- PTAB · Oct 21, 2025 · IPR2025-00057 · APJ Hung H Bui · IPR · Remand
The Board denied institution on all challenged claims because the conjunctive construction required a hardware action, which the asserted grounds did not show.
RulingsRemand decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). 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 burden of proof in inter partes review). A patent claim is unpatentable under 35 U.S.C. § 103(a) when 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 ordinary skill in the art; and (4) when in evidence, objective evidence of nonobviousness, i.e., secondary considerations.4 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Additionally, the obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“(1) The Claim Language Supports a Conjunctive Construction There is a “heavy presumption” that the terms used in claims “mean what they say and have the ordinary meaning that would be attributed to those words by persons skilled in the relevant art.” SuperGuide, at 875 (citing Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed.Cir.2002)).” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. First, the construction of the phrase “at least one of [A] the display, [B] the audio and [C] the hardware (HW) action” is conjunctive in light of the language of the claims and the specification of the ’887 patent. As such, Petitioner has the burden, but fails to show all three (3) components to be reproduced at Yun’s mobile device, including: [A] the display, [B] the audio and [C] the hardware (HW) action by the HW component of the mobile device. Second, as Patent Owner observes, and we agree, “Petitioner ignores the requirement for ‘the hardware (HW) action’ entirely” and does not even mention any “hardware (HW) action.” Prelim. Resp. 14 (Paper 10).” slip op. at 34
- Strike new argumentNew argument disregardedDecided for patent owner
“6 In the Petitioner’s Reply to the Patent Owner’s Preliminary Response, Petitioner presents several arguments to address the Fintiv factors, Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) (“Fintiv”). In support of Factor 6, Petitioner argues for the first time that Overton (not Yun or Lu) is allegedly teaching “the hardware (HW) action” aspect of the claims. Prelim. Reply 5 (citing Ex. 1006, 11:13–24 “force feedback . . . to the input devices 142 [shown in Figure 1]”). However, we decline to consider this belated argument raised for the first time in the context of a Fintiv analysis instead of the Petition.” slip op. at 41
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,934,887 - PTAB · Jun 26, 2025 · IPR2024-00294 · APJ David Cotta · IPR · Final written decision
Claims 1–20 are unpatentable; proposed substitute claims 21–24 are also unpatentable, so the contingent motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“appear to be that Patent Owner specifies that the POSA’s knowledge and experience may include optical sensors and that the POSA may have a degree emphasizing software. We do not deem these differences material, particularly because the optical sensors and technologies at issue are those used in physiological monitoring technologies and both parties agree that the POSA would have a working knowledge of physiological monitoring technologies. Ex. 1003 ¶ 24; PO Resp. 11. We find the additional specificity of Patent Owner’s definition to be helpful. In addition, Patent Owner’s definition appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’507 patent. Accordingly, we adopt Patent Owner’s proposed definition of the person of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art. (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). We note that we would reach the same outcome under either definition of the POSA. Cf., PO Resp. 12 (asserting that Petitioner’s proposed definition is “flawed” but also asserting that “patentability is confirmed” “[r]egardless of the level of skill”).” slip op. at 14
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Ex. 1007, 1528. The dispute between the parties focuses on whether D’Angelo was made available to attendees of the IEEE EMBS conference identified in this header and, if so, what effect that has.16 Accordingly, we begin our analysis by considering the conference.” slip op. at 42
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“understood Mendelson to disclose averaging signals. We do not find in Mendelson any discussion of summing or averaging signals. See generally Ex. 1011, 912–915. Our inability to find a teaching of averaging in Mendelson is consistent with the testimony of Drs. Kenny and Duckworth. Dr. Kenny testifies that “there is simply no disclosure in Mendelson itself of any summing or averaging of collected signals.” Ex. 1083 ¶ 23. And in his deposition, Dr. Duckworth was unable to identify any express disclosure of averaging in Mendelson. See Ex. 1087, 103:9–114:11 (confirming that certain aspects of his declaration testimony relating to averaging of signals are not discussed in Mendelson). Accordingly, Mendelson, standing alone, does not support that the POSA would have understood Mendelson’s Sensor Module to have output averaged signals” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“the PDA to read out ‘data that’s been stored’ (i.e., previously measured physiological data) even after the Receiver Module’s battery had died” because Mendelson’s Receiver Module lacks “a microSD card or other nonvolatile storage from which measured data could be ‘read out’ after its battery has died.” PO Resp. 37; see also Ex. 2037 ¶ 147 (testimony of Dr. Duckworth confirming that Mendelson’s system could not store data that could be read out after its battery died). Accordingly, Patent Owner argues the POSA “would not have been motivated to modify Mendelson’s Receiver Module to draw power from the PDA as proposed because doing so would not allow the PDA to ‘read out’ the previously ‘measured physiological data’ after the Receiver Module’s battery died.” PO Resp. 39.” slip op. at 60
§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,736,507 - PTAB · Jan 21, 2025 · IPR2023-01458 · APJ Meredith C Petravick · IPR · Remand
On remand, the Board denied institution because the petition failed to show a reasonable likelihood that any challenged claim was unpatentable, including over Hall and Borowski.
RulingsRemand decision- RemandOther
“We entered a first Decision Denying Institution of Inter Partes Review (Paper 8), and Petitioner filed a Request for Director Review (Paper 13). The former Director of the United States Patent and Trademark Office vacated our denial of institution and remanded for further proceedings consistent with the former Director’s decision. Paper 14. After considering the Petition, the Preliminary Response, the Director’s Review Decision, and the post Director’s Review Supplemental Briefing (Papers 16 and 17), and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’236 patent.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“After considering the Petition, the Preliminary Response, the Director’s Review Decision, and the post Director’s Review Supplemental Briefing (Papers 16 and 17), and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’236 patent. Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “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.” Accordingly, we do not institute an inter partes review of the ’236 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts: “A [person of ordinary skill in the art (‘POSITA’)] as of August 24, 2016 would have had an undergraduate degree in mechanical engineering, electrical engineering, or physics, and two to three years of experience in LiDAR design.” Pet. 9 (citing Ex. 1003 ¶¶ 59–64). Patent Owner does not dispute Petitioner’s definition of a POSITA. Prelim. Resp. 9. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it is consistent with the ’236 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“37 C.F.R. § 42.100(b). In applying this standard, we generally give claim terms their ordinary and customary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). We do not need to construe any terms explicitly to reach our decision. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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))); see also Pet. 10 (“[N]o formal constructions are necessary.”); Prelim. Resp. 10 (“[N]o formal constructions are necessary.”).” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,422,236 - PTAB · Aug 16, 2024 · IPR2023-00658 · APJ Scott A Daniels · IPR · Final written decision
The Board canceled original claim 1, denied the proposed substitute claim as indefinite under § 112, and did not reach the asserted obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We have, on the complete record now before us, mainly the testimony of Petitioner’s declarant, Mr. Hatch, who testifies that the designer of ordinary skill in the art would be a person who has a bachelor’s degree in furniture design or an equivalent field or alternatively two years of practical experience designing furniture . . . [which] is appropriate given the relatively simple nature of the design at issue, which involves little more than two boards forming a tabletop. Ex. 1002 ¶¶ 34–35. Based on the complete record, we adopt Petitioner’s articulation of a designer of ordinary skill as it is supported by the testimony of Mr. Hatch. Id. ¶¶ 33–38. We also note that, based on the complete trial record, our” slip op. at 18
- Expert testimonyPetitioner expert creditedDecided for petitioner
“In contrast, Patent Owner’s declarant, Mr. Williams, testifies based on his “experience[,] that tenons are generally included in the larger portion of two table top portions.” Ex. 2006 ¶ 55. However, Mr. Williams’ experience does not explain why an ordinary observer would understand such functional and ornamental characteristics of tenon and hole arrangements. Id. Nor does this testimony proclaim that tenons must be in the larger of two table top potions. Indeed, even considering an ordinary observer imbued with Mr. Williams’ level of expertise and experience, and understanding for instance that it may be more likely that the wider portion includes tenons, this does not resolve the glaring inconsistency that Figure 1 illustrates holes and Figure 8 illustrates tenons. In other words, Mr. Williams’ “experience” does not resolve the visible tension that, on one hand, Figure 1 illustrates holes as part of the claimed ornamental design in the wider portion of the table top, and on the other hand, Figure 8 illustrates tenons as part of the same wider portion of the table top. The problem here may be more eloquently explained as “Two roads diverged in a yellow wood[,] And sorry I could not travel both.” Robert Frost, The Road Not Taken, The Poetry of Robert Frost—The Collected Poems, 105, Henry Holt and Co. (1969). Considering the entire record before us in this case we credit Mr. Hatch’s testimony. The issue is not, as Patent Owner has framed it, whether “[o]ne of ordinary skill in the art would understand how the tenons and holes should be positioned on each of the table top portions.” Reply Opp. 7. The question is whether a person of ordinary skill in the art viewing the design for a table top in the proposed substitute claim as would an ordinary observer, understand whether or not the wider portion of the table top as Figures 1 and 6, holes. As Mr. Hatch persuasively explains, in the proposed substitute claim a majority of the drawings for the wider portion, i.e., Figures 1–6, omit the tenons added in Figure 8. Ex. 1011 ¶ 37 (Mr. Hatch testifying that “Figure 8 is the only amended figure that adds tenons/dowels.”) Indeed, Figures 1 and 6 not only fail to illustrate tenons, but actually are amended to include holes rather than tenons, as described in the Motion to Amend. See, e.g., Motion to Amend 6 (Patent Owner describing, “Figure 1: Removal of disclaimer of a total of four holes by amending the outline of the four holes from broken lines to solid lines.”). On the complete record in this proceeding, we determine that a” slip op. at 28
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“On the complete record in this proceeding, we determine that a designer of skill in the art considering the claim from either their own, or the perspective of an ordinary observer, would be uncertain whether the wider portion of the claimed table top depicted in Figures 1–8 includes tenons, or holes. It is reasonable that anyone observing two distinct ornamental designs for the same wider portion of the table top would be unclear as to the claimed ornamental design where holes are shown in one figure but tenons are shown in another figure illustrating the same wider portion of the table top. Observing as a whole, the figures illustrating the table top in the proposed substitute claim, the question remains, does the wider portion of the table top include tenons, or holes? See Maatita, 900 F.3d at 1376 (“Ultimately, a patent is indefinite for § 112 purposes whenever its claim, read in light of the visual disclosure (whether it be a single drawing or multiple drawings), ‘fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.’”) (quoting Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014)). proposed substitute claim fails to “inform those skilled in the art about the scope of the invention with reasonable certainty.” See Nautilus, 572 U.S. at 910. Thus, Petitioner has shown, by a preponderance of the evidence, that the proposed substitute claim is indefinite and we accordingly deny Patent Owner’s Noncontingent Motion to Amend.” slip op. at 29
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
“Federal Circuit recently explained that “a design patent is indefinite under § 112 if one skilled in the art, viewing the design as would an ordinary observer, would not understand the scope of the design with reasonable certainty based on the claim and visual disclosure.” In re Maatita, 900 F.3d 1369, 1377 (Fed. Cir. 2018). In Maatita, the Federal Circuit reversed the Board’s finding of indefiniteness of a design for a shoe bottom, i.e., a shoe sole, finding that Maatita’s two-dimensional drawing clearly demonstrates the perspective from which the shoe bottom should be viewed. A potential infringer is not left in doubt as to how to determine infringement. In this case, Maatita’s decision not to disclose all possible depth choices would not preclude an ordinary observer from understanding the claimed design, since the design is capable of being understood from the two-dimensional, plan- or planar-view perspective [] shown in the drawing. Id. at F.3d 1378–79. Different from Maatita, the issue in this proceeding is not whether an ordinary observer would sufficiently understand a three-dimensional ornamental design from a two-dimensional figure, but whether inconsistencies between figures of the proposed substitute claim render the scope of the claimed table top uncertain. See Maatita, 900 F.3d at 1376 (The Federal Circuit specifically distinguishing Maatita’s single two-dimensional drawing from indefiniteness issues raised by inconsistent drawings: “[h]ere, we are not dealing with inconsistencies in the drawings, or inconsistencies between the drawings and the verbal description, but” slip op. at 24
§ 103 obviousness§ 112 disclosurecites Nautilus - PTAB · Apr 18, 2023 · IPR2022-00123 · APJ Zhenyu Yang · IPR · Final written decision
The Board cancelled original claim 1 and denied substitute claim 2 for lack of written-description support; it did not reach the obviousness or enablement grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill is inappropriate because it “requires qualifications that exclude even the sole inventor of the ’190 Patent, Dr. Edward Neuwelt.” MTA Opp. 1. According to Petitioner, Dr. Neuwelt is “a neurosurgeon,” not a pediatric oncologist, and lacks the requisite “at least 2 years” experience in platinum-based therapies. Id. (citing Ex. 1003, 18; Ex. 1038, 98:9–17, 100:15–101, 4). We agree with Petitioner. It is well settled that inventors are typically persons skilled in the field of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Petitioner presents persuasive evidence to show that under Patent Owner’s proposed definition of the level of ordinary skill, Dr. Neuwelt, the sole inventor, would not qualify as an ordinarily skilled artisan, because he is not a pediatric oncologist, even though he is considered “one of the world leading experts on this compound [STS] and otoprotection” and “an expert in the area of [STS] as a . . . drug to use in children with medulloblastoma.” Ex. 1038, 98:9–17, 99:17–18, 101:18–102:13.” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Paragraph 102 of Dr. Rassekh’s Declaration, however, does not support Patent Owner’s assertion. Instead, Dr. Rassekh testifies that [t]he stratum of previous craniospinal radiation therapy contained 8 participants: 2 of the 4 (50%) participants receiving STS had hearing loss compared to 4 of the 4 (100%) participants not receiving STS, and none of the hearing loss assessments were changed at the 1 year follow up period. (Ex. 1001 at 20: 28-32, 47-50.) Ex. 2024 ¶ 102. Dr. Rassekh offers no opinion on how many osteosarcoma patients with prior cranial irradiation and how many medulloblastoma patients with prior cranial irradiation had hearing loss.” slip op. at 20
- 112 supportMotion to amend, deniedDenied
“In sum, we find the disclosures of the ’243 application that Patent Owner relies on do not provide sufficient written-description support for the ototoxicity efficacy limitation.” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“F. Petitioner’s Asserted Unpatentability Grounds In light of our determination above that Patent Owner has not shown sufficient written-description support for proposed substitute claim 2 in the ’243 application, we do not reach the grounds of unpatentability set forth in Petitioner’s Opposition. See Revised MTA Opp. 17–25 (alleging non-enablement and obviousness).” slip op. at 26
§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 10,596,190 - PTAB · Jan 24, 2023 · IPR2021-01066 · APJ George R Hoskins · IPR · Final written decision
The Board cancelled original claims 1–20 and denied substitute claims 21–40 because their numerical pressure ranges added new matter.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“The test for new matter is whether the original application’s disclosure “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); see also Senju Pharm. Co. v. Apotex Inc., 746 F.3d 1344, 1352 (Fed. Cir. 2014) (citing Ariad as providing the test for determining new matter under 35 U.S.C. § 132(a)). We perform “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art,” to determine whether it demonstrates possession of the claimed subject matter. Ariad, 598 F.3d at 1351.” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
“The test for new matter is whether the original application’s disclosure “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); see also Senju Pharm. Co. v. Apotex Inc., 746 F.3d 1344, 1352 (Fed. Cir. 2014) (citing Ariad as providing the test for determining new matter under 35 U.S.C. § 132(a)). We perform “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art,” to determine whether it demonstrates possession of the claimed subject matter. Ariad, 598 F.3d at 1351.” slip op. at 11
- Skill levelSkill level board ownDecided for petitioner
“to the ’711 patent would have either: “(1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field as well as at least 2 years of academic or industry experience in the oil and gas industry, including well drilling, completion, or production”; or (2) “at least four years of industry experience in the oil and gas industry including well drilling, completion, or production.” Pet. 18. Patent Owner utilizes the same formulation of ordinary skill. See Mot. 10–11. 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. The parties’ agreed-upon formulation of ordinary skill is consistent with the level of skill reflected in the ’711 patent and the prior art of record. We therefore apply it in the present Decision.” slip op. at 11
- Expert testimonyPatent owner expert discountedDecided for petitioner
“disclosures of the ’656 Application into demonstrating possession of the numerical pressure ranges recited in proposed substitute claims 21 and 33 is unavailing, for several reasons. First, as seen from the deposition testimony quoted above, Patent Owner’s own witnesses cannot agree on a numerical definition of “high pressure.” Mr. Marscher says high pressure is between 5,000 psi and 15,000 psi (see Ex. 1020, 111:1–112:3), whereas Mr. Schaaf says high pressure is between 8,000 psi and 12,000 psi and specifically disagrees with Mr. Marscher’s testimony that high pressure can be below 8,000 psi (see Ex. 2014, 43:6–44:13). Thus, the testimony of Patent Owner’s own witnesses is contrary to Patent Owner’s position that a person of ordinary skill in the art would have understood that the ’656 Application’s disclosure of “high pressure” pumping demonstrates possession of a specific numerical range of pumping pressures. Second, neither Mr. Marscher nor Mr. Schaaf cites any objective evidence to support their respective notions of what “high pressure” might be, in the context of hydraulic fracturing. For example, neither cites to any published industry standards to support their respective opinions. This lack of objective evidentiary support weakens the persuasiveness of both witnesses’ testimony on this issue, especially because their opinions conflict with each other.” slip op. at 18
§ 103 obviousness§ 112 disclosurePatents in suitUS 10,020,711 - PTAB · Dec 13, 2021 · IPR2020-01062 · APJ Ken B Barrett · IPR · Final written decision
The Board granted cancellation of claims 1–15, 19–20, and 22–24; allowed substitute claims 26–29, 31–38, and 40–44; and denied substitute claims 30 and 39 for lack of written-description support.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 1003 ¶¶ 78–79; see Pet. 10. In the Institution Decision, we adopted Mr. Fischer’s definition for purposes of that decision. Institution Decision (Paper 7) 9–10. Patent Owner states that it “accepts that definition for the purposes of this proceeding.” Rev’d MTA 24. Mr. Fischer’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Mr. Fischer’s definition of the person of ordinary skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for “code” and “Electronic Product Code (EPC).” Opp. to Rev’d MTA 6. Patent Owner asserts that “the limitations of the substitute claims do not require construction and should, instead, be construed in accordance with their ordinary meaning.” Rev’d MTA 24. According to Patent Owner, the addition of certain features of the proposed substitute claims renders moot Petitioner’s arguments concerning the meaning of the term “code.” Id. Additionally, Petitioner argues that the content of the recited codes— an EPC and a code different from the EPC—constitutes “printed matter” (non-functional descriptive material) and, therefore, are not entitled to patentable weight. Opp. to Rev’d MTA 7–10; Pet. Sur-reply 5–6. We need not reach this issue. Even if we construed the specifically recited codes as being non-functional descriptive material, Petitioner, for reasons discussed below, has not shown that the claimed subject matter is unpatentable. Also, the parties do not identify any other issue in this case that turns on whether the two recited codes are non-functional descriptive material. See, e.g., Opp. to Rev’d MTA 11–12 (Petitioner arguing that the relied-on prior art discloses codes in the form of an EPC and a TID (i.e. a code other than the EPC)). On this record, we determine that no claim terms require express construction.” slip op. at 14
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“A patent claim is indefinite when that claim, “viewed in light of the specification and prosecution history, [does not] inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. BioSig Instruments, Inc., 572 U.S. 898, 910 (2014).” slip op. at 12
- ScopeDecided for patent owner
“Motion to Amend, that “[c]onstruing ‘a first and second memory bank’ to mean, for example, two memories instead of ‘a memory’ also impermissibly broadens the claims.” Opp. to Rev’d MTA 4 n.1 (citing Ex. 1032 ¶¶ 3024– 3027); see also Pet. Sur-reply 1–2 (“the scope of the proposed claims is impermissibly broadened to encompass logical memory banks storing codes in more than one memory.”); Tr. 7:12–13 (“That’s improper because it enlarges the scope of claims to include two memories instead of just one.”). Petitioner’s argument appears to assume that the proposed substitute claims require two memories (as opposed to the recited “memory bank[s]”) and that, because two memories are quantitatively more than one memory, the claims have been broadened. We disagree with Petitioner’s arguments. The arguments are contingent upon a construction of two memory banks being the same scope as two memories. See Opp. to Rev’d MTA 4 n.1 (“Construing . . . impermissibly broadens the claims.”). Petitioner has not offered any persuasive argument or evidence that the two different terms—“memory” and “memory bank” are coextensive or that the more general term “memory” can encompass two of the more specific “memory bank[s].” Further, even if the proposed substitute claims required two memories rather than two memory banks, adding the requirement of a second memory (or, as written in the proposed claims, two memory banks rather than “a memory” as in the issued claim) is further limiting the claims and, therefore, is not broadening the scope. See Hockerson-Halberstadt, Inc., 183 F.3d at 1374. We agree with Patent Owner that the amended language regarding two memory banks does not impermissibly broaden the scope relative to the original claims.” slip op. at 18
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 8,134,451 - PTAB · Jun 28, 2018 · IPR2017-00414 · APJ James T Moore · IPR · Final written decision
Claims 1–7 were not shown unpatentable under § 103 over either Cohen and Martin or Holmes and Martin because the combinations did not establish the claimed separate shaping before mixing.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“As used herein, the term “hearing aid profile” refers to a collection of acoustic configuration settings for hearing aid 102, which are used by a processor 110 to shape electrical signals related to sounds to compensate for the user's hearing loss. Ex. 1001, 3:11–15. Petitioner states that Patent Owner defined this term in the ’538 patent as “a collection of acoustic configuration settings for hearing aid 102, which are used by processor 110 to shape electrical signals related to sounds to compensate for the user’s hearing loss.” Pet. 15. According to Petitioner, this construction is consistent with the plain and ordinary meaning of the term, relying upon the testimony of its witness Dr. Les Atlas. Pet. 15 (citing Ex. 1003 ¶ 38).10 Patent Owner does not dispute Petitioner’s proposed construction. Resp. 10–11. 10 Dr. Les Atlas is the Petitioner’s witness in this matter. We find him qualified to testify as to the subject matter of this proceeding, by virtue of his education and experience. See Ex. 1003 ¶ 4, and Appendix A thereto. We are cognizant of Patent Owner’s suggestion that we give his testimony “little, if any, weight” because of the similarity of the testimony with Petitioner’s arguments and discrepancies between it and his deposition testimony. Resp. 31–34. We give Dr. Atlas’ testimony appropriate contextual weight herein based upon the content of the testimony itself, and any contrary testimony in Exhibit 2005. We decline to assign generally no weight to his testimony, however. supports, and is consistent with, Petitioner’s proposal. Ex. 1001, 3:12–16. Accordingly, we determine that the broadest reasonable construction, in light of the specification of the ’538 patent, of the term “hearing aid profile” is a “collection of acoustic configuration settings for hearing aid, which are used by a processor to shape electrical signals related to sounds to compensate for a user’s hearing loss.”” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“For the purposes of our decision, we determine that no other claim terms need explicit construction. See, e.g., 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.’”) (citation omitted).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“11 Petitioner defines the level of ordinary skill in the art as someone with a Bachelor’s degree in electrical engineering and at least two years of experience in the field of audio engineering. Pet. 14 (citing Ex. 1003 ¶ 25). Patent Owner does not challenge Petitioner’s definition. Resp. passim. The references in the record support a finding that this is the appropriate level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of skill in the art). 12 The record contains no allegations or evidence of secondary considerations.” slip op. at 10
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“We find the testimony of Dr. Atlas on the key point of obviousness of pre-mixing processing to be less persuasive than that of Mr. Brown. We also find Dr. Atlas’ testimony falls short of adequately explaining how the combination of Cohen and Martin teaches a nexus (i.e., the “based on both the first [shaped] output signal and the second [shaped] output signal” (emphasis added) (hereinafter, “based on both limitation”) limitation recited in claim 1) between the claim 1 requirements of: (1) a condition precedent of shaping both a first output signal and a second output signal; and (2) a subsequent result of using both the first shaped output signal and the second shaped output signal if the hearing aid is in a third mode. Dr. Atlas assumes that one of ordinary skill in the art would process separately each signal and then mix them. Ex. 1003 ¶ 66. We find Dr. Atlas’ assumption is flawed. Specifically, in making this assumption, Dr. Atlas does not address adequately how the combination of Cohen and Martin opines “it would have been obvious to a person of ordinary skill in the art” (emphasis added), his later sentences appears to base his opinion principally on the reason one of ordinary skill in the art could do it. Id. In particular, he testifies: Because Cohen’s hearing aid applies different hearing aid profiles to different input sources, it would have been obvious to a person of ordinary skill in the relevant art to add the functionality of the combination mode as taught by Martin to Cohen’s hearing aid such that the speaker would produce an audible sound based on the output signals of the processor. Combining two signals such that both signals are sent to a speaker to an audible combination of sounds, that is where each signal is sufficiently perceived, was well within the technical ability of a person of ordinary skill in the art. To accomplish this would require that each one of the two signals is passed through an appropriate hearing aid profile. For example, it would have been obvious to a person of ordinary skill in the art that a different hearing aid profiles could be used for an audio coil inputs and that of a neighboring conversation and environmental sounds through a microphone. Namely, it is commonly known that the different frequency sensitivity of an audio telecoil versus a microphone can be beneficially compensated for. (Rodriquez, Ex. 1011, Abstract)” slip op. at 24
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,649,538 - PTAB · Dec 19, 2017 · IPR2016-01107 · IPR · Final written decision
Claim 21 was not shown unpatentable under § 103 over Neilson, Kelly, and Miller because the references did not teach the nozzle limitations without hindsight, and secondary considerations weighed against obviousness.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for patent owner
“Based on the record before us, we determine that the phrase, “a nozzle oriented towards the splash shield,” means “a nozzle pre-positioned such that it points at the splash shield,” and the phrase, “directing rinsing fluid onto the splash shield using the nozzle,” means “spraying rinsing fluid onto the splash shield from the pre-positioned nozzle.” Our claim constructions are supported by the claim language for at least two reasons: First, the phrase, “a nozzle oriented towards the splash shield,” describes a component of a mixing machine. Claim 21 recites: “providing a mixing machine having . . . a nozzle oriented towards the splash shield.” Ex. 1001, 7:1–5. This limitation describes the structure of a mixing machine that is used to perform the claimed method. As Petitioner explains, “[c]laim 21 is a method claim that separately recites attributes of the provided mixing machine and a step of directing rinsing fluid.” Pet. Reply 4. “Oriented” describes the position of the nozzle in the machine. The nozzle is oriented before it is used to direct rinsing fluid onto the splash shield. In other words, the nozzle is pre-positioned. Second, the claim drafter used the term, “positionable,” rather than” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“3. Level of Ordinary Skill in the Art We accept Dr. Slocum’s definition of a person having ordinary skill in the art (“PHOSITA”) as an engineer with at least an undergraduate degree in mechanical engineering or related discipline and at least three years of professional or research experience in the design of consumer or medical products that utilize fluid systems. Ex. 1010 ¶ 20. Dr. Maynes states that he does not necessarily agree with Dr. Slocum’s definition, but does not provide and alternative definition or no persuasive reasoning as to why Dr, Slocum’s definition is incorrect. Ex. 2023 ¶ 6. We also rely on Petitioner’s references as reflecting the level of ordinary skill in the art at the time of the invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“limited to automatic rinsing, Miller discloses an electronically controlled nozzle 129. Pet. Reply 12. Petitioner argues that it would have been a simple substitution to modify Kelly’s spray device 56 with Miller’s electronically controlled nozzle 129 and that the teachings of Kelly and Miller would have led a skilled artisan to orient Miller’s electronically controlled nozzle 129 toward Neilson’s lid 16 and direct rinsing fluid thereon. Id. at 12–13 (citing Ex. 1010 ¶¶ 69, 82–85; Ex. 2027, 169–72). We are not persuaded by Petitioner’s argument for two reasons. First, Petitioner’s reply argument relies on impermissible hindsight. The combination of Neilson, Kelly, and Miller does not teach or suggest the nozzle limitations of claim 21 without relying on the claim as a roadmap for selecting and modifying the teachings. Miller teaches nozzle 129 for spraying cleaning fluid onto a blender spindle after each use. Ex. 1004 ¶ 55, Figs. 17, 18. Miller also discloses a splash shield in the form of a tubular sleeve inserted into a mixing container during blending. Id. ¶ 42; Ex. 1005, 4:1–4, 4:33–36. Like Neilson’s lid 16, Miller’s splash shield is manually removed for cleaning. Ex. 1003, 5:65–66; Ex. 1004 ¶ 45; Ex. 1005, 5:4–10. Although Miller’s nozzle 129 is pre-positioned, it is not pointed at a splash shield. See Ex. 1004 ¶ 55, Fig. 18 (showing nozzle 129 for dispensing cleaning fluid onto spindle 114). To meet the nozzle limitations of claim 21, Kelly’s nozzle would need to be modified from a manually positionable nozzle to one that is pre-positioned such that it points at a splash shield. Such a modification is not suggested by Miller, which does not teach or suggest a nozzle pointed at a splash shield and instead teaches that the splash shield is manually removed for cleaning. Ex. 1004 ¶ 45; Ex. 1005, 5:4–10. Thus, even if combined, Neilson, Kelly, and Miller do not, absent hindsight, teach or suggest a method of rinsing a splash shield in which a nozzle is pre-positioned such that it points at the splash shield and rinsing fluid is sprayed onto the splash shield from the pre-positioned nozzle.” slip op. at 20
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Dr. Slocum that is not supported by Miller, and we, thus, decline to afford it substantial weight. Pet. Reply 13 (citing Ex. 1010 ¶¶ 69, 84, 85); see also Pet. 28 (citing Ex. 1010 ¶ 77).8 In paragraph 69, Dr. Slocum testifies that, “in the case of Miller,” the angle of the nozzle is adjusted “to clean . . . the splash shield.” Ex. 1010 ¶ 69. In paragraph 85, Dr. Slocum testifies that Miller teaches “the rinsing fluid [is] used for the splash shield.” Id. ¶ 85. In paragraph 77, Dr. Slocum testifies that Miller discloses using a nozzle oriented towards a splash shield for directing rinsing fluid onto the splash shield. Id. ¶ 77. Dr. Slocum’s testimony is inconsistent with Miller, which teaches that the splash shield is manually removed for cleaning. Ex. 1004 ¶ 45; Ex. 1005, 5:4–10. In fact, on cross-examination, Dr. Slocum conceded that Miller does not disclose automatic cleaning of the sleeve (splash shield) 8 See supra note 7. and that Miller’s nozzle is not pointed at the sleeve. Ex. 2027, 189:8– 190:11. Petitioner also relies on Dr. Slocum’s testimony that a PHOSITA reading Kelly would have substituted an electronic valve for Kelly’s manual valve and would have “put a bunch of them in at a bunch of different angles,” so when the valves are actuated, the whole thing is cleaned. Ex. 2027, 169:5–172:9; see Pet. Reply 13. In our view, the cited testimony is not credibly based on the teachings of the prior art references, as opposed to the teachings of the ’662 patent. Whereas Dr. Slocum opines that it would have been obvious to clean a splash shield using electronically operated nozzles (id.), Neilson, Kelly, and Miller all teach manual cleaning of a splash shield. Ex. 1002, 4:13–20; Ex. 1003, 5:65–66; Ex. 1004 ¶ 45; Ex. 1005, 5:4–10. In view of the inconsistencies between Dr. Slocum’s testimony and the teachings of Miller, we do not give substantial weight to his opinion that the method of claim 21 would have been obvious to a PHOSITA in view of Neilson, Kelly, and Miller.” slip op. at 21
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,520,662 - PTAB · May 12, 2015 · IPR2014-00242 · APJ Peter P Chen · IPR · Final written decision
The Board canceled claims 1–3, 5, and 6 and denied substitute claims 7–11 because the Patent Owner failed to establish written-description support for claim 10 and patentability over prior art for claims 7–9 and 11.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“Unlike examination, entry of the proposed substitute claims in an inter partes review is not automatic. As the moving party, Patent Owner must establish that it is entitled to the requested relief. See 37 C.F.R. § 42.20(c). In its Motion to Amend, Patent Owner bears the burden to show, inter alia, that a reasonable number of substitute claims is proposed, there is no broadening of scope, the proposed claims are supported adequately by the written description of the application as filed originally, and the proposed claims are patentable over the prior art. See 37 C.F.R. § 42.121; Idle Free Sys. Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 5–6 (PTAB June 11, 2013) (Paper 26) (“Idle Free”). We address each of these requirements in turn.” slip op. at 10
- 112 supportDenied
“its Motion to Amend to set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.” The test for written description support is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). The purpose of the written description requirement is to convey with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991).” slip op. at 12
- ScopeDecided for patent owner
“2. No Broadening of Scope Proposed substitute claims in an inter partes review “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii). In its Motion to Amend, Patent Owner proposes claim 7 as a substitute for claim 1, claim 8 as a substitute for claim 2, claim 9 as a substitute for claim 3, claim 10 as a substitute for claim 5, and claim 11 as a substitute for claim 6. Mot. 1–5. Each claim includes all of the limitations of the corresponding challenged claim for which it is a substitute, and adds additional limitations. Id. No limitations from the challenged claims were deleted in the proposed substitute claims. Patent Owner asserts that the proposed substitute claims do not enlarge the scope of the claims of the ’047 patent. See Mot. 1. Petitioner does not dispute this assertion (“patent owner’s proposed substitute claims . . . add ancillary features”). Opp. 1. We are persuaded that each of the proposed substitute claims does not enlarge the scope of each of the challenged patent claims it intends to replace.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Decision to Institute, we determined that no explicit construction was necessary for any of the claim terms beyond their ordinary and customary meanings. Dec. to Inst. 8–9. Neither party has challenged that determination, and based on the record adduced during trial, we see no reason to provide an express construction for any term. For the proposed substitute claims, Patent Owner states that: Like the terms in the original claims, all of [the newly added claim terms in the proposed substitute claims] are simple [claim terms] whose ordinary meaning applies and for which no construction is required, with the possible exception of “member” and “group.” As explained in the specification (Ex. 1) at 3:2–4, “The present invention comprises a method . . . for allowing on-line communications with members of a group of recipients for whom the invention has been implemented.” In the context of proposed independent claim [7], the claimed invention requires that “said first computer system storing information about said plurality of members in a database.” Thus, in the context of the proposed amended claims[,] a “group” is a group of a plurality of members for whom the first computer system has stored information in a database. Mot. 7. Petitioner does not propose alternative constructions for the claim terms “member” or “group.” We cannot discern how the constructions proffered by Patent Owner add any clarity to the terms “member” and “group,” which are simple and commonly understood terms. We decline to provide an express construction for either “member” or “group.”” slip op. at 8
Claim construction§ 101 eligibility§ 103 obviousnesscites AlicePatents in suitUS 8,499,047
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.