• Allstate Insurance Company v. Atos, LLCSome claims unpatentable
  PTAB · Mar 7, 2023 · IPR2021-01449 · APJ Julia Heaney · IPR · Final written decision

  Claim 5 is unpatentable as anticipated by Kim; claims 1–4 were not shown unpatentable under the asserted obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Having considered the parties’ arguments and evidence, we adopt the level of ordinary skill in the art proposed by Petitioner, because it is consistent with the disclosures of the ’174 patent and the prior art of record. We note, however, that neither party contends that any issue in this case turns on the differences between the parties’ definitions of one of ordinary skill in the art.” slip op. at 10

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

    “Having reviewed the parties’ arguments and evidence, we determine that Petitioner’s proposed construction of “rotation vector” is consistent with the ’174 patent’s usage of the term “rotation vector” (or “vector of rotation”). See Ex. 1001, 1:54–2:11. Dr. Kanellakopoulos’s opinion supports that “rotation vector” would be understood by a person of ordinary skill in the art to describe the motion of a body that is rotating around a point. As to the other aspects of Patent Owner’s proposed construction, describing the characteristics of magnitude and direction, we determine that those attributes are not necessary to interpreting how a skilled artisan would understand “rotation vector” in light of the claim language and specification. See Tr. 47:26–48:7 (in Patent Owner’s proposed construction of “rotation vector,” “the magnitude requirement is not particularly important”). We address the parties’ arguments as to differences between a rotation vector and angular momentum vector in Section II.D.2 below, because they underlie Petitioner’s challenges involving Kleppner.” slip op. at 14

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

    “Having considered the parties’ positions as to construction of the term “movement vector” and applicability of the definition of “movement vector” set forth in the ’174 patent specification (Ex. 1001, 2:29–31), we construe the term “movement vector” to mean “a vector derived from the cross product of the centrifugal force vector and the rotation vector.” We adopt the definition set forth in the ’174 specification because we determine patentee acted as its own lexicographer. Cont’l Cirs. LLC v. Intel Corp., 915 F.3d 788, 796 (Fed. Cir. 2019) (citing Phillips, 415 F.3d at 1316) (“When the patentee acts as its own lexicographer, that definition governs.”). We agree with Petitioner that the words “while a vehicle is turning” would be superfluous in the construction, because the step of “detecting a movement vector during the turn” already recites that the vehicle is turning. Apple, Inc. v. Ameranth, 842 F.3d 1229, 1237 (Fed. Cir. 2016) (“Construing a claim term to include features of that term already recited in the claims would make those expressly recited features redundant.”)” slip op. at 16

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

    “We decline to adopt Patent Owner’s construction because it improperly reads into claim 5 a requirement that the specification and claim language do not support. The specification passages relied on by Patent Owner do not expressly state that a vehicle independent state must be determined while the device is inside a vehicle, and contrary to Patent Owner’s argument, they also do not necessarily imply that. For example, the descriptions of “vehicle independent movement” and “vehicle independent event” in the specification (see Ex. 1001, 1:16, 42) refer to “phone falling to the ground.” “Falling to the ground” implies that the phone may be outside a vehicle, not inside. Further, the specification’s reference to detecting a vehicle dependent state “while also” recognizing a vehicle independent event does not necessarily imply that the vehicle dependent state and vehicle independent event are being detected simultaneously, as Patent Owner argues. In the language of claim 5, a “vehicle independent state” is recited in the determining step (step c), and the requirement that the portable device is located “inside a vehicle” relates to creation of an operation indicator, as part of the detecting step (step b). Patent Owner does not dispute this, and agrees that a portable device “not in the vehicle” can satisfy the determining step (step c). Tr. 73:5–8. Patent Owner, however, argues step c’s recitation that a “vehicle independent state” is based on step b’s “predetermined criteria” creates a link between “vehicle independent state” and step b, and thus an “express requirement” in step c that the device is located inside the vehicle. See Tr. 73:8–26, 76:1–3. We decline to read this requirement into the claim language. Although the claim language states that determining a “vehicle independent state” is based on “predetermined criteria,” and step b describes comparing “predetermined criteria” to an “operation indicator” that is created when the device is inside a vehicle, it does not limit the step of determining a vehicle independent state to a time when the portable device is inside a vehicle. Accordingly, we construe “vehicle independent state” to mean a state triggered when the portable device is moved independently of the movement of the vehicle.” slip op. at 23

  Patent outcomesUS 9,846,174 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,846,174
• Yantai Jereh Petroleum Equipment & Technologies Co., Ltd v. BJ Energy Solutions, LLCSome claims unpatentable
  PTAB · Feb 6, 2023 · PGR2021-00102 · APJ Patrick R Scanlon · PGR · Final written decision

  Claims 5 and 9 are unpatentable as indefinite under §112(b); the Board did not find claims 1–4, 6–8, and 10–28 unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on our review of the record before us, particularly the ’459 patent’s description and Dr. Adnan’s testimony, we agree with Petitioner that the ordinary level of skill in the art does not require the high level of specialized knowledge of control systems suggested by Patent Owner. Moreover, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we apply Petitioner’s definition, although our conclusions with respect to obviousness would be the same if we were to apply Patent Owner’s definition.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Based on the full record, we are not persuaded that Mr. Marscher is unqualified to serve as an expert in this proceeding. As noted above, a person of ordinary skill in the art is not required to have been a fracturing operator. Patent Owner’s proposed definition does not even require experience as a fracturing operator. See PO Resp. 22. Furthermore, Mr. Marscher testifies that he has extensive experience developing pumps for fracturing applications. Ex. 2027, 6:24–8:7. Mr. Marscher also testifies that he has experience with control systems relating to pumps and pumps units. Id. at 212:19–23. This testimony, as well as his declaration and curriculum vitae, show that Mr. Marscher has extensive education and experience in relevant fields. Ex. 1003 ¶¶ 8–17; Ex. 1004. Accordingly, we are not persuaded that Mr. Marscher’s qualifications or experience provide reason to discount the weight associated with Mr. Marscher’s testimony.” slip op. at 10

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

    “is the pump unit’s highest HHP output and one of ordinary skill in the art would have understood this value is the pump unit’s output power in intermittent duty. Pet. Reply 2 (citing Ex. 1003 ¶¶ 71–72, 123–124; Pet. 9– 10; Ex. 1036, 64:17–67:13, 119:17–120:11, 124:7–24, 198:9–200:9, 221:8– 222:15). However, even if Petitioner is correct that the “maximum power output value” is near or equivalent to a pump unit’s output power in intermittent duty, we are still not persuaded that the term “maximum intermittent power” should be tied to the “maximum power output value,” in conflict with the definition provided in the Specification. Petitioner also argues that Patent Owner’s proposed construction is indefinite. Pet. Reply 3. For the reasons discussed below (see supra § II.I.1), we determine that Petitioner has not shown by a preponderance of the evidence that the term “maximum intermittent power,” as defined in the Specification, is indefinite. Thus, based on the complete record before us, we maintain our prior construction of “maximum intermittent power” for this Final Written Decision.” slip op. at 13

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

    “5. Additional Terms We determine that we need not expressly construe any other claim terms to resolve the parties’ disputes because doing so would have no effect on the analysis below. See Nidec, 868 F.3d at 1017; see also 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)).” slip op. at 15

  Patent outcomesUS 10,907,459 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,907,459
• Nanofiber Solutions, LLC v. Acera Surgical, Inc.Some claims unpatentable
  PTAB · Dec 13, 2022 · IPR2021-01016 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1, 2, 4–7, and 13 are unpatentable: claims 1, 2, 4, 5, and 13 as anticipated by Johnson, and claims 6 and 7 as obvious over Johnson and Johnson–Liu, respectively.

  RulingsFinal written decision

  • Skill levelOther

    “Petitioner contends that: A person of ordinary skill in the art (“POSITA”) at the time of filing the ‘228 Patent would have been a person having a bachelor's degree in science or engineering, for example in the fields of chemistry, chemical engineering, or biomedical engineering, with undergraduate research experience, coupled with at least three years of industry experience, that linked the fabrication of fibrous polymeric materials to performance requirements for scaffolds for the promotion of proliferation of biological cells and the growth and/or reconstruction of biological tissues. Pet. 11–12 (citing Ex. 1002 ¶¶ 112–116). In response, Patent Owner notes that all challenged claims recite electrospun fibers but that Petitioner’s proposed level of skill “requires (1) no coursework, training or experience with electrospinning and (2) improperly focuses on scaffolds for the promotion of proliferation of biological cells and the growth and/or reconstruction of biological tissues.” PO Resp. 7 (citing Ex. 2001, ¶¶ 38–39). But Patent Owner then concedes that this “difference is immaterial to deciding the issues raised by the Petition.” Id. at 8.” slip op. at 9

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

    “construe claims “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b); see Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Furthermore, we expressly construe the claims only to the extent necessary to resolve the parties’ dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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))). The parties agree that the terms of the challenged claims should be given their “plain and ordinary meaning” and that no express claim construction is necessary to address Petitioner’s challenges. Pet. 12; PO Resp. 6. We agree that no claim terms require express construction for purposes of resolving the dispute between the parties.” slip op. at 10

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

    “Upon review, we are unpersuaded that Petitioner has improperly mixed and matched disclosures from Johnson to arrive at an anticipatory reference. Patent Owner is correct that Petitioner primarily relies on Example 1 as evidence for the method by which its scaffold is made. But the disclosure found in paragraph 98 is not a “distinct” teaching of the type described in Net MoneyIN; rather, it is a general description of the structures that may be created by Johnson’s method: “A scaffold may comprise any number of layers, including about 1 layer, about 2 layers, about 3 layers, about 4 layers, about 5 layers, and so on.” Ex. 1009 ¶ 98. Patent Owner has not directed us to anything in the disclosure of Johnson that indicates that this is a “distinct” teaching or embodiment, instead of a general description of the types of scaffolds that Johnson encompasses. We see no reason why the general disclosures regarding Johnson’s scaffolds should be limited to specific embodiments, or precluded from applying to the method of Example 1.” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableNot shown unpatentable

    “We are unconvinced by Petitioner’s arguments and evidence. While we recognize that the range of claim 3 is very broad, and it is possible that scaffolds having fiber diameters as set forth in Johnson could have a mean pore size falling within the range, inherency “may not be established by probabilities or possibilities.” Par Pharm., Inc. v. Twi Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014). Nor does Petitioner sufficiently explain why a person of ordinary skill in the art would have understood the process of Example 1 to necessarily result in the claimed mean pore size. We are also persuaded by Patent Owner’s argument that Boland 2005’s disclosure of a fiber diameter similar to Johnson’s that nevertheless falls outside the claimed mean pore size range. We note that Petitioner never addresses Boland 2005 in its Reply. 4. Conclusion as to Anticipation For these reasons, we find that Petitioner has met its burden of showing that claims 1, 2, 4, 5, and 13 are anticipated by Johnson, but has failed to meet its burden as to claim 3.” slip op. at 18

  Patent outcomesUS 10,632,228 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,632,228
• Apple Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Dec 5, 2022 · IPR2022-00362 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–3, 5–10, and 12–17 are unpatentable over Numazaki and Nonaka; claims 4, 11, and 18 were not shown unpatentable because the evidence did not establish the sensors were fixed relative to each other.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “After institution, LG Electronics, Inc. and LG Electronics U.S.A., Inc. filed a petition and a motion for joinder to this proceeding. IPR2022-00092, Papers 1, 3. We granted the motion for joinder, and IPR2022-00092 was joined with this proceeding and dismissed. Paper 12, 11–12. In addition, Google LLC filed a petition and a motion for joinder to this proceeding. IPR2022-00362, Papers 2, 3. We granted the additional motion for joinder, and IPR2022-00362 was joined with this proceeding and dismissed. Paper 16, 5–6. Consequently, Apple Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., and Google LLC are joined in this proceeding.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction,” and “[a]dditional education or experience might substitute for the above requirements.” Pet. 5–6 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s definition for the purposes of its Response. PO Resp. 5. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 8

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

    “C. Claim Construction In inter partes reviews, the Board interprets claim language using the district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that 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, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. capture command causes the digital camera to store an image to memory” in claim 1, “capturing an image to the digital camera in response to . . . the image capture command” in claim 8, and “correlate the gesture detected . . . with an image capture function and subsequently capture an image using the digital camera” in claim 13. Pet. 8. Specifically, Petitioner asserts that these phrases “should be construed broadly enough to encompass capturing/storing video or still images,” and provides reasons supporting its assertion. Id. at 8–10. Patent Owner does not contest Petitioner’s proposed claim constructions. PO Resp. 5. We agree with Petitioner’s supporting reasoning and accordingly adopt Petitioner’s proposed claim constructions.” slip op. at 8

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

    “We find that Petitioner’s Reply argument is not beyond the proper scope of a reply because it directly responds to Patent Owner’s argument that Petitioner does not explain how elements from both the third and fifth embodiments would accessed by the reflected light extraction unit and whether these elements would operate simultaneously or at different times. Moreover, Petitioner’s Reply argument elaborates on the contentions in the Petition that the gesture recognition would be implemented as a means of allowing the user to initiate the fifth videoconferencing functionality. Pet. 31; see Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F. 3d, 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). Accordingly, we find that the Petition adequately explains how the reflected light extraction unit would be accessed by both the third embodiment’s shape interpretation unit 333 and the fifth embodiment’s extraction unit 353. We particularly credit Dr. Bederson’s uncontroverted testimony that “it would be well within the capabilities of a [person having ordinary skill in the art] to utilize the same output by two separate processing blocks to implement the proposed combination,” and one of ordinary skill in the art “would understand there are no technical barriers to arranging multiple distinct processing units that separately process the same output of a single unit.” See Ex. 1018 ¶ 9.” slip op. at 24

  Patent outcomesUS 8,878,949 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,878,949
• Apple Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Dec 5, 2022 · IPR2022-00092 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–3, 5–10, and 12–17 are unpatentable as obvious over Numazaki and Nonaka; claims 4, 11, and 18 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction,” and “[a]dditional education or experience might substitute for the above requirements.” Pet. 5–6 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s definition for the purposes of its Response. PO Resp. 5. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition. slip op. at 8

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

    “district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that 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, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. capture command causes the digital camera to store an image to memory” in claim 1, “capturing an image to the digital camera in response to . . . the image capture command” in claim 8, and “correlate the gesture detected . . . with an image capture function and subsequently capture an image using the digital camera” in claim 13. Pet. 8. Specifically, Petitioner asserts that these phrases “should be construed broadly enough to encompass capturing/storing video or still images,” and provides reasons supporting its assertion. Id. at 8–10. Patent Owner does not contest Petitioner’s proposed claim constructions. PO Resp. 5. We agree with Petitioner’s supporting reasoning and accordingly adopt Petitioner’s proposed claim constructions.” slip op. at 8

  • BurdenMixed

    “We agree with Patent Owner that the Petition does not establish sufficiently that Numazaki’s unit 102 and camera 351 are fixed relative to one another. Without more, the mere fact that unit 102 and camera 351 are arranged in parallel and have overlapping fields of view does not establish that the structures are fixed. At the oral hearing, counsel for Petitioner indicated that Petitioner’s position was not an inherency argument but relied on Dr. Bederson’s analysis and interpretation of Numazaki’s fifth embodiment. Tr. 17:7–15. The Petition, however, does not reference any such analysis in connection with the subject matter of claims 4, 11, and 18. 27–28 of the Petition, which pertain to limitation 1[(a)]) discuss the overlapping fields of view but not assert that overlapping fields of view require the structures to be fixed with respect to one another. For the foregoing reasons, we determine that Petitioner has not shown by a preponderance of the evidence that the combination of Numazaki and Nonaka renders obvious claims 4, 11, or 18.” slip op. at 34

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We find that Petitioner’s Reply argument is not beyond the proper scope of a reply because it directly responds to Patent Owner’s argument that Petitioner does not explain how elements from both the third and fifth embodiments would accessed by the reflected light extraction unit and whether these elements would operate simultaneously or at different times. Moreover, Petitioner’s Reply argument elaborates on the contentions in the Petition that the gesture recognition would be implemented as a means of allowing the user to initiate the fifth videoconferencing functionality. Pet. 31; see Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F. 3d, 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). Accordingly, we find that the Petition adequately explains how the reflected light extraction unit would be accessed by both the third embodiment’s shape interpretation unit 333 and the fifth embodiment’s extraction unit 353. We particularly credit Dr. Bederson’s uncontroverted testimony that “it would be well within the capabilities of a [person having ordinary skill in the art] to utilize the same output by two separate processing blocks to implement the proposed combination,” and one of ordinary skill in the art “would understand there are no technical barriers to arranging multiple distinct processing units that separately process the same output of a single unit.” See Ex. 1018 ¶ 9.” slip op. at 24

  Patent outcomesUS 8,878,949 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,878,949
• Apple Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Dec 5, 2022 · IPR2021-00921 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–3, 5–10, and 12–17 are unpatentable as obvious over Numazaki and Nonaka; claims 4, 11, and 18 were not shown unpatentable.

  RulingsFinal written decision

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

    “We find that Petitioner’s Reply argument is not beyond the proper scope of a reply because it directly responds to Patent Owner’s argument that Petitioner does not explain how elements from both the third and fifth embodiments would accessed by the reflected light extraction unit and whether these elements would operate simultaneously or at different times. Moreover, Petitioner’s Reply argument elaborates on the contentions in the Petition that the gesture recognition would be implemented as a means of allowing the user to initiate the fifth videoconferencing functionality. Pet. 31; see Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F. 3d, 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). Accordingly, we find that the Petition adequately explains how the reflected light extraction unit would be accessed by both the third embodiment’s shape interpretation unit 333 and the fifth embodiment’s extraction unit 353. We particularly credit Dr. Bederson’s uncontroverted testimony that “it would be well within the capabilities of a [person having ordinary skill in the art] to utilize the same output by two separate processing blocks to implement the proposed combination,” and one of ordinary skill in the art “would understand there are no technical barriers to arranging multiple distinct processing units that separately process the same output of a single unit.” See Ex. 1018 ¶ 9.” slip op. at 24

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “We agree with Patent Owner that the Petition does not establish sufficiently that Numazaki’s unit 102 and camera 351 are fixed relative to one another. Without more, the mere fact that unit 102 and camera 351 are arranged in parallel and have overlapping fields of view does not establish that the structures are fixed. At the oral hearing, counsel for Petitioner indicated that Petitioner’s position was not an inherency argument but relied on Dr. Bederson’s analysis and interpretation of Numazaki’s fifth embodiment. Tr. 17:7–15. The Petition, however, does not reference any such analysis in connection with the subject matter of claims 4, 11, and 18. 27–28 of the Petition, which pertain to limitation 1[(a)]) discuss the overlapping fields of view but not assert that overlapping fields of view require the structures to be fixed with respect to one another. For the foregoing reasons, we determine that Petitioner has not shown by a preponderance of the evidence that the combination of Numazaki and Nonaka renders obvious claims 4, 11, or 18. 6. Dependent Claims 2, 3, 5–7, 9, 10, 12, and 14–17 Petitioner provides reasonable and detailed explanations, supported by the testimony of Dr. Bederson, indicating where in the references the limitations of claims 2, 3, 5–7, 9, 10, 12, and 14–17 are disclosed. Pet. 33– 43, 44, 47, 49. Further, Patent Owner offers no arguments particularly directed to these dependent claims. PO Resp. 22, 25, 28. We have considered the evidence and arguments of record and determine that Petitioner has demonstrated by a preponderance of the evidence that the combination of Numazaki and Nonaka renders obvious claims 2, 3, 5–7, 9, 10, 12, and 14–17 for the reasons discussed in the Petition and as supported by the testimony of Dr. Bederson.” slip op. at 34

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “After institution, LG Electronics, Inc. and LG Electronics U.S.A., Inc. filed a petition and a motion for joinder to this proceeding. IPR2022-00092, Papers 1, 3. We granted the motion for joinder, and IPR2022-00092 was joined with this proceeding and dismissed. Paper 12, 11–12. In addition, Google LLC filed a petition and a motion for joinder to this proceeding. IPR2022-00362, Papers 2, 3. We granted the additional motion for joinder, and IPR2022-00362 was joined with this proceeding and dismissed. Paper 16, 5–6. Consequently, Apple Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., and Google LLC are joined in this proceeding.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction,” and “[a]dditional education or experience might substitute for the above requirements.” Pet. 5–6 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s definition for the purposes of its Response. PO Resp. 5. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition. slip op. at 8

  Patent outcomesUS 8,878,949 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,878,949
• Bose Corporation v. Koss CorporationSome claims unpatentable
  PTAB · Sep 13, 2022 · IPR2021-00612 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–3, 6, 8, 10–13, 16, 18, 20–22, 25, 27, 29–31, 34, 36, 38–43, 46, 48, and 51–56 are unpatentable; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “C. Dr. Williams’ Credibility Patent Owner argues that the testimony of Dr. Williams, Petitioner’s” slip op. at 13

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

    “Accordingly, we disagree with Patent Owner’s assertion that body 12” slip op. at 20

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

    “wireless interfaces, such that it could be used in Rezvani-446’s system.” PO Sur-reply 5. As such, Rezvani-875 would not have suggested to one of ordinary skill in the art that providing a headset with multiple wireless connections would produce undesirable battery drain. Accordingly, we are not persuaded that one of ordinary skill in the art would have been dissuaded from using two wireless connections because of increased battery usage.” slip op. at 28

  Patent outcomesUS 10,206,025 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,206,025
• Medtronic Corevalve LLC / Medtronic, Inc. v. Speyside Medical, LLCSome claims unpatentable
  PTAB · Aug 12, 2022 · IPR2021-00243 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–4, 6–10, 16, and 17 are unpatentable as obvious over Lane; claims 18–22 and 24 were not shown unpatentable over the Lane and Thomas combinations.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 7. Petitioner does not challenge Patent Owner’s modification to its proposed definition, and Petitioner’s expert, Dr. Drasler, agrees that experience in the field of prosthetic cardiovascular implants would have included experience with transcatheter prosthetic cardiovascular implants as well as delivery systems and methods used to implant such prostheses. See generally Pet. Reply; Ex. 2048, 11:6–12:1. Thus, based on our review of the complete record, we adopt Petitioner’s definition of the level of ordinary skill in the art, modified as proposed by Patent Owner. We note, however, that our analysis in this proceeding would not differ if we did not adopt the modification proposed by Patent Owner.” slip op. at 8

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

    “We agree with Petitioner. Patent Owner’s proposal that the distal end of the delivery catheter “houses the prosthetic” is in tension with the express language of the claim because the proposed construction suggests that “houses” necessarily means more than “at least” part of the prosthesis is disposed in the distal end. Indeed, if “houses” was not more limiting than “at least partially disposed” there would be no need to further define the spatial relationship between the distal end of the catheter and the prosthetic valve. Petitioner further argues that the Patent Owner’s construction is improper because it “wrongly limits the term to require that ‘the proximal end includes a handle that controls the deployment of the implant.’” Pet. Reply at 3 (citing PO Resp. 37–38). Petitioner asserts that the claims do not recite a handle and the ’897 patent’s “specification makes clear that a handle is a separate, optional component that is not integral to a delivery catheter: inner tubular member ‘can’ be connected to handle 907 and outer tubular member ‘can be connected’/‘attach[ed]’ to outer sheath handle 908.” Id. (citing Ex. 1001, 20:19–29, 26:30–33, claim 10). We again agree with Petitioner. Although the specification describes an embodiment in which proximal end 905 of inner tubular member 904 can be connected to handle 907 and proximal end 902 of outer tubular member 901 can be connected to handle 908 (Ex. 1001, 20:19–26), it is generally improper to read limitations from specific embodiments into the claims. See Cadence Pharms. Inc. v. Exela PharmSci Inc., 780 F.3d 1364, 1369 (Fed. Cir. 2015) (“[E]ven if all of the embodiments discussed in the patent included a specific limitation, it would not be proper to import from the patent’s written description limitations that are not found in the claims themselves.” (internal quotations omitted)); SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”). Furthermore, at the oral hearing, Patent Owner indicated that “the proximal end includes a handle that controls the deployment of the implant” part of its proposed construction is not necessary. Tr. 61:8–14. In view of the above, we decline to adopt Patent Owner’s proposed” slip op. at 10

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

    “Furthermore, inventors can act as their own lexicographers if they clearly set forth a definition of a claim term other than its ordinary and customary meaning. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 677 (Fed. Cir. 2015). But any such definition must appear in the specification “with reasonable clarity, deliberateness, and precision.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Absent any such definition, “limitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Here, a definition of “introducer catheter” does not appear in the specification “with reasonable clarity, deliberateness, and precision.” See generally Ex. 1001.” slip op. at 17

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

    “We determine that we need not expressly construe this claim term to resolve the parties’ disputes because doing so would have no effect on the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also 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)).” slip op. at 22

  Patent outcomesUS 9,445,897 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,445,897
• Med-El Elektromedizinische Geräte Ges.M.B.H. v. Advanced Bionics AGSome claims unpatentable
  PTAB · Jun 2, 2021 · IPR2020-00190 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1, 2, and 4–7 are unpatentable as obvious over Dooley and von Ilberg 1999; claims 3 and 8 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating it was “consistent with the evidence at this stage of the proceeding, including the asserted prior art.” Dec. Inst. 21. In its Response, Patent Owner notes that “Dr. Zeng explains that he would particularly emphasize experience relating to designing or developing cochlear implants and hearing aids, or systems for fitting such prostheses to patients,” but indicates that it does not dispute Petitioner’s proposed level of ordinary skill in the art for the purposes of this proceeding. PO Resp. 13 (citing Ex. 2014 ¶ 66). Based on our review of the complete record, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution. We” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Petitioner asserts that the Specification of the ’747 patent defines the term “electric-acoustic processor.” Pet. 20 (citing Ex. 1001, 10:65–67, 11:1–7). In the Decision on Institution, we determined that it was not necessary to construe “electric-acoustic processor” at that stage of the proceeding. Dec. Inst. 22 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). Patent Owner agrees the term “electric-acoustic processor” does not require construction for purposes of this proceeding. PO Resp. 14. Accordingly, we do not expressly construe “electric-acoustic processor” for this Decision.” slip op. at 10

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

    “that “configured to generate or apply . . . acoustic stimulation signals to the acoustic sensing organs of the ear” means more than simply being capable of applying acoustic stimulation signals. Dec. Inst. 28. In its Response, Patent Owner argues that the term should be given its plain meaning and does not require explicit construction. PO Resp. 15–16. Patent Owner adds that: To the extent there is a dispute, Patent Owner agrees with the Board’s reasoning that the “configured to” language does not merely reflect an intended use and requires more than a device that is simply “capable of” generating or applying the recited acoustic or electric stimulation in different or separate configurations. Id. at 16 (citing Dec. Inst. 28). Petitioner does not respond to Patent Owner’s assertion that “configured to generate or apply” should be given its plain meaning but does indicate that it disagrees with our “construction” of the term “configured to.” Pet. Reply 14–15 (citing Dec. Inst. 27–28). Petitioner, however, does not present any reasoning supporting its assertion the Board was wrong or offer any argument regarding how “configured to” should be construed. See generally Pet. Reply. We did not expressly construe “configured to” or “configured to generate or apply” in the Decision on Institution, but, as noted above, we did determine that that “configured to generate or apply . . . acoustic stimulation signals to the acoustic sensing organs of the ear” means more than simply being capable of applying acoustic stimulation signals. Dec. Inst. 28. Based on the complete record, we still are not persuaded by Petitioner’s argument that “configured to” should be construed as merely “capable of,” and for the reasons in the Decision on Institution, which we adopt here, we determine acoustic sensing organs of the ear” means more than simply being capable of applying acoustic stimulation signals.” slip op. at 11

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

    “Anderson discloses an embodiment (“the acoustic embodiment”) in which earpiece 10 includes speaker 15 that generates acoustic waves (i.e., acoustic signals) to stimulate the user’s ear. Ex. 1003, 3:58–60, 4:33–35, 5:18–21, 6:63–67, Figs. 1, 2. Anderson also discloses in Figure 10 a different embodiment (“the cochlear implant embodiment”) that combines earpieces 10’ and 10” with a cochlear implant system. Id. at 27:25–45, Fig. 10. In this embodiment, “[s]peakers 15 in the left and right earpieces serve no purpose in the cochlear implant application, as the user is profoundly deaf, and may be disconnected to conserve power.” Id. at 27:52– 55. Because Anderson discloses that the speakers serve no purpose in the cochlear implant embodiment and could be disconnected from power, we determine that the speakers are not used in this embodiment. In addition, Petitioner does not direct us to—nor are we aware of—any disclosure in Anderson indicating that speaker 15 of the cochlear implant embodiment receives a signal that causes the speaker to generate acoustic output. In contrast, Anderson discloses that earpiece headset 21 of Figure 2, which is functionally equivalent to speaker 15 of the acoustic embodiment, receives a modified speech signal and converts this signal to acoustic waves. Ex. 1003, 4:33–35, 5:18–21; see also id. at 6:63–67 (disclosing that speaker 15 produces a processed acoustic signal that corresponds to the ambient acoustic signal detected by microphone 12). embodiment cannot generate or apply acoustic stimulation signals. For these reasons, we determine that speakers 15 in the cochlear implant embodiment are not configured to generate or apply acoustic stimulation signals.” slip op. at 16

  Patent outcomesUS 8,155,747 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,155,747
• Reg Synthetic Fuels, LLC v. Neste OyjSome claims unpatentable
  PTAB · Feb 19, 2020 · IPR2018-01374 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 6, 7, 10, 20, and 24 are unpatentable; claims 1–5, 8, 9, 11–19, and 21–23 were not shown unpatentable, because the cited art did not teach the claimed iron-content limitation.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Neste argues that REG’s proposed level of skill in the art is “unreasonably high” and instead proffers that “a person of ordinary skill in the field of biofuel engineering and processing as of Feb. 15, 2011 would have had a degree in chemical engineering or chemistry and at least two to three years of experience with processes for manufacturing hydrocarbons from bio renewable feedstocks.” PO Resp. 6–7 (citing Ex. 2029 ¶ 31). Neither party indicates that the outcome of any arguments made in this case would change depending on the level of ordinary skill in the art. We agree with the parties that the ordinarily skilled artisan, in February 2011, would have had at least a degree in chemical engineering or chemistry and would have had several years of experience in processing and refining biofuels. We need not parse the particular amount of education or experience given that neither party asserts this determination would have had any effect on the arguments or analysis in this case. Further, we find that the prior art of record reflects the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “We have again reviewed the record and the parties’ arguments, and again decline to import into the claim a requirement that the bio oil must be pre-treated. As we discussed in our institution decision, nothing in the ’185 patent indicates that the definition of bio oil is so limited. And we note that certain dependent claims of the ’185 patent, for example claim 21, specifically recite a pre-treatment step, leading to the conclusion that the bio oils of the independent claims are not limited to only pretreated bio oils. Neste’s new evidence introduced during trial is extrinsic to the patent, based on the testimony of Dr. Klein regarding the criticality of the iron content range. See PO Resp. 3 (citing Ex. 2029 ¶¶ 35–36, 38). In any event, we fail to see how the criticality of the claimed range mandates that the bio oil be pretreated prior to undergoing the claimed process. While Dr. Klein testifies that it is “clear from the ‘185 patent [that] a bio oil feed must be pretreated to render it suitable for commercial hydrotreatment” (Ex. 2029 ¶ 35), the portion of the patent he cites for this proposition states only that “bio-based feedstock (glyceride oil) to be used as feed material for hydrotreatment reaction can be purified to iron content of less than 1 to 0.2 w-ppm.” Ex. 1001, 4:50–55 (emphasis added). But this statement does not address the use of a bio oil that already contains an iron content within the claimed range, which therefore would not need purification. Indeed, the ’185 patent discusses “experiments with palm oil having very low level of impurities.” Ex. 1001, 4:45–46. Based on the foregoing, we maintain our view that the claim term requires no construction beyond its express language. The bio oil to be used in the method of claim 1 may be pretreated to achieve the claimed iron content, but pretreatment is not required by the claim.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “The intrinsic record of the ’185 patent contains no indication that bio oil intermediate was a new term coined to signify a specific class of bio oils, as Neste contends. The written description contains a section devoted to providing specific definitions for terminology, including “bio oil,” “glyceride oil,” and “hydrotreatment.” Ex. 1001, 3:28–4:7. There is no mention of a bio oil intermediate, which would be expected if the inventors had intended to coin a new term. The only use of “intermediate” in the entire written description is as follows: “disclosed is a glyceride oil intermediate, which intermediate consists of glyceride oil from at least one renewable source and the iron content of said glyceride oil is less than 1 w-ppm.” Id. at 4:64–67. The sentence preceding that one states only that the “purification result can be obtained (depending on used feedstock) using pretreatment methods.” Id. at 4:61–62 (emphasis added). As can be seen, there is no mention in this passage that the “glyceride oil intermediate” must be pretreated, and no indication it is a novel term coined by the inventors. In any event, Neste has not given us reason to depart from the general presumption that a claim preamble is not limiting. The body of claim 6 recites a structurally complete invention, defining the bio oil intermediate according to its iron content. There is no reason to rely on the preamble of the claim for any structure, or for antecedent basis for any claim term. Therefore, we conclude that the preamble does not “breathe life and meaning” into the claim, but rather recites an intended use for the structurally complete invention recited in the body of the claim. As such, we decline to adopt Neste’s modified construction of the claim term, and maintain our prior construction of claim 6’s preamble.” slip op. at 14

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

    “Upon evaluation of the record as a whole, we believe Neste has the better argument, and conclude that the iron content of the bio oil in claim 1 should be determined when the feed is introduced to the catalyst bed. This interpretation is, most importantly, reflected in the structure of the claim. Claim 1 contains a single process step, of “subjecting a bio oil . . . to a hydrotreatment process.” Immediately following this process step is a wherein clause that requires the iron content of “said bio oil” to be within a certain range. The necessary implication of this claim structure is that “said bio oil” is referring to the substance that is being subjected to the hydrotreatment process, meaning the iron content that is relevant to the claim is the iron content at the time of hydrotreatment with a catalyst. The claim, as a comprising claim, does not exclude the presence of other treatment steps such as purification or dilution, but the structure of the claim does imply that these additional steps should be performed prior to determining whether the iron content of the feed is within the claimed range.” slip op. at 20

  Patent outcomesUS 8,742,185 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,742,185

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.