• Asetek Danmark A/S v. Coolit Systems, Inc.Some claims unpatentable
  PTAB · Oct 12, 2021 · IPR2020-00825 · APJ Scott C Moore · IPR · Final written decision

  Claims 1, 2, 4, 5, and 9 are unpatentable over Bezama or Bezama and Chiang; claims 13–15 were not shown unpatentable over Kang or Anderson.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “the 2007 Provisional describes the material of which plate 240 is made, much less indicates that the inventor had possession of an invention including a manifold body (i.e., plate 240) defining a pair of compliant surfaces. See generally Ex. 1005.” slip op. at 24

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

    “Bezama discloses all limitations of claims 1 and 9. See Pet. 23–39; Ex. 1003 ¶¶ 65–86. Patent Owner’s attempt to disqualify Bezama as prior art fails because claims 1 and 9 are not entitled to a priority date earlier than July 27, 2011. See supra § II.E. On this record, and considering all of the evidence and arguments put forth by the parties, we find that Petitioner has shown by a preponderance of the evidence that claims 1 and 9 are unpatentable as anticipated by Bezama. G.” slip op. at 31

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

    “teach or suggest each limitation recited in claims 2, 4, and 5, and these contentions are supported by testimony from Dr. Tilton. See Pet. 54–66; Ex. 1003 ¶¶ 114–137. Petitioner additionally identifies rationales for why a person of ordinary skill in the art would have had reason to combine the teachings of Bezama and Chiang to arrive at the inventions recited in those claims. See id.” slip op. at 31

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “bifurcated flow limitation of claim 13. Resp. 46–52. In particular, Patent Owner asserts, with support from Dr. Pokharna, that the fluid entering any of Kang’s inlet channels 44 would mix with fluid from adjacent inlet channels, and that the bulk of the fluid from any inlet channel would exit through adjacent outlet channels, rather than traveling to the outer-most outlet channels as Petitioner suggests. Id. at 47–48; Ex. 2038 ¶¶ 105–114. Patent Owner’s argument is persuasive and supported by well-reasoned testimony from Dr. Pokharna. For example, Dr. Pokharna correctly points out that Dr. Tilton has admitted that microchannels have high flow resistance. Ex. 2038 ¶ 112 (citing Ex. 1003 ¶ 158). We agree with Dr. Pokharna that because of this high flow resistance, fluid entering a microchannel through any inlet channel 44 would tend to exit through the path of least resistance (i.e., the nearest outlet channel 47) rather than traveling to each end of the microchannel and exiting through the most distant outlets. See id. ¶ 112. contention that in Kang that the bulk of any fluid entering a microchannel would exit through the closest outlet channel 47. See Reply 17–18. Instead, Petitioner contends that at least some portion of the fluid will reach each end of the microchannel. See id. This argument is not persuasive because claim 13 recites that the flow that enters each channel through the one aperture “bifurcates into two sub flows,” and requires that each of the recited outlet regions receives “one of the two sub flows” or “the other of the two sub flows.” This claim language is not satisfied by an outlet region that receives only a portion of one of the two recited sub flows. Claim 13 requires that each outlet region receive one of the same two sub flows that originally entered the microchannel. See also Ex. 2038 ¶ 108. Petitioner neither proposes a claim construction that would encompass such an embodiment, nor offers any persuasive evidence that a POSITA would read claim 13 to encompass such an embodiment. Accordingly, on this record, we are not persuaded by a preponderance of the evidence that Kang teaches or suggests a flow of heat exchange fluid that is bifurcated into two sub flows within each of the microchannels, wherein each of these two sub flows is received by one of the two outlet regions adjacent to the opposing ends of the microchannels, in the manner required by claim 13.” slip op. at 36

  Patent outcomesUS 10,274,266 mixed
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,274,266
• LKQ Corporation / Keystone Automotive Industries, Inc. v. GM Global Technology Operations LLCNo claims unpatentable
  PTAB · Oct 8, 2021 · PGR2020-00054 · APJ Robert L Kinder · PGR · Final written decision

  The sole claim was not shown unpatentable: it is definite, and neither asserted obviousness combination renders the design unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. The Designer of Ordinary Skill in the Art (“DOSA”) LKQ contends that: a designer of ordinary skill would be an individual who has at least an undergraduate degree in transportation or automotive design experience in the field of transportation design, or someone who has several years’ work experience in transportation or automotive design. Pet. 51 (citing Ex. 1003 ¶ 42; Ex. 1004 ¶ 41). Based on the final record, which includes testimony by LKQ’s witnesses, we adopt LKQ’s proposed definition of the ordinary designer.” slip op. at 19

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Based on the final record, the purported issues related to a double line on the convex crease and the length of the single line do not create internally inconsistent drawings that would preclude the overall understanding of the drawing as a whole. We have considered the testimony of each witness and we find Mr. Peters’ explanation most convincing that “the claimed design describes the convex band consistently because each of the figures presents at least one of the ways that a convex band can be represented. . . . Figure 1 illustrates the two intersecting lines of the convex band, while Figures 2-4 illustrate the single max height line of the convex band.” Ex. 2004 ¶ 58. Thus, we agree with GM that these figures are not inconsistent, but rather complementary because both connecting lines (as shown in Figure 1) and the max height line (as shown in Figure 2) are accurate depictions of the convex band of the claimed design. Further, GM has presented persuasive evidence that the varied length of the line between figures is also understandable depending on the point of reference of a particular figure. Ex. 2004 ¶¶ 55, 56; Ex. 2006, 143:11–16, 144:4–7.” slip op. at 27

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable

    “7. Overall Indefiniteness Analysis The figures of the ’065 patent are not perfect and the issues discussed above demonstrate that attention to detail matters when conveying the scope of a three-dimensional object in two dimensions. The proper standard for indefiniteness does not, however, require perfection, but instead requires that an invention is shown with “reasonable certainty.” Nautilus, Inc., 572 U.S. at 910. The purpose of the definiteness standard is “to ensure that the disclosure is clear enough to give potential competitors (who are skilled in the art) notice of what design is claimed – and therefore what would be infringed.” Maatita, 900 F.3d at 1376. Based on the totality of the evidence before us, we determine that the claimed design of the ’065 patent is reasonably understandable and gives potential competitors, and the public, notice of the scope of the claim. As analyzed above, LKQ has not shown that most of the alleged inconsistencies are, in fact, inconsistent features within the claim. Further, we determine that the inconsistencies argued by LKQ do not in the aggregate “preclude the overall understanding of the drawing as a whole.” Id. at 1375–76.” slip op. at 45

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “The Petition fails to adequately address the differences between the claimed ornamental fender design and the Fiat Toro in several important areas, including: the distinct upper portions of each design, the claimed design’s inwardly folded (L-shaped) top edge, and the rear lateral edge. Based on the final record, these differences combined with the other differences noted by LKQ (Pet. 81) are substantial and prevent the Fiat Toro from having design characteristics that are basically the same as that claimed in the ’065 patent – as required for a Rosen reference.” slip op. at 67

  Patent outcomesUS D864,065 not shown unpatentable
  § 103 obviousness§ 112 disclosurecites Nautilus
• Yamaha Golf Car Company v. Club Car, LLCNo claims unpatentable
  PTAB · Apr 2, 2019 · IPR2017-02144 · APJ Robert L Kinder · IPR · Final written decision

  The Board found claims 11 and 17–19 not shown unpatentable: claim 11 was entitled to priority over the ’918 Publication, and the obviousness challenge to claims 17–19 was unsupported.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “slows the speed of the golf car until it returns to the course—“[Y]our cart has been slowed down because you are outside the boundaries of the course. Your car will continue to slow down until you return to the course.” Ex. 1004, 30 (emphases added) (also showing that “Reduce Maximum Speed” may be adjusted to a select speed as similarly set forth in Figure 3 of the ’569 patent). The ’894 Provisional specifies that the Curtis 1510 controller includes a configuration setting for “REVERSE SPEED,” and we find persuasive Mr. Andrews’ testimony that this control setting is separate from the maximum forward speed settings, “M1 MAX SPEED,” “M2 MAX SPEED,” “M3 MAX SPEED,” and “M4 (HIGH) MAX SPEED.” Ex. 1004, 12; Ex. 2009 ¶ 58 (“‘REVERSE SPEED’ is a separate configuration setting that the controller can configure based on GPS location.”). We find that these disclosures in the ’894 Provisional—slowing or stopping the car until it reverses course and separate configurable settings for reverse speed in the motor controller—establish affirmative support for a configuration as claimed where the car’s forward movement is disabled, but the car may still move in a reverse direction, as required by claim 11. Because the maximum forward speed can be set to zero to stop the vehicle from further movement towards the restricted area, but setting the maximum speed to zero leaves the separate “REVERSE SPEED” configuration setting in the motor controller unchanged, Patent Owner has shown how the vehicle is capable of operation only in a reverse direction. See Ex. 1004, 10, 12, 16, 30. From a functional capability, there is simply no difference between the descriptions found in the ’894 Provisional and the claimed limitations. See Ex. 2009 ¶¶ 49–60. Thus, Patent Owner has met its burden of showing adequate written description support for claim 11 in the earlier ’894 Provisional. Accordingly, the ’918 Publication does not qualify as prior art against claim 11. Based on the final trial record before us, Petitioner does not present sufficient arguments and credible evidence to support a finding that claim 11 is anticipated by the ’918 Publication.” slip op. at 17

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedReference not prior artDecided for patent owner

    “slows the speed of the golf car until it returns to the course—“[Y]our cart has been slowed down because you are outside the boundaries of the course. Your car will continue to slow down until you return to the course.” Ex. 1004, 30 (emphases added) (also showing that “Reduce Maximum Speed” may be adjusted to a select speed as similarly set forth in Figure 3 of the ’569 patent). The ’894 Provisional specifies that the Curtis 1510 controller includes a configuration setting for “REVERSE SPEED,” and we find persuasive Mr. Andrews’ testimony that this control setting is separate from the maximum forward speed settings, “M1 MAX SPEED,” “M2 MAX SPEED,” “M3 MAX SPEED,” and “M4 (HIGH) MAX SPEED.” Ex. 1004, 12; Ex. 2009 ¶ 58 (“‘REVERSE SPEED’ is a separate configuration setting that the controller can configure based on GPS location.”). We find that these disclosures in the ’894 Provisional—slowing or stopping the car until it reverses course and separate configurable settings for reverse speed in the motor controller—establish affirmative support for a configuration as claimed where the car’s forward movement is disabled, but the car may still move in a reverse direction, as required by claim 11. Because the maximum forward speed can be set to zero to stop the vehicle from further movement towards the restricted area, but setting the maximum speed to zero leaves the separate “REVERSE SPEED” configuration setting in the motor controller unchanged, Patent Owner has shown how the vehicle is capable of operation only in a reverse direction. See Ex. 1004, 10, 12, 16, 30. From a functional capability, there is simply no difference between the descriptions found in the ’894 Provisional and the claimed limitations. See Ex. 2009 ¶¶ 49–60. Thus, Patent Owner has met its burden of showing adequate written description support for claim 11 in the earlier ’894 Provisional. Accordingly, the ’918 Publication does not qualify as prior art against claim 11. Based on the final trial record before us, Petitioner does not present sufficient arguments and credible evidence to support a finding that claim 11 is anticipated by the ’918 Publication.” slip op. at 17

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

    “slows the speed of the golf car until it returns to the course—“[Y]our cart has been slowed down because you are outside the boundaries of the course. Your car will continue to slow down until you return to the course.” Ex. 1004, 30 (emphases added) (also showing that “Reduce Maximum Speed” may be adjusted to a select speed as similarly set forth in Figure 3 of the ’569 patent). The ’894 Provisional specifies that the Curtis 1510 controller includes a configuration setting for “REVERSE SPEED,” and we find persuasive Mr. Andrews’ testimony that this control setting is separate from the maximum forward speed settings, “M1 MAX SPEED,” “M2 MAX SPEED,” “M3 MAX SPEED,” and “M4 (HIGH) MAX SPEED.” Ex. 1004, 12; Ex. 2009 ¶ 58 (“‘REVERSE SPEED’ is a separate configuration setting that the controller can configure based on GPS location.”). We find that these disclosures in the ’894 Provisional—slowing or stopping the car until it reverses course and separate configurable settings for reverse speed in the motor controller—establish affirmative support for a configuration as claimed where the car’s forward movement is disabled, but the car may still move in a reverse direction, as required by claim 11. Because the maximum forward speed can be set to zero to stop the vehicle from further movement towards the restricted area, but setting the maximum speed to zero leaves the separate “REVERSE SPEED” configuration setting in the motor controller unchanged, Patent Owner has shown how the vehicle is capable of operation only in a reverse direction. See Ex. 1004, 10, 12, 16, 30. From a functional capability, there is simply no difference between the descriptions found in the ’894 Provisional and the claimed limitations. See Ex. 2009 ¶¶ 49–60. Thus, Patent Owner has met its burden of showing adequate written description support for claim 11 in the earlier ’894 Provisional. Accordingly, the ’918 Publication does not qualify as prior art against claim 11. Based on the final trial record before us, Petitioner does not present sufficient arguments and credible evidence to support a finding that claim 11 is anticipated by the ’918 Publication.” slip op. at 17

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

    “sufficiently how the ’918 Publication’s disclosure of a “signal . . . of the violation” (Ex. 1003 ¶ 68) also teaches or suggests the additional claim requirements of “the driver interface unit . . . operable to communicate an alarm to the base station of a controller limiting the performance of a driver command” as required by claim 17. Petitioner recognizes the distinction by arguing “that the system could also provide a message to the course personnel . . . of any remedial corrective measures taken in response.” Pet. 25 (emphasis added). Based on the evidence cited, the ’918 Publication does not provide any such notification. Petitioner cannot suggest that a reference could have a feature that it does not have without some rational basis as to why such a feature would have been suggested by the reference. Mr. Breen’s explanation mirrors Petitioner’s contention (Ex. 1001 ¶ 277) and likewise states “that the system could also provide a message to the course personnel” (emphasis added) but no further explanation is provided as to how this unsupported conclusion was reached. Petitioner has also failed to lay the necessary foundation to establish that “common sense” could fill the gap for the missing limitation, or provide a basis for modifying the ’918 Publication to teach the claim 17 limitation. We recognize that in certain instances “common sense” can be used to supply the missing claim limitation, but only if the art is “unusually simple and the [patented] technology particularly straightforward.” Arendi Sarl v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016). In this proceeding, we have no testimony or evidence to establish either condition is met. Neither Petitioner nor Mr. Breen explain adequately why the limitations of claim 17” slip op. at 24

  Patent outcomesUS 7,480,569 not shown unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 7,480,569
• Donghee America, Inc. / Donghee Alabama, LLC v. Plastic Omnium Advanced Innovation And ResearchAll claims unpatentable
  PTAB · Dec 11, 2018 · IPR2017-01605 · APJ Christopher M Kaiser · IPR · Final written decision

  Claims 1–3, 7, 11, 12, and 14 are unpatentable: claims 1–3, 12, and 14 are anticipated by Linden, and claims 7 and 11 are obvious over Linden and Hata.

  RulingsFinal written decision

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

    “article whose surface has at least one empty or concave part.” Id. at 11 (citing Ex. 1001, 1:66–67; Ex. 1007 ¶ 15). Patent Owner agrees. PO Resp. 15. The ’253 patent states that “[t]he term ‘hollow body’ is understood to mean any article whose surface has at least one empty or concave part.” Ex. 1001, 1:66–67. Where an inventor defines specific terms used to describe an invention, we will give effect to those definitions, as long as they are set out “with reasonable clarity, deliberateness, and precision,” “so as to give one of ordinary skill in the art notice of the change” in meaning. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Here, the phrase “is understood to mean,” as used in the ’253 patent, signals that the inventor presents a clear, deliberate, and precise definition. Accordingly, we interpret “hollow body” as having the definition given it in the ’253 patent, “any article whose surface has at least one empty or concave part.”” slip op. at 6

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

    “supporting its proposed construction of “incorporate” as “insert.” First, Petitioner argues that the language of the ’253 patent requires a construction of “incorporating” as encompassing “inserting” rather than as limited to “attaching.” Reply 2–4. Both parties argue that the “incorporating” recited in the challenged claims must occur before the mold closes to form the hollow body. PO Resp. 16; Reply 2–3. We agree. Ex. 1001, 6:2–14 (“. . . after said step of incorporating, closing said mould . . .”). Thus, it is important to note the processes that the ’253 patent describes as occurring before, during, and after mold closure. Because “incorporating” must occur before mold closure, the process of “incorporating” may not be limited to any process that the patent describes as occurring during or after mold closure. Petitioner is correct that the ’253 patent describes a process in which a preassembled structure for supporting an accessory “may . . . be fastened by welding to the wall of the hollow body, upon closing the mould,” i.e., during, not before, mold closure. Ex. 1001, 4:23–30. Thus, the language of the ’253 patent does not support construing the term “incorporating” as limited to “attaching.” Petitioner also argues that both parties agreed in the related infringement suit in District Court that the proper construction of “incorporating” under the Phillips standard, used in that forum, was “inserting.” Reply 7–8 (citing Ex. 1010, at Ex. A, 4). Specifically, in that litigation, Patent Owner agreed that the correct construction of “incorporating at least one of an accessory or a duct within the hollow body” was “inserting an accessory or duct into the hollow body.” Ex. 1010, at Ex. A, 4. Here, we apply the broadest-reasonable-interpretation standard. 37 C.F.R. § 42.100(b) (2016). “The broadest reasonable interpretation of a claim term may be the same as or broader than the construction of a term under the Phillips standard. But it cannot be narrower.” Facebook, Inc. v. Pragmatus AV, LLC, 582 F. App’x 864, 869 (Fed. Cir. 2014) (non-precedential). Here, for the term “incorporating,” Patent Owner’s proposed broadest reasonable interpretation (“attaching”) is narrower than the Phillips construction Patent Owner has advanced (“inserting”). Thus, “attaching” cannot be the broadest reasonable interpretation of “incorporating.” Other than Patent Owner’s proposed “attaching” construction, the only construction the parties have proposed either in this case or in the related District Court case is Petitioner’s proposed “inserting” construction. PO Resp. 15–20 (discussing only “inserting” and “attaching” constructions); Reply 2–9 (Petitioner arguing in favor of “inserting”); Ex. 1010, at Ex. A, 4 (both parties proposing “inserting”). The ’253 patent supports such a construction, because it describes at least some of its embodiments as involving only insertion of an object between the sheets that will form the hollow body before mold closure. Ex. 1001, 4:23–30. Accordingly, for the foregoing reasons, we adopt Petitioner’s proposed construction of “incorporating” as “inserting.”” slip op. at 10

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Finally, Patent Owner directs us to the testimony of Professor Tim Osswald as support for its view that “incorporate” should mean “attach.” PO Resp. 16 (citing Ex. 2001 ¶¶ 40–42). In relevant part, this testimony states that, “[a]fter reading the specification of the ’253 patent, one of ordinary skill in the art would understand and interpret the word ‘incorporating’ to mean ‘fastening’ or ‘attaching’ so that the accessory or duct becomes part of the hollow body.” Ex. 2001 ¶ 42. Professor Osswald does not cite any evidence in support of his testimony. “[C]onclusory, unsupported assertions by experts as to the definition of a claim term are not useful.” Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc). Accordingly, we give little weight to Professor Osswald’s statement regarding the proper construction of “incorporate.” See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he [PTAB] is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations . . . .” (citations omitted)).” slip op. at 9

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

    “preform which has at least one opening for that purpose, to be applied to the inside surface of the wall of the expanded hollow body.” Id. at 3:62–4:3. Patent Owner argues that this teaching is insufficient to disclose attaching the surge cup to the wall of the hollow body before the mold closes. PO Resp. 23–24. We agree that Linden does not teach attaching its accessory to the inside wall of the fuel tank before the mold closes around the preform. Instead, in Linden, the mold halves are closed around the preform and the mandrel, and “a suitable blowing agent . . . is introduced under pressure” through the mandrel, causing the preform to expand to press “against the inside wall defining the mold cavity,” and only then is the holding means for the accessory displaced to be brought into contact with the inner wall of the expanded preform, welding the holding means to the wall. Ex. 1003, 7:27–55, 8:11–29, Figs. 1–3. But, as discussed above, we disagree with Patent Owner about the proper construction of “incorporating” in the challenged claims. Claim 1 requires only that an accessory or a duct be “incorporat[ed] . . . within the hollow body” before mold closure occurs, and we construe “incorporating” to mean “inserting,” without requiring “attaching.” Thus, it is unimportant that Linden fails to teach attaching the surge cup to the wall before mold closure. All that is required is that Linden disclose inserting the surge cup into the preform before mold closure, and Linden does disclose this. Id. at 3:62–4:3, 7:27–49, Figs. 1–3. The next question is whether Linden discloses “after said step of incorporating, closing [the mold] in a way which eliminates any interface between said at least one of said accessory or said duct and an external atmosphere outside of the hollow body.” As discussed above, Linden discloses closing the mold halves after placing the additional body within the preform. But Linden discloses that “[a]t its lower end the preform 28 is pressed around the mandrel 14 by virtue of closure of the mold halves 10a and 10b.” Id. at 7:40–42, Fig. 2. Because mandrel 14 is hollow, id. at 6:35–39; 6:46–54, it is not completely clear that closure of Linden’s hollow body around mandrel 14 necessarily eliminates any interface between the additional body inside Linden’s hollow body and the atmosphere outside the hollow body. On the other hand, the closure of the mold described in the ’253 patent occurs with blowing nozzle 6 “positioned between the two parts of the [mold],” and “blowing air is injected under pressure via the nozzle,” which is quite similar to the use of hollow mandrel 14 in Linden. Ex. 1001, 5:50–57. Given the similarity between Linden’s method and the method described in the ’253 patent, we determine that Petitioner has shown by a preponderance of the evidence that Linden discloses the limitation of claim 1 requiring the step of, “after said step of incorporating, closing [the mold] in a way which eliminates any interface between said at least one of said accessory or said duct and an external atmosphere outside of the hollow body.” The final question with respect to claim 1 is whether Linden discloses that the additional body incorporated within the hollow body “is supported by a preassembled structure which comprises at least one device configured to anchor said preassembled structure to an internal wall of the hollow body.” Petitioner argues that Linden’s “[h]olding means 24 is a preassembled structure” in which “leg members 44, 45” have “enlarged foot portion[s] 36.” Pet. 18 (citing Ex. 1003, 9:23–34). We agree. “[H]olding means 24 . . . substantially comprises first and second support or leg members 44, 45,” and “support or leg members 44, 45 are each provided with an enlarged foot portion 36 of substantially plate-like configuration.” Ex. 1003, 9:23–34. Even if Linden’s holding means 24 were not in the aggregate the recited “preassembled structure,” each leg member 44, 45, taken together with its respective foot portion 36 is. Ex. 1001, 4:26–28 (describing a “preassembled structure” as “for example, an arm provided with a tab for fastening to the wall of the hollow body”). Linden’s “foot portions 36 are pressed against the inside surface, which is still hot and thus plastic, . . . of the hollow body . . . thereby to produce a welded joint between the foot portions 36 and the inside surface.” Id. at 9:34–42. Petitioner has shown by a preponderance of the evidence that Linden discloses the limitation of claim 1 requiring that the accessory or duct be “supported by a preassembled structure which comprises at least one device configured to anchor said preassembled structure to an internal wall of the hollow body.”” slip op. at 19

  Patent outcomesUS 7,166,253 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 7,166,253
• Autoliv Asp, Inc. / Nihon Plast Co., Ltd. et al. v. American Vehicular Sciences, LLCAll claims unpatentable
  PTAB · Mar 22, 2018 · IPR2016-01794 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 1–44 are unpatentable as obvious under §103 over the combinations and references listed in the decision.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “a degree in a related field of science including physics, mechanical or electrical engineering, or equivalent coursework, and at least two years of experience in the area of automotive safety systems with the equivalent of a post-graduate education, such as a master’s degree or equivalent knowledge obtained through work experience, and several years of experience in the design of vehicle occupant protection systems.” Pet. 21 (citing Ex. 1003 ¶ 37). Patent Owner does not address the level of ordinary skill in its Patent Owner Response, but Mr. Nranian testifies that such a person “would have at least a Bachelor’s degree in electrical, electronic, mechanical, or automotive engineering, and at least three years of experience in the integration of airbag, safety, and vehicle occupant protection devices in automotive vehicles, or equivalent knowledge obtained through work experience in the relevant field.” Ex. 2018 ¶ 36. We do not discern a difference between these formulations as applied to the issues in dispute in this proceeding, and the parties do not identify any issue in dispute that allegedly turns on such a difference. For purposes of this Final Written Decision, and based on the parties’ proposed definitions and the complete record now before us, we maintain our previously adopted definition of one of ordinary skill in the art: a person having at least a Bachelor’s degree in physics, or electrical, electronic, mechanical, or automotive engineering, or equivalent coursework, and having several years of experience in the design of vehicle occupant protection systems in automotive vehicles, or equivalent knowledge obtained through work experience in the relevant field. See Inst. Dec. 15–16. The level of ordinary skill in the art in this case further is 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).” slip op. at 10

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

    “The parties’ dispute does not require express construction of any claim term. See, e.g., See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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)).” slip op. at 12

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther

    “specifically how the claimed airbag (with or without compartments) is inflated. The generic description in the Specification that the term “airbag” includes, among other distinct possibilities, “a single airbag having a plurality of compartments which deploy in concert to protect an occupant,” coupled with silence in the claims as to the specifics of how the claimed airbags are inflated is insufficient to support a conclusion that the original claims of the ’247 application actually disclose the claimed flow communication limitation. See Huston, 308 F.3d at 1277 (“Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.”); see also Ex. 1027, 31:5–11 (Mr. Nranian admitting during cross-examination that an airbag with a plurality of compartments, “could have plurality of compartments in flow communication with each other or could have a plurality of compartments that are not in flow communication with each other.” (emphasis added)); Reply 8.” slip op. at 19

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

    “airbag extending across front and back seats limitation. See Pet. 32–34, 38; Ex. 1003 ¶¶ 103–104. Petitioner asserts that “HÅland teaches a single airbag extending across two seating positions that are longitudinally displaced along a lateral side of the vehicle.” Pet. 32 (citing Ex. 1008, 5:47– 51, Figs. 5, 6). Petitioner further asserts that “Stütz . . . also discloses the claimed single airbag extending across two seating positions that are longitudinally displaced along a lateral side of the vehicle.” Id. at 33–34 (citing Ex. 1009, 1:25–32, 1:50–55, 2:52–55, Figs. 1, 3). We agree with Petitioner, and find that HÅland and Stütz each teaches or suggests the single airbag extending across front and back seats limitation.” slip op. at 30

  Patent outcomesUS 9,043,093 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 9,043,093
• Texas Association Of Realtors v. Uber Technologies, Inc.All claims unpatentable
  PTAB · Aug 4, 2017 · IPR2016-00615 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1–28 are unpatentable under § 103(a); the contingent motion to amend is denied because substitute claims are obvious and lack written-description support.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “II. ANALYSIS Petitioner bears the burden of proving unpatentability of the challenged claims, and that burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must establish the facts supporting its challenge by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Petitioner relies on the Declaration of Michael Goodchild, Ph.D. (Ex. 1010) and the Reply Declaration of Dr. Goodchild (Ex. 1020). Patent Owner does not rely on any supporting declaration or cross-examination testimony. Below, we discuss whether Petitioner has met its burden with respect to claims 1–28. A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Obviousness is resolved based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness,2 i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 7

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

    “First, Petitioner argues that based on the dictionary definition of “demarcate,” the broadest reasonable interpretation of “demarcating” is “‘to determine or mark off the boundaries or limits of’ something.” Id. (quoting Ex. 1013, RANDOM HOUSE WEBSTER’S UNABRIDGED DICTIONARY, (2d ed. 2001), 5); Ex. 1010 ¶¶ 35, 36. Next, Petitioner contends that the broadest reasonable interpretation of “delimiting” is “determining or marking off the boundaries or limits of something, such as by providing a perimeter line or highlighting.” Pet. 7; Ex. 1013, 4; Ex. 1010 ¶¶ 37–39. Petitioner reasons that the Specification provides examples of delimiting “via a perimeter line in any graphical way” and by highlighting. Pet. 7 (citing Ex. 1001, 6:34–39, 8:13–19). Patent Owner does not address these interpretations in its Response, but at oral hearing Patent Owner agrees that Petitioner’s interpretations were “a fair assessment.” Tr. 92:19–94:3. Patent Owner also responds that there was no substantive difference between the two terms – “demarcating” and “delimiting.” Id. at 93:19–29. Petitioner’s proposed interpretations for “demarcating” and “delimiting” are consistent with the claim language, written description of the ’045 patent, and the plain meaning of each term. We therefore interpret “demarcating” to mean “determining or marking off the boundaries or limits of something,” and interpret “delimiting” to mean “determining or marking off the boundaries or limits of something, such as by providing a perimeter line or highlighting.”” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art The parties do not argue in the Petition or Patent Owner Response that we should adopt a specific formulation regarding the level of ordinary skill in the art. Dr. Goodchild, however, testifies that a person of ordinary skill in the art at the time of the ’045 patent “would have had a Bachelor of Science degree (or its equivalent), and three years’ experience in the development, management, and use of geographic information systems and related geospatial technologies.” Ex. 1010 ¶ 14. Based on the record presented, including our review of the ’045 patent and the types of problems and solutions described in the ’045 patent and cited prior art, we agree with Dr. Goodchild’s assessment of the level of ordinary skill in the art and therefore adopt it for purposes of this Decision. As noted, we have also considered the cited references as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be evidenced by the cited references themselves).” slip op. at 10

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

    “Petitioner also provides a persuasive rationale for combining the teachings of O’Clair and Tadman. Id. at 9–10, 14–15. Specifically, Petitioner contends both references are in “similar fields,” with both references referring to the mapping application Google Maps, and [a] person of ordinary skill in the art would have found it obvious and desirable at the time of the ’045 Patent’s filing to combine the features of Tadman into O’Clair to achieve, for example, the ability for a “user to conduct a joint query by using both spatial and non-spatial searches” and the other “advanced features” described by Tadman. Id. at 9–10 (quoting Ex. 1010 ¶¶ 50–51). As further explained by Dr. Goodchild, “[t]he combination of O’Clair’s systems and methods with Tadman’s teachings of polygon-based search would yield the predictable and desirable result of a GIS [geographic information] system which allowed a user to obtain search results located with a polygon-shaped area of interest.” Ex. 1010 ¶ 52; see also Tr. 17:17–19:19. In its Response, Patent Owner does not contest Petitioner’s rationale for combining features of Tadman and O’Clair, nor does Patent Owner challenge Petitioner’s rationale for combining any of the prior art. See Tr. 38:21–39:33 (counsel for Patent Owner agreeing lack of motivation to combine is not argued in the Patent Owner Response). We find persuasive Petitioner’s arguments as to why a person of ordinary skill in the art would have had reason to combine the references’ teachings in the manner asserted.” slip op. at 15

  Patent outcomesUS 8,510,045 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 8,510,045

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