- General Electric Co. v. University Of Virginia Patent FoundationRehearing deniedPTAB · Sep 19, 2017 · IPR2016-00357 · APJ J John Lee · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving in place the final written decision holding all challenged claims unpatentable under § 102(b) and/or § 103(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“DISCUSSION A party requesting rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it contends were misapprehended or overlooked by the Board. Id.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDecided for petitioner
“The Final Written Decision acknowledged the disclosure in the ’182 Application of the objective of lengthening usable echo train durations while achieving desired image contrast characteristics. Final Dec. 22 (citing Ex. 1014, 4). We concluded this disclosure was similar to the disclosure of the key feature in Purdue Pharma. Id. (citing Purdue Pharma, 230 F.3d at 1327). UVAPF disputes that conclusion, arguing that the comparison with Purdue Pharma is not “meaningful,” because we purportedly overlooked the importance of lengthening the usable echo train duration while achieving comparable image contrast, and the relationship between this “primary objective” and the echo time ratio. Req. Reh’g 8–9. The Final Written Decision, however, specifically considered this “primary objective” described in the ’182 Application—including both the echo train duration and image contrast aspects. Final Dec. 22. We further concluded the alleged relationship between that key feature and the echo time ratio, which is not described in the ’182 Application, was insufficient to direct a skilled artisan to the recited echo time ratio limitations. Id. As we explained, the patent in Purdue Pharma similarly described a key feature and claimed a particular ratio related to that feature, but the court held the written description was inadequate because it failed to describe that ratio or ascribe any particular importance to that ratio. Id. at 20–22 (citing Purdue Pharma, 230 F.3d at 1326–28). The same is true of the claimed echo time ratio and the disclosure of the ’182 Application, which does not identify any such ratio much less describe its significance. Id. UVAPF has not identified any argument or evidence we have overlooked, nor has UVAPF shown our application of Purdue Pharma was erroneous.” slip op. at 5
- Strike new argumentNew argument consideredDecided for petitioner
“not have been considered because they were untimely. Req. Reh’g 9–11. GE did not cite the Purdue Pharma case until the Petitioner Reply. See Paper 27, 13–14. We disagree that GE’s arguments were untimely, however, because Purdue Pharma was cited to rebut arguments made by UVAPF in its Patent Owner Response. In the Patent Owner Response, UVAPF argued that a person of ordinary skill would have been able to derive the full range recited for the echo time ratio limitations based on an example provided in the ’182 Application. Paper 21, 55–58. GE argued in the Petitioner Reply that UVAPF’s position is precluded by Purdue Pharma, which held that whether a claimed ratio can be derived from the written description is immaterial if the disclosure does not describe the ratio or direct a person of ordinary skill to the ratio as a part of the invention. Paper 27, 13–14 (citing Purdue Pharma, 230 F.3d at 1328). Thus, Purdue Pharma was cited to respond directly to arguments made by UVAPF in its Patent Owner Response, and GE’s arguments based on Purdue Pharma were not untimely. In addition, UVAPF also contends GE untimely raised its arguments that the ’182 Application does not provide sufficient support for the “at least twice” aspect of the echo time ratio limitations. Req. Reh’g 11–13. To the contrary, GE argued in the Petition that the ’182 Application failed to adequately support the “at least twice” limitation. Pet. 11–12 (“[N]owhere does the ’182 application make a comparison of the [effective echo time] of a pulse sequence derived according to the disclosed method, much less delineate a range with a boundary of ‘at least twice’ that of any other echo time.”). Thus, GE’s arguments regarding the “at least twice” limitation were not untimely.” slip op. at 6
§ 112 disclosure - General Electric Co. v. University Of Virginia Patent FoundationAll claims unpatentablePTAB · Jun 21, 2017 · IPR2016-00359 · APJ J John Lee · IPR · Final written decision
Claims 153–156, 161, 162, 252, and 253 are unpatentable as anticipated by Mugler 2000 and obvious over each of three stated reference combinations.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“claims. Pet. 21–37. To anticipate a claim, a single prior art reference must disclose each and every limitation of the claim, either expressly or inherently. Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). A feature is disclosed inherently if it is necessarily present in the single anticipating reference. Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). The Petition sets forth detailed contentions and supporting evidence demonstrating that Mugler 2000 discloses each limitation of the challenged claims either expressly or inherently. Pet. 21–37. GE’s analysis is persuasive and unrebutted. In its Patent Owner Response, UVAPF does not dispute that Mugler 2000 discloses each limitation of these claims and, thus, UVAPF has waived any such argument.17 Based on the full record after trial, GE has shown by a preponderance of the evidence that the challenged claims are anticipated by Mugler 2000.” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“Level of Ordinary Skill According to GE’s expert8 witness, Dr. Norbert J. Pelc, a person of ordinary skill in the art would have had “significant working knowledge of MR spin-echo imaging, especially fast-spin-echo imaging,” as well as “a Ph.D. in a physical science (e.g., electrical or biomedical engineering or medical physics) with experience in the development of MR imaging techniques, or an M.D. degree or an M.S. degree in a physical science with significant (3–5 years) of work experience in the development of MR imaging techniques.” Ex. 1009 ¶ 105. The expert9 witness proffered by” slip op. at 7
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner
“Based on Dr. Pelc’s credible testimony, we find that a person of ordinary skill in the art would have met Dr. Pelc’s description. We further find that Dr. Hennig’s testimony on this issue does not differ materially from that of Dr. Pelc, and, in any event, our analysis in this Decision would be unchanged were we to apply Dr. Hennig’s description. C.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim Construction In an inter partes review, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). No claim terms require express construction for purposes of this Final Written Decision.7 See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy). B.” slip op. at 7
Patent outcomesUS RE44,644 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham - General Electric Co. v. University Of Virginia Patent FoundationAll claims unpatentablePTAB · Jun 21, 2017 · IPR2016-00358 · APJ J John Lee · IPR · Final written decision
Claims 141–146, 148, 151, 152, 159, 160, 242–246, 248, and 251 are unpatentable as anticipated; claims 141–152, 159, 160, and 242–251 are also unpatentable as obvious.
RulingsFinal written decision- BurdenDecided for patent owner
“address the applicable burdens of proof on the parties. As an initial matter, the overall burden of persuasion of proving unpatentability on the asserted grounds based on Mugler 2000 lies with GE, and that burden never shifts. See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Therefore, GE bears the burden to establish that Mugler 2000 qualifies as prior art. The burden of production, however, may shift between the parties. See Magnum Oil Tools, 829 F.3d at 1375–76; Dynamic Drinkware, 800 F.3d at 1379–80. Here, GE satisfied the initial burden of production by asserting that Mugler 2000 is § 102(a) prior art, and presenting evidence that it was published and publicly available before the priority date of the ’644 Patent.9 See Pet. 11. The burden of production then shifted to UVAPF, and UVAPF met that burden by producing evidence to demonstrate that the relevant content of Mugler 2000 was solely the work of the inventors of the ’644 Patent, i.e., the declarations of Dr. Mugler and Dr. Kiefer.10 See PO Resp. 18–20; Magnum Oil Tools, 829 F.3d at 1376 (“[T]he shifting of the burden of production is warranted [when] the patentee affirmatively seeks to establish a proposition not relied on by the patent challenger and not a necessary predicate for the unpatentability claim asserted.”). Consequently, the burden returned to GE to prove that the evidence of record does not establish that Mugler 2000 was solely the work of the named inventors. See Dynamic Drinkware, 800 F.3d at 1380. GE did not carry this burden.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Applicant-admitted prior artReference not prior artNot shown unpatentable
“An inventor’s own work is not prior art under § 102(a). See Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 968 (Fed. Cir. 2014); Katz, 687 F.2d at 454. In determining whether a reference is the work of the named inventor(s), the relevant inquiry is whether the relevant content of the reference—such as “the methods, detailed results, statistical analysis and discussion,” or “the design, trial, and analysis of results”—was solely the work of the inventor(s). See Allergan, 754 F.3d at 969. For example, an article may be solely the work of an inventor if the remaining co-authors were merely students performing tasks under the inventor’s direction and supervision. See Katz, 687 F.2d at 455–56. Before turning to the evidence to apply these precepts, we first address the applicable burdens of proof on the parties. As an initial matter, the overall burden of persuasion of proving unpatentability on the asserted grounds based on Mugler 2000 lies with GE, and that burden never shifts. See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Therefore, GE bears the burden to establish that Mugler 2000 qualifies as prior art. The burden of production, however, may shift between the parties. See Magnum Oil Tools, 829 F.3d at 1375–76; Dynamic Drinkware, 800 F.3d at 1379–80.” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“For a patent to claim priority to the filing date of its provisional application, the written description of the provisional application must be sufficient to support the relevant claims of the patent under 35 U.S.C. § 112. Dynamic Drinkware, 800 F.3d at 1378 (citing New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002)). Sufficient written description support requires providing enough information in the application to indicate to a person of ordinary skill that the inventor had possession of the full scope of the claims. In re Wertheim, 541 F.2d 257, 262–64 (C.C.P.A. 1976). The disclosure need not recite the claimed invention in haec verba, but a disclosure that “merely renders the invention obvious” is insufficient. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc).” slip op. at 16
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedReference is prior artDecided for petitioner
“Resp. 21–59. More specifically, UVAPF argues the ’182 Application provides sufficient written description support for the challenged claims such that they are entitled to the priority date of the ’182 Application, i.e., December 21, 2000. Id. Based on the full record, however, the challenged claims have not been shown to have sufficient support in the written description of the ’182 Application and, thus, priority has not been established earlier than December 21, 2001. As with § 102(a), GE bears the burden to prove that Mugler is prior art under § 102(b) as part of its overall burden of persuasion to prove unpatentability. See Dynamic Drinkware, 800 F.3d at 1378. GE also bears the initial burden of production, but satisfied that burden by asserting that Mugler 2000 is prior art under § 102(b). See id. at 1379. The burden then shifted to UVAPF to produce evidence that the challenged claims of the ’644 Patent are entitled to an earlier priority date. See id. at 1380. UVAPF met that burden by producing arguments and evidence to attempt to prove that the disclosure of the ’182 Application provides sufficient written description support for the challenged claims. See PO Resp. 22–59. Thus, the burden shifted back to GE to prove that the ’182 Application does not support the claims. See Dynamic Drinkware, 800 F.3d at 1380. GE met that burden successfully, as explained below. For a patent to claim priority to the filing date of its provisional application, the written description of the provisional application must be sufficient to support the relevant claims of the patent under 35 U.S.C. § 112. Dynamic Drinkware, 800 F.3d at 1378 (citing New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002)). Sufficient written description support requires providing enough information in the application to indicate to a person of ordinary skill that the inventor had possession of the full scope of the claims. In re Wertheim, 541 F.2d 257, 262–64 (C.C.P.A. 1976). The disclosure need not recite the claimed invention in haec verba, but a disclosure that “merely renders the invention obvious” is insufficient. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc).” slip op. at 16
Patent outcomesUS RE44,644 unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham - General Electric Co. v. University Of Virginia Patent FoundationAll claims unpatentablePTAB · Jun 21, 2017 · IPR2016-00357 · APJ J John Lee · IPR · Final written decision
Claims 75, 76, 78–82, 84–92, 94–96, 107, 111, 139, 140, 157, 158, 169–178, 180–184, 186–194, 196–198, 209, 213, 241, and 254–260 are unpatentable under § 102(b); the remaining challenged claims are unpatentable under § 103(a).
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Applicant-admitted prior artReference not prior artDecided for patent owner
“An inventor’s own work is not prior art under § 102(a). See Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 968 (Fed. Cir. 2014); Katz, 687 F.2d at 454. In determining whether a reference is the work of the named inventor(s), the relevant inquiry is whether the relevant content of the reference—such as “the methods, detailed results, statistical analysis and discussion,” or “the design, trial, and analysis of results”—was solely the work of the inventor(s). See Allergan, 754 F.3d at 969. For example, an article may be solely the work of an inventor if the remaining co-authors were merely students performing tasks under the inventor’s direction and supervision. See Katz, 687 F.2d at 455–56.” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“For a patent to claim priority to the filing date of its provisional application, the written description of the provisional application must be sufficient to support the relevant claims of the patent under 35 U.S.C. § 112. Dynamic Drinkware, 800 F.3d at 1378 (citing New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002)). Sufficient written description support requires providing enough information in the application to indicate to a person of ordinary skill that the inventor had possession of the full scope of the claims. In re Wertheim, 541 F.2d 257, 262–64 (C.C.P.A. 1976). The disclosure need not recite the claimed invention in haec verba, but a disclosure that “merely renders the invention obvious” is insufficient. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc).” slip op. at 18
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner
“For a patent to claim priority to the filing date of its provisional application, the written description of the provisional application must be sufficient to support the relevant claims of the patent under 35 U.S.C. § 112. Dynamic Drinkware, 800 F.3d at 1378 (citing New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002)). Sufficient written description support requires providing enough information in the application to indicate to a person of ordinary skill that the inventor had possession of the full scope of the claims. In re Wertheim, 541 F.2d 257, 262–64 (C.C.P.A. 1976). The disclosure need not recite the claimed invention in haec verba, but a disclosure that “merely renders the invention obvious” is insufficient. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc).” slip op. at 18
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artDecided for petitioner
“For a patent to claim priority to the filing date of its provisional application, the written description of the provisional application must be sufficient to support the relevant claims of the patent under 35 U.S.C. § 112. Dynamic Drinkware, 800 F.3d at 1378 (citing New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002)). Sufficient written description support requires providing enough information in the application to indicate to a person of ordinary skill that the inventor had possession of the full scope of the claims. In re Wertheim, 541 F.2d 257, 262–64 (C.C.P.A. 1976). The disclosure need not recite the claimed invention in haec verba, but a disclosure that “merely renders the invention obvious” is insufficient. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc).” slip op. at 18
Patent outcomesUS RE44,644 unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham - Schott Gemtron Corporation v. SSW Holding Company, Inc.No claims unpatentablePTAB · May 26, 2015 · IPR2014-00367 · APJ Georgianna W Braden · IPR · Final written decision
Petitioner did not prove claims 2–4, 7–10, 14–18, 22, 23, 26, 27, 29, 30, 33–40, 42–45, 48–51, 54–59, 63, and 64 unpatentable under either instituted §103 ground.
RulingsFinal written decision- Obviousness (§103) › Analogous artNon analogous artNot shown unpatentable
“We find that regardless of the construction of the term “spill,” Petitioner has not carried its burden to show that Angros is analogous art, because Petitioner has not shown Angros to be pertinent to the entire problem faced by the inventors of the ’561 patent.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“Furthermore, a patent claim “is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 401. “Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (citing KSR, 550 U.S. at 421). For an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR, 550 U.S. at 419. In that regard, Mr. Schechter, witness for Petitioner, testified that Angros and Picken were known in the art and that one of ordinary skill in the art would have been motivated to combine the teachings of the prior art so as to make a design that (i) was more simple or clean or aesthetically pleasing and (ii) had a less obtrusive hydrophobic barrier. Ex. 1121, 180:12–183:23; Ex. 1109 ¶ 31; Ex. 1010 ¶ 28. He then concluded that one of ordinary skill would know how to substitute the spill-contain border in Angros for the plastic guard in Picken. Ex. 1109 ¶ 36. Mr. Schechter, however, does not explain sufficiently why a person of ordinary skill in the art would look to the field of microscope slides to find a hydrophobic coating to act as a less obtrusive spill containment border in place of the plastic rim in Picken. Mr. Schechter’s testimony is impermissible hindsight; he opined that all of the elements of the claims disparately existed in the prior art, but fails to provide sufficient reason for why one of ordinary skill in the art at the time of filing would have combined these references. See, e.g., InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1348–49 (Fed. Cir. 2014) (holding expert testimony to be impermissible hindsight for failing to explaining what reason or motivation one of ordinary skill in the art at the time of the invention would have had to place the prior art together). In an obviousness determination, we must avoid analyzing the prior art through the prism of hindsight. Instead, we must “cast the mind back to the time the invention was made (often as here many years), to occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then–accepted wisdom in the art.” W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983). Petitioner attempts to imbue one of ordinary skill in the art with knowledge of the claimed invention, when no prior art reference or references of record convey or suggest that knowledge. Rather, Petitioner’s argument that Angros is analogous art and that Angros is combinable with Picken appears to be premised on Petitioner’s knowledge of the ’561 patent disclosure. Petitioner bears the burden of showing by a preponderance of evidence that the asserted prior art references are analogous art and otherwise combinable. On the record before us, we find that Petitioner has not shown that Angros qualifies as prior art under 35 U.S.C. § 103 or that, even if it did, it renders the claims unpatentable in combination with Picken. Therefore, we conclude Petitioner has not demonstrated by a preponderance of evidence that claims 2–4, 7–10, 23, 33–40, 42–45, 48–51, and 64 of the ’561 patent would have been obvious in view of Angros and Picken.” slip op. at 27
- Skill levelSkill level board ownDecided for patent owner
“Based on our review of the ’561 patent, the types of problems and solutions described in the ’561 patent and cited prior art, and the testimony of the parties’ declarants, we conclude that a person of ordinary skill in the art at the time of the claimed invention (i.e., as of June 27, 2008, as discussed above in Section II.C.1) would have had a degree in mechanical engineering or a similar discipline, and at least three years of work experience with refrigerator shelf assemblies. See, e.g., Ex. 1101, 1:16–62 (stating that the ’561 patent relates to “shelving which may be adapted for use with refrigerators,” and describing conventional refrigerator shelf assemblies that use plastic molded parts to encapsulate shelves and silicone sealants to form physical spill containment barriers around the perimeter of the refrigerator shelving); Ex. 1109 ¶¶ 1–3 (describing the background of Mr. Schechter); Ex. 2121 ¶¶ 5–7 (describing the background of Mr. Mills). Given the stated qualifications of Mr. Mills (Ex. 2121 ¶¶ 5–7 and Ex. 1110, 13:9–24:18), Patent Owner’s declarant meets the requirements of this definition. Petitioner’s witness, Mr. Schechter, however, does not qualify as a person of ordinary skill in the art. Although Mr. Schechter now testifies that he has a Master’s of Science degree in Mechanical Engineering and became a Product Development Engineer for Petitioner in December 2010, his prior declaration states that he began in his position in December 2011, compare Ex. 1109 ¶ 1, with IPR2013-00358, Ex. 1010 ¶ 1, thus indicating that Mr. Schechter may have had less than two years of experience when he signed his prior declaration on June 14, 2013, IPR2013-00358, Ex. 1010 ¶ 36.3 Furthermore, Mr. Schechter was not a person of ordinary skill in the art at the time of the invention of the ’561 patent (i.e., June 27, 2008). Indeed, at his deposition, Mr. Schechter testified that he does not qualify as one of ordinary skill in the art under the definition in his declaration. Ex. 1121, 26:2–13. Therefore, for these reasons, we accord the testimony of Mr. Schechter regarding the alleged obviousness of the claims less weight. 3 Petitioner argues that the Board “misapprehended” Mr. Schecter’s qualifications, and “committed four errors” in doing so, in the final written decision in IPR2013-00358. Reply 9–10. These arguments are improper, as they are directed to facts and determinations made in a different proceeding, and a “reply may only respond to arguments raised in the corresponding . . . patent owner response” under 37 C.F.R. § 42.23(b). Regardless, though, we disagree with Petitioner’s assertions for the reasons stated herein.” slip op. at 12
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Given the stated qualifications of Mr. Mills (Ex. 2121 ¶¶ 5–7 and Ex. 1110, 13:9–24:18), Patent Owner’s declarant meets the requirements of this definition. Petitioner’s witness, Mr. Schechter, however, does not qualify as a person of ordinary skill in the art. Although Mr. Schechter now testifies that he has a Master’s of Science degree in Mechanical Engineering and became a Product Development Engineer for Petitioner in December 2010, his prior declaration states that he began in his position in December 2011, compare Ex. 1109 ¶ 1, with IPR2013-00358, Ex. 1010 ¶ 1, thus indicating that Mr. Schechter may have had less than two years of experience when he signed his prior declaration on June 14, 2013, IPR2013-00358, Ex. 1010 ¶ 36.3 Furthermore, Mr. Schechter was not a person of ordinary skill in the art at the time of the invention of the ’561 patent (i.e., June 27, 2008). Indeed, at his deposition, Mr. Schechter testified that he does not qualify as one of ordinary skill in the art under the definition in his declaration. Ex. 1121, 26:2–13. Therefore, for these reasons, we accord the testimony of Mr. Schechter regarding the alleged obviousness of the claims less weight. 3 Petitioner argues that the Board “misapprehended” Mr. Schecter’s qualifications, and “committed four errors” in doing so, in the final written decision in IPR2013-00358. Reply 9–10. These arguments are improper, as they are directed to facts and determinations made in a different proceeding, and a “reply may only respond to arguments raised in the corresponding . . . patent owner response” under 37 C.F.R. § 42.23(b). Regardless, though, we disagree with Petitioner’s assertions for the reasons stated herein.” slip op. at 13
Patent outcomesUS 8,286,561 not shown unpatentable§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 8,286,561 - Schott Gemtron Corporation v. SSW Holding Company, Inc.No claims unpatentablePTAB · Aug 20, 2014 · IPR2013-00358 · APJ Georgianna W Braden · IPR · Final written decision
The Board held claims 1, 13, and 25 not shown unpatentable: Angros was not shown to be analogous art, and the proposed combinations did not establish obviousness.
RulingsFinal written decision- Skill levelSkill level board ownPetitioner expert discountedOther
“Mr. Schechter testified that a person of ordinary skill in the art relevant to the ’561 patent “would have at least a bachelor’s degree in mechanical engineering and at least four years of experience designing and manufacturing shelf assemblies or equivalent education and training.” Ex. 1010 ¶ 4. Patent Owner’s witness, Mr. Richard Bruce Mills, defined a person of ordinary skill in the art relevant to the ’561 patent to be a person with at least an associate’s or bachelor’s degree and three years of experience working with shelf assemblies, and having familiarity with “encapsulated spill containing refrigerator shelves.” Ex. 2022 ¶ 8. Based on our review of the ’561 patent, the types of problems and solutions described in the ’561 patent and cited prior art, and the testimony of the parties’ declarants, we conclude that a person of ordinary skill in the art at the time of the claimed invention (i.e., as of June 27, 2008, as discussed above in Section II.B.3.a.) would have had a degree in mechanical engineering or a similar discipline, and at least three years of work experience with refrigerator shelf assemblies. See, e.g., Ex. 1001, col. 1, ll. 16–62 (stating that the ’561 patent relates to “shelving which may be adapted for use with refrigerators,” and describing conventional refrigerator shelf assemblies that use plastic molded parts to encapsulate shelves and silicone sealants to form physical spill containment barriers around the perimeter of the refrigerator shelving); Ex. 1010 ¶¶ 1–2 (describing the background of Mr. Schechter); Ex. 2022 ¶¶ 3–5 (describing the background of Mr. Mills). We note that under this standard, Petitioner’s witness, Mr. Schechter, does not qualify as a person of ordinary skill in the art. Although Mr. Schechter has a Master’s of Science degree in Mechanical Engineering, he has only worked as an engineer designing and manufacturing shelf assemblies since December 2011. Ex. 1010 ¶¶ 1-2. Thus, Mr. Schechter had less than two years of experience when he signed his declaration on June 14, 2013. Id. ¶ 36. Furthermore, Mr. Schechter was not a person of ordinary skill in the art at the time of the invention of the ’561 patent (i.e., June 27, 2008). Indeed, at his deposition, Mr. Schechter testified that he does not qualify as one of ordinary skill in the art under the definition in his declaration. Ex. 1011, 26:2–13. In this case, we accord the testimony of Mr. Schechter regarding the alleged obviousness of the claims less weight because he was not a person of ordinary skill in the art at the time of the invention disclosed in the ’561 patent.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Petitioner’s position is unpersuasive. Contrary to Petitioner’s characterization, Example 1 in the ’561 patent discloses only a demonstration of water retention by a shelf with a hydrophobic border. See Ex. 1001, col. 20, ll. 1–9. The patent recounts, in Example 1, a test to determine the amount of water retainable on a shelf, within a hydrophobic border, without leakage. Id. Thus, Example 1 does not show that the term “spill” merely means liquid placed on a surface. Therefore, we construe “spill,” in accordance with its plain meaning and consistent with the specification of the ’561 patent, to mean “an accidental or unintentional release of liquid.” See Ex. 2003; Ex. 1001, col. 11, ll. 28–49 (describing Figure 3 as illustrating “the concept that the hydrophobic surface 1030 will form a spill containment barrier,” and using soda can 1026 turned on its side as an example for “spilled liquid”).” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“entions. A As discusse ed in detail l below, we e conclude e that the ’2 273 prov visional app plication, w which is th he earlier fi iled of the two provis sional appl ications, su upports the e claim ele ements reci ited in clai ms 1, 13, a and 25. Ther refore, the ’561 paten nt is entitle ed to the Ju une 27, 200 08 filing da ate of the ’273” slip op. at 12
- Obviousness (§103) › Analogous artNon analogous artNot shown unpatentable
“A reference is considered analogous prior art: (1) if the reference is from the same field of endeavor as the claimed subjected matter, regardless of the problem addressed, or (2) if “the reference still is reasonably pertinent to the particular problem with which the inventor is involved,” even though the reference is not within the field of the inventor’s endeavor. Bigio, 381 F.3d at 1325. The “field of endeavor” test asks if the structure and function of the prior art is such that it would be considered by a person of ordinary skill in the art, because of the similarity to the structure and function of the claimed invention as disclosed in the application. Id. at 1325-27. It is necessary to apply “common sense” in “deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor.” Id. at 1326 (citations and quotation marks omitted). As to the “reasonably pertinent” test: A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem. Thus, the purposes of both the invention and the prior art are important in determining whether the reference is reasonably pertinent to the problem the invention attempts to solve. If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection. An inventor may well have been motivated to consider the reference when making his invention. If it is directed to a different purpose, the inventor would accordingly have had less motivation or occasion to consider it. In re Clay, 966 F.2d at 659.” slip op. at 19
Patent outcomesUS 8,286,561 not shown unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 8,286,561
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.