• Precision Planting LLC / Agco Corporation v. Deere & CompanyNo claims unpatentable
  PTAB · Dec 2, 2020 · IPR2019-01048 · APJ Barry L Grossman · IPR · Final written decision

  Claims 1–20 were not proven unpatentable over Hedderwick and Koning because Petitioner did not establish a persuasive motivation to combine the references as proposed.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Based on the prior art, Dr. Glancey’s opinion testimony and analysis, and providing some, but minimal, weight to Dr. Taylor’s opinion testimony, we determine that the evidence favors Patent Owner’s proposed level of skill, primarily based on Dr. Glancey’s analysis and reasons summarized above. Accordingly, we determine that a person of ordinary skill in a technology pertinent to the challenged claims would have had an undergraduate degree in mechanical engineering, agricultural engineering, or similar field, and two years of experience designing agricultural products or related machinery, or five years of experience designing agricultural products or related machinery, without a four-year undergraduate engineering degree. A recipient of other academic degrees may qualify as a person of ordinary skill if they have taken coursework or have experience in the pertinent technology. Additional education could offset less work experience; additional work experience could offset less education or coursework.” slip op. at 18

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

    “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We determine that an explicit construction of the claims is not necessary for the purposes of determining whether the challenged claims are not patentable. slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “sufficiently persuasive evidence, even in combination, to establish why a person of ordinary skill would have modified Hedderwick by (1) selectively gleaning only a portion of Koning’s conveying system, i.e., belt 44 with bristles 45, (2) selectively excluding Koning’s belt 23, and then (3) modifying Koning’s brush belt by reversing its orientation so that it carries seeds deposited into the bristles, as in the ’906 patent, rather than covering and guiding seeds carried by a separate and distinct conveyor belt, as in Koning. See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (finding an absence of a motivation to reverse parts to an orientation that was “totally backwards” from what one of skill in the art would even attempt). Petitioner’s arguments do not acknowledge the different function of Koning’s brush belt, or explain why a person of ordinary skill would have been motivated to adapt Koning’s brush belt to such a use and reasonably expect success in doing so. We determine Petitioner fails to meet its burden of providing a sufficiently persuasive explanation or reason for concluding that one of skill in the art would have combined these particular references to produce the claimed invention. “Without any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias.” Metalcraft v. Toro, 848 F.3d at 1367. “[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.” Id.” slip op. at 30

  • ExcludeOther

    “II. MOTION TO EXCLUDE Petitioner and Patent Owner each move to exclude a substantial number of exhibits on a number of different evidentiary grounds. See Pet. Mot. Excl.; PO Mot. Exclude. As our analysis does not refer to any of those exhibits, we dismiss each motion as moot.” slip op. at 12

  Patent outcomesUS 9,686,906 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,686,906
• Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentable
  PTAB · Nov 30, 2020 · IPR2019-01044 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1–8 were not shown unpatentable under § 103 over Hedderwick, Koning, and Benac because Petitioner did not establish motivation to combine or a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedPetitioner expert discountedDecided for patent owner

    “have had either (1) a bachelor’s degree plus four years of experience in mechanical engineering, agricultural engineering, or a related field or (2) a master’s degree plus two years of experience in mechanical engineering, agricultural engineering, or a related field.” Pet. 42 (citing Ex. 1002 ¶¶ 19– 20). In the testimony the Petition cites in support of that proposal, Mr. Prairie lists factors that are typically considered in assessing the level of ordinary skill in the art, and then states “[b]ased on these factors together with my experience and expertise,” his opinion of the level of ordinary skill in the art is the same as Petitioner proposes. Ex. 1002 ¶¶ 19–20. This conclusory testimony is entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 12

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

    “construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).6 That standard “includ[es] 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.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the extent necessary to resolve the 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). V. OBVIOUSNESS OVER HEDDERWICK, KONING, AND BENAC” slip op. at 14

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Patent Owner’s expert, Dr. Glancey, explains that [i]f a wheel is used to load and place seeds within a moving belt with brush hairs, the wheel must be able to disengage from seeds while the seeds remain in between brush hairs. If the wheel maintains contact with the seed after the seed has moved into the brush hairs, the wheel will continue to apply force to the seed and eject or remove the seed from the profile of the brush hairs . . . . Ex. 2200 ¶ 223. Dr. Glancey testifies, credibly, that in Petitioner’s combination, seeds would have been rejected from the belt because, as the paddle wheel rotates, seeds “would be scooped through the belt.” Id. ¶ 225.” slip op. at 31

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “way the references use endless members in the form of brush belts and paddle wheels, versus the way Petitioner uses those components in the proposed combination. Contrary to Petitioner’s and Mr. Prairie’s assertions, the proposed combination does not merely apply known techniques to a known device, because none of the cited references use brush belts and paddle wheels in the manner Petitioner proposes. As discussed in greater detail below, Benac teaches that a paddle wheel can be used to ensure that seeds jammed in vacuum holes are released reliably, and then dropped to the ground. Benac does not address brush belts as an endless member and, therefore, does not teach that paddle wheels can be used to guide seeds into the bristles of a brush belt, as Petitioner proposes. See Pet. 64. And Koning does not teach a brush belt that captures seeds released from above, as Petitioner and Mr. Prairie propose. See Pet. 61–62; Ex. 1002 ¶ 104; Ex. 2193, 190:10–191:3; Ex. 2263, 167:21–170:9. Rather, Koning’s brush belt maintains the relative position of potatoes lying on a conveying surface by holding them from above while the conveyor moves them to the furrow. Ex. 1004, 3:16–24, 5:3–14, Fig. 4. Petitioner’s arguments do not adequately account for these differences between the references’ use of a brush belt as an endless member and paddle wheels versus the proposed combination. Moreover, Patent Owner points out problems ordinarily skilled artisans would have encountered in attempting to combine the references as Petitioner proposes. Petitioner does not persuasively explain how those issues could have been overcome, and instead simply asserts, essentially, that ordinarily skilled artisans could have figured it out. See, e.g., Ex. 1135 ¶ 80. It is Petitioner’s burden to establish that ordinarily skilled artisans would have been motivated to combine the success in doing so. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). Petitioner’s arguments and evidence do not carry that burden.” slip op. at 28

  Patent outcomesUS 8,813,663 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,813,663
• Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentable
  PTAB · Nov 30, 2020 · IPR2019-01046 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1 and 3 were not shown unpatentable over Hedderwick, Koning, and Yamahata under § 103 because Petitioner did not establish motivation to combine or a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Based on the evidence and arguments of record, we determine that the evidence favors Patent Owner’s proposed level of skill. Our determination is primarily based on Dr. Glancey’s analysis and reasons summarized above, as well as the prior art of record and the sophistication of the technology of the ’199 patent. We have considered Mr. Prairie’s opinion, but we give that testimony minimal weight due to the lack of supporting explanation. Accordingly, we adopt Patent Owner’s proposed level of ordinary skill in the art. Specifically, we determine that a person of ordinary skill in agricultural engineering, or a similar field, and two years of experience designing agricultural products or related machinery. Alternatively, a person of ordinary skill in the art would have had five years of experience designing agricultural products or related machinery, without a four-year undergraduate engineering degree.” slip op. at 13

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

    “IV. CLAIM CONSTRUCTION “In an inter partes review proceeding, a claim of a patent . . . shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).7 That standard “includ[es] 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.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the extent” slip op. at 14

  • BurdenNot shown unpatentable

    “Ex. 1135 ¶ 51. Yet it is Petitioner’s burden to show motivation and reasonable expectation of success for the proposed combination, not Patent Owner’s burden to show that the prior art demonstrates the futility of the proposed combination. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). Here, Petitioner’s affirmative showing on motivation and reasonable expectation of success for using Koning’s brush belt in the proposed combination is unpersuasive for the reasons discussed above. And Patent Owner’s evidence of difficulties an ordinarily skilled artisan would have expected to encounter in that proposal serves to highlight the issues that Petitioner’s showing ignores. Petitioner additionally contends that Patent Owner’s arguments are based on the erroneous premise that an ordinarily skilled artisan must be able to physically combine the references. See Pet. Reply 7 (citing In re Mouttet, 686 F.3d 1322, 1332–33 (Fed. Cir. 2012)). We disagree. Patent Owner’s arguments, summarized above, simply point out that an ordinarily skilled artisan would not have expected success in combining the references’ teachings in the way Petitioner proposes. Motivation to combine and reasonable expectation of success are properly assessed with reference to the combination as Petitioner has framed it. The Federal Circuit has explained that doing so is not inconsistent with Mouttet. See Samsung, 925 F.3d at 1382–83 (“We will not fault the Board for analyzing Petitioners’ obviousness grounds in the way presented in the Petition.”).” slip op. at 34

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner’s and Mr. Prairie’s analysis does not acknowledge, much less bridge, the gap between Koning’s use of a brush belt to hold potatoes from above as they lie on a conveying surface, versus the brush belt’s use in above.10 During his deposition, Mr. Prairie resisted agreeing that the potatoes are lying on the conveyor in Koning, testifying that he takes from Koning’s description that “they are captured within the belt with brush hairs. And that there is some weight that’s along the conveying member 23.” Ex. 2193, 96:24–99:25. Mr. Prairie testified that he “do[es]n’t believe the brush hairs support the full weight of the potatoes,” but that Koning did not provide him sufficient information to answer whether the conveying member supports the majority of the weight of the potatoes. Id. at 106:22–107:21. In our view, it is clear from Koning’s description that the potatoes lie on the conveyor and the purpose of the brush belt is to maintain their position relative to each other while they are moved by the conveyor. Ex. 1004, 3:16–24, 5:3–14, Fig. 4; see also Ex. 2205 ¶¶ 140–141 (Patent Owner’s expert, Dr. Glancey, testifying that a simple mechanical analysis shows that in Koning, about 87% of the potatoes’ weight is supported by the conveying member). Mr. Prairie’s refusal to acknowledge the differences between the brush belt’s function in Koning versus the proposed combination undermines the credibility of his testimony that the proposed combination would have been a simple application of a known technique to a known device. 10 See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (noting expert testimony that supported the absence of a motivation to combine: “[I]f I can equate this one to kind of a simple analogy, if you’re trying to build a piece of furniture. What’s a typical thing? You put on a piece of wood. You take a nail, and you hit the nail with a hammer. In control terms, what Mr. Phipps is suggesting is that you put the hammer on the workbench, pick up the piece of furniture and bash the piece of furniture onto the hammer. It’s totally backwards from what I believe one of skill in the art would even attempt . . . .”). have been simple for an ordinarily skilled artisan to adapt Koning’s brush belt for use in the proposed combination, where seeds are deposited onto the brush belt from above—is further undermined by his testimony that he “can’t recall a time where I’ve seen a seed being dropped into a brush belt.” Ex. 2193, 113:5–9; see also Ex. 2263, 81:2–12 (“Q. And you never attempted to drop a seed onto a moving brush belt to see whether that would be inserted into the brush belt, correct? A. As I stated, for the purposes of this case, I did not do any physical experimentation with a moving brush belt as I didn’t feel it was necessary. The prior art discloses sufficient information.”) (objection omitted). Mr. Prairie has “had some industrial design projects where we’ve had to utilize brushes for various applications,” but he “ha[s] not used a brush belt to convey seed.” Ex. 2194, 297:6–16. Mr. Prairie testified that “prior to writing this declaration, brush belt technology was not a specific area that I study, that I was researching.” Ex. 2263, 79:6–9. Indeed, during his initial deposition in this case, the only specific example of a moving brush belt Mr. Prairie could recall seeing was Patent Owner’s ExactEmerge product. Ex. 2193, 108:6–110:10. The basis for Mr. Prairie’s opinion, that a seed would be expected to enter a moving brush belt in the proposed combination, appears to only be Koning itself. Ex. 1002 ¶¶ 79–81; Ex. 2193, 116:12–19, 118:7–23; Ex. 2263, 159:5–160:2. When asked at his deposition, Mr. Prairie did not explain any other engineering analysis he performed to make that determination. Ex. 2193, 114:23–117:12. Mr. Prairie testified that he “did not operate a brush belt for this declaration because [he] didn’t feel it was necessary to make my assessments” and he “did not do study or experimentation on a brush belt as I did not feel it was necessary.” unpersuasive because, as discussed above, Koning does not teach using a brush belt to receive and convey seeds that have been dropped onto it from above. Mr. Prairie does not account for that difference by explaining why an ordinarily skilled artisan would expect Koning’s brush belt to effectively capture and carry seeds dropped from above, as in the proposed combination.” slip op. at 26

  Patent outcomesUS 9,480,199 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,480,199
• Motorola Mobility LLC v. Intellectual Ventures II LLCRehearing denied
  PTAB · Jul 22, 2020 · IPR2014-00504 · APJ Patrick R Scanlon · IPR · Rehearing

  The Board denied Motorola’s rehearing request, leaving intact the remand decision that claims 1–4, 7, and 18 were not shown unpatentable on the instituted grounds.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 3

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “that Dr. Tewfik’s testimony is not credible because he has “no personal knowledge” and “merely parrots the inventor’s claim chart.” Req. 6. We disagree, because we considered and analyzed expressly Petitioner’s argument and the basis for Dr. Tewfik’s testimony. Remand Dec. 27, 30. We determined that Dr. Tewfik’s testimony was credible, in that it was testimony concerning his opinion with respect to the claim chart, and also that his testimony was based, at least in part, on his personal experience with Windows 98 and its functionalities. Id. at 30. Indeed, the Federal Circuit noted that the rule of reason requires us to consider all pertinent evidence, and then noted explicitly that Dr. Tewfik’s testimony was one example of such pertinent evidence that needed to be considered. See Intellectual Ventures II, 692 F. App’x at 627–628. For these reasons, we are not persuaded that we misapprehended or overlooked the credibility of Dr. Tewfik’s testimony.” slip op. at 6

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

    “not have changed the outcome of our Decision. In Figure 4, Kellerer shows a block with a central control unit, address management, routing, an application server, and network managers. Exhibit 1007, 45. This block diagram, however, does not specifically address whether or not Internet access requires an external service controller. Moreover, Petitioner provides no citations to any passages that describe the functions of the central control unit, address management, routing, the application server, and the network managers. See generally Req. 9–13. We are not persuaded that Kellerer teaches all of the components that are necessary to enable Internet access based on Figure 4 alone. That these components are located inside the car, as shown in Figure 3, also does not specifically address whether or not Internet access requires an external service controller. Accordingly, we are not persuaded that Figures 3 and 4 render the stand-alone system limitation obvious.” slip op. at 12

  § 103 obviousness
  Patents in suitUS 7,382,771
• Toyota Motor Corporation v. General Electric CompanyRehearing denied
  PTAB · Jun 14, 2019 · IPR2019-00018 · APJ Joni Y Chang · IPR · Rehearing

  The Board denied Toyota’s rehearing request, leaving the denial of institution on claims 16–19 in place because the Petition did not explain how the proposed combination supplied the claimed second DC/DC conversion device.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Mitsutani’s inverter also should be included in its proposed combination of Robinson and Mitsutani. Req. Reh’g 4. Petitioner admits that “the Petition did not call it out separately.” Id. However, a request for rehearing is not an opportunity to supplement the Petition, or submit new arguments that were not made in the Petition, after the Decision has noted the deficiencies in the Petitioner’s original analysis. See 37 C.F.R. § 42.71(d).” slip op. at 4

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

    “proposed prior art combination teaches or suggests “a second DC/DC conversion device coupleable to an internal charging device,” as recited in independent claim 16. Dec. 11−15. In its Petition, Petitioner asserts that Robinson discloses the claimed “second DC/DC conversion device.” Pet. 31−32 (citing Ex. 1006 ¶ 145, Fig. 4). Petitioner modifies Robinson’s Figure 4 to “include an additional 4−34 V scavenger power converter for device port 4.” Id. Petitioner’s modified Figure 4 of Robinson is reproduced below with annotations added by Petitioner (id.).” slip op. at 3

  • BurdenDecided for patent owner

    “The burden to prove unpatentability is on the petitioner, not on the patent owner or the Board. Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1380 (Fed. Cir. 2015) (noting that the petitioner in an inter partes proceeding has the initial burden of production and the burden” slip op. at 5

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

    “internal charging device” to device port 4 (light pink). Pet. 31. Petitioner asserts that “[t]his second 4−34V scavenger power converter is ‘coupleable to an internal charging device,’ as claimed, because the combined Robinson/Mitsutani system teaches a motor generator that is internal to the vehicle and would be connected to Robinson’s device port 4.” Id. at 32 (citing Ex. 1002 ¶ 76) (emphases added). slip op. at 4

  § 103 obviousness
  Patents in suitUS 9,821,668
• Telebrands Corp. v. Tinnus Enterprises, LLCNo claims unpatentable
  PTAB · Oct 10, 2018 · PGR2017-00015 · APJ Kevin W Cherry · PGR · Final written decision

  The Board held claims 1–4 not unpatentable: the obviousness grounds failed to establish the claimed elastic fastener limitation, and claim 3 was not shown indefinite or lacking written-description support.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We agree with Petitioner and determine that a POSA would have been a person having a general knowledge about, and experience with, expandable containers, including, without limitation, balloons, and at least an associate’s degree in mechanical engineering, or the equivalent. This level of skill is consistent with the types of problems and solutions described in the ’612 patent and cited prior art. For example, the ’612 patent describes a fluid inflatable system that uses elastic valve 20A (e.g., mechanical gasket, O-ring, etc.) for sealing fluid inside multiple containers (e.g., water balloons). See Ex. 1001, 1:22–24, 3:10–16. In any event, none of the issues in this case turn on the definition of a POSA, and the prior art of record provides ample evidence of the level of skill in the art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill was best determined by the references of record); see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown”’) (internal citation omitted).” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther

    “1. Terms Construed in the Institution Decision We construed the term “elastic fastener” in our Decision on Institution, which is set forth in the following table. Inst. Dec. 14. Claim Term Construction in Institution Decision elastic fastener “an elastic element for attaching things together” Neither party disputes the language of this construction. See generally Prelim Resp. 17; Reply. We adopt them for this Final Written Decision. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015) (quoting Rodale Press, Inc. v. FTC, 407 F.2d 1252, 1256–57 (D.C. Cir. 1968)) (“‘an agency may not change theories in midstream without giving respondents reasonable notice of the change’ and ‘the opportunity to present argument under the new theory.’”)” slip op. at 14

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteNot shown unpatentable

    “While the terms “unfilled state” and “filled state” describe the fullness for a container, we do not agree with Petitioner that the claim language requires determining the precise amount of fluid for each state. Section 112(b) requires that we read claim terms in the context of the surrounding claim language, not in isolation. Telebrands, 733 F. App’x at 1020. When we look at the entire claim phrase—“regardless whether the first and second ones of the plurality of containers are in a filled state or an unfilled state”— the plain language is clear that regardless of whether the balloons are in either state, the “at least first and second ones of the plurality of containers are disposed sufficiently close to each other such that they press against each other.” In other words, the exact volume of fluid or water needed to reach a “filled state” does not need to be determined in order to understand the metes and bounds of the claim so as to understand how to avoid infringement. We are further persuaded because this is consistent with the district court’s construction of this term. See Ex. 1023, 19–20.” slip op. at 17

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable

    “Based upon our review of the specification, and consideration of the arguments and evidence presented, Petitioner’s position is not persuasive. We agree with Patent Owner that Petitioner has failed to show that the ’612 patent does not provide such adequate guidance to a person of ordinary skill in the art. On its face, Figure 1 of the ’612 patent (reproduced below) shows containers 18 in contact or pressing against one another with the reasonable clarity required by Vas–Cath Inc. Figure 1 of the ’612 patent is reproduced above. Although the ’612 patent describes, as Petitioner notes, that tubes 16 can be different lengths, we are not persuaded that the ’612 patent’s disclosure of an embodiment with different tube lengths detracts from the concurrent disclosure in Figure 1 of an embodiment, where it is difficult to describe containers 18 as being not in contact with each other. Additionally, we agree with Patent Owner that Petitioner has failed to show adequately that a person of ordinary skill would not have understood the ’612 patent as describing the containers in Figure 1 as pressing against one another in an unfilled state. The ’612 patent indicates Figure 1 shows elastic valve 20A in an open configuration when container 18A is attached to tube 16A to allow container 18A to fill with fluid. Ex. 1001, 3:14–18. In this open configuration, container 18A is to be filled with fluid, after which, “it may be removed from tube 16A, whereupon elastic valve 20A closes, thereby closing the neck of container 18A and sealing the fluid inside.” Id. at 3:18–21 (emphasis omitted). The ’612 patent refers to Figure 1 to describe an embodiment where elastic valve 20A is in an open configuration to fill a container that has not been filled (i.e., unfilled) and removed from tube 16A. Thus, we are persuaded that, at least, Figure 1 and this accompanying description of Figure 1 in the ’612 patent provides sufficient written description for the recited limitation that “at least first and second ones of the plurality of containers are disposed sufficiently close to each other such that they press against each other . . . in a filled state or an unfilled state.”” slip op. at 21

  Patent outcomesUS 9,527,612 not shown unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 9,527,612
• Necksgen, Inc. v. Simpson Performance Products, Inc.Rehearing denied
  PTAB · Jul 25, 2018 · IPR2018-00133 · APJ Bart A Gerstenblith · IPR · Rehearing

  The Board denied rehearing, leaving in place its denial of institution because Petitioner did not show the asserted art taught claim 1[d] or establish motivation to combine with a reasonable expectation of success.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision was based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). Additionally: “The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d).” slip op. at 2

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

    “the Preliminary Response. In our Decision, we determined that “[w]e do not need to construe expressly any claim terms for purposes of this Decision” because it did not appear, from the arguments presented, that any claim terms were in dispute. Dec. 6. When we considered the parties’ positions in reaching our Decision, we were aware that the term “tether” was defined in the ’529 patent, even though Petitioner did not state that expressly. In other words, we understood, and now explicitly determine, that the patentee acted as his own lexicographer by setting forth a specific definition for “tether” in the ’529 patent. Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (if the specification “reveal[s] a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess[,] . . . the inventor’s lexicography governs”) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)).” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “Motivation to Combine & Reasonable Expectation of Success Petitioner contends that we abused our discretion by failing to consider the appropriate claim scope when evaluating motivation to combine and reasonable expectation of success. Req. Reh’g 10–14. First, as discussed above, we did not fail to consider the appropriate claim scope. Second, we have now set forth that claim scope expressly. In light of our discussion above, our analysis regarding motivation to combine and reasonable expectation of success is no different from that which we set forth in our Decision. Dec. 11–15. Petitioner’s reiteration of the same positions set forth in Petition does not persuade us that we abused our discretion in finding that Petitioner has not established a reasonable likelihood of demonstrating that one of ordinary skill in the art would have been promoted to modify and combine the teachings as proposed by Petitioner with a reasonable expectation of success. Accordingly, we are unpersuaded by Petitioner’s argument that we abused our discretion with respect to these issues.” slip op. at 8

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,351,529
• DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.Some claims unpatentable
  PTAB · Jul 25, 2018 · IPR2017-00724 · APJ Michael W Kim · IPR · Final written decision

  Claims 19 and 26 are unpatentable: claim 19 as anticipated by Hite and claim 26 as obvious over Hite and Baji; claims 32–36 and 41 were not shown unpatentable.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “Petitioner, with supporting testimony from Dr. Negus, argues that a person of ordinary skill in the art would have combined Hite’s system with Hill’s teaching of a high access partition in order to increase storage efficiency and address Hite’s goal of providing “advertisers with less waste and greater cost effectiveness.” Pet. 60; Ex. 1008 ¶ 599 (quoting Ex. 1009, 3:21–35; citing Ex. 1010, 4:54–57). According to Petitioner and Dr. Negus, one of ordinary skill would have had reason to combine Hite and Hill— using Hill’s “high access partition allocated for high access data storage” to “store the high access advertisement data of Hite”—to “yield[] the completely predictable and desirable result” of “decrease[d] read and write times of advertisement data stored in Hite’s” storage devices, including optional video storage device 456. Pet. 60, 65; Ex. 1008 ¶ 599; see also Tr. 107:10–15 (asserting the same). Patent Owner argues Dr. Negus’ assertion that advertising data is” slip op. at 26

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “at least one addressable and reserved storage space is a partitioned area of a hard disk drive.” Ex. 1003, 49:55–58. Petitioner refers to Hite’s disclosures that its storage devices “can be . . . disks.” Pet. 27–28 (quoting Ex. 1009, 12:6–11; citing Ex. 1009, 10:44–49). Dr. Negus testifies that “‘disks’ at the alleged time of the invention of the ’494 patent were commonly known as ‘hard disk drives.’” Ex. 1008 ¶ 680 (emphases omitted). Petitioner and Dr. Negus represent that a person of ordinary skill in the art would, therefore, “have understood Hite to disclose the use of an entire ‘disk’ (or ‘hard disk’) as the ‘Video Storage Device’” or the RD. Pet. 28 (citing Ex. 1008 ¶ 680). Petitioner, with supporting testimony from Dr. Negus, further contends that “[w]hen the entire ‘hard disk’ storage space is undivided, it is within the broadest reasonable interpretation of the claimed ‘partitioned area of a hard disk drive.’” Pet. 28; Ex. 1008 ¶¶ 680, 683. We disagree. Based on Hite’s explanation that “[t]he storage devices used to implement” its system “can be . . . disks” as well as the evidence before us that “disks” or “hard disks” were known as “hard disks drives” at the relevant time, we agree with Petitioner that an ordinarily skilled artisan would have understood Hite to use an entire disk, hard disk, or hard disk drive for OVS Device 456 and for the RD. Ex. 1009, 10:44–49, 12:6–11; Ex. 1008 ¶ 680; see Ex. 3002 (MICROSOFT COMPUTER DICTIONARY (5th ed. 2002)), 246 (explaining, within definition of “hard disk,” that a “hard disk” is “[a]lso called: hard disk drive” and defining “hard disk drive” as “See hard disk” (emphases omitted)). We part ways with Petitioner, however, in its proffered conclusion that such an “entire,” “undivided” hard disk or hard disk drive falls within the ordinary meaning of “partitioned area of a hard disk drive.” Pet. 28; Ex. 1008 ¶¶ 680, 683; see Ex. 3001, 1087 (defining “partition” as “divide into parts”). The claim language expressly requires a “partitioned area of”—not a whole, entire, or undivided—hard disk drive. Thus, we disagree that an entire hard disk or hard disk drive constitutes the “partitioned area of a hard disk drive” required by claim 32. Accordingly, we are unpersuaded that Hite discloses “wherein said at least one addressable and reserved storage space is a partitioned area of a hard disk drive,” as recited in dependent claim 32. Thus, Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 32 is anticipated by Hite.” slip op. at 20

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

    “e. Conclusion Upon review of Petitioner’s evidence and analysis, and taking into account Patent Owner’s arguments and evidence, we determine that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claim 19 is anticipated by Hite. 4. Dependent Claim 26 Claim 26 depends from independent claim 19 and recites, in relevant part, “processing circuitry configured to dynamically merge the particular advertising data with digital media content that is pre-stored in said at least one storage device.” Ex. 1003, 49:6–9. The plain claim language unambiguously and expressly requires that it is the “digital media content” that must be “pre-stored.” Yet in addressing the limitation, the Petition represents, and Dr. Negus testifies, that Hite discloses “‘particular advertising data’ that is ‘pre-stored in said at least one storage device’ (prior to the ‘dynamic merging’ with ‘digital media content’),” because commercials targeted for a display site or consumer according to CID codes are stored in the RD or video storage device. Pet. 26 (emphasis added); Ex. 1008 ¶ 646 (emphasis added). These assertions that Hite’s system pre-stores what Petitioner identifies as the “particular advertising data,” targeted commercials selected using CID codes, fail to address or show adequately that Hite discloses “digital media content that is pre-stored in said at least one storage device,” as claim 26 explicitly requires. Thus, we are unpersuaded that Hite discloses “digital media content that is pre-stored in said at least one storage device,” as recited in dependent claim 26. Accordingly, Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 26 is anticipated by Hite.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed

    “We agree with Patent Owner that Petitioner’s proffered rationale for combining Hite with Hill is not adequately supported by the record. Specifically, we agree with Patent Owner that Petitioner’s assertion that advertising data is “high access” data is a conclusory statement that fails to “articulate specific reasoning, based on evidence of record” to support an obviousness determination. In re: Magnum Oil Tools Int’l, Ltd., 829 F.3d at 1380. Although Hite discusses preempting broadcast commercials with stored commercials at broadcast breaks (see Ex. 1009, 7:24–30), Petitioner does not cite any portion of Hite, or provide any evidence at all, that explains how frequently the advertising data would have been accessed. Accordingly, because Petitioner has not shown adequately that it would have been obvious to one of ordinary skill in the art to combine Hite and Hill to arrive at “addressable and reserved storage space for storing the particular advertising data,” as recited in independent claim 19, we are unpersuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claim 19 is obvious over Hite and Hill.” slip op. at 27

  Patent outcomesUS 9,053,494 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,053,494
• DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.Some claims unpatentable
  PTAB · Jul 25, 2018 · IPR2017-00717 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–4, 6, 7, 19, 23, 24, and 27 are unpatentable as anticipated by Hite or obvious over Hite; claims 16–18 and 28 were not shown unpatentable.

  RulingsFinal written decision

  • BurdenMixed

    “preponderance of the evidence that the specified claims are unpatentable over the cited prior art. 35 U.S.C. § 316(e). We previously instructed Patent Owner that “any arguments for patentability not raised in the [Patent Owner Response] will be deemed waived.” Paper 10, 6; see also 37 C.F.R. § 42.23(a) (“Any material fact not specifically denied may be considered admitted.”).5 Additionally, the Board’s Trial Practice Guide states that the Patent Owner Response “should identify all the involved claims that are believed to be patentable and state the basis for that belief.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). There are arguments and evidence advanced by Petitioner to support its positions, though, that Patent Owner chose not to address in either its Preliminary Response (Paper 7) or Response (Paper 22), or that was not addressed in the Decision on Institution (Paper 9). We have evaluated those unrebutted arguments and the evidence in support, and we find the Petitioner persuasively established, with sufficient evidence, the manner in which the asserted prior art teaches corresponding elements of the claims. Pet. 18–66 (citing Exs. 1008–1010) (unchallenged portions only). Based on the preponderance of the evidence before us, we conclude that the prior art identified by Petitioner describes all limitations of the reviewed claims that were not contested by the Patent Owner in either its Preliminary Response 5 For the reasons noted in our Order (Paper 43, 2–3), however, for this proceeding, we will also consider the arguments set forth in Patent Owner’s Preliminary Response. (Paper 7) or Response (Paper 22). In re NuVasive, 841 F.3d 966, 974 (2016). We address only the contested limitations below.” slip op. at 7

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

    “correspond properly to the claimed storage device, because it is not capable of recording programming content selected by a user for later playback. PO Resp. 14. We are not persuaded by this argument because, as discussed above, we are persuaded that a proper construction of “storage device” does not require recording programming content for later playback. We are persuaded that Petitioner has shown sufficiently that Hite’s OVS Device 456 corresponds properly to the “at least one storage device,” as recited in each of independent claims 1 and 19.” slip op. at 12

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

    “We agree with Patent Owner. Petitioner does not explain sufficiently, and the cited portions of Hite do not disclose, how the method by which the progression is made from “children’s aspirin” to “children’s chewable vitamins.” Dr. Negus’s testimony is similarly unavailing, as the only cited paragraph that plausibly supports their position, paragraph 484, is conclusory and unsupported. Absent such explanation or cited disclosure, we are unpersuaded that Petitioner has shown adequately that the recited “key word” is a part of the progression, as required to meet the claim. 8 At least a portion of Dr. Negus’s testimony aligns with this testimony of Dr. Kesan. Ex. 1008 ¶ 669 (“An exemplary targeting characteristic to optimize advertising format scenarios within Hite is the ‘context code’ that ‘could be appended to the commercial’s CID code’ to be ‘compared with program identification codes appended to the program signals’ such that a ‘commercial is displayed if it is in a specific channel or network or show’ as in the example of ‘skiing equipment commercials would be shown during a skiing down hill racing competition’ (emphasis added, see, for example, Ex. 1009 at 4:34–40).”. Upon review of Petitioner’s evidence and analysis, and taking into account Patent Owner’s arguments and evidence, we determine that Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 4 is anticipated by Hite.” slip op. at 22

  • Obviousness (§103) › KSR rationalesUnpatentableDecided for petitioner

    “Essentially, Patent Owner assertions are the same as those advanced for the anticipation ground for the same claim. We agree with Patent Owner’s assertions for the same reasons as set forth above. Having said that, the assertions are misplaced, because this is an obviousness ground, and Patent Owner does not address the modification to Hite proposed by the Examiner. To that end, we are persuaded by Petitioner that it would have been obvious to code Hite’s viewer responses using keywords, as we agree that such a technique was common and well known at the time of the invention, and that it would have been an obvious design choice. Ex. 1008 ¶ 486. Indeed, Patent Owner acknowledges this possibility, as they do not assert that using key words would not have been known, just that it may not have been preferable under certain circumstances. PO Resp. 53 (citing Ex. 2003 ¶ 92). Insofar as Patent Owner may be asserting that such a preference teaches away from a modification, we have considered it, but determine that it is outweighed by the evidence of the ubiquity of key word searches at the time of the invention. Indeed, we are unclear as to how, other than using numbers or key words, such searches could have been performed. KSR, 550 U.S. at 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”).” slip op. at 39

  Patent outcomesUS 9,053,494 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 9,053,494
• Fox Factory, Inc. v. Sram, LLCNo claims unpatentable
  PTAB · Apr 2, 2018 · IPR2016-01876 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 7–12 and 20–26 were not proven unpatentable over Hattan and JP-Shimano because the weak motivation to combine was outweighed by objective evidence of non-obviousness.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedOther

    “benefit of improved durability, see Pet. 63, neither the Petition nor JP- Shimano ever tie improved durability to improved chain retention, and the Petition never contends that durability was the rationale to modify Hattan in view of JP-Shimano. See Pet. 62–66. Dr. Neptune admitted that these arguments were not contained in his original declaration. Ex. 2129, 96:16– 97:5. A reply is not the place to raise an almost entirely new motivation to combine. See 37 C.F.R. § 42.23(b). While we will consider this argument, nevertheless, we find that Dr. Neptune’s shifting basis for the rationale to combine the references suggests that his reasoning is motivated heavily by hindsight, and not by what a person of ordinary skill at the time of the invention would have understood. See InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1349 (Fed. Cir. 2014) (holding it is improper to combine references “like separate pieces of a simple jigsaw puzzle” without “explain[ing] what reason or motivation one of ordinary skill in the art at the time of the invention would have had to place these pieces together”). Accordingly, we give little weight to Dr. Neptune’s testimony on rationale to combine. Patent Owner also argues that there is no rationale to combine,” slip op. at 18

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “of the effective filing date of the ’027 patent, “would have a skill level of at least a bachelor’s degree in mechanical engineering and/or at least three to five years’ experience in the development and design of chain drive systems and components thereof.” Pet. 1 n.1 (citing Ex. 1002 ¶ 14). Patent Owner contends that a person of ordinary skill would have a bachelor’s degree in mechanical engineering and at least one year of design experience with chainrings or related technologies. PO Resp. 12 n.3 (citing Ex. 2074 ¶ 25). Any difference between these two definitions is insignificant to this analysis. On this record, however, we find Patent Owner’s definition of a person of ordinary skill in the art to be more persuasive given the well-developed, relatively simple nature of the art, and apply it for our analysis.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “on an assumption that the chain retention techniques of Hattan and JP- Shimano are additive, and would “improve chain retention to the maximum extent possible.” Pet. 63, see also Tr. 8:6–9; Ex. 2074 ¶ 50. The Petition and Dr. Neptune’s opening declaration, however, contain no explanation to support or explain this underlying assumption. Ex. 2074 ¶ 50. This gap in Petitioner’s reasoning is problematic, at least in part, because, as Dr. Sturges explains, Hattan discloses that its device prevents the chain from jumping off the forward oblong sprocket under “any operating conditions,” Ex. 1004, 1:63–66, and that it will “compensate for any out of line condition” of the chain line and will “prevent the chain from ever jumping off of the sprocket wheel,” id. at 2:26–27, 2:34–35. Ex. 2074 ¶ 46. In view of Hattan’s disclosure, Dr. Sturges testifies that a person of ordinary skill in the art would have understood that JP-Shimano would not have improved chain retention and engagement in Hattan, because both are directed to solving the same kind of problems that result in chain drop. Ex. 2074 ¶¶ 45–47. For example, Dr. Sturges testifies that Hattan specifically states that its solution prevents chain line displacement chain drops. Id. ¶ 47. Dr. Sturges also testifies that JP-Shimano seeks to address chain drop resulting from chain line displacement. Id. ¶ 45.” slip op. at 16

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner

    “Having reviewed Patent Owner’s evidence, we agree with Patent Owner that it has shown that it is entitled to a presumption of a nexus between the evidence secondary considerations tied to the X-Sync chainring and the invention recited in the challenged claims. In particular, we find that 5 Petitioner contends that there are “possibly” other patents that cover Patent Owner’s commercial product (Pet. Reply 22), but does not identify them. Petitioner’s allegations of other patents are too insubstantial to be entitled to any weight. Patent Owner has shown that the various X-Sync chainrings are covered by the challenged claims and are coextensive with them. See Ex. 2074 ¶¶ 63, 64 (testimony of Dr. Sturges that the products practice the claims); Ex. 2078–2089 (claim charts); Ex. 2076 ¶ 11 (explaining the families of products Patent Owner sells); Ex. 2073 ¶ 10 (explaining the families of products Patent Owner sells). Here, the claims are directed to chainrings, as well as cranksets and drivetrains that include chainrings. Thus, there is a presumption of a nexus between the evidence of secondary considerations tied to the X-Sync chainring, as well as to cranksets and drive trains that include the X-Sync chainring, and the challenged claims that recite these bicycle components. See Polaris Indus., 882 F.3d at 1073 (“[The challenged claims] broadly cover the entire vehicle, rather than ‘only a component of a commercially successful machine.’ . . . Moreover, the Board did not point to any limitation it found missing in the RZR vehicles. On these undisputed facts, we hold that the Board erred in failing to find that Polaris’s eight RZR vehicles are the inventions disclosed in [the claims].” (citation omitted)). Petitioner tries to rebut this presumption of a nexus by attempting to shift the burden of proof to Patent Owner to prove that the objective indicia is tied to certain claimed features rather than unclaimed features present in the commercial embodiments. Pet. Reply 26–27. We agree with Patent Owner that this argument improperly attempts to shift the burden to Patent Owner. Sur-Reply 8–9. Here, because Patent Owner has shown that it is entitled to a presumption of a nexus between the X-Sync chainring and the challenged claims, the burden is on Petitioner to rebut that nexus. Demaco, 851 F.2d at 1392. With respect to the improved chain retention of the X-Sync chainring, Petitioner argues that there are numerous unclaimed features, many of which are touted in advertising materials, but Petitioner asserts that none of the claimed features are touted. Pet. Reply 32–33. Petitioner argues that “[i]n light of the unclaimed features touted by [Patent Owner] and the press, and in the absence of any touting/recognition for the claimed combination,” Patent Owner cannot establish a nexus between the claimed invention and the objective indicia. Id. at 33 (citing Ethicon Endo Surgery, Inc. v. Covidien LP, 812 F.3d 1023, 1035 (Fed. Cir. 2016)). Although Petitioner points to some evidence touting other features, see id. at 33 (citing Ex. 1055), 42 (citing Exs. 2005, 2008, 2027), we find that this evidence is insufficient to overcome the presumption of a nexus that Patent Owner has established. Moreover, much of the evidence is clearly broader than Petitioner acknowledges. In addition to pointing out unclaimed features, there is also praise pointing generally to the “unique tooth profile,” Ex. 2006, “tooth profile,” Ex. 2008, Patent Owner’s “adaptation of the narrow-wide chainring tooth profile,” Ex. 2019, and the “cleverly profiled chainring,” Ex. 2023.” slip op. at 26

  Patent outcomesUS 9,182,027 not shown unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 9,182,027

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.