadharajan to encourage the use of any known, robust, authentication scheme (see Ex. 1003, 4:62–67), and the record shows that a person of ordinary skill would have understood Bluetooth’s authentication mechanism to be such a scheme (see Ex. 1001, 1:11–59, 5:38–41; Ex. 1004, 151–152, 157; Ex. 1006 ¶¶ 100–109; Ex. 1013 ¶¶ 17– 21). Finally, we find Petitioner has sufficiently shown that a person of ordinary skill in the art would have had reason to attempt to use Bluetooth’s authentication mechanism over Varadharajan’s direct link because it was a well-known method of implementing robust short-range communication and doing so would have required only the simple substitution of Bluetooth for infrared, in a similar manner, to achieve predictable results. Pet. 32–36; Reply 8–14; Ex. 1006 ¶¶ 96–123; see KSR v. Teleflex, 550 U.S. 398, 417 (2007).” slip op. at 26

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “would have understood using Bluetooth’s authentication mechanism in place of Varadharajan’s described “challenge/response routine,” to be a feasible option. This is based on both the intrinsic evidence and extrinsic evidence, which support such a finding, and a lack of evidence in the record to the contrary.7 See Ex. 1003, 4:62–67 (“Each time the portable computer 50 is in local or direct communication with the desk top computer 48 . . . the identity of the portable computer 50 is authenticated by the desk top computer 48 by a suitable test such as a challenge/response routine as outlined below.”); Ex. 1004, 99, 108, 149–154, 169–178, 1043, 1045–1047, 1053; Ex. 1006 ¶¶ 96–123; Ex. 1013 ¶¶ 14–22. We are not persuaded by Patent Owner’s argument that BT Core teaches away from a very long, frequently changed, security key. See PO Resp. 19–20. Nothing in Varadharajan or BT Core may be said to discourage a person of ordinary skill from using the Bluetooth authentication mechanism for the authentication over Varadharajan’s direct link. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). To the contrary, the facts suggest that a person of ordinary skill would have understood Varadharajan to encourage the use of any known, robust, authentication scheme (see Ex. 1003, 4:62–67), and the record shows that a person of ordinary skill would have understood Bluetooth’s authentication mechanism to be such a scheme (see Ex. 1001, 1:11–59, 5:38–41; Ex. 1004, 151–152, 157; Ex. 1006 ¶¶ 100–109; Ex. 1013 ¶¶ 17– 21).” slip op. at 26

  Patent outcomesUS 7,136,999 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,136,999
• Amazon.Com, Inc. / Blizzard Entertainment, Inc. v. Ac Technologies S.A.No claims unpatentable
  PTAB · Mar 6, 2017 · IPR2015-01801 · APJ Peter P Chen · IPR · Final written decision

  Claims 30, 31, 33, and 40–46 were not shown unpatentable because Rabinovich required prior client access before replication, and Carter did not cure that limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner’s declarant, Dr. Ratner, testifies that a person of ordinary skill in the art at the time of the alleged invention “would have had an undergraduate degree in Computer Science or a related field, such as Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience.” Ex. 1005 ¶ 17; Pet. 14. Patent Owner does not challenge this definition or present its own. Accordingly, we credit the testimony of Dr. Ratner regarding the level of ordinary skill in the art, and find that a person of ordinary skill in the art would have had an undergraduate degree in Computer Science or a related field, such as Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We agree with and adopt Petitioner’s reasoning and determine Rabinovich to be a printed publication. We credit the unrebutted testimony of Dr. Rabinovich regarding the consistency of his professional practice in 1998 for republication of his AT&T technical memoranda on a webpage that he managed on AT&T’s publicly accessible website. Furthermore, we find the December 1998 IEEE article corroborates the public availability of Rabinovich on that website, and would have been a roadmap, for one of ordinary skill in the art of data management and optimized access to data, to be guided to Rabinovich. See Reply 21–22. As Petitioner points out, Patent Owner’s own declarant states that Rabinovich and the December 1988 IEEE article “are ‘similar[]’ in that they both address ‘problems in network connectivity caused by multiple clients accessing servers.’ (Ex. 2006 at 12).” Id. at 20. Additionally, the passage in the December 1998 IEEE article that cites to Rabinovich refers to an algorithm in Rabinovich for optimizing access to data in order to increase performance. Id. at 21. Accordingly, we find that footnote 16 of the IEEE article, which contains the URL to Rabinovich, would have guided one of ordinary skill directly to Rabinovich. We are, therefore, persuaded, that Rabinovich is a printed publication under 35 U.S.C. § 102.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “whether to replicate data object xs. Rabinovich defines cnt(s,xs) as the “total access count for xs,” which is equal to cnt(xs). Ex. 1006, 11. According to Dr. Ratner, “[t]he metric cnt(s,xs) measures the total number of times in that window that replica xs has been served to a client computer.” Ex. 1005 ¶ 253. As Patent Owner points out, Rabinovich teaches replicating/migrating object xs only if the ratio of cnt(s,xs) over aff(xs) is greater than m, and the ratio can be greater than m only if cnt(s,xs) is greater than zero. PO Resp. 19; Ex. 1006, 12, Fig. 4. In view of this, we agree with Patent Owner that if cnt(s,xs) has a value of zero, meaning that object x has not been served to any client computer, then the ratio of cnt(s,xs) to aff(xs) will be zero, i.e., less than m, and Rabinovich will not carry out its replication or migration step. This means that Rabinovich will not replicate or migrate object xs until xs has been accessed by a client computer at least once, such that the access count for xs is greater than zero. In this regard, we agree with Patent Owner that object xs is not “sen[t], from the at least one data storage device to the another data storage device . . . independent of an access of the at least one client computer” because Rabinovich teaches explicitly that object xs is not sent unless there has been at least one access from the client computer.” slip op. at 18

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “30, for use with a computer game (claim 45) and with an interactive computer game accessed by at least two users (claim 46). Ex. 1001, 30:47– 54. In connection with its obviousness contentions, Petitioner makes no separate arguments why Rabinovich teaches or suggests shifting redundantly stored data based upon data transmission parameters between the servers independent of an access of the client. Pet. 45–47; Reply 17–18. Because claims 45 and 46 depend from claim 30, we find that Petitioner has failed to demonstrate by a preponderance of the evidence that Rabinovich teaches or suggests the limitations in these two dependent claims for the same reasons discussed above with respect to claim 30.” slip op. at 21

  Patent outcomesUS RE40,521 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
• Amazon.Com, Inc. / Blizzard Entertainment, Inc. v. Ac Technologies S.A.Some claims unpatentable
  PTAB · Mar 6, 2017 · IPR2015-01802 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1, 3, 5, and 7–15 are unpatentable as anticipated by Rabinovich; Petitioner did not prove claims 1–15 obvious over Rabinovich.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner

    “Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience.” Ex. 1005 ¶ 17; Pet. 16. Patent Owner does not challenge this definition or present its own. Accordingly, we credit the testimony of Dr. Ratner regarding the level of ordinary skill in the art, and find that a person of ordinary skill in the art would have had an undergraduate degree in Computer Science or a related field, such as Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We agree with and adopt Petitioner’s reasoning and determine Rabinovich to be a printed publication. We credit the unrebutted testimony of Dr. Rabinovich regarding the consistency of his professional practice in 1998 for republication of his AT&T technical memoranda on a webpage that he managed on AT&T’s publicly accessible website. Furthermore, we find the December 1998 IEEE article corroborates the public availability of Rabinovich on that website, and would have been a roadmap, for one of ordinary skill in the art of data management and optimized access to data, to be guided to Rabinovich. See Reply 19–22. As Petitioner points out, Patent Owner’s own declarant states that Rabinovich and the December 1988 IEEE article “are ‘similar[]’ in that they both address ‘problems in network connectivity caused by multiple clients accessing servers.’ (Ex. 2006 at 12).” Id. at 21. Additionally, the passage in the December 1998 IEEE article that cites to Rabinovich refers to an algorithm in Rabinovich for optimizing access to data in order to increase performance. Id. Accordingly, we find that footnote 16 of the IEEE article, which contains the URL to Rabinovich, would have guided one of ordinary skill directly to Rabinovich. We are, therefore, persuaded, that Rabinovich is a printed publication under 35 U.S.C. § 102.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “object xs. Rabinovich defines cnt(s,xs) as the “total access count for xs,” which is equal to cnt(xs). Ex. 1006, 11. According to Dr. Ratner, “[t]he metric cnt(s,xs) measures the total number of times in that window that replica xs has been served to a client computer.” Ex. 1005 ¶ 253. As Patent Owner points out, Rabinovich teaches replicating object xs if the ratio of cnt(s,xs) over aff(xs) is greater than m, i.e., a non-zero value. PO Resp. 34; Ex. 1006, 12, Fig. 4. In view of this, we agree with Patent Owner that if cnt(s,xs) has a value of zero, meaning that object x has not been served to any client computer, then the ratio of cnt(s,xs) to aff(xs) will be zero, i.e., less than m, and Rabinovich will not carry out its replication step. This means that Rabinovich will not replicate object xs until xs has been accessed by a client computer at least once, such that the access count for xs is greater than zero. In this regard, we agree with Patent Owner that Rabinovich object xs is not “sen[t], from the at least one data storage device to the another data storage device . . . independently of an access of the at least one client computer” because Rabinovich teaches explicitly that object xs is not sent unless there has been at least one access from the client computer. We are not persuaded by Petitioner’s argument that Rabinovich” slip op. at 18

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “pieces” Claim 1 recites “each file including a plurality of individual pieces, the pieces containing parts of the files.” Ex. 1002, 25:67–26:1. The other independent claims recite limitations commensurate in scope. Neither party proposes explicitly a construction of the term “piece.” Petitioner argues that “files are inherently composed of pieces in the form of bits that make up bytes, the bytes themselves being pieces of the file.” Pet. 32. Patent Owner argues that construing “piece” to cover “bits and bytes” of a file “would read out the ‘pieces’ limitation from the claim entirely” (PO Resp. at 29–30) and that “one of ordinary skill in the art would not read the ‘pieces’ limitation of the claim to include bits and bytes” (id. at 30). The claims themselves define “piece” by requiring that a “file” have a “plurality of individual pieces,” but do not establish a lower bound—i.e., a minimum number of bits or bytes—to qualify as a “piece.” Patent Owner identifies no support in the ’680 patent for its contention that “piece” or “pieces” excludes a byte or bytes of a file, relying instead solely on the testimony of Dr. Paul S. Jacobs. Id. (citing Ex. 2006 ¶¶ 38, 39). We are not persuaded by Dr. Jacobs’s conclusory testimony. Because “piece” and “pieces” are limited by the claims only to being a subset of a file and because a byte or collection of bytes of a file is a subset of that file, we are persuaded that the broadest reasonable interpretation of “piece” and “pieces” in light of the Specification of the ’680 patent encompasses a byte or bytes. slip op. at 7

  Patent outcomesUS 7,904,680 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,904,680
• Great West Casualty Company / Bitco General Insurance Corporation et al. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Jan 17, 2017 · IPR2015-01707 · APJ Michael W Kim · IPR · Final written decision

  Claims 11–13 and 15–20 are unpatentable: claims 11, 12, and 16–20 as obvious over Payne, and claims 13 and 15 as obvious over Payne and Ackley.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “guidance in resolving this disagreement. To that end, the relevant portion of independent claim 11 recites “at least one server operative to store one or more of: a) content, b) links to content.” As an initial matter, controlling precedent from our reviewing court instructs us that different claim terms are presumed to have different meanings. Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (“[T]he use of two terms in a claim requires that they connote different meanings.”); CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of . . . evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”). Accordingly, on a high level, each of the following express claim terms are presumed to have different meanings: “content”; and, “links to content.”” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “We disagree with Patent Owner because Patent Owner’s assertions are misplaced. Most prominently, were O’Neil the only factual support for Patent Owner’s position, it may be persuasive. Petitioner’s proposed modification, however, relies not only on O’Neil, but also on Payne and the Declaration of Dr. Greenspun. Pet. 48–49 (citing Ex. 1003 ¶¶ 240, 241; Ex. 1006, 6:9–42, 8:38–53, 9:64–10:1, 5:16–25, and Fig. 5); see also Ex. 1003 ¶ 272. In short, we are persuaded that the following findings in Payne asserted by Petitioner are accurate, and that it supports adequately Petitioner’s proposed modification. The system of Payne already includes functionality requiring a user to log on to an account, Ex. 1006 at 6:9–42, 8:38–53, so it would have been trivial to place the log in functionality directly on the digital advertising documents, which are web pages, see id. at 9:64–10:1, 5:16–25, Fig. 5. Ex. 1003 at ¶ 240. When a patent simply arranges old elements, each performing the same function it had been known to perform and together yielding no more than one would expect from such an arrangement, the combination is obvious. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Pet. 48; see also Reply 11–16. As counter-evidence, Patent Owner cites to paragraphs 46–48 of the Declaration of Dr. Papakonstantinou. Those paragraphs, however, suffer from the same logical flaw identified above.” slip op. at 23

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Insofar as Patent Owner is asserting that Payne and Ackley are non- analogous art, we disagree. 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). See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). To that end, Payne discloses that it relates to the field of “user-interactive network sales systems for implementing an open marketplace for goods or services over computer networks such as the Internet.” Ex. 1006, 1:14–17. Ackley discloses that it relates to the field “computer-based systems and methods that enable sales transactions between third parties through a communications network, such as internet auctions and classified systems.” Ex. 1008, 1:21–25. We see little daylight between these two fields, especially given that Ackley’s use of the word “such as” with “internet auctions” indicates that such “internet auctions” are a non-limiting example, and, thus, do not materially limit Ackley’s field of endeavor.” slip op. at 28

  Patent outcomesUS 7,516,177 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,516,177

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.