• Fredman Bros. Furniture Company, Inc. v. Bedgear, LLCAll claims unpatentable
  PTAB · Jun 12, 2018 · IPR2017-00352 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–6, 8–13, 15–18, and 20–24 are unpatentable: Rasmussen anticipates claims 1, 4–6, 8, 11, 13, 17, 18, 22, and 23; the remaining challenged claims are obvious over the stated combinations.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for patent owner

    “construction’ as used herein refers to a construction having overall porosity greater than the inherent porosity of the constituent material or inherently having high porosity.” Ex. 1049, 1:37–40. Based on the full record, we agree with parties that “open cell construction” is defined in the specification, and we interpret it in accordance with that definition to mean “a construction having overall porosity greater than the inherent porosity of the constituent material or inherently having high porosity.” See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (“Although an inventor is indeed free to define the specific terms used to describe his or her invention, this must be done with reasonable clarity, deliberateness, and precision.”).” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “various prior art approaches employed, the types of problems encountered in the art, the rapidity with which innovations are made, the sophistication of the technology involved, and the educational background of those actively working in the field.” Jacobson Bros., Inc. v. U.S., 512 F.2d 1065, 1071 (Ct. Cl. 1975); see also Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983) (quoting with approval Jacobson Bros.). We find, based on our review of the record before us, that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the record’s indication of “the various prior art approaches employed, the types of problems encountered in the art, the rapidity with which innovations are made, the sophistication of the technology involved, and the educational background of those actively working in the field.” See, e.g., Pet. 7–12 (“Technology Background”); PO Resp. 3–4 (“Background of the Relevant Technology at the Time of the ’134 Patent”); Ex. 1006 ¶¶ 2–4; Ex. 1008; Ex. 1012 ¶¶ 3–6; Ex. 1044; Ex. 2001 ¶¶ 36–54. We resolve any differences in favor of including “several years of industry experience in applying the moisture and heat transfer properties of materials” as part of “at least one year of experience in the design of pillows and other sleep-related textile products” of a person holding a “bachelor’s degree in textile science, textile engineering, or a similar field.” See Rhodes Decl. ¶ 5 (“I am also an adjunct professor . . . teaching . . . an entry level course for textile and fashion majors.”), ¶ 6 (“I received a Bachelor of Science degree in Textile Design.”), ¶ 70 (“I met at least these minimum qualifications to be a person having ordinary skill in the art at the time of the claimed invention.”); Ex. 1062 ¶ 4 (“I teach concepts relating to moisture and heat transfer in my textile curriculum in my academic role as a professor”). Therefore, we apply Petitioner’s definition, quoted above, in our analysis of the challenges under 35 U.S.C. § 103(a). Pet. 15–16.” slip op. at 58

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Based on the full record, Petitioner sufficiently shows that Rasmussen’s “highly porous” “3D textile material” discloses the open cell construction of claim 1. Also, even if Rasmussen uses the “3D textile” broadly, the full record persuades us that Rasmussen discloses the limitations of claim 1. PO Resp. 4, 12–28; Rhodes Decl. ¶ 117; Ex. 1006 ¶ 29; Ex. 1007 ¶ 25; Parachuru Decl. ¶ 93. Also, our interpretation of the limitations of claim 1 does not require modifying or transforming a constituent base material. Patent Owner also responds that “Petitioner never even argues that the ‘interlaced,’ ‘spaced-apart,’ or ‘mesh’ strand structures are inherent from Rasmussen’s disclosure of 3-D textiles.” PO Resp. 55. Patent Owner states that “both parties’ experts acknowledge that 3D textiles, as well as highly porous 3D textiles, can have multiple possible configurations other than the ones recited in the claims,” and thus, Rasmussen does not disclose inherently the claimed structures. Id. at 55–57 (citing Parachuru Decl. ¶¶ 67–73, 92– 94, 158–160, 168–169; Ex. 2016, 15:23–16:7, 31:21–32:6, 36:3–7, 36:14– 18, 37:7–21, 49:4–12, 50:15–51:12, 52:19–53:3, 123:7–23, 135:23–136:24). The record, however, indicates that “highly porous” “3D textile material” has “interlaced strands or spaced-apart strands,” as argued by Petitioner and as required by claim 1. For the above reasons, Petitioner persuades us by a preponderance of the evidence that Rasmussen anticipates claim 1 based on disclosures related to its core.” slip op. at 30

  Patent outcomesUS 8,646,134 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,646,134
• Fredman Bros. Furniture Company, Inc. v. Bedgear, LLCAll claims unpatentable
  PTAB · Jun 12, 2018 · IPR2017-00351 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–10, 12–15, and 17–20 are unpatentable: Rasmussen anticipates the challenged claims, and Rasmussen combined with Doak, Mason, or Burton renders claims 5, 6, 12, and 19 obvious.

  RulingsFinal written decision

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

    “We agree with Patent Owner’s statement that the claim language “does not address (i.e., require or restrict) air entering through a structure other than a panel (e.g., a gusset) nor does it address any such air exiting the pillow in a particular manner (e.g., through a panel, gusset, or other structure).” See PO Resp. 47. The claim language requires “at least some air which enters through the panels” exits through the gusset alone or in combination with another structure. See id. The portions of the specification cited by Patent Owner support its above-quoted statement because the cited portions describe that the pillow allows lateral ventilation, gusset 20 provides venting, gusset 20 permits air exchange, and the panels can be made of open cell construction. See PO Resp. 48–49; Ex. 1047, 1:37–40, 2:12–15, 4:34–36, 4:56–58. Further interpretation is not required for determining whether Petitioner shows by a preponderance of the evidence the unpatentability of claim 1. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (construing explicitly only those claim terms in controversy and only to the extent necessary to resolve the controversy).” slip op. at 8

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

    “The specification of the ’883 patent states that an “‘open cell construction’ as used herein refers to a construction having overall porosity greater than the inherent porosity of the constituent material or inherently having high porosity.” Ex. 1047, 1:44–47. Based on the full record, we agree with parties that “open cell construction” is defined in the specification, and we interpret it in accordance with that definition to mean “a construction having overall porosity greater than the inherent porosity of the constituent material or inherently having high porosity.” See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (“Although an inventor is indeed free to define the specific terms used to describe his or her invention, this must be done with reasonable clarity, deliberateness, and precision.”).” slip op. at 9

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

    “Based on the full record, we concur with the parties that an express interpretation for “gusset” is not necessary for determining whether Petitioner has demonstrated by a preponderance of the evidence that the challenge claims are unpatentable. See Vivid Techs., 200 F.3d at 803. We also determine that express interpretation of any other claim term is not necessary. See id.” slip op. at 15

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner

    “Petitioner also argues that the claims of the ’883 patent are not entitled to a priority date before June 22, 2012. Pet. 24. Petitioner argues that Rasmussen (Ex. 1006) is § 102(b) prior art, if the challenged claims are entitled only to a priority date of June 22, 2012. Petitioner alternatively argues that a provisional application (Ex. 1007, to which Rasmussen claims priority, see Ex. 1006, [30]) is § 102(e) prior art, if the challenged claims are entitled to the earlier priority date of June 22, 2011. Pet. 24. Petitioner, thus, provides parallel citations to Rasmussen and the provisional application, which Petitioner asserts is identical to Rasmussen. Pet. 24 n.1; Ex. 1057 (comparison of Rasmussen and its provisional). As discussed below, the full record persuades us that Petitioner has proven by a preponderance of the evidence that claims 1–4, 7–10, 13–15, 17, 18, and 20 are anticipated by Rasmussen under 35 U.S.C. § 102(b) or § 102(e).” slip op. at 16

  Patent outcomesUS 9,015,883 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,015,883
• Fredman Bros. Furniture Company, Inc. v. Bedgear, LLCSome claims unpatentable
  PTAB · Jun 12, 2018 · IPR2017-00350 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–11, 13, 15–22, 24, 25, and 27–34 are unpatentable; claim 23 was not shown unpatentable, because the Rasmussen anticipation challenge failed.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “Accordingly, Petitioner has not persuaded us that claim 23 is” slip op. at 62

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

    “Accordingly, Petitioner has not persuaded us that claim 23 is” slip op. at 62

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable

  Patent outcomesUS 8,887,332 mixed
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,887,332
• Campbell Soup Company / Campbell Sales Company et al. v. Gamon Plus, Inc.All claims unpatentable
  PTAB · Mar 27, 2018 · IPR2017-00096 · APJ Robert L Kinder · IPR · Final written decision

  The sole claim is unpatentable under § 102 over Pendergrast and under § 103 over Pendergrast alone or with Knott.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Manufacturing, L.L.C. (collectively, “Petitioner”) filed a Petition to institute an inter partes review of the claim for “[t]he ornamental design for a gravity feed dispenser display” in U.S. Patent No. D595,074 (“the ’074 patent”). Paper 2 (“Pet.”). Gamon Plus, Inc. (“Gamon” or “Patent Owner”) did not file a Preliminary Response to the Petition. Applying the standard set forth in 35 U.S.C. § 314(a), we instituted an inter partes review of the challenged claim. Paper 9 (“Dec.”).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “[A] design[er] of ordinary skill in the field of the ’074 Patent would have been a person with a background or familiarity with commercial dispensers, and particularly dispensers for consumer commodities such as cans, bottles, or small packaged items. . . . The designer of ordinary skill would also have a basic understanding of physics and or mechanics, which may include practical experience in the field of studying consumer commodity dispensers, or may include high school or introductory college level physics coursework. The designer of ordinary skill would also have a basic understanding of the dimensions and functions afforded to cans and bottles in the context of packaging. Ex. 1002 ¶¶ 21, 22. We agree with Mr. Gandy’s undisputed testimony as to the designer of ordinary skill based on the final trial record.” slip op. at 10

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

    “Based on these contentions, Petitioner proposes the broadest reasonable construction of the ’074 patent claim is “the ornamental design of either two or three adjacent cylindrical objects in a gravity feed dispenser display, each cylindrical object comprising a smooth curved surface with planar ends, as shown in the drawings of the ’074 Patent.” Pet. 26 (emphasis omitted). Based on the undisputed arguments above, and considering the relationship of the prior art to the claimed design, we find it helpful to describe verbally certain features of the claim for purposes of this Decision. See Egyptian Goddess, 543 F.3d at 680. We interpret the scope of the claimed design based on the unique or distinctive shape or appearance of the cylindrical objects that is not dictated by function. Based on the final record before us, we find persuasive Petitioner’s contention that the specific arrangement of the cylindrical objects is dictated primarily by function. The precise placement of cylindrical objects is controlled by the use of the gravity feed dispenser and the natural resting position of one cylindrical object on two others. See, e.g., Ex. 1001, Fig. 4. Our invalidity analysis below focuses on what the claimed cylindrical objects contribute to the design’s overall ornamentation. See Richardson, 597 F.3d at 1293–94 (factoring out purely functional aspects of a design patent from an obviousness analysis). Neither party has indicated that our claim interpretation from the Decision to Institute (Dec. 3–8) is improper and we do not perceive any reason or evidence that recommends any deviation from our initial construction. We therefore convey the scope of the claim of the ’074 patent as: “the ornamental design of a gravity feed dispenser display depicting either two or three adjacent cylindrical objects, each cylindrical object comprising a smooth curved surface with planar ends, as shown in the drawings of the ’074 patent.” See Dec. 8.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Based on the record before us, Petitioner has established persuasively that both embodiments of the ’074 patent design and the design of Pendergrast are substantially the same under the ordinary observer analysis. Both designs are for a gravity feed dispenser display. Petitioner establishes that the ornamental design of the cans of Pendergrast are substantially identical to the ’074 patent cylindrical objects, with each having a smooth curved surface with planar ends. See Ex. 1003, Fig. 1, 3; Ex. 1002 ¶¶ 42–47. Further, although not required under our claim construction, the placement and positioning of Pendergrast’s cylindrical objects are also substantially the same as that of the ’074 patent. See Ex. 1002 ¶ 46. Accordingly, based on the final record before us, Petitioner has established by a preponderance of the evidence that Pendergrast anticipates the claim of the ’074 patent.” slip op. at 14

  Patent outcomesUS D595,074 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
• Askeladden LLC v. Purple Leaf, LLCAll claims unpatentable
  PTAB · Feb 13, 2018 · IPR2016-01722 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–11 are unpatentable as obvious over four combinations; claims 12–17 are unpatentable as anticipated by Hughes.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Because it is consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 6

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

    “II. CLAIM CONSTRUCTION Neither party proposes that we expressly construe any claim terms, and we determine that none of the claims terms require an express construction to resolve the issues before us. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 5

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

    “It would have been obvious to a person of ordinary skill in the art to combine the disclosures of Carlson and Stilp because Carlson discloses “transferring data . . . via [a] cellular network.” (Ex. 1003, 4:62–64.) As such, Carlson expressly discloses the combination of its payment system with conventional cellular systems, which are described by Stilp. Moreover, Stilp discloses a registration procedure that allows cellular devices to discover each other’s presence. (Ex. 1005, 2:46–64.) It would have been obvious for one skilled in the art to modify the payment processing network (310) or access device (e.g., a POS terminal) (Ex. 1003, 4:61–61[2]) of Carlson to include the process of searching for available wireless devices in a manner similar to the cellular telephone discovery and registration process disclosed by Stilp to enable the Carlson payment processing network or access device to discover mobile phone devices (such as mobile phone 304) to participate in a mobile payment system, as disclosed in Carlson. A person of ordinary skill in the art therefore would have combined Carlson and Stilp to make the” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Anticipation by Hughes A prior art reference anticipates a patent claim if it “discloses each and every element of the claimed invention arranged or combined in the same way as in the claim.” Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336, 1342–43 (Fed. Cir. 2018) (internal quotation and citation omitted). Petitioner contends that Hughes discloses each and every element of claims 12–17. Pet. 23–31.” slip op. at 11

  Patent outcomesUS 8,744,963 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,744,963
• Askeladden LLC v. Purple Leaf, LLCAll claims unpatentable
  PTAB · Feb 13, 2018 · IPR2016-01721 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–11 are unpatentable: claims 10–11 anticipated by Sirbu; claims 1–9 obvious over the specified combinations of Sirbu with Hughes and additional references.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “December 14, 1999, would have had either: “(i) a Bachelor-of-Science degree in Computer Science, Electrical Engineering, or Computer Engineering, or equivalent, and two (2) years of prior experience in software development, or (ii) a post-graduate degree in Computer Science, Electrical Engineering, or Computer Engineering, or equivalent.” Pet. 6 (citing Ex. 1502 ¶¶ 22–26). Because it is consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 7

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

    “construed according to their broadest reasonable interpretation in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). There is a presumption that claim terms are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art in the context of the specification. See In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Nonetheless, if the specification “reveal[s] a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess[,] . . . the inventor’s lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). Another exception to the general rule that claims are given their ordinary and customary meaning is “when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Uship Intellectual Props., LLC v. United States, 714 F.3d 1311, 1313 (Fed. Cir. 2013) (quoting Thorner v. Sony Computer Entm’t Am., LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Although Petitioner proposes that we construe the term “receipt” (Pet. 6), we determine that no express construction is necessary for purposes of this Decision and decline to expressly construe the term. See Vivid Techs., 200 F.3d at 803 (only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy).” slip op. at 6

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Anticipation by Sirbu A prior art reference anticipates a patent claim if it “discloses each and every element of the claimed invention arranged or combined in the same way as in the claim.” Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336, 1342–43 (Fed. Cir. 2018) (internal quotation and citation omitted). Petitioner contends that Sirbu discloses each and every element of claims 10 and 11. Pet. 6–12.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “Additionally, Petitioner asserts: One of ordinary skill in the art plainly would have recognized to include built-in cellular telephone functionality in a customer terminal for performing payment transactions, as taught in Hughes, in the customer computer 10 of Sirbu, as doing so would “provide[] portability for the terminal” (Ex. 1506, 11:1–4) by eliminating the necessity of a wired terminal connection. Indeed, Hughes recognizes that by including built-in cellular telephone functionality, the terminal becomes “more portable than” an alternative without such functionality (Ex. 1506, 10:64–67). One of ordinary skill in the art would plainly have recognized the benefits of including cellular connectivity in Sirbu’s customer computer, as doing so would have permitted the user to perform Sirbu’s purchase transactions without being tethered to a wired data connection. Pet. 13 (alteration by Petitioner) (citing Ex. 1502 ¶ 86). We have reviewed Petitioner’s arguments and evidence, and we find that a preponderance of the evidence supports Petitioner’s arguments. We hereby adopt Petitioner’s position on the facts as our own, including Petitioner’s citations to the evidence of record as reflected in pages 12–20 of the Petition. Accordingly, Petitioner has demonstrated by a preponderance of the evidence that the combination of Sirbu and Hughes would have rendered the subject matter of claims 1, 3, and 6–9 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 10

  Patent outcomesUS 8,527,407 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,527,407
• Askeladden LLC v. Purple Leaf, LLCAll claims unpatentable
  PTAB · Feb 13, 2018 · IPR2016-01720 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1, 3, and 6–9 are unpatentable as anticipated by Takayama; claims 2, 4, 5, 10, and 11 are unpatentable as obvious over the stated combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Because it is consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Anticipation by Takayama A prior art reference anticipates a patent claim if it “discloses each and every element of the claimed invention arranged or combined in the same way as in the claim.” Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336, 1342–43 (Fed. Cir. 2018) (internal quotation and citation omitted). Petitioner contends that Takayama discloses each and every element of claims 1, 3, and 6–9. Pet. 7–25.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “reference, including a claim chart and detailed discussion explaining how the references meet each limitation of the challenged claims. Pet. 25–41. In particular, Petitioner relies upon Rolf as teaching the following step of claim 10: “presenting the receipt to the payee without revealing at least part of said structured remittance data.” Ex. 1001, 20:43–44; Pet. 25–28, 34. Additionally, Petitioner asserts: One of ordinary skill in the art plainly would have recognized to modify Takayama such that the merchant terminal displays (i.e., presents), instead of or in addition to the clearing completion notification 8418, the receipt message 8419 (which contains the receipt 13708) on the merchant terminal LCD, based on the teachings of Rolf, as doing so would have provided the payee with additional information “relating to the sale just made”, as taught by Rolf (Ex. 1004, 6:7–14). Indeed Takayama already discloses that the displayed information on the merchant terminal is used “to notify the operator (merchant) that the settlement process has been completed” (Ex. 1003, ¶ 813), and by further displaying the information contained within the receipt message 8419 (such as the clearing number 13703 and transaction number 13704), the payee could have had immediate access to such transaction information for additional verification or review.” slip op. at 11

  Patent outcomesUS 8,527,407 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,527,407
• Baker Hughes Oilfield Operations, Inc. v. Smith International, Inc.No claims unpatentable
  PTAB · Feb 2, 2018 · IPR2016-01452 · APJ James A Tartal · IPR · Final written decision

  Claims 22, 27, 46–52, 54, and 55 were not shown unpatentable over Myers, Myers and Bostock, or Anderson because the references did not disclose the claimed fluid-flow limitations.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “to determine whether it further supports the contention that Myers discloses the “flowing a fluid” step. Mr. Shale’s declaration discusses the operation of Myers in a manner that is virtually identical in substance to the content of the Petition. Compare Ex. 1010 ¶¶ 49–53, with Pet. 21–24. Mr. Shale does not address directly the “flowing a fluid” step or otherwise explain how Myers discloses “flowing a fluid though an axial flowbore extending through the downhole tool.”7 Accordingly, we find Mr. Shale’s declaration fails to provide persuasive support for Petitioner’s contention that Myers discloses “flowing a fluid though an axial flowbore extending through the downhole tool while preventing the fluid from communicating with a different flowpath of the downhole tool,” as required by claim 22, beyond what Myers, itself, discloses.” slip op. at 17

  • BurdenNot shown unpatentable

    “Ex. 1021, 75:25 – 76:7. Mr. Underwood’s testimony does not support Petitioner’s contention that Myers discloses the “flowing a fluid” step. Mr. Underwood was asked whether there is “a fluid flowing within the Myers tool,” not whether Myers discloses “flowing a fluid though an axial flowbore extending through the downhole tool,” as required by claim 22. Id. Moreover, Mr. Underwood testified that “fluid doesn’t flow through the tool,” but rather just flows “into the tool.” Id. (emphases added)” slip op. at 20

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

    “claims 22, 27, 46, 47, 50–52, 54, and 55 of the ’099 patent. Inst. Dec. 22; see also Pet. 21–29. Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). Specifically, “[f]or a claim to be anticipated, each claim element must be disclosed, either expressly or inherently, in a single prior art reference, and the claimed arrangement or combination of those elements must also be disclosed, either expressly or inherently, in that same prior art reference.” Id. at 1332–33. Inherent disclosure is established where the reference “must necessarily include the unstated limitation.” Id. (emphasis omitted); see Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991) (holding that inherency can be established by extrinsic evidence that “make[s] clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill”).” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “C. ASSERTED OBVIOUSNESS OVER MYERS AND BOSTOCK Petitioner contends claim 22, and claims 48 and 49, which depend from claim 22, would have been obvious over Myers and Bostock. Pet. 29– 32. With regard to the “flowing a fluid” step of claim 22, Petitioner relies only on the contentions it set forth under its anticipation analysis with respect to claim 22. Pet. 31. Because Petitioner does not rely on Bostock to teach the recited “flowing a fluid” step, does not argue the step would have been obvious over the combination, and, for the reasons provided above, has not shown by a preponderance of the evidence that Myers discloses the step, Petitioner has not shown by a preponderance of the evidence that claims 22, 48, and 49 would have been obvious over Myers and Bostock.” slip op. at 25

  Patent outcomesUS 7,314,099 not shown unpatentable
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 7,314,099
• Baker Hughes Oilfield Operations, Inc. v. Smith International, Inc.No claims unpatentable
  PTAB · Feb 1, 2018 · IPR2016-01440 · APJ James A Tartal · IPR · Final written decision

  Claims 1, 2, 4–20, and 28–42 were not shown unpatentable because Myers did not establish axial translation, and Myers with Bostock did not cure that deficiency.

  RulingsFinal written decision

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

    “radially” in the Petition. In its Reply, Petitioner equates “radially” to “outwardly” and “axially” to “downwardly.” Pet. Reply 7. Patent Owner contends that “axially and radially” would have been understood by a person of ordinary skill in the art “to refer to movement relative the body and oriented relative to the axis of the body.” PO Resp. 19 (citing Ex. 2018 ¶ 82). In particular, Patent Owner contends that “axial” refers to “movement along or parallel to the axis of the body, and that “radial” refers to “the direction perpendicular to the axis of the body.” PO Resp. 20. Patent Owner contends its interpretation is consistent with the Specification of the ’099 patent and is supported by both its expert, Mr. Underwood, and Petitioner’s expert, Mr. Shale. Id. at 18–21 (citations omitted). For example, Mr. Shale testified that “‘[r]adially’ basically means left to right within the tubular body,” and “‘axially’ means up and down within the tubular body.” Ex. 2021, 189:5–7. Patent Owner further notes that Figures 4, 5, 11, and 12 of the ’099 patent illustrate arms 520 moving axially and radially relative to body 510. PO Resp. 20. In its Reply, Petitioner argues that “[c]ontrary to Patent Owner’s assertion, claim 1 of the ’099 [p]atent does not require that the body 10 be the frame of reference for the axial and radial movement.” Pet. Reply 13 n.3. Petitioner, however, cites no persuasive evidence to counter Patent Owner’s proposed construction. Contrary to Petitioner’s assertion, Mr. Shale agreed that “radially” corresponds to “outward from the body,” and that “axially” corresponds to “up and down of the body.” Ex. 2021 190:4–19. Consistent with Mr. Shale’s testimony, Petitioner’s analysis purports to show that Myers discloses movement of moveable arms (slips 30) “both axially and radially relative to the body 10 [of Myers].” Pet. 19– 20. Petitioner is not alleging movement of the slips of Myers relative to a feature other than the body of Myers or in some other frame of reference. See Tr. 10:1–21. Thus, based on the evidence discussed above, we determine “translates axially and radially,” as recited in claim 1, means “moves parallel to and perpendicular to the body” and does not encompass movement consisting of only rotation about a pivot point. slip op. at 9

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

    “The steps discussed above address how slips 30 of Myers are deployed, but do not explain expressly whether slips 30 move axially relative to body 10 during deployment. With regard to the slips, Myers further provides that: [Slips 30] are positively movable laterally relative to the expander upon relative longitudinal movement between the expander and slips by inclined spline connections between the slips and expander, provided by oppositely directed side tongues 32 on each slip sliding in companion grooves 33 in the expander on opposite sides of slots 34 in the expander in which the slips are disposed. The lower ends of the slips 30 are coupled for movement longitudinally with one another by being connected to a slip ring 35 having generally T-shaped slots 36 therein receiving companion T-shaped heads 37 on the lower portions of the slips. Thus, the slips 30 move longitudinally jointly with the slip ring 35, although they are still permitted to move radially or laterally inwardly and outwardly of the slip ring, upon relative longitudinal movement between the slips 30 and expander 26. Ex. 1004, 3:2–17. In this passage, the movement of the slips includes “longitudinal movement,” which we understand generally corresponds to a vertical direction, as opposed to lateral movement in a horizontal direction. However, the movement is described relative to expander 26, not relative to body 10. See Pet. 13 (using “lateral” consistent with the horizontal extent and “longitudinal” consistent with the vertical extent). Thus, this passage also does not explain expressly whether slips 30 move axially relative to the body during deployment.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “C. ASSERTED OBVIOUSNESS OVER MYERS AND BOSTOCK Petitioner contends claims 4, 33, and 34, each of which depends from claim 1, would have been obvious over Myers and Bostock. Pet. 24–26. According to Petitioner, “[e]ach of claims 4, 33, and 34 recites biasing either a sleeve or a movable arm to a collapsed position.” Id. at 24. Petitioner relies on Bostock as disclosing a spring for biasing. Id. As to the limitations of claim 1 from which claims 4, 33, and 34 depend, including the requirement of “one moveable arm translates axially and radially,” Petitioner relies only on the contentions it set forth under its anticipation analysis with respect to claim 1. Because Petitioner does not rely on Bostock to teach the recited feature “one moveable arm translates axially and radially,” does not argue the feature would have been obvious over the combination, and, for the reasons provided above, has not shown by a preponderance of the evidence that Myers teaches the feature, Petitioner has not shown by a preponderance of the evidence that claims 4, 33, and 34 of the ’099 patent would have been obvious over Myers and Bostock.” slip op. at 25

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Mr. Shale expresses the opinion that “slips 30 move both axially and radially relative to the body 10, along ‘generally T-shaped slots 36’ that are linear and angled relative to the axial direction,” we find that testimony to be conclusory and entitled to little weight, in part because this testimony does not account for the upward movement of setting sleeve 40. See Ex. 1010 ¶ 53 (quoting Ex. 1004, 3:11); see also In re Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Accordingly, we find Mr. Shale’s declaration fails to provide persuasive support for Petitioner’s contention that Myers discloses “one moveable arm translates axially and radially,” as required by claim 1, beyond what Myers, itself, discloses. We find more persuasive Mr. Underwood’s testimony, on behalf of Patent Owner, that Myers fails to disclose axial movement of slips 30. Ex. 2018 ¶¶ 90–107. According to Mr. Underwood: slots [36 of Myers] are shown as angled relative to the slip ring 35. However, though the slips may move downward (axially) relative to the slip ring 35 as the slips move outward (radially), the slip ring 35 at the same time moves upward (axially) relative to the body. As such, the angle of the slots 36 within the slip ring 35 is not, itself, indicative of the overall movement of the slips. Id. ¶ 91. Mr. Underwood further reasons that “as the slip ring moves upwardly, the movement of the slips relative to the body in the axial direction is zero due to the slips sliding downward in the slots 36 relative to the slip ring 35 in equal proportion.” Id. ¶ 94. Mr. Underwood also” slip op. at 20

  Patent outcomesUS 7,314,099 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 7,314,099
• Department Of Justice v. Discovery Patents, LLCSome claims unpatentable
  PTAB · Nov 9, 2017 · IPR2016-01041 · APJ Matthew R Clements · IPR · Final written decision

  Claims 11, 12, 14, 16–18, and 20–31 are unpatentable over Monroe ’183; claims 15 and 19 were not shown unpatentable over Monroe ’183.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “A petition for inter partes review may be considered only if, inter alia, “the petition identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). The Office Patent Trial Practice Guide provides guidance regarding factors to consider in determining whether a party is a real party in interest. 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Considerations may include whether a non-party “funds and directs and controls” an IPR petition or proceeding. Id. at 48,760. Additional relevant factors include: the non-party’s relationship with the petitioner; the non-party’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition. Id. Whether a party who is not a named participant in a given proceeding is a real party in interest to that proceeding “is a highly fact-dependent question.” Id. at 48,759. There is no “bright line test.” Id. Courts invoke the term real party in interest to describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion. Id. A non-party’s participation with a petitioner may be overt or covert, and the evidence may be direct or circumstantial, but the evidence as a whole must show that the non-party possessed effective control over the petitioner relating to the inter partes review. Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp., Case IPR2013-00609, slip op. at 10 (PTAB Mar. 20, 2014) (Paper 15). We have considered Patent Owner’s and Petitioner’s arguments and evidence, and we determine that Petitioner was not required to identify the Third Parties as real parties in interest because there is insufficient evidence that any of these companies exercised, or could exercise, control over Petitioner with respect to this proceeding. Patent Owner’s arguments regarding the motion practice before the Court of Federal Claims and notification of that action to the Third Parties does not reflect otherwise. Although we acknowledge that the existence of the above-identified indemnification clauses supports Patent Owner’s argument, we are unaware of any inter partes review decision in which a real party in interest finding was based solely on evidence of an indemnification clause, and we decline to do so here.” slip op. at 7

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “We decline to consider Patent Owner’s constitutional challenge as, generally, “administrative agencies do not have jurisdiction to decide the constitutionality of congressional enactments.” See Riggin v. Office of Senate Fair Employment Practices, 61 F.3d 1563, 1569 (Fed. Cir. 1995); see also Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1710 (TTAB 1999) (“[T]he Board has no authority . . . to declare provisions of the Trademark Act unconstitutional.”); Amanda Blackhorse v. Pro-Football, Inc., 111 USPQ2d 1080 (TTAB 2014), rev’d on other grounds, 284 F. Supp. 2d 96 (D.D.C. 2003); but see Am. Express Co. v. Lunenfeld, Case CBM2014- 00050, slip op. at 9–10 (PTAB May 22, 2015) (Paper 51) (“for the reasons articulated in Patlex [Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985)], we conclude that covered business method patent reviews, like reexamination proceedings, comply with the Seventh Amendment”).” slip op. at 8

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

    “We agree with Petitioner. The ’980 patent states that “the term ‘secured location’ may refer to residences, commercial properties, public venues, such as hospitals and sports arenas, government facilities, military installations and any other location, outside or inside, which is protected by a security alarm system.” Ex. 1003, 3:20–24. This definition is non-limiting and does not exclude a changeable area or region. Based on the record developed during this proceeding, we maintain that the broadest reasonable construction in light of the ’980 patent of “secured location” is “any location, outside or inside, which is protected by a security alarm system.”” slip op. at 10

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

    “We agree with Petitioner. Although the Specification of the ’980 patent gives examples of “response agency,” e.g., Ex. 1003, 1:41–43 (“an emergency response agency (e.g., the police department, the fire department or an emergency medical team)”), Patent Owner does not identify, and we do not find, a definition in the specification limiting “response agency” to 911, police, or fire departments. Patent Owner also does not identify, and we do not find, anything in the entire disclosure of the ’980 patent requiring a “response agency” to be distinct from the “surveillance system infrastructure.” Accordingly, we decline to limit “response agency” to 911, police, or fire departments, or construe it to be distinct from surveillance system infrastructure.” slip op. at 11

  Patent outcomesUS 7,323,980 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,323,980

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.