- Walt Disney Parks And Resorts U.S., Inc. v. Agile Journeys LLCSome claims unpatentablePTAB · Apr 14, 2025 · IPR2024-00029 · APJ Amee A Shah · IPR · Final written decision
Claims 1, 3–5, 7, 9, 10, 12–14, 16–21, 24, and 25 are unpatentable; the challenges to claims 11, 22, and 23 were not proven by a preponderance of the evidence.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. LEVEL OF ORDINARY SKILL IN THE ART In determining the level of ordinary skill in the art, various non- exhaustive factors may be considered, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, F.2d 693, 696 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in the art at the time of the invention (“POSITA,” “PHOSITA,” or “skilled artisan”) “would have the equivalent of an undergraduate degree in computer science, engineering, operations research, or similar discipline, along with one year of experience in computer programming” and that “[t]he more education one has, the less experience needed to attain an ordinary level of skill[, and] . . ., more experience in the field may serve as a substitute for formal education.” Pet. 9 (citing Ex. 1003 ¶ 32). Patent Owner does not remark on Petitioner’s definition of a POSITA nor does it provide a definition. See generally PO Resp. For purposes of this Decision, we find that the ’983 patent and the” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“3. Conclusion of Ground 1 Having considered the parties’ arguments and evidence, we find,” slip op. at 70
- BurdenMixed
“Decision under 35 U.S.C. § 318(a) as to the patentability of the Challenged Claims of the ’983 patent. For the reasons discussed below, we determine that Petitioner has established by a preponderance of the evidence that Challenged Claims 1, 3–5, 7, 8–10, 12–14, 16–19, 20, 21, 24, and 25, but has not established by a preponderance of the evidence that Challenged Claims 11, 22, and 23 unpatentable.” slip op. at 2
Patent outcomesUS 7,212,983 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,212,983 - Hum Industrial Technology, Inc. v. Amsted Rail Company, Inc.Some claims unpatentablePTAB · Aug 7, 2024 · IPR2023-00538 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1, 5–10, 13–18, 20–22, 24, 31, and 32 are unpatentable; claims 2–4, 23, and 25–30 were not shown unpatentable. The revised motion to amend was granted in part and denied in part.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“d. Summary For the above reasons, we determine that Patent Owner has not shown” slip op. at 100
- ExcludeMotion to exclude, deniedOther
“IV. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner seeks to exclude Exhibit 1034 and page 10 of the Reply” slip op. at 86
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“A. “housing” Patent Owner proposes that we construe the term “housing” to mean” slip op. at 15
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“suggested to one skilled in the art, objective evidence of non-obviousness (“secondary considerations”) may lead to a conclusion that the challenged claims would not have been obvious. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). Objective evidence of non-obviousness “may often be the most probative and cogent evidence in the record” and “may often establish that an invention appearing to have been obvious in light of the prior art was not.” Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012) (citation omitted). For us to give substantial weight to objective evidence of nonobviousness, a proponent must establish a nexus between the evidence and the merits of the claimed invention. ClassCo, Inc., v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016). Nexus is a legally and factually sufficient connection between the objective evidence and the claimed invention, such that the objective evidence should be considered in determining non-” slip op. at 21
Patent outcomesUS 9,365,223 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,365,223 - Pioneer Pet Products, LLC v. Oil-Dri Corporation Of AmericaSome claims unpatentablePTAB · Dec 19, 2023 · IPR2022-01138 · APJ Richard H Marschall · IPR · Final written decision
Claims 1, 3–8, 10–16, and 18 are unpatentable over Goss; claims 2, 9, 17, and 19 were not shown unpatentable. The revised motion to amend is denied for lack of written-description support.
RulingsFinal written decision- BurdenFwd mixedMixed
“To prevail in its challenges, Petitioner must prove unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d). “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burdens of proof in an inter partes review).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“PHOSITA”) “would have at least a bachelor of science degree in chemistry, mineralogy, geological science, material science, chemical engineering, or mining engineering with at least two to five years of work experience relating to designing specific chemical mixtures including clay or other minerals, particularly absorbents.” Pet. 34 (citing Ex. 1004 ¶ 38). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art. See PO Resp. 23. We adopt the definition of the level of ordinary skill in the art proposed by Petitioner because it appears consistent with the record, including the prior art. See GPAC, 57 F.3d at 1579.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We generally agree with Petitioner that the assumptions and approximations made in the calculations described in the ’397 patent to determine the external surface area of the components of the litter render the computations only a general approximation of the respective surface areas. See Pet. Reply 9–12. We need not, however, reach the issue of whether the 47% surface area limitation requires the use of the multi-step method disclosed in the ’397 patent because Petitioner followed that methodology in its arguments and evidence in its Reply. See Pet. Reply 13. Importantly, Patent Owner agrees that Petitioner followed the approach set forth in the ’397 patent, and argues that we need not construe “external surface area” to resolve any dispute between the parties. See PO Sur-reply 23–24 (arguing that we need not “determine whether ‘total external surface area’ must be determined using the same multi-step approach” in the ’397 patent to resolve the controversy because “the only calculation of external surface area relied on by Petitioner was presented in the Reply and it followed the methodology of the [’]397 Patent”); PO Supp. Sur-reply 2 (same). Based on our review of the current record, we need not and do not formally construe any claim terms to resolve the patentability issues in this inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent some implicit claim construction disputes remain, we address those issues in the context of the challenges below.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“review of the record, we find that Petitioner fails to articulate an adequate rationale for the combination of Goss and House. The Petition contains only a single sentence addressing the issue, without any citation to record evidence or declaration support. See Pet. 46. In addition, the assertion merely states the conclusion that a “PHOSITA would understand that there is a rational underpinning to combine the teachings of Goss and House as required under patent law because both are related to cat litter having similar characteristics.” Id. This assertion, at most, addresses the fact that Goss and House are in the same field or that they are analogous art, but does not explain why a PHOSITA would have been motivated to combine Goss and House. See id. In addition, the Petition lacks sufficient explanation of how Petitioner proposes to combine Goss and House. See Pet. 46–53. Instead, when Petitioner relies on House in this challenge, it appears to be a back-up argument in the event that we find Goss fails to disclose the limitation. Merely stating that Goss and House both disclose a limitation does not explain which aspects of House Petitioner proposes adding to Goss or what the resulting litter composition would look like. See id. The details of the resulting litter based on the combination of Goss and House matter here because it could impact whether all limitations of a given claim are satisfied by the combination. For example, Petitioner relies exclusively on specific examples from Goss for the 47% surface area limitation, but adding some aspects of House’s litter components to meet other limitations could undermine Petitioner’s reliance on Goss’s specific examples. The failure of the Petition to set forth a specific combination elides these issues. See Pet. 46–51. Petitioner’s Reply arguably addresses some of these concerns by providing a more fulsome motivation section, backed by new expert testimony, and specific litter examples based on Goss and various cellulose filler materials allegedly disclosed by House. See Pet. Reply 24–25 (citing Ex. 1013 ¶ 7); see also PO Sur-reply 18–22 (arguing that Petitioner’s Reply still fails to articulate an adequate motivation to combine). This analysis goes far beyond the limited analysis in the Petition, and Petitioner provides no reason why it could not have been included in the Petition. See Pet. Reply 24–25. As noted below, in some situations petitioners should be afforded the opportunity to go beyond the arguments in a petition when addressing a new claim construction or other new argument raised by a patent owner or an” slip op. at 17
Patent outcomesUS 11,026,397 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,026,397 - Amcol International Corp. v. Oil-Dri Corporation Of AmericaSome claims unpatentablePTAB · Nov 29, 2023 · IPR2022-01107 · APJ Richard H Marschall · IPR · Final written decision
Claims 1, 3–8, 10–16, 18, and 19 are unpatentable over Goss; claims 2, 9, and 17 were not shown unpatentable, and the revised motion to amend was denied for lack of written description.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art “would have a bachelor’s degree in chemistry or chemical engineering or an equivalent degree and sufficient work experience in animal litter process development. A bachelor’s degree is not explicitly necessary.” Pet. 4. Petitioner further contends that “[h]ands-on experience in the field of animal litter process development could substitute for possessing a degree if that individual’s experience is in contributing to and/or leading the process development effort rather than following a set of instructions given to them.” Id. at 4–5. Petitioner asserts that such a person “should have familiarity with the process of validating relevant test methods and qualifying analysts as well as familiarity with the composition and chemistry of various clays used in animal litter (including sodium bentonite)” and that such a person “would have gained this familiarity through education, training and/or experience.” Id. Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art. PO Resp. 14. We adopt the definition of the level of ordinary skill in the art proposed by Petitioner because it appears consistent with the record, including the prior art. See GPAC, 57 F.3d at 1579.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Patent Owner makes a number of arguments, but we do not find them persuasive enough to undermine Petitioner’s showing based on Ms. Borgese’s analysis. Patent Owner’s primary argument stems from its assertion that the bulk densities vary depending on a number of variables and that Ms. Borgese bases her ranges on documents, the technical data sheets for FS-40 and the ’397 patent for BL(2), that have bulk densities that are not the “same” as the bulk densities for FS-40 and BL(2) in Goss due to the passage of time, differences in where the clay was mined, how the clay was processed, and how the bulk density was measured. See PO Resp. 18– 19, 21–33; PO Sur-reply 2, 5–9. We do not view Petitioner’s challenge as based on the premise that the FS-40 clay referenced in the technical data sheets and Blue Mountain clay in the ’397 patent are the exact same as the FS-40 and BL(2) clays in Goss, but instead the clays and their bulk densities are similar enough that they will fall within the bulk density ranges Petitioner uses in its calculations. See Pet. 21–23, 68; Pet. Reply 6–7, 10. As a result, Patent Owner’s repeated assertions that the clays or their properties are not the “same” or processed “exactly the same” fail to engage 5 Patent Owner suggests that Petitioner fails to meet the inherency standard because Ms. Borgese uses the term “potential” when describing the bulk density range of BL(2). See PO Resp. 32 (citing Ex. 1003 ¶ 117). We do not read Ms. Borgese’s opinion in the same manner. Instead, we read the reference to “the potential bulk density range of BL(2), 35–47 lbs/ft3” as referring to any bulk density within that range, not that there is only the mere potential that the bulk density may fall within that range. See Ex. 1003 ¶ 117. Petitioner’s argument that the bulk densities were at least similar, such that that they fall within the ranges Petitioner uses. See, e.g., PO Resp. 4, 21–24, 30–31; Ex. 2009 ¶¶ 97–98 (Dr. Johnston limiting opinion to whether the clays are the “same”). As an example, when asked about the potential differences in bulk density between Goss’s filing date in 1997 and the 1999 technical data sheet, Ms. Borgese states that “[b]entonite clays have not changed significantly in a period of two years.” Ex. 2008, 24:7–15; see also Ex. 1003 ¶¶ 202–203 (opining that “modest difference in particle-size distribution between FS-40 disclosed in Goss [and] . . . the FS-40 Information Sheet ’99 only minimally impacts the bulk density”). Given Ms. Borgese’s personal experience making animal litters and using bentonites, we view her testimony as credible absent some evidence that any differences in bulk density would fall outside the ranges she uses. Patent Owner provides no such evidence. Nearly all of Patent Owner’s evidence goes to whether the clays and bulk densities would be the exactly the “same” in Goss as in the sources that Ms. Borgese relies on, and do not address how similar the bulk densities would be and do not attempt to establish that there are bulk densities for Goss’s FS- 40 and BL(2) clays that would fall outside the ranges Ms. Borgese uses. In the rare instances where Patent Owner does argue that the bulk densities would not be similar, or would not fall within Dr. Borgese’s ranges, Patent Owner fails to cite any evidence to support the assertion. See PO Resp. 23, 32–33. Even if we found Dr. Johnston’s testimony generally credible on the point that bulk densities may differ across time even when mined and” slip op. at 28
- Expert testimonyPetitioner expert creditedDecided for petitioner
“persuasiveness of Petitioner’s arguments and evidence. Petitioner relies heavily on Ms. Borgese’s testimony, a chemical engineer with “firsthand experience in animal litter Process Development and Product Development creating animal litter from raw materials.” Ex. 1003 ¶¶ 3–4. Ms. Borgese has experience working with bentonite and fillers, and has validated test methods related to “particle size distribution, bulk density, moisture, [and] clump strength.” Id. ¶ 4. She also “used a variety of processing methods to produce animal litter” and is a named inventor on three animal litter patents. Id. Patent Owner does not dispute Ms. Borgese’s qualifications, does not 4 As to the whether Goss inherently discloses the 47% surface area limitation, Patent Owner does not dispute that Goss inherently discloses the limitation if Petitioner’s bulk density ranges are correct. See PO Resp. 15– 33. argue that she lacks firsthand experience that would enable her to testify as to the properties of the bentonite clays and litters at issue in this case, or otherwise dispute that she meets the parties’ agreed-upon definition of a person of ordinary skill in the art. Pet. 4–5; PO Resp. 14. That definition presumes “experience in animal litter process development” and “familiarity with the composition and chemistry of various clays used in animal litter (including sodium bentonite).” Pet. 4–5. We find Ms. Borgese’s education and first-hand experience in animal litter process development, including experience with bentonite, sufficient to testify credibly as to the known bulk densities of the bentonite clays at issue in the case. As to Goss’s FS-40 sodium bentonite clay made by Wyo-Ben, Ms. Borgese opines that the range of bulk density for the material in Goss is between 58–64 lb/ft3 based on Wyo-Ben’s own technical data sheets from 1999 and 2002, which “describe the same (or similar) FS-40 (‘sodium bentonite’) composition.” Ex. 1003 ¶¶ 82–83, 106, 117; Pet. 21–22, 35. Then, in an effort “to be conservative in [her] analysis,” Ms. Borgese uses a broader range of 55–65 lb/ft3 for Goss’s FS-40 in her calculations. Ex. 1003 ¶ 117. Even when pushing her assumptions in directions that would result in the lowest possible external surface area percent for sodium bentonite, all of the calculations across the full range of potential bulk densities still meet the 47% surface area limitation. Id. ¶¶ 117–122; Pet. 43–46. Based on our review of the arguments and evidence, we find Ms. Borgese’s testimony as to the range of Goss’s FS-40 bulk density credible and persuasive.” slip op. at 25
- ExcludeMotion to exclude, deniedDenied
“Borgese relies on (Exhibits 1018 and 1024), but the effort lacks procedural and substantive merit. Patent Owner’s argument in its Patent Owner Response describes the documents as “[i]nadmissible” without seeking any specific relief, but Patent Owner’s Sur-reply makes clear that Patent Owner seeks exclusion. See PO Resp. 20; PO Sur-reply 13. While Patent Owner seeks to exclude these documents, it fails to follow our rules applicable to such efforts. Our rules require objections to evidence to be filed within specific timeframes, and a “motion to exclude evidence must be filed to preserve any objection.” 37 C.F.R. § 42.64(c). In addition, the “motion must identify the objections in the record in order and must explain the objections.” Id. Patent Owner failed to file a separate “motion” or even refer to its hearsay arguments as a “motion” despite the fact that it seeks to exclude evidence. PO Resp. 20. Nor did Patent Owner “identify the objections in the record” in support of its “motion.” Id. In addition, Patent Owner fails to cite any authority that permits what amounts to a motion to exclude within the confines of the merits briefing, which forced Petitioner to devote space in its merits brief to opposing the motion to exclude. See id.; Pet. Reply 19–23. Under these circumstances, we deny the motion as procedurally improper. In addition, even if we reached the merits, we would not exclude the documents or Ms. Borgese’s opinions based on them given that she reasonably relied on the technical data sheets as reliable sources of bulk density data provided by Wyo-Ben, the manufacturer of the clays in question. See Pet. Reply 22–23; Ex. 1003 ¶¶ 82–83.” slip op. at 32
Patent outcomesUS 11,026,397 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,026,397 - Arrows Up, LLC v. Oren Technologies, LLCSome claims unpatentablePTAB · Jan 10, 2020 · IPR2018-01230 · APJ Paul J Korniczky · IPR · Final written decision
Claims 1–3 and 6–11 are unpatentable as obvious; claims 4 and 5 were not shown unpatentable because the petitioner did not establish a reason to use a second conveyor to unload proppant to a road …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the problems and solutions in the prior art of The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103 effective March 16, 2013. Because the ’772 patent has an effective filing date before March 16, 2013, the pre-AIA version of § 103 applies. record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (“Factors that may be considered in determining level of ordinary skill in the art include: (1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.”).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In our decision to institute, we determined that “a broad, but reasonable construction of the claimed ‘second different end surface’ limitation requires that the two end surfaces are structurally different.” Paper 7, 10. Petitioner does not dispute our construction. See generally Reply. Patent Owner agrees with our construction. PO Resp. 11 (“The evidence shows the Board’s construction is correct and should be maintained.”). Upon reviewing the claim language in light of the Specification, we maintain our interpretation that a reasonable construction of the claimed “second different end surface” limitation requires that the first and second end surfaces be structurally different, for the reasons given in our decision to institute. See Paper 7, 8–10.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“2. Other Claim Terms We determine that no other claim limitation requires express construction for purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (internal citation omitted)).” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Based on these figures and their associated descriptions, and after having weighed the competing testimony of Petitioner’s expert (Mr. Robert Schaaf (e.g., Ex. 1002)) and Patent Owner’s expert (Mr. Fred P. Smith (e.g., Ex. 2008)), we credit Mr. Schaaf’s testimony that a person of ordinary skill in the art “would understand Sheesley’s auger could provide proppant received from a rail car on the rail spur (the ‘source’ on the supply chain of proppant) into Sheesley’s empty proppant containers, and that such containers would necessarily be in ‘close proximity’ to the rail spur.” Ex. 1002 ¶ 68.” slip op. at 16
Patent outcomesUS 9,248,772 mixedClaim construction§ 103 obviousnessPatents in suitUS 9,248,772 - Arrows Up, LLC v. Oren Technologies, LLCSome claims unpatentablePTAB · Jan 10, 2020 · IPR2018-01231 · APJ Michael L Woods · IPR · Final written decision
Claims 1, 2, and 4–6 are unpatentable as obvious over Sheesley, with or without Mintz; claim 3 was not shown unpatentable because Sheesley lacks a required conveying-to-a-source limitation.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We adopt Petitioner’s proposed level of ordinary skill in the art “because it is consistent with the problems and solutions in the prior art of record.” See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (“Factors that may be considered in determining level of ordinary 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103 effective March 16, 2013. Because the ’066 patent has an effective filing date before March 16, 2013, the pre-AIA version of § 103 applies. skill in the art include: (1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.”).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“In our decision to institute, we determined that “a broad, but reasonable construction of the claimed ‘second different end surface’ limitation requires that this surface is structurally different from the ‘first end surface.’” Paper 7, 9. Petitioner does not dispute our construction. See generally Pet. Reply. Patent Owner agreed with our construction. PO Resp. 10 (“The evidence shows the Board’s construction is correct and should be maintained.”). Upon reviewing the claim language in light of the Specification, we maintain our interpretation that a reasonable construction of the claimed “second different end surface” limitation requires that this surface be structurally different from the “first end surface,” for the reasons given in our decision to institute. See Paper 7, 8–9.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“2. Other Claim Terms We determine that no other claim limitation requires express construction for purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (internal citation omitted)).” slip op. at 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“A reference must be considered for everything that it teaches, not simply the described invention or a preferred embodiment.” In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012). When read in its entirety, Sheesley teaches the claimed limitation. To illustrate this point, we begin by reproducing Sheesley’s Figure 5, below: Figure 5 depicts empty containers being filled with proppant after being placed on a rail car for transport. Although Figure 5 depicts the empty containers placed on a rail car, rather than on a road vehicle, as required by the claim, Sheesley’s disclosure is not limited to rail cars, as Patent Owner contends. Specifically, Sheesley discloses that rail is merely one of many modes of transportation, including trucks. Ex. 1005 ¶ 78 (“Modified cargo containers 270 can be loaded on a ship 272, barge 274, rail 276, or a flatbed truck trailer 278”). For the reasons discussed above, and after having weighed the competing testimony of Petitioner’s expert (Mr. Robert Schaaf (Ex. 1002)) and Patent Owner’s expert (Mr. Fred P. Smith (Ex. 2009)), we credit Mr. Schaaf’s testimony that Sheesley discloses this limitation. Ex. 1002 ¶¶ 71–78; see id. ¶ 78 (“[I]t is my opinion that Sheesley discloses ‘positioning a plurality of empty proppant containers, each removably positioned on a trailer of a respective proppant transporting road vehicle.’”). Accordingly, Petitioner has shown that Sheesley discloses “positioning a plurality of empty proppant containers . . . on a trailer of . . . proppant transporting road vehicle.” slip op. at 14
Patent outcomesUS 9,617,066 mixedClaim construction§ 103 obviousnessPatents in suitUS 9,617,066 - Blasters, Inc v. Waterblasting, LLCSome claims unpatentablePTAB · Jul 16, 2019 · IPR2018-00504 · APJ John R Kenny · IPR · Final written decision
Claims 1–4 and 10 are unpatentable as obvious over Clemons and NLB; claims 5 and 6 were not shown unpatentable over the asserted combinations.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Both Mr. Boos’s and Dr. King’s assessments appear consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Further, neither expert has testified, and neither party has argued, that the difference in the experts’ assessments would affect the analysis of any asserted ground. Under the circumstances, we adopt Dr. King’s assessment due to its greater specificity. We, however, determine the differences between the experts’ assessments would not affect our analysis; we would reach the same conclusions using either assessment.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner’s proposed construction for “articulating link.” In this proceeding, we construe a claim term to have its broadest reasonable construction. Petitioner’s proposed construction, which is broader than Patent Owner’s proposal, is reasonable in light of the Specification. The only non-testimonial evidence in the record for the ordinary meanings of the terms “articulating” and “link” are the dictionary definitions provided by Petitioner (Ex. 1012, 1015), and those dictionary definitions support Petitioner’s proposed construction. The 1999 edition of the Chambers Dictionary of Science and Technology provides an engineering definition for “articulation,” which is “[t]he connection of two parts in such a way (usually by a pin joint) as to permit relative movement.” Ex. 1015. The 2004 edition of the Merriam-Webster Dictionary defines “link” as “a connecting structure.” Ex. 1012. Mr. Boos testifies, and we agree, that these definitions are evidence that an ordinarily skilled artisan would have understood the ordinary meaning of “articulating link” to be “a connecting structure that connects two parts in such a way as to permit relative movement.” Ex. 1009 ¶ 9. Further, Petitioner’s proposed construction is consistent with the disclosure of an articulating link in the Specification, which describes articulating link 31 as connecting blast head 23 and tractor 20, and permitting relative movement between those parts. Ex. 1001, 4:11–14 (“horizontal movement” and “vertical movement”). In addition, we determine that Patent Owner’s proposed construction is not a reasonable construction in light of the Specification. Neither Patent Owner nor Dr. King directs us to any portion of the Specification that expressly defines the term “articulating link.” Instead, the cited portions of the Specification describe what one exemplary articulating link, link 31, does. For example, a cited portion of the Specification describes that articulating link 31 is capable of horizontal and vertical movement and has a rotatable connection with arms 37, 38, 44, and 45. Ex. 1001, 4:11–43 (cited by Ex. 2012 ¶ 40). Nowhere does the Specification, however, indicate that all articulating links must have such a capacity and such a connection. See id. Instead, the Specification merely discloses that this particular exemplary articulating link has these features. Id. In the absence of an explicit or implicit definition, we cannot read limitations from the Specification into the claims. Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We do not need to provide a different construction because Patent Owner does not dispute that NLB discloses a cleaning system. Therefore, any dispute between the parties that could exist regarding the meaning of the term “cleaning system” is not material to any patentability issue we need to decide. 3. Disputes that Concern Only Petitioner’s Alternative Arguments The parties propose differing constructions for the terms “hard surface,” “high pressure,” “blast head,” “coatings,” and “high power vacuum pump.” Compare Pet. 13–17, with PO Resp. 7–9. The differences in the parties’ constructions for these terms are material only to Petitioner’s alternative arguments that the asserted references without NLB would disclose the recited “hard surface,” “high pressure,” “blast head,” “coatings,” and “high power vacuum pump.” Because we do not need to address those alternative arguments in this Decision, we do not need to construe these terms, as we explain in more detail below. First, Petitioner proposes construing “hard surface,” recited in claims 1 and 4, as “any surface having rigidity sufficient to support the weight of a vehicle carrying the blast head.” Pet. 13. Patent Owner proposes construing the term as “the surface of a material that is hard enough to withstand high-pressure water blasting without disintegrating, for instance paving material in common use for road, parking lot, and airport runway surfaces such as asphalt or concrete.” PO Resp. 8–9. The differences between these proposed claim constructions are material only to Petitioner’s alternative arguments that the asserted references without NLB would disclose a hard surface. Under both parties’ constructions, NLB’s roads, concrete, and asphalt are “hard surfaces,” which neither party has disputed. Ex. 1006, 2. Therefore, we do not need to construe “hard surface.”” slip op. at 19
- Expert testimonyPetitioner expert discountedMixed
“After evaluating the parties’ arguments and evidence, we agree with Patent Owner that Mr. Boos is an interested witness because of his positions with and his equity stake in Petitioner, and in evaluating his testimony, we consider his status as an interested witness in determining the probative weight of his opinions. For example, when Mr. Boos’s testimony is not sufficiently corroborated by objective evidence, we attribute little or no weight to his testimony due to that interest. When Mr. Boos’s testimony is sufficiently corroborated by objective evidence, however, we do not so discount his testimony. We do not agree with Petitioner’s suggestion that Patent Owner had to prove that Mr. Boos’s interest influenced his testimony for us to take into account that interest. Patent Owner established Mr. Boos’s interest. Therefore, we consider that interest when evaluating Mr. Boos’s testimony. Ethicon, 135 F.3d at 1465. We are not persuaded by Patent Owner’s other arguments for discounting Mr. Boos’s testimony. First, we do not read the testimony of Mr. Boos cited by Patent Owner as demonstrating that Petitioner’s attorneys, rather than Mr. Boos, were responsible for the technical opinions provided in his declarations. Ex. 1023, 16:10–18:3. Mr. Boos describes the preparation of his declaration as a collaboration with Petitioner’s attorneys. Id. Mr. Boos clarified that Petitioner’s attorneys helped with the legal parts of the declarations, but that Mr. Boos wrote the technical conclusions in his declaration. Id. at 240:24–241:23. Second, Mr. Boos articulated a motivation for combining references. See, e.g., Ex. 1009 ¶¶ 142–147.” slip op. at 23
Patent outcomesUS 7,255,116 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,255,116 - Resmed Limited / Resmed Inc. et al. v. Fisher & Paykel Healthcare LimitedSome claims unpatentablePTAB · Mar 8, 2018 · IPR2016-01716 · APJ Carl M Defranco · IPR · Final written decision
Claim 7 is unpatentable as obvious over Netzer and Levine; ResMed did not prove claim 11 unpatentable over Netzer and Bahr.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree with FPH that the term “urges” requires a pressing force that results from an angled slide-on direction for the water chamber. Rather, we understand FPH’s reference to the angled slide-on direction as applying only to “other configurations of the present invention,” and not to “preferred embodiments” where the slide-on direction for the water chamber is clearly horizontal, as shown in Figure 1 and required by “slot 17” in “chamber receiving bay 47.” Compare Ex. 1002, 8:10–13 (“other configurations” having angled slide-on motion for water chamber), with id. at 4:19–46 (“preferred embodiments” having horizontal slide-on motion for water chamber). Nowhere does the specification of the ’072 patent suggest that the horizontal slide-on motion for the preferred embodiments applies an additional bias or other pressing force to the water chamber. As such, we do not find that the specification supports a definition of “urges” that differs from its plain and ordinary meaning, which Merriam-Webster’s Dictionary defines as “to force or impel in an indicated direction or into motion.” Ex. 1031, 4.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Based on our interpretation of the claim 7 limitation “urges . . . in contact with,” we find that Netzer, when combined with Levine, satisfies this limitation. Specifically, we find that Netzer discloses the claimed “single motion” limitation by describing that the water chamber has “lateral guide profiles” and moves in “insertion direction (arrow E)” to engage with “corresponding guide grooves” in a chamber heater (Ex. 1008, 8, 10, Fig. 1), and Levine teaches the claimed “urges . . . in contact with” limitation by disclosing a conductive base of a water chamber that is “operationally engaged with” and “in operational alignment upon the heating surface” of a conventional heating unit for a humidifier (Ex. 1009, 2:48–51, 4:33–37). We further find that a skilled artisan would have combined these teachings in a manner that would result in Netzer’s horizontal slide-on chamber moving in a direction that “urges” a base of the water chamber “in contact with” a heater unit, as taught by Levine, in order “to implement the well-known and conventional means of applying heat to the base of a water container.” Ex. 1012 ¶¶ 78–80. Indeed, this combination “‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 417 (2007). Based on those findings, we conclude that claim 7 would have been obvious over the combination of Netzer and Levine. The record evidence fully supports that the combination of Netzer and Levine teaches all the limitations of claim 7 and that a skilled artisan would have combined those teachings in a manner resulting in the claimed invention. As such, we are persuaded that ResMed has demonstrated by a preponderance of the evidence that claim 7 is unpatentable as obvious over Netzer and Levine. C.” slip op. at 16
Patent outcomesUS 8,550,072 mixedClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,550,072 - Resmed Limited / Resmed Inc., And Resmed Corp. v. Fisher & Paykel Healthcare LimitedSome claims unpatentablePTAB · Mar 7, 2018 · IPR2016-01727 · APJ Michael L Woods · IPR · Final written decision
Claim 3 is unpatentable over HC200 and Netzer; claim 7 was not shown unpatentable over HC200, Netzer, and Bahr because the combination lacked a supported motivation to add electrical connections.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We agree with Mr. Virr’s testimony that “pressing is not . . . mentioned in the specification” (Ex. 1035 ¶ 7) and agree with Petitioner’s construction that “pressing is not required by the claims” (Pet. Reply 2). We do not agree with Patent Owner’s proposed construction for the following reasons.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Nevertheless, based on our review of the ’624 patent, the types of problems and solutions described in the ’624 patent and applied prior art, and the testimony of Mr. Virr and Dr. Schneider, we adopt Petitioner’s asserted level of ordinary skill and find that a: person of ordinary skill in the art (“POSITA”) as of any of the claimed priority dates as early as March 2000 would have had a bachelor’s degree in mechanical engineering, biomedical engineering, or a related discipline, and at least five years of relevant product design experience in the field of medical devices or respiratory therapy, or an equivalent advanced education. Pet. 14 (citing Ex. 1012 ¶¶ 22–23). We also agree with Patent Owner that any differences in the parties’ proposed level of ordinary skill does not impact our analysis. See PO Resp. 14–15; see also Transcript at 47:11–14.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“Further, Petitioner articulately reasons with rational underpinnings that a person of ordinary skill in the art would have modified “HC200 to move the patient outlet tube from the humidifier chamber to the housing, as taught by Netzer, so that the humidifier chamber could slide in and out of the housing without requiring the patient to disconnect the outlet tube and masked every time he needed to fill or clean the humidifier.” Pet. 25 (citing Ex. 1012 ¶ 74); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418 (“rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). For the foregoing reasons, and as set forth in the Petition supported by the underlying evidence cited therein, we find that the combination of HC200 and Netzer satisfies the limitations of claim 3 and are persuaded that a preponderance of the evidence supports the conclusion that claim 3 is unpatentable over HC200 and Netzer.” slip op. at 24
- Expert testimonyPatent owner expert creditedDecided for patent owner
“CPAP machine would use “electrical components of the hose” (Ex. 1012 ¶ 86) or “a heater wire in the hose” (id. at ¶ 87), neither Petitioner nor Mr. Virr cites to any portion of HC200 or Netzer to support this assertion. See Pet. 16–19 (asserted teachings of HC200), 19–24 (asserted teachings of Netzer), 48–49; see also Ex. 1012 ¶¶ 49–57 (Mr. Virr’s testimony describing Netzer); see also id. at ¶¶ 58–62 (Mr. Virr’s testimony describing HC200). Petitioner also does not explain adequately how its proposed combination results in “any electrical components of the hose” (Pet. 48) or “a heater wire in the hose” (id. at 49) so that an electrical connection would be needed. Upon weighing Dr. Schneider’s testimony (Ex. 2004 ¶¶ 104–105) and Mr. Virr’s testimony (Ex. 1012 ¶¶ 86–87; Ex. 1035 ¶ 21), we are not persuaded that one of ordinary skill in the art would have added an “electrical component of the hose” or “heater wire in the hose” to the HC200/Netzer combination, much less Bahr’s electrical connections, as proposed by Petitioner. Bahr teaches contacts for “sensor 28, such as a solid state pressure transducer or a flow meter” (Ex. 1011 ¶ 20) “to provide a visible indication on a display 54 of monitored properties of the gas” (id. ¶ 24), or “detector 56 . . . in order to detect whether a sensor is connected” (id. ¶ 25). See also Ex. 2004 ¶ 104 (“Bahr teaches a detector attached to its electrical contacts to detect whether a sensor is connected”); PO Resp. 37 (stating the same in an argument why references would not be combined). Unlike Bahr, however, neither HC200 nor Netzer discloses a display for providing “monitored properties of the gas,” let alone a similar pressure transducer or flow meter for measuring such properties. Because HC200 indicates that the patient monitors if air is leaking around the mask visually (see Ex. 1017, 14), we are not persuaded that a POSITA would have added a separate electrical sensor to monitor air leakage, either. Turning to Netzer, although Netzer discloses a “spring-loaded electric switch” to turn off Netzer’s humidifier upon removal of its liquid chamber (Ex. 1008, 6), Netzer does not describe this switch as requiring any “electrical components of the hose” or “a heater wire in the hose.” Accordingly, we are not persuaded that one of ordinary skill in the art would have further modified Netzer and HC200 to include Bahr’s electrical connections, as Petitioner proposes, when doing so would needlessly add cost and complexity to the combined device. See Ex. 2004 ¶ 105. As such, Petitioner’s reasoning has insufficient rational underpinnings (KSR, 550 U.S. at 418), and Petitioner has failed to establish by a preponderance of the evidence that claim 7 is unpatentable over HC200, Netzer, and Bahr.” slip op. at 27
Patent outcomesUS 7,111,624 mixedClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 7,111,624 - Resmed Limited / Resmed Inc. et al. v. Fisher & Paykel Healthcare LimitedSome claims unpatentablePTAB · Mar 7, 2018 · IPR2016-01725 · APJ Michael L Woods · IPR · Final written decision
Claim 3 is unpatentable as obvious over Netzer and Levine; Petitioner did not show claim 7 unpatentable over Netzer, Levine, and Bahr.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Upon reviewing the claim language, the Specification, the prosecution history, the testimony of Dr. Schneider (e.g., Ex. 2004 ¶¶ 54–60), the testimony of Mr. Virr (e.g., Ex. 1028 ¶ 7), and Petitioner’s definition of “urge” (Ex. 1031), giving the claimed terms their ordinary and customary meaning under the broadest reasonable construction standard, we construe the claimed phrase “said single motion of engagement urges the base of said water chamber adjacent and in contact with said chamber heater,” as requiring a single motion of engagement that moves the chamber base in a direction so that the chamber base is adjacent and in contact with the chamber heater. We do not agree with Patent Owner’s proposed construction that the claim limitation requires the “single motion . . . to . . . also press the chamber base against the chamber heater,” which requires application of some pressing force not claimed or otherwise described in the Specification. See PO Resp. 16 (emphasis added).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Nevertheless, based on our review of the ’624 patent, the types of problems and solutions described in the ’624 patent and applied prior art, and the testimony of Mr. Virr and Dr. Schneider, we adopt Petitioner’s asserted level of ordinary skill and find that a: person of ordinary skill in the art (“POSITA”) as of any of the claimed priority dates as early as March 2000 would have had a bachelor’s degree in mechanical engineering, biomedical engineering, or a related discipline, and at least five years of relevant product design experience in the field of medical devices or respiratory therapy, or an equivalent advanced education.” slip op. at 13
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“or Levine’s humidifier would use “electrical components” or “a heater wire” in their hoses (see Ex. 1012 ¶¶ 99–100), neither Petitioner nor Mr. Virr cites to any portion of Netzer or Levine to support this assertion. See Pet. 15–19 (asserted teachings of Netzer), 27 (asserted teachings of Levine), 28–31; see also Ex. 1012 ¶¶ 49–57 (Mr. Virr’s testimony describing Netzer), ¶¶ 69–70 (Mr. Virr’s testimony describing Levine). Petitioner also does not explain adequately how its proposed combination results in “any electrical components of the hose” (Pet. 39) or “a heater wire in the hose” (id. at 43) so that an electrical connection would be needed. Upon weighing Dr. Schneider’s testimony (Ex. 2004 ¶¶ 104–105) and Mr. Virr’s testimony (Ex. 1012 ¶¶ 99–100; Ex. 1028 ¶ 21), we are not persuaded that one of ordinary skill in the art would have added an “electrical component of the hose” or “heater wire in the hose” to the Netzer/Levine combination, let alone Bahr’s electrical connections, as proposed by Petitioner. Bahr teaches contacts for “sensor 28, such as a solid state pressure transducer or a flow meter” (Ex. 1011 ¶ 20) “to provide a visible indication on a display 54 of monitored properties of the gas” (id. ¶ 24), or “detector 56 . . . in order to detect whether a sensor is connected” (id. ¶ 25). See also Ex. 2004 ¶ 104 (“Bahr teaches a detector attached to its electrical contacts to detect whether a sensor is connected”); PO Resp. 37 (stating the same in an argument why references would not be combined). Levine, on the other hand, discloses “temperature sensor inputs 91 and 92” and “various temperature warning lights and alarm indicators” to “provide water to a patient at a temperature which is as comfortable as possible” (see Ex. 1009, 4:14–23), and that “[i]t has been found that the temperature of humidified gas measured at the outlet 24 [of the humidifier 10] is approximately 99° F” (id. at 5:3–4; see also id. at Figs. 1, 2, 5). Petitioner does not direct us to any disclosure within Levine (Pet. 27; Ex. 1012 ¶¶ 69–70) that describes the wires or sensors that connect to temperature sensor inputs 91 and 92 as residing within Levine’s humidifier hose, or that temperature is measured anywhere other than at Levine’s outlet 24 of humidifier 10 (see Ex. 1009, 5:3–4). Turning to Netzer, while Netzer discloses a “spring-loaded electric switch” to turn off Netzer’s humidifier upon removal of its liquid chamber (Ex. 1008, 6), Netzer does not describe this switch as requiring any “electrical components of the hose” or “a heater wire in the hose.” Accordingly, we are not persuaded that one of ordinary skill in the art would have further modified Netzer and Levine to include Bahr’s electrical connections, as Petitioner proposes, when doing so would needlessly add cost and complexity to the combined device. See Ex. 2004 ¶ 105. As such, Petitioner’s reasoning has insufficient rational underpinnings (KSR, 550 U.S. at 418), and Petitioner has failed to establish by a preponderance of the evidence that claim 7 is unpatentable over Netzer, Levine, and Bahr.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“or Levine’s humidifier would use “electrical components” or “a heater wire” in their hoses (see Ex. 1012 ¶¶ 99–100), neither Petitioner nor Mr. Virr cites to any portion of Netzer or Levine to support this assertion. See Pet. 15–19 (asserted teachings of Netzer), 27 (asserted teachings of Levine), 28–31; see also Ex. 1012 ¶¶ 49–57 (Mr. Virr’s testimony describing Netzer), ¶¶ 69–70 (Mr. Virr’s testimony describing Levine). Petitioner also does not explain adequately how its proposed combination results in “any electrical components of the hose” (Pet. 39) or “a heater wire in the hose” (id. at 43) so that an electrical connection would be needed. Upon weighing Dr. Schneider’s testimony (Ex. 2004 ¶¶ 104–105) and Mr. Virr’s testimony (Ex. 1012 ¶¶ 99–100; Ex. 1028 ¶ 21), we are not persuaded that one of ordinary skill in the art would have added an “electrical component of the hose” or “heater wire in the hose” to the Netzer/Levine combination, let alone Bahr’s electrical connections, as proposed by Petitioner. Bahr teaches contacts for “sensor 28, such as a solid state pressure transducer or a flow meter” (Ex. 1011 ¶ 20) “to provide a visible indication on a display 54 of monitored properties of the gas” (id. ¶ 24), or “detector 56 . . . in order to detect whether a sensor is connected” (id. ¶ 25). See also Ex. 2004 ¶ 104 (“Bahr teaches a detector attached to its electrical contacts to detect whether a sensor is connected”); PO Resp. 37 (stating the same in an argument why references would not be combined). Levine, on the other hand, discloses “temperature sensor inputs 91 and 92” and “various temperature warning lights and alarm indicators” to “provide water to a patient at a temperature which is as comfortable as possible” (see Ex. 1009, 4:14–23), and that “[i]t has been found that the temperature of humidified gas measured at the outlet 24 [of the humidifier 10] is approximately 99° F” (id. at 5:3–4; see also id. at Figs. 1, 2, 5). Petitioner does not direct us to any disclosure within Levine (Pet. 27; Ex. 1012 ¶¶ 69–70) that describes the wires or sensors that connect to temperature sensor inputs 91 and 92 as residing within Levine’s humidifier hose, or that temperature is measured anywhere other than at Levine’s outlet 24 of humidifier 10 (see Ex. 1009, 5:3–4). Turning to Netzer, while Netzer discloses a “spring-loaded electric switch” to turn off Netzer’s humidifier upon removal of its liquid chamber (Ex. 1008, 6), Netzer does not describe this switch as requiring any “electrical components of the hose” or “a heater wire in the hose.” Accordingly, we are not persuaded that one of ordinary skill in the art would have further modified Netzer and Levine to include Bahr’s electrical connections, as Petitioner proposes, when doing so would needlessly add cost and complexity to the combined device. See Ex. 2004 ¶ 105. As such, Petitioner’s reasoning has insufficient rational underpinnings (KSR, 550 U.S. at 418), and Petitioner has failed to establish by a preponderance of the evidence that claim 7 is unpatentable over Netzer, Levine, and Bahr.” slip op. at 27
Patent outcomesUS 7,111,624 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,111,624
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.