- 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 - Foursquare Labs, Inc. v. Boardactive CorporationAll claims unpatentablePTAB · Nov 27, 2024 · IPR2023-00919 · APJ Michael L Woods · IPR · Final written decision
Claims 1–23 are unpatentable: claims 13–19 were anticipated by Felt, and claims 1–23 would have been obvious over Adharapurapu and Felt.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Accordingly, we deny Petitioner’s motion to exclude in its entirety. IV. PATENT OWNER’s MOTION TO EXCLUDE Patent Owner moves to exclude Exhibits 1002 and 1009—the” slip op. at 84
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Accordingly, the Petition fails to establish that Felt satisfies” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“uncontroverted testimony of Dr. Goldberg, and the reasoning to combine the references, Petitioner has shown by a preponderance of the evidence that claims 1–23 would have been obvious over the combination of Adharapurapu and Felt (Ground 6). Petitioner has also shown, by a preponderance of the evidence, that Felt anticipates claims 13–19 (Ground 1), renders obvious claims 13–19 (Ground 2), and that claims 1–19 would have been obvious over Felt in view of Creemer or Scofield (Ground 4).” slip op. at 86
Patent outcomesUS 10,692,108 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,692,108 - 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 - PTAB · Jan 24, 2023 · IPR2022-01325 · APJ Michael L Woods · IPR · Institution
The Board instituted IPR on claims 1–20; Petitioner showed a reasonable likelihood that claim 13 would have been obvious over Hakim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the Challenged Claims of the ’930 patent. Accordingly, we institute an inter partes review of claims 1–20 of the ’930 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art at the time of the invention (“POSITA”) would have had a bachelor’s degree in mechanical engineering or a related field, with at least two years of professional experience working in bottle manufacturing. With more education, such as additional graduate degrees or study, less professional experience is needed to attain the ordinary level of skill. Similarly, with more experiential knowledge of bottle manufacturing, less professional experience is needed to attain the ordinary level of skill.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Neither Petitioner nor Patent Owner proposes formal construction of any term. See Pet. 7; see also generally Prelim. Resp. For purposes of this Decision, we need not and do not formally construe any claim term. 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))).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree with Patent Owner. Petitioner gives no reason why a skilled artisan would have relocated Hakim’s air valve from the lower right corner (see Ex. 1005, Fig. 4e (depicting “vent” at the lower right corner)) to the location in Petitioner’s annotated figure, reproduced above and circled in red. We agree with Patent Owner that “Petitioner does not explain why its cherry-picked located marked by a red circle is consistent with Hakim’s directive to locate the air valve ‘at the bottom of the bottle nipple.’” Prelim. Resp. 15 (citation omitted); see also Ex. 1005, 13, 28. Although Mr. Goldman provides a reason why a skilled artisan would not have located the valve at the top of the teat (Ex. 1003 ¶ 81), Mr. Goldman provides no reason for relocating the valve to its proposed location. We further agree that the proposed location would appear to promote leaking by transplanting the air valve—‘a slit or cross-cut’ in a shallow surface depression . . . from a protected location at the ‘bottom rim,’ which is ‘covered by the hard portion of [a] screw cap,’ . . . to an exposed location amongst Hakim’s teething bumps, where the valve would be susceptible to inadvertent actuation by an infant squeezing or gnawing on the nipple. Prelim. Resp. 17 (citing Ex. 1005, 29–30). Accordingly, Petitioner fails to show a reasonable likelihood that a skilled artisan would have had reason to modify Hakim by relocating its vent valve to satisfy an “air valve extending through said nipple and disposed (i) radially inwardly from the collar and (ii) above the flange,” as recited in claim 1.” slip op. at 18
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,952,930 - Louisiana-Pacific Corporation v. Huber Engineered Woods LLCInstitution deniedPTAB · Aug 20, 2020 · IPR2020-00605 · APJ Michael L Woods · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–20 were unpatentable under any of its three obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“B. Principles of Law “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). This burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Petitioner’s challenges are based on obviousness. Pet. 17. A claim is unpatentable as obvious under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedPrinted publication not establishedMixed
“the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential) (“Hulu”).5 5 The Decision to Institute in IPR2019-00919, in which many of the references cited in the present case also were at issue, was entered before the Board’s precedential decision in Hulu. Compare IPR2019-00919, Paper 9 (dated Oct. 8, 2019), with Hulu, Paper 29 (dated Dec. 20, 2019). Here, we assess the sufficiency of Petitioner’s evidence as to whether APA, StoGuard- 2001, and StoGuard-2003 qualify as printed publications in view of the guidance provided in Hulu. We note that the Petition was filed on February 19, 2020, such that Petitioner also had the benefit of the guidance provided in Hulu when filing its Petition.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner submits that the ordinary and customary meaning applies to the claimed terms and does not propose construction of any particular claim term. See Pet. 24. Patent Owner, on the other hand, proposes that the term “the first/second structural/OSB panel comprises a bulk water resistant and water vapor permeable barrier” requires construction. Prelim. Resp. 14. For purposes of this decision, we discern no need to construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe 4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Skill levelSkill level board ownDecided for patent owner
“The parties propose to adopt the same definition that we applied in co-pending IPR2019-00919. See Pet. 24; see also Prelim. Resp. 13. Based on our review of the ’140 patent, the types of problems and solutions described in the ’140 patent and applied prior art, for purposes of this decision, we agree with the parties and determine that a person having ordinary skill in the art would have had degree in civil engineering or building, material or wood science, or other degree, if such other degree required coursework or experience in the pertinent technology and two years of industry experience or equivalent therein. See IPR2019-00919, Paper 9, 14.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,702,140 - Louisiana-Pacific Corporation v. Huber Engineered Woods LLCInstitution deniedPTAB · Aug 20, 2020 · IPR2020-00604 · APJ Michael L Woods · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that any of claims 1–20 was unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. CONCLUSION After considering the evidence and arguments presented in the Petition and Preliminary Response, we determine that the record does not demonstrate a reasonable likelihood that Petitioner will prevail with respect to any claim challenged in the Petition. We, therefore, do not institute inter partes review of the ’159 patent. IV. ORDER In consideration of the foregoing, it is hereby ORDERED that, no inter partes review is instituted.” slip op. at 38
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“1 Because we deny institution upon consideration of the merits of Petitioner’s challenges (see infra Part II), Patent Owner’s argument that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution under the factors set forth in the recent precedential Order in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (see Prelim. Resp. 17–18) is moot and we do not address it in this Decision.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“For purposes of this decision, we discern no need to construe any claim term. 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)).” slip op. at 11
- Skill levelSkill level board ownDecided for petitioner
“The parties propose to adopt the same definition that we applied in co-pending IPR2019-00919. See Pet. 24–25; see also Prelim. Resp. 13. Based on our review of the ’159 patent, the types of problems and solutions described in the ’159 patent and applied prior art, for purposes of this decision, we agree with the parties and determine that a person having ordinary skill in the art would have had degree in civil engineering or building, material or wood science, or other degree, if such other degree required coursework or experience in the pertinent technology and two years of industry experience or equivalent therein. See IPR2019-00919, Paper 9, 14.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,689,159 - 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
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.